Trade Mark Bully - Claim Form shock - IP Pro Bono Scheme

Well maybe only as far as IPEC

It's a well-known myth that legal advice is unaffordable.

It's also  generally assumed that lawyers won't help you for free in any commercial matter.

This is now wrong with the launch of a new service today 17 October 2016 to provide free assistance to those who can't afford it in the UK intellectual property scene.

This post is not for the intellectual property professionals, it's for those people who need help but believe they can't afford it and are tempted to do nothing when they receive aggressive letters from lawyers about some issue of a name, unauthorised use of a photograph or design or, worse still, something that mentions the evil patent word.

The IP pro bono scheme was launched today by Sean Dennehey, Acting

Sean Dennehey

Chief Executive of the Intellectual Property Office. The service will not be provided by the IPO, who grant trademarks designs and patents and also provide mediation services and also operate a rather sterling phone helpline. The service providers will be fully qualified members of the Chartered Institute of Patent Attorneys, (who are providing the administration - good guys) the Chartered Institute of Trademark Attorneys or the Intellectual Property Lawyers Association

If you need help the first thing is to go to the new website http://www.ipprobono.org.uk/  download an application form and outline your problem. If you don't have access to a computer or scanning facitlites get to one of the PATLIB libraries for help.

It's never a great thing to be litigant in person, if you can get some professional assistance. For matters relating to intellectual property, particularly claims that are made in the Intellectual Property Enterprise Court any one of the above organisations can help you find paid advice. This scheme is for those who find themselves threatened or abused but don't have the resources to cope.


While the Daily Mail and others have highlighted the problems of County Court Judgements for debt, a default judgement in a trademark infringement matter can also result in a charging order on your house that means you can't sell it or other similar civil remedies. There are people in this position because they couldn't or did't get help. The purpose of this scheme is so that it doesn't happen again. Even when you find you are in the wrong, there are ways to minimise the pain and most IP owners would prefer those solutions rather than silence.

Updating UK Patent Rules

With so much emphasis on the Unified Patent Court and European patent with unitary effect or unitary patent if you prefer, administered by the mighty EPO, the humble UK national patent can

Baroness Neville-Rolfe champion of UK IPO

easily be forgotten. However, its importance, particularly to entrepreneurs looking for early grants and the inventors of those technologies shunned by the EPO is not to be underestimated. Any innovator who finds the prospect of €10,000 as the starting price for litigation and has been taken with the access ability of the Intellectual Property Enterprise Court should still be very very interested in the UK national patent.

The UK IPO has been doing a little tidying up and recently produced a consultation on proposed changes to the Patents Rules. Responses are sought by 22 April 2016.

There are a number of specific rule proposals but there is an open question (17)which invites any other proposals for rule changes or clarifications. There is a hint that you might want to consider the extensions of time rule but the question is not limited to that and if there are any other rules of bug you now is the time to say so that they can be included in the amending statutory instrument under construction.

The Patents Rules live here  But only in PDF downloadable format. Isn't it time they came in a nice HTML version for easier referencing.

Some of the proposals are very straightforward and it will be difficult for anybody to dissent from the idea that we should no longer have to file multiple copies of form 51 when appointing an agent or triplicate copies of international applications (does anybody really file international applications with the UK IPO in paper. It might even be time to make electronic filing compulsory what do you think, or are you still reliant on the fax machine. In cases of Internet meltdown and bearing in mind that large parts of the country have dire Internet connections, it may be a little too soon for that step to be compulsory but we should certainly be encouraging paper elimination.

The object of the rule changes is to benefit did businesses and individuals making use of the patent system (which naturally includes those at risk of being patent infringers)

Omnibus claims
The proposal is to discourage them- not by relying on clarity objections but by introducing a new rule prohibiting references to the description or drawings. I entirely agree with the ambition but I'm less certain that this is the way to do it. The scope of these claims is unclear. The reason that they refer to the description and drawings is to limit them to the embodiments and it may well be that for some inventors limiting their claim to the embodiment described is all they can afford. If the embodiment is described clearly and often it isn't, this might be an acceptable claim but a very narrow one. The really offensive part of an omnibus claim is the "substantially as herein described" phraseology not the reference to the drawings.  After all Article 69 says that every claim has to be interpreted by reference to the description and drawings.

Rewriting paragraph 14 .124 and .125 of the Manual of Patent Practice to reflect current case law might be the answer.

As to the transition I would be happy if no omnibus claim were allowed from now on but  the idea that it should apply to granted patents when the rule comes into force could be a very Draconian hit on some self filers who may find their patents no longer exist in any valid form despite payment of renewal fees. IPEC may well have to continue to construe those claims narrowly as they have done before.


Most applicants will also have a main claim so we could achieve the same effect by limiting the number of independent claims.The requirement for a statement of invention harks back to the need for the omnibus claim to be no broader than claim 1. I have always thought statements of invention were bad drafting practice and made patents more difficult for the lay reader to understand. The solution of the invention is defined by the appended claims does the job.

Photographs Q10 

The proposals include the possibility of photographs, but not CAD Drawings which might be shaded. Reproducibility is what it's about and it drawings can be reproduced it shouldn't matter whether they are in black-and-white colour or gray scale. However, line drawings are often likely to be the best choice.

I wonder what our illustrious professional body is going to say about these proposals

E- Filing at The Intellectual Property Enterprise Court and a plea for sensible fees

Electronic working with IPEC - wonderful I thought last November (Friday 13th) when I saw that a new Practice Direction had been issued to say that all Rolls Building Courts could be accessed electronically and not just by the fortunate few, such as myself, who have offices round the corner.

The scheme had been piloted through the Technology and Construction Court but I don't have friends who practise there. Wandering aimlessly round the Internet I discovered C-Track™ E-Filing, developed by Thomson Reuters Court Management Solutions. I wasn't at the time quite sure that was the thing but I registered anyway.  Fortunately now there is more information to help us on Judiciary.gov.uk website so start here. There is link to the Practice Direction and to the Home Page of CE-File which is the name for the new service. The Judiciary claim this puts them in the forefront of modern technology around the world - a bold claim indeed.

The CE-File home page contains a link to a USER GUIDE. If all else fails read the guide and wandering aimlessly in CE-File is not a rewarding experience, trust me, but the user guide is very straightforward. Unfortunately there doesn't seem to be a demo option so you can test drive without the stress of a live case. The system is available for Litigants in Person as well as Solicitors and Patent and Trademark Agents.

How are you going to pay the fees. Credit Card is an option here as is Fee Account with the Court Service. Now fees can be rather large and my business credit card doesn't go very high and a £10000 fee might be OK on your card but I don't have American Express so that won't do nicely.  Accordingly I explored the possibility of a Fee Account. Normally I pay fees with a debit card at the counter at the Rolls Building.

Here is the page on Justice for fee accounts. The link to the terms and conditions sends you here which provides an application form and a leaflet explaining the system but no ts & cs. I have emailed the designated address to ask for them since in this case I felt that I probably would Be considered to have read them when I tick the box to say that I had on the application form. As a consumer, of course, I blithely tick I have read terms and conditions boxes without doing so but in this case I'm acting in my professional capacity and I can't treat the court service the same way as I do Apple.

The application form for a fee account presented no particular difficulties and I hope that it will get more response than my request for such an account with the Foreign & Commonwealth Office. Fee accounts are available for a variety of types of organisations not just solicitors but as a patent or trademark agent you can say you are legal firm. If I ever see the terms and conditions I will let you know whether my application succeeds.

As a solo practitioner I nearly fell down at the requirement for a secondary contact. I've given them my next of kin. I'm not sure what he will do when he is contacted by her Majesty's Courts and Tribunal service.

The fee account service is a direct debiting system from your business account. Therefore, you can make sure there are sufficient assets to cover any ginormous fees. Even so, I had some doubts about what credit limit I should ask for. It's not very often I'm going to be issuing two claim forms a week, but even so, if you ask for a very large credit limit and have a fat finger moment you could make a serious dent/hole given with the level of fees that are now expected by the court service. It really is time that IPEC persuaded The Ministry of Justice that issuing a claim in IPEC should be subject to a reasonably circumscribed fee and that an appropriate proportion of any damages awarded should be paid back to the court. That way the court wouldn't suffer but the level of fees would not be a barrier to access of justice.

If you are a CE-File user please let us know your thoughts

FCO not ready to recognise Enterprise

FCO's  Hanslope Park

I have been defeated by a lowly civil servant. All my efforts since 2008 defending the validity of the community trademark and then enforcing it are as nought (not quite only nought if the defendant stays away which is quite useful).

Orders made by the Intellectual Property Enterprise Court are not recognised by the Foreign &Commonwealth Office.

Why does that matter? If you want to provide a document to an overseas lawyer he wants to know it's authentic. The time-honoured way of doing this is by means of a chain of trust. The Hague convention establishes what is called an Apostille and this is attached to verify the authenticity of the seal or signature. The seal or signature is what verifies the document.

Application of the apostille in England and Wales is controlled by the Foreign & Commonwealth Office. It is a responsible duty and they should discharge it with care. They discharge it in a remote part of the country (see picture above - a bleak and desolate spot to work so it may explain their bitterness) where the nearest civilisation is Milton Keynes.  The government website describes exactly how TO GET A DOCUMENT LEGALISED . The process is described with admirable clarity here. High court documents are specifically mentioned amongst those that the Foreign & Commonwealth Office will apostille directly. I would have preferred to hand deliver and collect the documents myself. What is the point of living in the centre of London if you can't do that? There is a premium service provided by the FCO. It didn't respond to my request to register. It didn't even bother to laugh in my face. Nevertheless there are businesses that are registered with them and eventually I paid one of those to take my document in, but I get ahead of myself.

Of course I had tried the way recommended on the website. This requires making the payment in advance; and filling in by hand an awkward form (after printing it out) including copying (very carefully) the 16 digit payment number from the screen and  and posting it all off. That was a waste of time. In due course they took the money and then refunded it less the postal charges and sent the papers back by snail mail so a week later I am no better off. The letter of rejection mutters about solicitors signatures and makes no sense in relation to a sealed document. Its standard letter No 2.  I ring up the helpline. It has very limited hours and a premium rate number (midday to 4pm Monday to Friday) and when I get through a very nice man says yes they've made a mistake and will I send an email. I send them an email. I send it again several times but no response not even a laugh in my face. The email address does not do delivery notifications either.

This is where I resort to the type of firm that is able to go to the Foreign & Commonwealth Office and cross their palms with silver. They procure an explanation from the great and mighty (This is the lowly civil servant. I'm feeling frustrated so it's ironic ). This Explanation is that they don't recognise the seal. It has a date in it. Apparently seals with dates in them are not OFFICIAL and cannot be verified. All IPEC seals have dates. Now you do get stamps from the court which are just to say when a document was handed in. These are usually square and black.  Now the FCO is clearly saying that this document is not what it says it is. Nevertheless, if a solicitor signs it they'll happily apostille it so I can perpetrate something they think they know is a deceit.






The Foreign & Commonwealth Office do attach their apostille to a document prepared by a notary public that suggests Filemot had told "Mr Jones" that this was a copy of a document. The FCO apostille of course is only verifying that the notary public's signature is authentic. Even in foreign parts it seems likely that anyone in authority will be less than convinced by this triple hearsay. It  sounds suspicious to me especially when it is attached to a document which very plainly is not a  copy at all and isn't as described by the notary public.

This leaves me telling the client that he better go to one of those clever international law firms that know how to do these things, because having survived an Alicante torpedo and much else this order is never going to get personally served on anyone overseas. Of course in England a seal (even with a date in it) is authentic and the order so sealed can be served in person without more ado. The IPEC will even enforce them and charging orders and bench warrants for recalcitrant parties are all possibilities if they live in Milton Keynes or thereabouts.

So there we have it end of road in Hanslope. 

Recommendations welcome.

Enterprise Court

His Honour Judge Hacon

Yesterday (7 October 2015) AIPPI organised a lecture given by the first and so far only Enterprise Judge, Judge Hacon  and I needed to write up a few notes, so here they are In case they are of use too. There were lots of other issues raised and stories related (including an in-depth history of the extremely enterprising litigation career of the now bankrupt patentee and fencing inventor, Mr Perry) but these were the points I wanted to recall.

Court Fees

 Since March court fees for money claims have gone up at a rate which is particularly punitive to IPEC clients and it is good to know that the judge is concerned about this and would welcome feedback. However, since, in the preceding 6 months to the end of September 2015 there have been 326 cases of which 220 are in the multitrack, it does not appear that the fee increase has had a devastating effect, though it would be interesting to know what values had been put on the new claim submitted after March.

The judge pointed out the extreme undesirability of saying that your damages were unquantifiable as this results in an automatic £10,000 fee. However, he saw no problem in quoting a relatively low value and then adjusting it when the actual value was more apparent. The increased fee would be payable at the time of adjustment and clearly making multiple adjustments was deprecated but the timing of the adjustment might well be problematic too. If a defendant has relied upon the value claimed, a late stage adjustment might be a shock. On the other hand if the defendant has deliberately suppressed the extent of his activities, he might not qualify for great deal of sympathy from the court.
The proposal to make no initial money claim was also mooted and it is in that context you might be leading the defendant up the garden path most, If you then seek an enquiry only after safely succeeding on liability.

Interim injunctions 

The judge was keen to stress that these are available in his court and that since he has both deputies and nominated High Court judges, a judge will always be found. The judge envisages that these will not be ex parte injunctions and that the parties will try themselves to agree an evidence timetable and speak to his clerk to fix a date for the substantive hearing.

Leeds

Would northern litigants please note that the judge is willing and indeed eager to sit in Leeds or other cities which have judge's lodgings with butlers and wine lists. Apparently the litigants whose case was to be heard in Leeds recently decided to settle their differences and the Judge's excursion to northern climes was cancelled.

Publication of small claims case summaries 

We have previously discussed on this blog the desirability of publishing more information about what goes on in the small claims track. Apparently a format for publishing case summaries possibly on the UK IPO website has been agreed but none has as yet emerged. Now that memory has been jogged, perhaps we will see progress.

Pro Bono

The judge encouraged us all to volunteer for the pro bono scheme which he indicated would require both case officers and lawyers willing to commit some pro bono hours. The idea was that the case officer would not provide legal advice but be someone who would be on the client's side and be responsible for finding advisers and possibly encouraging transfer to paid arrangements when appropriate. CIPA/ITMA members have already been encouraged to sign up but clearly the judge feels that law firms with allocations of agreed pro bono hours should be utilised too.

Enforcement

Failing to pay your IPEC costs order is considered  a serious omission by the judge and he is prepared to  grant applications for such a debtor to appear before him to discuss such a default. In one case, the debtor failed to appear and a bench warrant was issued. He was subsequently arrested by the police and brought to the court and the parties were able to agree a compromise and imprisonment proved to be unnecessary.

Money Money Money : Court Fees to be Enhanced Again

Are you still reeling from the rise in English civil court fees to £10,000 in March for unquantified damages claims. Flushed with election success, the fees are to be ENHANCED again. For full details you can see the consultation on the Justice site here

"Bundesarchiv B 145 Bild-F080597-0002, Bundesverfassungsgericht, Richterin Karin Graßhof" by Bundesarchiv, B 145 Bild-F080597-0002 / Reineke, Engelbert / CC-BY-SA. Licensed under CC BY-SA 3.0 de via Wikimedia Commons.

The fees for the Unified Patent Court have also been consulted on here . Responses on that consultation are due to be sent to the secretariat by 31 July you are running out of time if you want to comment. Details of how to comment are here . Since the UPC Has to cover the costs of setting up an entirely new pan-European court, it wasn't surprising to find that they wanted to set pretty high fees. We are expecting a quality and responsive service. We are expecting to be able to see documents and to be able to monitor cases online in a 21st-century way unlike our national court systems. All this is expensive. It may be so expensive that modest businesses with modest disputes cannot even begin to think about using it. This is something of a shame as the Intellectual Property Enterprise Court in the United Kingdom has shown that there are modest patent disputes that need access to justice. Many more are I understand litigated in Germany. Since it will clearly take some time for big Pharma to get comfortable with the UPC, it seemed to me that it would have been quite smart for them to take on some of these more modest cases to get the system moving efficiently. I'm suggesting that €11,000 is too much for a modest business on day 1 to start their claim - perhaps not a great deal too much.
However a €20,000 fee for a counterclaim for revocation is really unfair. It means any modestly sized defendant is denied what is usually their best defence. I went away from that consultation reconciled to the fact that I wouldn't be seeing any UPC work at all in my lifetime.

Now we come to the enhanced fees that are likely to be applicable in the Intellectual Property Enterprise Court.  On this occasion, the proposal is to lift the maximum fee from £10,000-£20,000. If there are any Russian oligarchs left wishing to litigate in London, then it's all well and good that they should pay. What I would like to see is a proper fee established for unquantified damages claims. Most intellectual property actions cannot be valued readily on day one. We need to recognise that in the fee structure and provide for an initial fee and a damages dependent court fee that is paid at the end of the day.

It would also be nice if the appropriate "other remedies" fee applicable in IPEC could be definitively set. At present whether you are charged the High Court rate or the County Court rate is purely at the whim of the counter attendant. The proposal is that those fees rise to £528 and £308 respectively. In my opinion that is actually a tad too low in IP cases where no other financial remedy is sought (but not too low if you are also paying £20,000 for unquantified damages). Given that in a typical trademark case the costs of pursuing damages are likely to be disproportionately greater than the damages ordered in cases which have been started early, not making a money claim is pragmatic and at present that is something of a bargain.


Application fees are also set to rise. The proposal is that £50 becomes 100 for uncontested applications and £155 becomes £255 if contested. The consultation document says that they do not anticipate that the increases will have any significant impact on demand. This is, of course, looking at civil proceedings across the board. In intellectual property cases, it might be a good idea to decrease the demand for general applications.

Hopefully the CIPA Litigation Committee and the Law Society IP committee  will be looking at preparing a response to draw attention to the IPEC issues.

IPEC Small Claims

The Walke Talkie from somewhere else

The UK Institute of Trade Mark Attorneys ITMA held its Annual Reception for members of the Bar yesterday. It was hosted in the offices of DWF in the Walkie-Talkie - that wonderful building on 20 Fenchurch Street which has a garden in the sky. We weren't in the garden, but we did get to enjoy the stunning views of the river, through glass so no photographs you have to instruct DWF.

The event was favoured by the attendance of at least two of the District Judges who "man" the small claims track of IPEC. The guide for that court gives lots of information  and most of the profession are clear that it works pretty well for photographers who find that their work has been  misappropriated. In those cases we know (I think) that damages around the £400 - £500 mark are likely to be awarded. I was not alone in commenting that the lack of any published judgements or even less formal information on how trade mark matters were dealt with gave rise to some difficulties in advising clients  whether to choose, transfer or remain there.  While many judgments are ex tempore and don't lend themselves to reporting, there are some reserved judgments that have not made it  into the public gaze because a policy decision has been made that they should not be published on BAILII. This is unfortunate because it keeps us in the dark.

One of my concerns is that with a £10,000 limit on damages  and with no intention of conducting the same type of inquiry that is conducted in the multi-track or High Court, it might be easy to assume that damages reach that limit and order it automatically. Nice for claimants, but less than satisfactory for impecunious defendants,  for whom that sum  may be unattainable.

It seems that many judgements in the small claims track are by default, which in itself is unsatisfactory and suggests that defendants are not finding access to affordable advice.  Even if you have infringed intellectual property, it is still worthwhile admitting or defending and attending to ensure that your case is dealt with fairly. So far ITMA has not been successful in setting up a pro bono scheme and intellectual property defendants are not finding much assistance elsewhere. Often the difficulty is that it's not a case of not being able to afford legal advice, it's not being able to find legal advice that is affordable.

It was great to meet the small claims track judges and hear a little about how they operate. This in itself gives me much more confidence than I had before. With the multi-track so busy, it is good to know that there is capacity on the small claims track for things to come on early. They even promise to read their emails, even if due to the universal lack of support staff that seems to handicap our  increasingly expensive court system,  its less likely that the phones will be answered.  Some difficulties seem to arise when claims are issued, which is in the Rolls Building, as it is necessary to get a small claims track number for the case to go straight to their administration.

Hopefully some  small claims track trademark decisions might find the light of day somewhere. These are public documents.  It seems odd that we should have to consider freedom of information requests in order to find out how justice is delivered. This information should be readily available to those who need recourse to intellectual property justice.  Maybe this is something that the IPO can help us with. After all, every trade mark opposition  decision is published, even though they are also non-precedental.

IPREG and its Ambitions

Rolls Building
the access door to UK patent justice

IPReg, the regulator of patent and trademark attorneys has recently published its proposed budget and  business plan for 2015. The regulated tend to think of IPReg as the maker of rules of conduct and the provider of discipline. However, its true role is quite different from that. Perhaps its primary purpose is to protect consumers, which includes micro-businesses, against the wiles of us nasty professionals. Nevertheless, we are funding it, so it is worth while understanding what we are funding them to do and whether it is in parallel, diverges from or is directly in conflict with our interests as professionals.

'Promoting and maintaining adherence to the Professional Principles' is is right at the bottom of the list of IPReg's objectives in their Plan.  One of the interesting ones higher up is 'Improving access to Justice'. I am all in favour of a improving access to justice. What I am not too sure of is whether the best way for me to do that is by paying IPReg to do research. They tell me with priority 2 they are going to commission and review research on uregulated intellectual property legal services and monitor the small claims track of the intellectual property enterprise court.

Personally, I would love to monitor the small claims track of the intellectual property enterprise court. I can do so by spending time in the Rolls Building and paying £7 to borrow the book listing claims issued for a few minutes. That's about as far as a member of the public can go. I hope IPReg have greater access.  In reality, the only way their small organisation which the chairman boasts in his 24 July letter is staffed entirely by part-timers, is to commission some external profit making organisation to do this. Universities are included even if they need the profit to maintain their over ostentatious buildings and other activities that don't result in a dividend to shareholders. Frankly how does financing research help and what can IPReg do with the evidence. We need to have a better understanding of where they are going with this and how it will impact on/benefit the regulated or the consumer.

The first limb of this research might be welcomed by the regulated profession as it may propvide detailed evidence of the competitive environment in which we live and work. Unfortunately, the huge growth in unregulated services is often to the benefit of the consumer. See for example Renewals Desk which recently attracted a lot of interest over on the IPKat blog. We can also expect more well qualified people to move away from the regulated profession simply to keep their own costs down. That chairman's letter promises us that our cost of regulation is about to go up. He says it compares favourably with that charged by other regulators such as the SRA (details of their proposed  fees for 2014-15 are here). The difficulty is that in order to provide access to justice I need to be regulated by both and the market I see is mainly for pro bono work.

Turning to the IPEC small claims track (which IPReg think is important enough to be a priority over IPEC as a whole or even the UPC which has been taking up CIPA's time at the moment), it is designed to allow trademark and copyright owners to get do it yourself justice without the need for expensive regulated advice. Since a good part of IPReg's work is regulation of patent attorneys and infringement of patents and registered designs is outside the scope of the small claims track, it is difficult to see why this minority area is a priority for IPReg. Moreover, is there a real need for consumers to have access to justice for trademark infringement?. No there is not. Only traders have trademarks. It's possible that a number of micro-businesses also guarded by the regulators are being bullied by brand owners on the small claims track and the possibility that this is doing injustice is certainly worthy of research and investigation but please not out of IPReg fees. The IPO (who already have IPEC research under way) and the Ministry of Justice are more appropriate entities to deal with such matters.

By the way there is one of those Consultation things on the IPReg budget and buiness plas so another task for ITMA and CIPA to get to grips with and we can see what CIPA did say after 18 September as they are now publishing consultation responses in one easy to find place.

Dear President of the Chartered Institute of Patent Attorneys

Andrea Brewster CIPA VP and Catriona Hammer, President

After the excitement of the CIPA elections, it is time to learn what we can expect of the new Presidency.

Our new President works full time for a large  corporate  GE Healthcare  so the three priorities she highlights in her address (printed in the CIPA Journal for May which may eventually appear online here but is briefly noted now on her CIPA  profile) are influenced by that personal agenda. They are:

• Developing best practises in areas such as governance, compliance and diversity (the Duck says this is so not relevant to a Solo practitioner. I can't do diversity and I hardly need a policy to demonstrate that I don't take bribes. I do happily sign all the documents that say I won't buy coffee for anyone employed by a compliant client. These seem to be required by larger clients but I don't see that they do much for the profession.)
• Policy contributions on the UPC and Rules of Procedure (the Duck comments that elsewhere in the Journal  the Chief Executive reports criticism by Mr Justice Birss of the profession's apathy and subdued response to the Rules. When the rules of representation were being discussed I was unable to influence CIPA to back my proposal as they prefer to aim for the hopeless case of having all CIPA Fellows grandfathered in, so frankly for most CIPA Fellows the UPC is remote and a threat rather than an opportunity and I need to remain a Solicitor to participate)
• Education (the Duck says that would be good if it were focused on competence. I did ask my Institute to offer assistance in advocacy skills development but the proposal has been rejected in a silent way. CIPA have just announced a re-run course for September to encourage just 30 delegates to participate in a case study course at luxurious Missenden Abbey for over £1k: price to be announced on Monday. One thing that I learned on my Higher Rights course was that the case study is a tool and not the main focus. If you have a study that relates to your area of expertise, delegates retire to their comfort zone and spend time considering the specific facts of the study in the light of their expertise in the law of added subject matter or obviousness and fail to focus on the litigation skills. )

So what does the membership need from the Institute? Firstly it needs the Council to focus on representing rather than preaching. Ensuring competence is vital but so is ensuring that the Profession is delivering what the market needs. At the moment my perception is that the profession serves the needs of the large corporate fairly well (well that's the profitable bit) but we are leaving the access to IP awareness to the UK IPO - who are doing a sterling job.

To that end I would like to see tools developed to allow members to test their competence in core areas with a view to helping us work on competence. As a Solo practitioner it is difficult to know whether you are as up to speed on claim drafting or EPO rules of procedure, CPR as as you need to be. In my experience we all have to be very self-confident as our larger colleagues seeking work from our clients are all too willing to allege incompetence. Nevertheless keeping up to date with practice is vital. What we don't want is someone to tell us about individual cases. We can read. What we need is analysis and extraction of the relevant lessons that can be put into practice. If the Institute does Education well it would be worth it and the rest would follow. It should not be in third place.

Enough of my bitter wanderings. What do you want from your Institute.  Let them hear it, please

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.