Friday 31 October 2014

He who pays the piper dresses the worst

"Does How You Dress and Look Impact Your Career?" is the title of a LinkedIn Pulse post ("A Must-Read for Jeremy") which, since I received it, has probably been received by most if not all of the readers of the SOLO IP weblog. Thanks to the growth of the social media and the increasing level of informality that attends even formal intellectual property events, I need to dress up less often and, when I do dress up, I do so less smartly.

My feeling is that there are different standards within intellectual property. On the whole, practitioners in the field of trade marks and branding tend to turn up to meetings looking pretty smart and spruce -- and those who deal with IP in the fashion sector are particularly well turned-out.  Copyright lawyers are more likely to be a lightly rumpled, couldn't-care-less version of 'smart casual', while patent folk are those who are least likely to be confused with those who practise the art of sleek, smooth professionalism.  Indeed many look as though they have just stepped outside their garden-sheds for a breath of fresh air and a chance to blink in the unaccustomed light of the sun ...

Within the different skills sets offered within IP there are divergent clothing codes too.  Patent attorney litigators and solicitors often seem better turned out than the somewhat scruffy and threadbare patent bar (do some barristers have a 'lucky suit' which they favour in court, only discarding it when it falls apart or when it has become so shiny that the judge can see his face in it?).  Those involved at the hard end of licence negotiations are dressed for the comfortable end of smart if they're sensible, since they don't know how long it will be before they get the chance to change them.

At the wrong end of the spectrum are the clients.  On the basis of "he who pays the piper calls the tune", many of them turn up looking as though they've taken their fashion cues from the Pied Piper. Or am I being unfair?

Tuesday 28 October 2014

Legal 500 or Famous Five? When the holiday option is best

Managing Intellectual Property publishes league tables for IP firms in different countries. Sole practitioners are unlikely to be mentioned. The more clients one has, the more likely it is that a number of clients will recommend one.  One practitioner is likely to have fewer clients than two -- and two are likely to have fewer clients than four or five.

A sole practitioner, no matter how effective he or she is, will be limited by the amount of work he or she can do. In addition to billable work, sole practitioners and partners in small firms will generally also spend time doing accounts, marketing and other tasks that are dealt with by dedicated staff in larger firms. Many sole practitioners do more billable work and earn better than junior partners with similar experience in a larger firm, but they still won't rank in the league tables.

In Israel, the International Business Directory, Dun & Bradstreet, ranks patent firms only by size. When they publish their annual rankings, most Israeli business papers base an article on their press release. The headline in the accompanying newspaper articles usually relates to leading firms. This means that the smaller firms, no matter how good they are, will never be mentioned and can't be leading firms (it also explains why fully or semi-retired staff members have their licences paid for by the firm so that they can play the numbers game, and why there is more than one patent attorney with Alzheimer’s that is still listed as practising to make up numbers).

I assume that Dun & Bradstreet rankings for IP firms in other countries are generated the same way and receive similar press coverage.

Established firms, including small ones, tend to work for a solid core of regular clients. One does, however, need constantly to try to bring in new clients, as existing clients do sometimes disappear. Sometimes they run out of cash. Sometimes they are taken over. Sometimes their patents all issue or are abandoned. It hardly matters why, but such clients cease to generate work and need to be replaced. In a recession, and the world seems to have been in one since about 2008, there is less work around. Existing clients often do less IP related work. New clients typically come in by recommendation, and I am not convinced that participating in international conferences and holding events necessarily works. However, I still attend conferences and hold events because it is fun.

I have a number of nice certificates showing that I have accumulated academic qualifications, and one stating that I am a licensed practitioner, and a new one each year showing that I pay my dues. However I don't have trophies and medals as a leading practitioner since directories rarely assess practitioners, but rather assess firms. I was, therefore delighted to be recognized as a Leading Practitioner by a UK based company, ACQ, that publishes a directory of leading practitioners in which I can take out a full colour advertisement for a small fee. I can also purchase a trophy with my name engraved on, or more than one (for office, conference room and mantelpiece).  It does seem a little self-indulgent to purchase such trophies and to pay for an advertisement in a magazine that no-one reads in order to leave it on one's coffee table in the waiting area. For the same money we could have a family holiday.

Are clients sufficiently gullible to be taken in by such trophies? Presumably. After all, the companies offering them have been around for a while. Someone buys their trophies. I did go into the ACQ website, and can see that there are patent firms that pay to advertise there.

Posted for Michael Factor by Jeremy

Sunday 26 October 2014

The new approach to correspondence with the EPO earns 5 stars

Forgive me if you are already up and away with the delights of the new case management system  (CMS) from the EPO but if not here he is a brief review from a tentative user.

In the past to file electronically with the EPO you needed their stand alone on line filing application. Now this was a brilliant piece of software which I have been using since last century. In the beginning it put paid to those days of sending paper in triplicate by post or worse still using a fax machine. It was instant and incredibly over the years has been allowing us to file more and more of our day to day correspondence with not just the EPO but also our national offices and WIPO. For solo practitioners it was the most wonderful gift and its server version meant that it provided a solution for even the largest practices. In its last hurrah it has just opened up the possibility of filing a demand for examination of a PCT application (which is not yet possible on CMS). Nevertheless the constant updates were a chore and it wasn't always easy to make corporate IT departments understand what you needed.

For some time the UK IPO has adopted web filing which allows us all, whether sole inventors, corporate departments or agents of whatever size to file new applications, other forms and responses using a secure web interface. Now the EPO has decided to follow suit.

For those of us with smart cards already the Case Management System seems the best option. However there is also a web filing option (WFF) that provides for instant registration and usability. Here is the guide for that ( a modest 29 pages).

The more sophisticated CMS option has a guide too but it is 207 pages so get comfortable. First you need to tell the EPO you want to use CMS. There is a web page for doing that. Once the support email has come through you can slot your card in its reader and attempt to go to the start page by clicking on the button on this web page (see picture to the right)
. At first it kept giving me a 404 error but clicking on the EPO logo in the top left (I'm not sure what is under the logo but its worth a try for any 404 errors you get ) was the clue for getting past that one. We are now up to version 1.9 and for the non-solo readership, the release notes suggest it is now possible for one registered user to register others in their organisation.

Having got in, it is fairly intuitive to get on and fill in forms. Its a nice thing that addresses and names you set up in Demo are available when you come to do real work so you can experiment with real data. Don't throw away the on line app just yet, but this is a simpler option for everything it does. You set up your default language in the Preferences option and away you go. I was slightly disconcerted not to see English is the amazing list of filing languages but "Same as Procedural Language" works just fine.

Your PDF files have to be well behaved and as with the app you and the document need to know the number of pages there are and if you have not accounted for them all it will tell you that overlaps are not allowed.

I have not managed to make the little eyeball viewer work happily yet. Maybe it wants my PC to have a tiff viewer (it doesn't) but then I was using Firefox and I think you are probably better off in Internet Explorer.

Despite that, I have managed one live filing that has moved along so I am pretty chuffed and you can probably do the same without having to read the 207 pages but its nice to know that it and the efficient are there to help.

Do share your experiences.

Friday 24 October 2014

Dealing with email tsunamis: any suggestions?

Don't dismiss this post as being entirely off-topic. It's about my perennial battle to cope with vast quantities of email that arrive every time I take a day off -- or even spend a few hours off-line when travelling by plane. I can easily receive over 200 emails a day and, in recent times, have frequently topped the 300 mark.

Intellectual property law is an area in which information-flooding is rife.  Apart from the fact that there are so many suppliers of information at local level -- publishers, conference and event managers, service suppliers, government departments and the like -- the global nature of IP protection and commercialisation means that we are always hearing from countries far afield, often countries with which our clients have little or no interest, whenever local law changes, offices close for public holidays, or recent commercial and litigious outcomes are reported. Then there are lists of fee-changes, both for office and private practice, solicitations, and lots more, The list is endless, or seems to be.

I'm sure that I'm not the only person in the world of IP who struggles to cope with incoming email and I was wondering whether readers of this blog -- most of whom probably don't have a secretary or assistant to screen their email before they get to it -- might have some useful algorithms, techniques or procedures for prioritising and processing larger quantities of incoming email than the eye can readily absorb and appreciate.  Suggestions, please!

Friday 17 October 2014

S for Service

I am horrified to recall that it is now a whole fortnight since the famous Congress of the Chartered
Institute of Patent Attorneys broke up. The final event was a dazzling introduction of the CIPA Strategic Plan. As you can see from the picture this has caused the need for much study. The debate on the day was perhaps a little handicapped by the fact that those attending the webcast and others, like me, who had arrived just for the public part of the Congress and a piece of stolen cake, did not have access to this paper publication at the time. It is slightly soft and silky (but at least it doesn't have a lightbulb like the newsletter).

It was heartening to discover that the complacency of the Council  in assuming that members would simply stay on board forever, despite the fact that that membership is completely unnecessary to remain regulated patent agent, had been exposed by our new (ish) chief executive Lee Mark Davies. He gave a great presentation to keep the Friday afternoon pack awaketo explain what the ideas were and why we needed them. Maybe he is motivated by the desire to get an award himself from the Associations Network which provides a support body for people in his position. Interestingly though that is free to join because CEOs of associations are very good buyers, whereas patent agents aren't.

There's a lot of good stuff packed into this leaflet. Some of it may even be achievable. Some like agreeing and publishing internally a comprehensive policy playbook, clearly isn't. What that simply means is that the present Council will say what its personal opinion is. This year's Council opposes grace periods for example but there are an awful lot of members who support them and now CIPA have to justify why they are out of line with a lot of other interests such as the IP Federation and the University's representative body

The main purpose of this post is to highlight the fact that there is no S for service. It seems to me that the S for service is about CIPA being a hub which can direct people to its members, whether that's identifying a firm with with expertise in your technology  or someone who can help in a litigation emergency pro bono. Somehow IPReg as custodian of the register seems to have got that job and they are not well suited to doing it. They are well suited to allow punters to check whether a particular identified person is or is not registered or whether they have a disciplinary black mark over them, but not to help them find one in the first place. The UK IPO does an excellent job in all its literature of saying "go to CIPA or ITMA if you need a relevant professional". For example you find the page about patenting your invention on the UK IPO web site, you are taken straight to CIPA where you will find a hopeful little block that says find a patent attorney. This doesn't give you a lot of options apart from geographical area. It will also tell you that Filemot doesn't exist either but don't let that worry you, nobody would search for that.

Are we providing sufficient service to the community at large with this very basic tool. Obviously all firms do their own marketing but the public still feels reassured if they find a rated professional from a trusted source. At the moment, we are leaving them to Google. Does this give us much S for status?

Wednesday 8 October 2014

WIPO go to Manchester to visit Sally Cooper

My thanks to WIPO and the IPO for coming to Manchester. WIPO in the persons of Mr Yo Takagi, Mr Victor Vazquez, Mr Michael Richardson and Ms Asta Valdimarsdottir, and the IPO in the persons of Mr Tom Walden, Dr Hazel Craven, Mr Mike Foley and Mr Gareth Woodman.

Though the formal title for the Seminar was “WIPO Services and Initiatives” we all know the real title was “WIPO – What (More) Can It Do For You ?”.

One thing WIPO certainly provided is a memory stick with 6.54 GB of free space - along (of course) with the 168 slides used in the course of the Seminar and much information besides.

Not wishing to spoil things for those who will be meeting WIPO / IPO in Glasgow tomorrow (and those who may soon benefit from in house seminars following from the London Seminar), there follow nine slides which were of interest to the writer (with reasons) :

(1) WIPO - History : It’s always good to be reminded that everything began in Paris in 1883 : did I miss the party in 2013 (celebrating 130 years) ?

(2) WIPO - Present Times : It’s also good to be know that WIPO isn’t a static organisation but one that is embracing challenge
3) United Kingdom – good news : from 3rd in a global index in 2013 to 2nd in a global index in 2014 has to be GOOD NEWS !
4) Patents : if I were a Patent Attorney there might be more about patents – but it’s good news for WIPO that the PCT market share (top part) is increasing

(5) and (6) Designs : If I were regularly involved in Design Registration there might be more about designs. As it is – pending the UK government going forward with joining the Hague Convention – it’s the case that a “User” can apply directly to WIPO (per (5)) and, as the UK is a Member State of the EU (the Top Filer per (6)), it would appear that filing at WIPO under the Hague Convention is already an option ! (though you can't tick the UK box yet and those you can tick are not as exciting as they hopefully soon will be)

(7) WIPO – Resources : Probably the part of the Seminar that had the greatest impact on me was the reminder of the many research tools now available on the website at (Really Sally its the so much more snappy )

(8) WIPO – Resources – Trade Marks : As a Trade Mark Attorney, it was good to be reminded in particular of the “ image “ search tool that can be found on the Global Brand Database

(9) WIPO – Alternative Dispute Resolution : This is clearly an important part of WIPO’s work (even if some of us have, to date, only encountered services offered by WIPO in the context of disputes about Domain Names). It’s perhaps trivial to end with this slide suggesting “Model Clauses” but – in the alternative – maybe taking the pain out of drafting will result in more persons / firms / companies / other entities remembering what WIPO can offer should a dispute arise ?
 Poof says the Duck I am glad you didn't post all 168! but for those who couldn't make it there is always the 24hour WIPO website