A bit more on the UKIPO customer visit programme -- and how is this done elsewhere?

Barbara (here) and I (here) have already noted the determination of the UK IPO, in the person of Nigel Hanley, to find out what it is that solo and small-scale IP practitioners want (other than a regular flow of helpful clients who are sensitive to deadlines and pay when asked, affordable professional indemnity insurance, peace on Earth and goodwill to all men ...).  Just to rub it in, here's the tick-box form that the IPO is using as a means of setting the agenda for a fruitful dialogue with its users:

IPO Customer Visit Programme Discussion Topics

IPO Customer Visits are an opportunity for us to tell you what is happening at the IPO and also for you to discuss issues that matter to you. To shape the agenda please complete this form, selecting the topics you’d like to cover:

 Patent Prosecution Highway basic discussion OR

 Patent Prosecution Highway presentation (approx 20 mins that qualifies for CPD)

 Opinions Service and mediation

 Update and questions on the Unitary Patent and Court

 Update and questions on the IP Bill

 PO Electronic Services – recent and forthcoming changes to IPO Services v 

 Service Issues you are currently experiencing and your suggestions for service improvement

 Search and examination targets and practice

 Excluded matter – e.g. Computer Programs

 Bio-Technology

 Accelerated Services

 Colour Drawings

 Section 20 compliance period

 Electronic citations

 Excessive claims

 Patent Box

 Guidance for Small Firms and obtaining finance

Would you find it helpful to meet representatives from:

 Trade Marks

 Patents Formalities

Any other topics or questions you’d like to cover:

Name: 

Firm: 

Tel:

Please return [this form] to Nigel Hanley by email to nigel.hanley@ipo.gov.uk

Apart from the obvious question of what would people like to add to this list, which looks pretty good at first blush, this blogger is curious to know if any intellectual property offices outside the UK are currently engaged in similar outreach exercises. If so, which ones are they -- and how do their attempts to hear and respond to the voice of the small practitioner community compare with that of the UK?  Does anyone know?

Calling all small practitioners: the IPO wants to meet you, really!

Nigel Hanley (Senior Patent Examiner, UK Intellectual Property Office) has emailed us with the following message:

For my [unspecified] sins I now run the Customer Visit programme in the IPO and I would appreciate a little help in advertising an event we are running in London on 9 April. The annual report for last year's visit programme can be found here, if you are interested [and also if you're not: I checked]. 

Specifically, we are aware that there are many small IP firms and sole practitioners that we do not get to meet. We are also aware that our current customer visit programme deals with much larger firms and businesses. To rectify that we are holding the meeting at BIS, 1 Victoria Street [it's possible that there may just be more than one of these in the country, but London looks the best bet] so we can meet the smaller firms and here what they think of our services and let them know about some of the new services we offer.

For further particulars, pending the arrival of a suitable link to a web page, why not email Nigel here at nigel.hanley@ipo.gov.uk?

Disclosure: the risk of the Unqualified and Partially Qualified

Our good friend and trade mark attorney Aaron Wood (now with Swindell & Pearson Ltd but no stranger to solo practice) writes:

The market for trade mark prosecution services in the UK is diverse. On the one hand we have the corporate monoliths, on the other the collection of SMEs that make up the trade mark and patent profession. Somewhere outside these, biting at the bottom (and increasingly the middle) of the market are those companies that operate online and offer to register marks and/or to search the availability of marks. Often staffed by non-professionals, they undercut the services provided by qualified lawyers and often pick up the most cost-conscious clients. While the levels of service and advice may not reach the heights of IP professionals, for many clients they are deemed sufficient.

It recently struck me that these businesses all suffer from the same issue, however. One key aspect of practice that UK-qualified lawyers take for granted is legal professional privilege – the ability to tell the client that the mark they have just filed is of questionable validity at best, or that the other marks located by a search are a clear infringement risk, without the risk that this advice will be disclosed in subsequent litigation. It is a central plank of practice that allows a client to disclose all to their advisers. It is a privilege which is not extended to part-qualified attorneys unless suitably supervised, however, and is certainly not extended to unqualified service providers.

Most of the time it is not a problem, but using non-lawyers for IP work means that the advice given on availability or registrability is open to disclosure in any proceedings. One can imagine the result of a claimant seeking disclosure of the search advice, and the defendant having to disclose that they were advised that the proposed mark would infringe. It is also worth noting that marketing agencies (who regularly undertake clearance searches) would also be caught by this risk and that in-house departments that use unqualified paralegals without sufficient supervision from qualified lawyers may also be caught.

For foreign associates and in-house attorneys, it may be worth considering whether the adviser you instruct is suitably qualified or supervised. The UK market has a lot of titles and it can be confusing – there is a world of difference between a Registered Trade Mark Attorney and someone who is simply a European Trade Mark Attorney; ditto a barrister and a barrister (non-practising). Advice from the former in each of these pairs would be covered by legal professional privilege (in the first case, so long as it is in the specialised area) as communications between a client and lawyer; in the latter case, no legal professional privilege accrues and you would need to disclose any non-contentious advice you received (the UK providing that legal advice obtained in relation to actual or contemplated litigation is covered by litigation privilege).

As ever, readers' comments and experiences are appreciated, whether from the UK or beyond, on this important issue. Thanks, Aaron, for sharing your thoughts.

SOLO practitioners meet the IPO

BIS HQ 1 Victoria Street

Save the date Wednesday 9 April from 3 to 17:30. This is your opportunity as a small customer of the IPO to get to know their plans and provide some feedback. Its bound to be educational and so IPREG CPD and a good opportunity to meet together with others in a similar situation.

Its being held at BIS HQ and to reserve your place you only need to email with your name, firm and indication of interests by 26^th March 2014.

I have said I am interested in  the opinions service and how the new post IP Bill improvements are expected to work as well as the Trademark opposition process.  These are the topics that might come up if you suggest them

• Patent Prosecution Highway
• Opinions service and mediation
• Update and questions on the Unitary Patent and Court
• Update and questions on the IP Bill 
• IPO Electronic Services - recent and forthcoming changes to IPO services 
• Service issues you are currently experiencing and your suggestions for service improvement 
• Search and examination targets and practice 
• Excluded matter - e.g. Computer programs 
• Bio-technology 
• Accelerated services  (you must have noticed the new .gov format consultation on going two track again on trade marks)
• Colour drawings 
• Section 20 compliance period 
• Electronic citations 
• Excessive claims
• Patent Box
• Guidance for small firms and obtaining finance 

I look forward to seeing you there. Even if you only do patents or trademarks and not both it makes sense to come and pick up a few contacts for your cast offs.

This is part of the customer visit programme run by the UK IPO . There is a full report of how they got on last year here

Suggestions for a drinks sponsor or a nearby watering hole to facilitate networking welcome. Add a comment if you are coming but don't forget to email to get through security on the day and to ensure your place.

Is gardening leave dead?

"Call for longer gardening leave to tackle the rise of networking on LinkedIn" is the title of an item in yesterday's Standard that caught my eye. In short, it mentions an observation by Daniel Isaac, a partner in Withers, that traditional gardening leave routines aren't much use in a world in which the social media, and in the case of lawyers LinkedIn, provide the perfect milieu for people to remain in touch with their clients -- and to be visible to them -- even when they leave a firm and are bound by all sorts of post-employment restrictions on soliciting the clients of their former firm.

Keeping in touch post-employment:
so easy, when you know how ...

From the point of view of the IP practitioner who departs from a large practice in order to kick-start his own solo one, post-employment restrictions are most unwelcome -- even if they are technically unenforceable as a restraint upon trade. The exposure offered through LinkedIn, where changes in employment details are automatically communicated to others with whom one is linked, is therefore invaluable.  Even if calls for departing professionals to "de-link" from existing clients are heeded, it is not reasonable to expect any individual to disappear so entirely from the social media that he cannot be found by a satisfied client who wishes to retain his or her services in the future.

Thoughts, anyone, and personal experiences?

and NOW for something completely similar - by Sally Cooper

Time passes by – days and weeks and months and years come and go – and Trade Mark practitioners in the UK tussle with section 5(2)(b) Trade Marks Act 1994 where it says

“A trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public”. 

And where the first part of an earlier trade mark is (visually or aurally or conceptually) the same as the first part of the mark applied for, thoughts of the consumer and “imperfect recollection” come to mind and – particularly if goods are identical – there is concern the applicant will fail in its quest for registration.

So finding a case where an opponent succeeds on (visual and aural and conceptual) similarity, but fails on likelihood of confusion brings joy to the heart. The case in question is O-069-14 of 10th February 2014 being an Opposition by Now Wireless Ltd against a mark applied for by Nowcomm Limited.

This note is limited to matters set out at pages 20 / 21 (paragraphs 53 / 58) : in these two pages Mr Martin Boyle as Hearing Officer for the Registry sets out the two marks. He then expresses his considered views on similarity of marks which (in summary) are :

• “There is not more an average degree of visual similarity” and 
• “There is not more than a low degree of aural similarity” and 
• “There is a reasonable degree of overall conceptual similarity”. 

But joy comes with the findings that follow :

“I have found that none of the component parts of either mark are inherently distinctive, and that NOW is not markedly dominant in either case. I have found the earlier mark to be of low distinctiveness (though I bear in mind that weak distinctive character of an earlier mark does not preclude a likelihood of confusion) and even if I am wrong about that, the element NOW alone has not acquired a distinctive character as a result of the use of NOWWIRELESS. I have found an average degree of visual similarity, a low degree of aural similarity and a reasonable degree of conceptual similarity between the marks. I have found the goods and services of both specifications are largely aimed at professional business users. Even when bought by individuals they will be considered purchases. There will be a considerable bespoke element to many of the services and the requirement of technical suitability for intended use will mean they will be bought after technical discussions to ensure they are fit for purpose. In the light of this, even bearing in mind that I have found goods and services to be identical, I do not find that there is a likelihood of confusion (emphasis supplied)”.

The applicant applied to register its mark in July 2007 and opposition was filed in October 2008 : (to its credit) the UK Registry pressed on to its Decision notwithstanding that the earlier mark on which the opponent was able to rely was its CTM Application 4650156 filed in 2005 and which is the subject of two (suspended) oppositions. Time passes by – and we wait to see whether the opponent will appeal !

The Duck points out that its not possible to declare an earlier mark invalid in opposition proceedings but it does seem that the applicant drew attention to Arnold J's decision of NOW invalidity in the fight between EMI and Starbucks. Since that decision was upheld by the Court of Appeal the remaining distinctive character in both these marks is their choice of a companion term and since those are different the opposition was rightly doomed. Now can we move on to wonder if Now is the 73rd most common word in the English language to wonder where com comes.

Handwriting at the EPO

Extract from a note on telephone consultation from 11 Feb 2014

The introduction of the rule forbidding handwritten amendments at the EPO has called consternation amongst practitioners as discussed amongst even the big boys with lots of software licences, portable printers and laptops will long battery life that inhabit the IPkat's illustrious corridors. Maybe the above note with its admission that the deficiency of writing by hand might be rectified offers some crumb of comfort. Nevertheless it does not say the Examiner would not take advantage of the issue to delay re-examination of the application.

Client Accounts for All

The new IPReg rule 11 that will come into force on 1 January 2015 requires all regulated patent and trade

mark agents to have a client account or ensure they never handle client money.

Here is the current rule

Rule 11 – Financial Matters
Regulated persons shall ensure that their professional finances are managed appropriately.

Here is the amended rule

Rule 11 – Financial Matters
Regulated persons shall ensure that their professional finances are managed appropriately.
Every regulated person must ensure that they have in place appropriate controls, procedure and records and also sufficient and appropriately qualified staff and/or other resources to ensure that clients always receive a high standard of service in relation to the management of client money.
In the event that a regulated person receives money from a client, other than by way of payment of fees or disbursements incurred but including money on account for fees or disbursements paid up front, they should ensure that such money is held on trust for the client in an account which is entirely separate from the regulated person’s or the firm’s professional business accounts In the event that money is held on trust for a client the registered person’s terms of business should deal with the issue of the ownership of the interest earned on the money held on behalf of a client.
Every regulated person must ensure they comply with all legislation pertaining to “money laundering” and “proceeds of crime”

CIPA have already run one webinar reported at Page 49 of the January 2014 CIPA Journal  and another is on its way to scare you. Its on the 4 March starting at 12:30 and for a mere £30 plus VAT or £45 if you are not a CIPA member you can book it online. It is also supported by ITMA and hopefully trademark agents qualify for the £30 rate.

Having come from practice as a solicitor I opened a client account early on. It did take some time to get the bank to understand that it must be designated a client account and they could not raid it for arbitrary charges, but that is all sorted now. Post 2008, the banks are a bit better at recognising the need for client account designation. The mainstream banks now seem to be more up front about their offerings. Here is Lloyds and here is Barclays. For most patent and trademark agents you want to make sure it stays open with a zero balance. The client accounts of property solicitors were always attractive to banks, but I suspect that for most of the IPReg regulated, the odd payment  of €300 costs may be the best it sees.

The one thing that the rule makes clear is that if you collect your PCT nationalisation fees or the anticipated costs of the foreign filing programme for a trade mark client in advance it should go into the client account. If you don't have a lot of working capital or you don't trust the client, this advance collection is necessary. When practicing as a solicitor, I found the provisions under the then Law Society rules about agreed fees very helpful. These are still recognised by the SRA see their Rule 17.5 

A payment for an agreed fee must be paid into an office account. An "agreed fee" is one that is fixed - not a fee that can be varied upwards, nor a fee that is dependent on the transaction being completed. An agreed fee must be evidenced in writing.

Therefore if you specify a fixed fee for the service and bill it up front, it does not need to enter the client account. If you want to do a final accounting, then its provide the credit and bill afterwards or ask for a payment into your client account.

The obvious thing to say in your terms and conditions is that interest is not paid and any interest earned is yours.

The one area where it would be helpful to have some guidance from IPREG is what about refunds made by OHIM and the EPO direct into your deposit account and therefore mixed with office money. It is a matter of British competitiveness that we should not be disadvantaged relative to our European competitors. Up till now I have felt that IPREG regulation saves me from anguishing about this issue too much. Can we make it clear in our terms of business that such refunds are refundable only at our discretion. For OHIM refunds, the amount is €350 but for abandoned EPO applications that have gone un-renewed the amounts can be significant. If the non- renewal is because the foreign start up has gone into administration, the  client may be another law firm who is not too keen to receive  difficult to allocate funds.

Hopefully most firms who have not already got a client account will find it possible to open one during 2014.

Another requirement is that we must have  "sufficient and appropriately qualified staff" . Is that meant to rule out solo practitioners. Lets hope not!

Intellectual Property Enterprise Court Under the Clock

My attention was grabbed by a couple of paragraphs in recent judgements

I would add only that it is clear that the argument we have heard on this appeal has been far more extensive than that addressed to the Judge, who was faced at trial with a large number of other points, all of which had to be dealt with under the stringent time constraints of what was then the Patents County Court. 

This comes from paragraph 41 of Lord Justices Floyd's judgement on the appeal in  AP Racing v Alcon in which they reversed a Patents County Court decision by HHJ Birss QC (as he then was) on the delicate subject of added subject matter in a patent.

Our New Judge in the Intellectual Property Enterprise Court, HHJ Hacon can be found saying on the 3 February

Generally in this court, leaving some of the issues to be heard at a later date is not likely to be sanctioned. However, exceptions are possible and in the present case by the time the trial came before me there was a serious risk that it would overrun if all issues, including the contingent ones, were heard then and there. I therefore approved the approach agreed by the parties.

This comes from paragraph 14 in Elsworth Ethanol v Ensus and a lot of other parties who didn't take part

The Intellectual Property Enterprise Court has trials that are limited to 2 days and frequently shorter intervals. This is supposed to keep the costs down but it's interesting that the court fees seem to be the same. Having watched Mr Justice Birss presiding over a trial in the Patents Court recently, I was particularly struck by how generous he was in allowing the advocates the time they wanted to present their arguments.

Generally the costs factor is decisive in the decision to choose IPEC. I don't mean the costs the client will pay, but the risk of having to pay the other sides charged at some uncontrollable rate. Even so it is still necessary to consider whether the time factor could work an injustice. Always good to deploy only your best argument but with invalidity actions, for example, there may be too many ways to go. Is a point shortly made always the best? Most patent agents know you need more time to write a short letter than a long rambling one.  If things have to be concise maybe your advocate needs to be better in the IPEC than in the High Court.  Nevertheless if living by the clock is the price we pay for justice, then so be it.

Starting to work as a patent expert? See what the EPO thinks of you

Attracted by a Tweet from the European Patent Office (EPO), cut-and-pasted here,

EuropeanPatentOffice ‏@EPOorg  5m

If you're just starting to work as a patent expert you might want to learn about these basic concepts: http://buzz.mw/b5sn3_f 

this blogger was intrigued by the sort of concepts that someone starting to work as a patent expert might want to learn. The condensed URL in the Tweet resolved to a page on the EPO website at http://www.epo.org/searching/essentials/about.html which conveyed, among other things, the following information:

• Avoid infringing other people’s patent rights
  Before you put a new product on the market or offer a new service, you need to make sure that you will not be infringing someone else’s patent. Patent information will help you here, too.

Yes, well, I suppose it might do just that, given a chance.  But if we are honest about it, this basic concept is not as helpful as one might like it to be.  Business start-ups, novices and people who believe that there is a one-to-one correlation between searchable patent information and things that will infringe other people's patent rights are perpetually surprised by the fact that, at any given time, there are a lot of patent applications that have been filed but not yet published -- and which are not therefore easy to access, even in these days of WikiLeaks and electronic surveillance.  Avoiding infringing other people's patent rights is thus a bit like avoiding things that drop on to your head from a great height: you are sometimes quite unaware of them till they hit you.

Ideal for drafting patents?

An even bigger surprise comes when anyone putting a new product or service on the market (or their professional advisor) finds some patent information that is available and relevant.  In an ideal world the claims and specification would be as concise, clear and simple as if they had been drafted by Dr Seuss. Without wishing to generalise, it seems to me that this is not a frequent occurrence. Moreover, in that same ideal world, there is a one-to-one correspondence between any earlier device or process and that which our innovator wishes to take to market. Again, this is not normally so, especially in an era in which we talk of the internet of things and practically every new gadget is also a computer -- or at least tells you what to do.

Now here's a challenge for readers.  Taking the rubric above

• Avoid infringing other people’s patent rights

what words might you more usefully substitute for the bit that goes

Before you put a new product on the market or offer a new service, you need to make sure that you will not be infringing someone else’s patent. Patent information will help you here, too.

See if you can manage it in 186 characters (the length of the advice above) or less.