York: Legal Research and Market Research

The Station from the Great Wall of York

As our generous host, Eileen Morrow has already reported, there was an all too infrequent gathering of SOLO IP lawyers yesterday in York. The excuse was an excellent training session on WESTLAW IP given by Paul Mullally. He showed us how to find the content we needed to argue our cases before the EPO or in the UK, how to get to use their highly efficient Current Awareness that finds stuff behind the Times pay wall and from all those sources we don't have time to check. This is all accessible and affordable due to our special subscription but you need to join at this time of year (before December) so get in touch quickly to be as smart as biglaw.

There were lots of goodies from The Yorkshire Food Company to keep the conversation flowing. A few highlights:

• Will we be able to get more disputes settled in the Patents County Court with its new procedure exciting new judge and costs cap. Does that cap apply to existing cases. We could not see why it should not or at least for steps undertaken after 1 October 2010. Discovery before that could be arguable. What do you think?
• Open Innovation and Innovation by Brainstorming. How can maverick IP lawyers solve the problems.
• The miserable number of European Patent Applications emerging from Yorkshire companies (200 pa was mooted). 
• Why do German entrepreneurs see greater value in patents than UK business
• Getting messages across to clients in blogs and press releases
• Using Software as a Service - I need a link here for the time recording and billing iPhone app
• Charging and the need to record time even if the bills are all fixed fees agreed in advance
• CPD collecting - did a plug here for Ipso Jure which has excellent patent coverage and will give you quality points and notes for a modest annual subscription. Contact Peter to sign up

Homeward bound

and the sun shone outside and we were all impressed with the Yorsolicitor office and hope that lots of bio science entrepreneurs will realise what an excellent resource is there to guide them economically and efficiently and with the wisdom, initiative and experience which is the hallmark of the SOLO IP lawyer.

York and Westlaw 20th September 2010 with some SOLO networking

York Station from Tim Green's Flickr stream

YorSolicitor has kindly agreed to host a training session in the Boardroom of her offices at 105 The Mount, York on Monday 20 September.

Your WESTLAW IP training will start at 2pm but for those who fancy a gossip and a bite to eat we will be convening at 12:30 to set the IP world to rights. For details of our subscription scheme see my earlier post. If you would like to join in please email to check there is room.

I will be coming up from London, which explains why I have included this picture of York Railway Station. Apparently it has free wifi throughout. How many businesses are running in the station I wonder. 

Come along and let us off some steam, share some ideas on everything from IT support to Regulation, the new IP Practice Direction to the foibles and delights available at OHIM and maybe a small digression on shape trademarks after the Lego judgement expected on the 14th.

See you there!

Case Law and IP Commentary: Searching for the Law

This morning I had to check out some cases on tactile trademarks. Since I have a Westlaw UK IP subscription, that was not a problem for me. Do you want one too?

The subscription is available to a solo solicitor, patent or trademark attorney or legal consultant but not a practising barrister. Its OK if you employ some support staff or even work with a partner but if the subscriber has more than 3 fee earning employees its not solo.

We are a very friendly group and are hoping to organise a WEBEX training session so our Westlaw representative can show you how to get the most our of the service and get just as much enjoyment from leaving through Kerly or the CIPA Black Book online as you do from making a trip to the library.  

I have been using Westlaw on my iPad - very satisfactory. Great excuse to buy yourself one.

Take the Train to Westlaw Training this November

Free training on the Westlaw IP platform for SOLO practitioners will take place at the Thomson Reuters Towers at 100 Avenue Road Swiss Cottage.

More information to follow but places will be limited so expressions of interest please.

Nothing like a Good Argument

However well you know the law, a skeleton argument in a trademark opposition looks a bit naked without some authority. Sometimes of course, you need to check your facts and the way the wind is blowing on a patentability issue. Therefore, even for the solo practitioner having access to a legal library is important.

Free resources are always best and I have just discovered some excellent English law stuff that is appearing on the website of Insite Law Magazine. Particularly valuable are the Contract materials, because they are not well covered in other IP-focused resources.

For those of you who are subscribed to our Westlaw IP package, we have a renewal coming up in November so I am looking for any feedback from users. The subscription is for UK-based sole practitioner's (sorry not counsel) and currently includes books (including the CIPA Black Book) cases and magazines on UK and European IP law. If there are other resources on http://www.westlaw.co.uk/cases/index.shtm or http://www.lawtel.com/ that you are prepared to PAY for let me know and we will see what can be negotiated. Having a professional structured interface to access legal materials does represent a significant improvement over bare Internet access to cases.

However for the truly credit- crunched here are some more favourite FREE links

BAILII British and Irish Legal Information Institute decisions of English courts and Nominet
CURIA European Court of Justice and Court of First Instance cases
EPO EPO Board of Appeal Decisions database

Save the Date- Thursday 26 February 2009 5pm

The next SOLO group meeting will take place in the Rotunda room of the old patent office in London pictured to the right (the Rotunda is at the top of the stairs). The street address is 25 Southampton buildings and the nearest tube station is Chancery Lane.
The main attraction is a presentation from company name adjudicator Judi Pike - famous for having the honour of deciding the first case before the Company Names Tribunal. For those who want to do some research on why Coke Cola Ltd has now become 0651 9140 Ltd, I have loaded the good bits of the file into our Google Group. We look forward to a highly interactive discussion.

However, the meeting will begin with a networking session at which you will be able to find out more about

• Westlaw IP - our representatives Shakira Ali has agreed to come


• Transglobal Payment Solutions Ian Wheeler will be on hand to explain the delights of paying and receiving foreign currency


• Manged and Virtual office services offered by Executive Offices who now run the old patent office building


• MARCO - IP management software

What's more the meeting is free to attend. Please email me to ensure you get a cup of tea. The meeting will adjourn to a local hostelry to continue the debate with a little help from our Transglobal Sponsor. Be there

Subscription pricing, solo practitioners and the current crisis

Following on from the theme of the previous post, I was undecided as to whether to be surprised by the magnitude of Westlaw's 36.66% subscription price-hike for the SOLO IP group or to say that I'd been expecting it all along, on the basis that the original deal for solo practitioners was a honey trap.

Left: the small subscriber in the credit crunch -- not waving, but drowning ...

However, whether Westlaw is prudently seeking to maximise the value of its vast and vital database or whether it is cynically exploiting the segment of the IP community that is least able to defend itself, one thing is probable: Westlaw's pricing policy is not made on the spur of the moment and is the result of a lengthy process that involves a complex interplay of factors that do not concern members of the SOLO fraternity, such as overheads, marketing strategy and sales bonuses, as well as the one thing that obviously concerns us all -- how much the service costs.

My guess is that the process leading to the 36.66% price hike therefore commenced a long time before the current economic crisis and therefore has not taken it into account. If this is right, Westlaw -- and organisation not famed for its spontaneity of decision-making -- should be urged to think again before it asks what might become of small practitioners as a whole during the coming year, including not just the SOLO IP group but sole and small practitioners throughout the legal professions. With smaller client bases, many sole practitioners are extremely dependent on just one or two larger clients and, if these go to the wall, the practitioner may go under too. Sole practitioners are already faced with soaring insurance premiums and an inconveniently invasive regulatory regime; for many there is no cost-saving option in reducing staff levels since there is no-one to lay off. Westlaw and its competitors should think twice before raising subscription levels so sharply, or they may be snuffing out the precious seeds of profitable subscriptions in the future.

Westlaw Inflation

The elite group of seventeen SOLO Westlaw IP subscribers have been receiving invitations to renew their subscriptions commenced last year. Now the Westlaw model is that they add new material to their databases each year so in principle the product becomes more valuable. There is also the question of entry level discounts so that a certain upward spiral is to be expected.
At 36.66% I fear some of you may be contemplating not renewing, which allows them to say that the reduced numbers justify the decision to increase the rate for the remainder. The drop out rate for law firm subscribers who have bought 17 seats is probably quite low so we are a special case.

What are we getting with Westlaw IP - access to some of the best IP books on the shelf - The CIPA black book, Kerly on Trademarks and Copinger are the ones I use most in my practice. We also get case law, which is up to date and includes EPO case law but not general English law which can be frustrating when dealing with a contract points, IP statutes including European material in updated form and a selection of journals including EIPR as well as Current Awareness. It is a very valuable library but even so when you are a SOLO practitioner the occassions for use mean the books stay on the shelve from time to time.

For those of you who weren't in on the recruitment campaign last year and are interested in subscribing at a decent rate even after inflation do get in touch. Sorry if you are a barrister or in a larger law firm or based overseas. If we increase the group size then we have greater negotiating power to flatten the spiral.

Because the absolute level of the subscription is confidential please restrict comments to the percentage increase you would bear to renew. Personally I will renew but I think if the group stays the same size we should be allowed to renew at a 20% increase instead of this rate. What do you think?

Reflections of LexisNexis SOLO Meeting at Olswang

A group is not a community unless it meets face to face. The nice picture by Phisica illustrates that a mirror may provide instant gratification for a child. But it's not enough for a solo IP practitioner.

On Wednesday evening Jeremy Phillips kindly hosted us at Olswang's offices and a select band of solo IP practitioners could be observed vaulting over boardroom tables and large leather chairs to get to talk to one another. The presentation for the evening was by Lexis Nexis and this had brought out many practitioners who practice on the softer side of IP. There was a diverse range of experience both of the law and practice alone. We had competition on the night from an IPI presentation at which the CEO of the UK Intellectual Property Office, Ian Fletcher was speaking on the future of IP, which sadly meant that some of our agency-focused members had defected to that, even though they did have to pay £50.

The Lexis Nexis team told us about their four pillars of activity deemed to provide all the IT tools that any practice of any size could ever want. Most of the audience were familiar with the case law research tools and had, perhaps like myself experienced training sessions on the use of the user interface. It's that interface and its ease of use rather than the data that provides a competitive advantage to companies like Lexis Nexis and Westlaw. However, neither outfit seems to have access to all the resources which can be frustrating for those who cannot afford to learn to use two interfaces let alone pay for them. Jeremy Phillips has already started a debate on this on the IPKat.



The team also introduced the client development and practice management tools and spent some time explaining the suite of patent research and drafting tools, which were of particular interest to me. These are products that have been primarily aimed at the US market, which is far more sophisticated in their business models, and it will be interesting to see how the rather more fragmented and parsimonious UK patent agency world regards them. Once we have tried them out look out for more on this subject.



It surprised me that several people expressed an interest in precedents especially as last year only one solo member took up the offer of a trial subscription to the Lawtel product. Let me know if you're still interested. Meanwhile Peter Groves - the famous IP runner, volunteered to start contributing to our blog and it occurred to us that we could use our GoogleGroups page to load documents that we were prepared to share. No warranties, no promises and no liabilities of course - we are all lawyers and responsible for our own work product. This page is only accessible to members of the group which you can join by using the link on the left to receive postings by e-mail.

Another subject of debate both during the meeting and at the Bung Hole afterwards was exchanging recommendations to overseas lawyers. Between us we certainly have a wealth of knowledge which mostly we would be delighted to share. While the group has been in existence I have certainly put quite a number of members in touch with each other and made some good connections that are very helpful in my own practice. Perhaps we now need to move to a more sophisticated solution for exchanging references. Any ideas? However, good conversation over a glass of wine is often an excellent way to build up a working relationship and we will certainly be arranging more meetings in the future.

As regards new meetings, the credit crunch seems to have made people slightly more relucant to offer me free rooms. A warm dry space with chairs and access to basic refreshments is all that is needed and you get masses of publicity for your generosity. So once again thanks to Olswang for hosting this meeting. As they probably now have the sole remaining UK legal patent prosecution team, I do hope Lexis Nexis made a sale there.