The CIPA Journal: It's a Hard Act to Follow

An encounter with Michael Harrison this morning at the excellent Hardwicke Chambers breakfast seminar given by Mark Engleman on Jackson costs, prompted me to pick up my November copy of the CIPA journal - since Michael is now the new editor of this illustrious publication, having taken over from Tibor Gold. If you are a member of CIPA, you will be able to find the journal online here.

The Editor

So much praise has been heaped on Tibor that Michael will need some encouragement in order to implement modernisation and changes in the journal. However, 10 years is a long time in a publication's life and there is always room for evolution.

The fact that we are looking at the November issue and it is already December suggests that a publication cycle for print is no longer in keeping with the demand for immediate information. Perhaps the time has come for less paper and a companion Internet publication to cover more immediate matters on which the membership need to be consulted or at least aware, such as the not so secret diary or upcoming ECJ cases where CIPA might be encouraged to put in a position

Reducing the number of print editions would save some costs allowing for development of the new online version.

Maybe the time is right to consider making that online version a joint effort with ITMA, or perhaps  making the paper journal of record a joint publication.

It is good that the learned articles that are of value for future students should have a print form. It is also good that these articles should be moderated, fully edited and have enduring quality. There are plenty of prospective authors who want an outlet for their work and I suggested to Michael that liaising with the PR consultants who work with IP firms could well be beneficial in providing new material. Many aspiring authors are rather short of ideas for their articles and I am confident that Michael's wisdom might be exercised in commissioning some pieces that would be valuable for all members of the profession - but with an emphasis on the patent attorney in practice. Casenotes are one thing - and are well covered by exisitng media - but a survey of the case law on a particular topic over a period of time and its relevance to claim drafting, or even the trend taken by a specific judge so that we know how to advise our trademark clients where to put their figleaves, are always excellent article material but they do require the author to undertake some very specific research, so it's always nice to hold a commission for one.

Do give Michael some encouragement to make his mark, innovate and create as only a patent agent can

Reflections on the Entrepreneur Market

As Global Entrepreneurship Week draws to a close for this year, I thought it might be interesting to reflect on the young entrepreneur as a market for intellectual property advise. There is, no doubt, a need but there is no market. The need is satisfied well by The UK IPO who provided lots of resource and encouragement including a special page. Both ITMA and CIPA were represented at the British Library Business and IP Center event. The idea is that by making entrepreneurs aware of the availability of professional advice they will buy it at an appropriate stage and avoid the worst traps in the meantime by using the free search tools for the UK and Europe and advice. Sadly the Business Link combined company name and trade mark checker tool launched in 2008 has now gone the way of all things Business Link. This is a shame it was the best basic starting point but it does leave the Entrepreneur who relies on Google market vulnerable to the factory filers who sell on price but are of necessity more expensive than filing direct with the UK IPO yourself.
The challenge we, as individuals, face in this Internet led market is to emphasise the value of personalised advice and the wisdom of experience and training validated by a professional body.  For this personal networking is a better bet than Google Ads. The ITMA/CIPA non-core skills training team is offering an event which may interest some of you. Its a webinar so you won't see me there and, being such, I don't expect it to cover face to face networking in any great depth. If anybody is willing to offer a review for this blog, that would be great.

Don't Hold Me Back

Dead Wood shackled in NZ by Sarah McMillan

One of the biggest obstacles to leaving your firm and going SOLO is the restrictive covenants in your existing employment contract. Equally if you are taking on staff these contractual terms matter if your firm's book of business is not going to walk out the door. Case law is infrequent so I took note when  Michael Scutt tweeted about his blog on the Farnsworth case.

In this case Mr Lacy had been promoted during the course of his employment but had not signed the new contract that he had been given. He sought to argue that the restrictive covenant, which was for 6 months and prevented him working for a competitor and soliciting defined customers, did not bind him because the contract lay in a draw unsigned.

The obvious lesson for the employers amongst you is not to crack open the celebratory champagne or pay the new salary until the contract is signed.

As always, this case is very much on its own facts. The problem arose out of the take over of Pooles of Wigan as reported here.  The Judge was (rather against his inclination ) deciding a preliminary issue as to whether Mr Lacy was bound by his contract and must suffer a few more months of an injunction that was already in place. He does. The Judge ending up relying on the evidence that Mr Lacy had applied for private medical insurance (PMI) for his family, a benefit to which the new contract entitled him.

The law applicable to the case is basic contract law (paragraphs 19 to 31). The judge had to decide whether the offer in the revised contract had been accepted.  The Claimant enforcing the contract carried the burden of proof. There needed to be "an unequivocal act implying acceptance" and in accordance with the Solectron test this must be "only referable" to his acceptance of the new terms.

While the Claimant started out with five possibilities: revised salary; provision of a better motor car;  enrollment in a profit related incentive plan; movement to a defined contribution pension scheme, and the application for PMI. Only the last was only referable to the contract. Sadly litigants often forget that winning on four points and losing one is still a loss.

Of course if you can't work for a competitor you might be able to set one up, but be wary of any reasonable solicitation covenants as even the legal advice may be expensive and inconclusive.

Selling for Solos

There is no shortage of marketing advice out there. Everyone seems to be prepared to offer me some service to develop my professional image and bring in new clients. Our Professional Bodies ITMA and CIPA are offering a Webinar that will tell us how to do it and it seems we have come a long way from the days when a brass plate and a tombstone advert in Yellow Pages were considered daring. Even the EPI consider that European Patent Attorneys can advertise

Advertising is generally permitted provided that it is true and objective and conforms with basic principles such as integrity and compliance with professional secrecy.

IPREG insists

Publicity and promotional activity of any kind by regulated persons is permitted if it is fair, honest, accurate and is not misleading and is not otherwise in breach of these Rules.

Networking - some of our bigger competitors are enjoying an #AIPPI2012 trip to Korea at the moment, article writing, and websites are now the norm.

This blog's co-found Shireen Smith of Azrights has gone one further in adding value to advertising material and is selling her educational and informative book to her target audience.

Our competitors are banding together in marketing groups like Quality Solicitors, who are also producing jolly TV adverts that can gain even greater publicity by social media, such as this.

While these methodologies may be perfect if you want to grow your business and recruit, they may not be ideal if you want to maintain a steady workload. For that, perhaps we need to nurture our existing clients and work referrers. Of course if you have been too successful with the marketing techniques, you can perhaps pass some on to another SOLO practitioner.

I would love to see some comments on how others are managing to control the workflow.

Party time: the Law Society may need you

This blogger understands that the Law Society for England and Wales will soon be recruiting new members for its Intellectual Property Working Party.

If you are interested in joining the Working Party, why not email Isabel Davies for further particulars? It would be good to know that, at a time when IP litigation has trickled down from the Court, through regular Patents County Court to the new small claims track, the experiences and understanding of smaller practices are shared with their bigger brethren.

Driving on the Small Claims Track

The barriers to enforcement of small IP claims will be lifted from 1 October 2012.
If you are an aggrieved designer, photographer or even brand owner, relief is at hand on the Patents County Court Small Claims Track. Question is how do you drive on it.
Are you eligible?:
Your claim must relate to a trademark, passing off, a copyright or unregistered design right and be worth less than £5000 and that presumably includes cases where all you want is an injunction to stop someone trading as you. But note that you must wait for the trial to get that injunction as there is no interim relief on this track.
How do you start?:
First write to the person setting out the problem as you see it and give them time to reply. Tell them what your rights are, what they have done wrong, what you want and when you want it by. The letter should comply with the pre-action protocol and should say so. Be reasonable and polite the court will see this letter.
If you don't get what you want you need to fill in your Claim Form. You need to set out the particulars of your claim and say you want the  claim to be allocated to the small claims track.
What does it cost?:
The fee depends on how much money you are claiming. For a photograph used without permission it only seems likely you will get more than the National Union of Journalist's Guidelines. See a judgement from the Court in Delves- Broughton v House of Harlot. If you want an injunction its £175 and if you want damages it adds from £35 to £120.

Where do I get help?:
From one of the regular readers of this blog who is a solicitor and will offer you a fixed fee deal. However it doesn't have to be a solicitor. You can use pretty much anyone if you are prepared to attend court with them. You can also use the free mediation service provided by the Courts. If you do use a solicitor there is minimal scope for costs recovery so expect to pay a fee for help and do a lot of the work yourself. Finally there is not a lot of court resource for this service so it all may take a bit of time if there has to be a hearing. However because you can have the matter resolved by the Court that is a big incentive for your claim letter not to be ignored as it may have been before.

The above is intended as something of a idiot's guide intended for  users rather than our email subscribers. Lots of lovely detailed chapter and verse can also be found on Jane Lambert's blog. Its also worth reviewing the Government responses to the call for evidence on this as published by the IPO in March 2012.

Patent Disputes in Proportion

The UK IPO is currently pondering how to expand its Opinion Service after the recent closure of the latest consultation.

I also note from the IPkat's recent post that the Patents County Court is still in full-blown self-congratulatory mode as it prepares to launch its small claims track (Legislation here Rule 10 ) so maybe its time to raise some issues.

There is no doubt that the new regime has made it practical and possible to resolve disputes using the court system. However, to deliver the real cost savings in litigation that make the costs proportionate to the dispute, it is necessary to conduct this type of litigation in a new way. The way I have chosen is to do it single-handed - eliminating the costs of communication between members of the team. Indeed, many litigants in the Patents County Court are representing themselves. These are the difficulties we all face:

• Communication with the court is a real problem. Phones don't get answered and emails bounce unless the court wants something but not if you do. In-person enquiries tend to be unproductive as well. You are on your own. The best a litigant a person can do is try the Citizens Advice and its current location in the Family Division tends to suggest its focus but they might help you fill an acknowledgement form and there is no-one in the Rolls Building who could even do that for a defendant determined to represent himself this month.
• The court filing system. It would be nice if there were one. I have never printed so much paper. It seems a waste that it serves no purpose.
• Application procedures don't quite work in the way described in the Patents County Court guide, where the court itself is supposed to decide whether a hearing is necessary. If you can't agree a date or even availability with the other side, it's a dead end or a long wait.
•  Time lines are long. The period for a defence was deliberately set long because the idea was as that there should be full pleadings (not just long ones). However, in patent cases where there has been protracted pre-action correspondence another 10 weeks can be a bit of a bitch to say nothing of the wait for a trial date. I was so vexed by the boast that a case could be decided in a day I tracked down the patent on Ipsum where you can find some of the pleadings relating to Invalidity in an infringement case CC11P03258  that actually started in September 2011 so a judgement in a year is nice but not seriously different from the timescale in Big Brother Patents Court. It also seems that these timescales are lengthening.  Let's hope that the fast-track does not put those who are looking to settle patent and trademark disputes into the long grass of several years.  It is inevitable that costs get greater if files are put down and forgotten rather than got on with, to say nothing of the impact on SME business that does not know if it is racking up a damages claim or not.

We might solve some of these issues with a bit of help and collaboration from the IPO. The trademark litigation section cope pretty well with a large number of files and you can contact it by phone and email. Although it doesn't have the ability to post its files to the Internet as the patent side does, hopefully that is coming. Let's see all the Patents County Court documents on line so that we can all know what's going on including the Judge.

Despite this I have managed to achieve quite a lot, but it does help being next door.