UK IP practitioners: this is what you say you are

The mirror may lie, but you can always believe
a good professional survey :-)

Last month SOLO IP encouraged readers to participate in a survey undertaken by Fellows & Associates. The findings -- which are about as current as you can hope to find -- can now be read in "Report of the 2012 salary survey of the IP profession in the UK" here.

The results -- culled from replies from 308 respondents -- are quite fascinating since they deal with not just pay but matters such as areas of professional expertise, geographical location and willingness to move to fresh employment, qualifications held, age and job title. With disarming and commendable honesty, the survey outlines methodology and the identification of weaknesses which, it is hoped, will be addressed when next this survey is conducted.

As it is, the data gathered here will provide not merely food for thought but actual data which will doubtless influence prospective employers when deciding what to offer future staff -- and also IP practitioners who are wondering what to expect when trading the flexibility and relative freedom of solo practice for the security of a career with a company or firm, or vice versa.

The Never-ending Story: getting paid by a reluctant client

It's not yet on the BAILII database, but a two-man Court of Appeal for England and Wales (Lords Justices Longmore and Lewison) handed down its decision yesterday in Forrester Ketley & Co v David Brent.


Although readers of this blog would have been born when these two contestants first locked horns, many would still have been at junior school.  Litigation commenced in 1993, after Brent failed to pay Forrester Ketley's fees and expenses in respect of patent-related work.  The trial judges who heard the dispute were, at various times, Jacob J, Laddie J and Morgan J; the dispute has been been to the Court of Appeal before, in 2001 (here) and twice again in 2005 (here and here).

It seems inconceivable that, 18 years after the commencement of litigation and therefore probably rather longer since work was done and expenses were incurred by the practice, litigation should still be carrying on.

This blogger has often heard practitioners talk of the problems of collecting fees from a client who is determined not to pay them. His impression is that the hassle and cost involved do not generally justify the option of suing.  If a well-established and resourced firm such as Forrester Ketley has to fight so persistently to obtain expenses, what hope is there for sole and small practitioners?

This blog would be interested to receive readers' experiences of dealing with payment issues.

Restrictive Covenants and Leaving with a Client Following

The dire expense of litigating any restrictive covenant means that there is very little case law on the topic, so we must be grateful to the Financial Services sector and Towry and Raymond James Investment Services for giving Mrs Justice Cox the opportunity to produce a detailed judgement about the interpretation of a non-solicitation covenant on 14 February 2012. The judgement is as long as a decent novella and has more than enough human interest for one- all that it lacks is phone hacking (they only had the mobile phone bills - the recordings would have been to die for).

The case deals with a non-solicitation clause. There was no non-dealing/non-acting clause. You will probably find one of those in your law firm employment contract/partnership agreement so you may not find this case as helpful as it might otherwise be, especially as the judge says, albeit obiter in paragraph 383, that these may still be reasonable.

There is not a lot of law in the decision, and the Honorable Mrs Cox deals with it briefly, mainly relying on the text books and concludes:

"In my judgment a contractual, non-solicitation clause of the kind in this case means that ex-employees must not directly or indirectly request, persuade or encourage clients of their former employer to transfer their business to their new employer. Employers are entitled to prevent ex-employees from exerting influence of this kind over their clients. The question in this case is therefore whether Towry has demonstrated to the civil standard on all the evidence that an individual Defendant's communications with Towry's clients, as they became, contained a material element of persuasion, with a view to gaining the business of those clients. Whether there has been persuasion or encouragement will depend, in each case, on all the circumstances. Determination of this issue is clearly fact specific".(paragraph 440 - my emphasis)

It was accepted that solicitation and canvassing were the same thing (paragraph 434).
The other important point to note is that the burden of proof to the civil standard lay firmly with Towry and the stories show that even with cross-examination they could not get that evidence before the Judge. 
The value of this judgement to those in the real world it gives us the facts and story line for each of the  individual defendants.

In this case the leavers were not motivated by personal greed - their original employer Edward Jones had failed to make its US model work in the UK and sold out in financial difficulties to Towry, so their employees were being ported across with new contracts that did contain a non-dealing clause (as well as many other changes to their working practices and environment) and some chose to go to Raymond James after resigning and/or having their employment terminated when they refused the new terms. The covenant issue loomed large from the beginning and all parties had taken advice. As it transpires that initial advice was worthwhile. 

Since the clients all knew there was a hiatus, it is not surprising that many contacted their former advisers without being contacted first. Google Ads from other advisers are still suggesting that clients transfer away from Towry.

The evidence of what was done after the former clients had made contact and expressed a desire to transfer was not taken into account as solicitation. See for example:

"Making particular recommendations, explaining fees and costs, or giving information or advice as to how to give effect to their decision to transfer and move forward, after those clients had already made their decision to stay with Mr Bennett and to do what was necessary to bring that about, does not in my judgment evidence solicitation." (paragraph 635)

Mr Chandler's script for talking to clients before he left was from  Russell Jones & Walker and he told them he could not say that he would definitely stay with Towry because he did not yet know enough about their investment proposition. He also stressed that he had restrictive covenants, which he took very seriously, and that, if he did leave, he would be prohibited from contacting them. He said nothing to suggest that clients should call him if he left. 

It is likely that the judge was much influenced by the evidence of the individuals who said they had delete, removed or disposed of client contact details and waited for their clients to contact them. It seems that they kept their mobile phone numbers. It was clear that the clients would have had little difficulty finding and contacting their former advisers as they were mainly living in the same local communities so no Internet social networks were required. The clients also had good factual reasons to transfer their work away from Towry so there was no need for the advisers to exercise any persuasion on them. They had made their decisions before they went through the new client care procedures prescribed by their regulator.

Any case is limited by its facts, but the stories here show the virtues of having good client relationships and your own mobile phone number. If your clients contact you and demand service you can talk to them if you have no non-dealing covenant. Otherwise you are sitting it out, unless the clients have the wits to demand your former employer release them and brook no denial. It is pretty sad that employers demand such covenants but equally they have a business to run and sustain. Here the loss of business was on such a large scale that Towry must have felt obliged to try and recover their losses on the acquisition.

I don't know whether there will be an appeal. It seems unlikely that the evaluation of the evidence by the judge can be changed.  For more information read the judgement.

Getting the most from your INTA membership in Washington

As the deadline 17 February 2012 for the early bird registration for the INTA annual meeting in Washington approaches all the currency speculators amongst you will be wondering whether to invest now in the $970 registration fee if you are a member or $1495 if you are not as against the on-site registration cost of $1495/$1995.  INTA  means the International Trademark Association, so all pure patent practitioners can zone out now. Now that INTA have introduced a solo membership fee of just $425 it does make sense to become a member.

Attending the INTA annual meeting  will give you a bird's eye view of the entire global trademark   profession in all its glory. I don't just mean by being able to overlook the exhibition as my snap above from the Boston meeting two years ago shows.  Attendance does, however, mean travel and accommodation costs that need to be justified. There are plenty of CPD points. Many old hands will proudly say that they never attend any of the sessions.  This is a waste. In the past many sessions have been poor quality or badly prepared. Why anyone  with such an international stage would not make the best effort to provide a genuine educational experience, I don't know but it does seem to have been the case. This year I hope INTA will have all presenters on their top form.

Networking is the obvious objective.   This is hard work and needs preparation.  Fix up some meetings in advance but best of all prepare some conversational gambits. It is not, repeat not, a good idea to ask when the person you have just met is going home. Nothing is more calculated to show a lack of empathy and a desire to move on.  Nevertheless you will probably be saying it yourself  unless you school yourself with some debating topics that allow your new friend to show off a little of their own trademark knowledge or lack of it.  

Being on a committee is considered by many to be a useful perk of membership. This is something of a lottery, but a good committee will get you working together with a random group of other members and an excellent opportunity to get to know them better. Getting a late seat is a bit difficult but a new member can ask.

As a member, you are also entitled to join a social network  MY POWERFUL NETWORK which hasn't quite taken off yet.  Hopefully, as people prepare for the meeting, some of the discussions may get livelier. 

Receptions are the lifeblood of the annual meeting.   As a common member you only get invited to the welcome reception and the last night (but you cannot expect to do much networking there -  though if you make some friends you may be able to consolidate relationships).    

Be wary of those who boast that they have been to 6 receptions a night. There is no point.   One good quality invitation will do. I am hoping that there will be a Meet the Bloggers reception as that is one of the best quality ones you could ever hope for as all Bloggers are by definition top people.

The Terrors of Taxonomy

Order in all things -
these are breakfast cereals in class 30
everyone will accept that

The OHIM British Day hosted at the UK IPO yesterday is usually an opportunity both to hear the latest on the office procedures and IT tools and give our feedback on usability. This year it was not. Instead we did find out about several of the Co-Operation fund projects and in particular received a very enthusiastic presentation from Ms. Inge Buffolo. She waxed lyrical in particular about the work that was being done on the classification tools and creating a common database. She is the Project Manager and as an engineer clearly devoted to the idea of putting the entire classification into a neatly ordered structure so no business man need ever say what his goods and services are in his own words ever again.
The aspect that worries me about this is that trademarks are directed at people, ordinary business people who may get sent registration certificates and be told to stop infringing. These are users too. It may well be that the Advocate General in the IP Translator opinion in Case C 307/10 called such users *economic operators* when he said

65. The second objective is to enable economic operators to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties.

At the coalface of trademark practice it really matters. Recently it was suggested to me that expert evidence would be needed to determine whether a web based application was within the WIPO standard terms in class 42. He meant it. He was confused. Similarly a start up filed its own application by searching software in the OHIM efiling tool and ticking select all. That seems a sensible option when you want to cover software. No, it results in along and chaotic specification and no clarity at all for anyone. However such a specification can be translated at no cost into all official languages. Yes they were a start-up and they were programmers. Since the irresponsible system permits them to protect all manner of software, that's what they wanted but it would have been better had they written just software and overridden the dire warning signs.

The other worrying aspect about this taxonomy is that it is hierarchical and each broad term is supposed to cover all beneath. Does this mean that judges and users are going to have to consult the taxonomy to see what the certificate protects. This flies in the face of good sense however accessible the taxonomy may be.

Acceptable indications are good and work great for breakfast cereals but we must not get carried away into thinking that all goods and services are best described by reference to remote and abstract terms that mean little to the ordinary person.

Fortunately Richard Ashmead was present and in good health.

Did you ever wonder how you compare with the 'average' IP pro?

Readers may not be aware that there is a UK patent and trade mark attorney salary survey floating around right now. Organised by some fellows called Fellows and Associates, the survey is hosted by SurveyMonkey and you can access it here.  It appears to take the same amount of time to complete whether you are earning a fortune or struggling by on a pittance -- and the closing date for completing it is 7 February.

This survey will provide some handy first-hand information concerning the UK profession which, if nothing else, will give the professions some idea as to how much (or little) is being earned, how far people are prepared to move in search of a position, what their age-range and qualifications look like. Do give it a whirl!

The ABS arrives at last..or does it

In this structure in Serjeant' Inn, I once worked
before it took on this alternative form

The Ministry of Justice marked the entry into business of the Solicitor's Regulation Authority as an ABS regulator on 3 January 2012, with an inspirational  press release . Amongst other good and proper things, the Minister suggests

"Customers will find legal services more accessible, providing a much more competitive and efficient service."

 It is unlikely that many sole practitioners will be transforming themselves into ABS with SRA regulation. Although the SRA team reports that they are ready and waiting, it looks as if the customers may have to wait at least another six months before they can go knocking for real services onto an ABS door, as that is how long it is going to take the SRA to make a decision on your application ( if they don't decide to extend the time to 9 months).  Should you be interested in applying  this is the link you need along with at least £2000 for the initial fee to get your application looked at.

The awesome regulatory burden is likely to deter existing law firms who merely want to improve and modernise their management structures. The Lawyer magazine reports that the insurance company Admiral might constitute itself as an ABS as a workaround to recover some profits to replace those lost when the referral fee ban was introduced. Frankly, this probably wasn't what the Ministry of Justice had in mind, when they began this well-intentioned initiative to bring modern management practice into the legal world by abolishing the rule that only lawyers can manage lawyers.

Across the Atlantic, I was amazed by this piece in which the IBM Gen Counsel Robert Weber rails against the possibility of such structures being introduced into the US market. In his view investment isn't needed because there already exists global law firms, who are market leaders without having needed external investment. I am sure that his law firm suppliers won't mind the barriers to new entrants remaining high.

IPReg is already applying to the Legal Services Board to become an ABS regulator in its own right and it is likely that any IP practice or new business support firm offering low-cost IP business advice that Hargreaves wants to see (see my earlier post here) will prefer to use that regulator.  Incidentally, if you want a closer look at how this whole process works, there are currently vacancies on IPReg for professional members at £320 a day. More information here