On Examinations, Boards, Independence and Diversity

I have been reading the exchange between CIPA and IPReg over the creation of the new patent examination board (PEB)  for 2014 onwards. Now that ITMA have made other arrangements for the qualification of new trade mark agents in the UK,  the JEB or Joint Examination Board is due to die. Some who have been unhappy with its results may rejoice.

If you are a CIPA member you can find the exchange in the latest CIPA journal at Page 359. The whole sequence is provided by IPreg for all here.  I read it as acrimonious and critical. Its not a correspondence I would find encouraging as a prospective new entrant to the profession. Since there is nothing there for 2014, candidates who fail to qualify as UK patent agents this year might be concerned. Most will be focusing the European Qualifying Examination administered *independently* of the Institute of Professional representatives before the European Patent Office (epi )by the EPO. The names and faces of the lay members of the European structure are not immediately obvious to me.

I was also sent yesterday a link to the Draft 2014 Business Plan of IPreg and the Annual report 2012 which is a nicely laid out document with the previous 2012/3 Business Plan  at the end of it and a separate Education Plan.  The Draft plan does not refer to education at all and the budget seems overwhelmed by the possibility of another disciplinary hearing. Now CIPA have appointed an education officer but we apparently need a Chairman of an Independent PEB to write letters to IPreg and the PEB needs to have lay members who have control so no more will senior partners be able to appoint their sons and daughters and train them to follow in their footsteps. Patent Agency is to be lay-controlled. I am not sure what laity is likely to be interested. Are they educationalists who profit, Patent Office officials who suffer from patent agents, inventors who pay them, infringers who pay them for justice, the public who want drugs and mobile phones on the cheap and might prefer there were no patent agents or patents at all, politicians or diplomats. Who should have this job and how can they set an exam if they are laity?  I clearly don't understand the system at all.

Nevertheless as a solo practitioner it might be fun to take on a trainee. Today that is impossible, because you would be expected to pay for their professional development but you know their long term career is not with you. Any trainee here would have an interesting year or so that would benefit them and their next employer. There is not a great incentive to employ them to send them off on expensive out of office PEB/IPreg prescribed courses. So this avenue into the profession that might allow some diversity is closed at present while we squabble about which notepaper to write letters on. Thank Heaven for the gloriously efficient European Patent Academy. It is not independent but it is getting on with the job and its prices are affordable its just a shame that European Patents are not affordable for many of our clients.

Would you employ a trainee today?

Who should or does chair the PEB?

Searching for the Best Deal for you

One of the ideas when we set up this group was to try and increase the buying power of the solo practitioner and remind vendors that we are a significant, worthwhile and influential part of the market. There has been some success (with a lot of help from our friends) so, for example, Westlaw IP is available to solo practitioners and you can become a member of INTA at solo practitioner rates. However our efforts to secure the latest proposal has been the greatest pleasure. Corsearch has been sponsoring the ITMA evening lectures. The next one  on 23 July being a particularly promising offering with Allan James of the IPO on case management. See some of his recently managed cases here.

Join the Queue to Analyse your Search

After those ITMA evening meetings you get a chance to chat to the Corsearch team over a glass of wine or three, but equally you can enjoy the wine and canapes while networking with professional colleagues too. Now some of us may have taken this opportunity to draw attention to the deficiencies of big search provider's volume based pricing models if you are a  SOLO practitioner, especially now that both the UK IPO search pages and TMView are free and amazingly clever.

The most important thing for a client is to be able to understand the results and it is the trademark agent's job to make that easy. The Corsearch tools are aimed at doing just that. So having appreciated that they are selling tools for manipulating data and not the data which is and should be freely available, it seems sensible to have a software style pricing model that allows access for single users as well as the large corporates and that is what we are now offered. Since its always good to get to grips with new tools and see just how you can use them to wow your clients, we are thinking of arranging a hands on training events, focused on search for those UK SMEs whose new brands are going to drag the economy out of its present parlous state. Please comment or reply if you are interested  and let us know where is your preferred location. I have a vote for Cambridge from existing master user, Roman Cholij of Cam Trademarks who already knows what his clients love about his search results. I also have vote for Manchester comes from @TrademarksHale.

As an added incentive Roman tells me "The Corsearch screening system is ideal for my needs - the tools offer greater flexibility and usability than the free data sites, which makes Corsearch a valuable resource for my practice. I would also add that the team is amazingly friendly and customer focused with fast response times, which makes it very easy to strongly recommend Corsearch to all."

Now it is clear that there is a demand for the risk analysis of a search provided by a professional attorney. Yes or No Free searches leave many clients unsatisfied and even if you do a proper search, if you want to show that you have been honestly you need to have taken advice as well - as Birss J tells us in the Redd Solicitors case. Its paragraphs 113 and 114 and note that it down at the 9th factor to be taken into account. This opportunity is too good a one to miss

Studying through the Summer ..

...is a lonely experience even if you do work in a large organisation. Although its no longer that "Joint" the Examination Board that sets the exams for qualifying as a Registered Patent Agent in the UK is still to be found at www.jointexaminationboard.org.uk and its schedule for 2013 exams asks you to register by August 9, so if you have not written your revision timetable now may be a good time to start suggests Dr Doug Ealey author of Study Guide to the Patents Acts which you can buy from CIPA along with other promising titles for the procrastinating student. Doug also suggests that the LinkedIn Group is also a good resource for discussing issues, if your supervisor is too old to remember sitting his or her exams.

I feel quite sorry for those studying for P2 as the 2012 exam paper paints such a dismal picture of small firm practice, as to make you think that a career as an MP despite the paltry salary may be a better proposition. Still its a hurdle you must pass so write the timetable and take all the advice to heart about reading the whole paper first, allocating time according to the marks available and making sure you have the right sort of handwriting (legible) and the right sort of chewy sweets to act as a displacement activity when your wrist tires. Its also quite wise to remember that the examiner has a marking scheme and so each relevant point well made tends to score a mark, sometimes two, so you need to hit the points and make sure you make it clear that you think you have earned one by starting your next mark winning point with a new line.

Now about that gluten free dough, in 2012 P2 Q8 why does the examiner think its obvious?

A visit to London from Alicante: OHIM British Day Postcard

Westminster Abbey on 5 June 2013 with commonwealth flags

The flags were still flying outside Westminster Abbey in honour of the 60th anniversary of the Coronation as members of the UK profession gathered to meet OHIM and UK officials  at 1 Victoria Street ( the well-appointed BIS Westminster Conference center)   nearby to share the hospitality of OHIM at OHIM British Day. We were honoured by the presence of President, António Campinos as well as the exuberant Inge Buffalo and Dimitros Botos. On the UK side John Alty as Comptroller was there with Sean Dennehey who is now responsible for both patent and trade mark operations within the UK office. It seems that a visit with the Minister may have been responsible for the delayed start and late arrival of the leaders.

Now that the UK IPO and OHIM are using the same IT engine (in the UK its called TM10)  for managing their trade mark databases, can we expect even greater convergence? 
OHIM continues to emphasise timeliness as the core of its Quality metric and there is no doubt that, in some areas, it is impressive with designs being registered within a matter of hours. I did take the opportunity to express concern that the Board of Appeals and subsequent appeals were often not timely at all and where this resulted in enforcement delays as with cancellation actions, that was not the quality brand owners needed. However that was perhaps the only *meanness* (their word) shown to the OHIM delegation at least in the public morning session. I cannot say whether the private afternoon session with ITMA and other representatives of the interests was more contentious.

It seems there will be a new OHIM website going live at the end of the year. Its services will be piloted with the biggest users - so not you and me. I spoke to two representatives of said biggest users over the lavish refreshments and learned that despite the volume of business they do with OHIM they do not yet use MyPage. Maybe they need to take some consultancy from solos like us on how to be efficient in a paperless way.

We heard about the tools being created under the Co-operation Fund  programme under the auspices of the European Trademarks and Design Network (ETDN) .That link will take you to their new page and the interesting tools they are working on. Some like the similarity tool you can play with and there are plans to integrate them with the mainstream in due course. Classification and its convergence has attracted a lot of post IP TRANSLATOR interest, not all of it now hostile. There seems to be a new recognition that clarity of specifications without the wild land grabs made possible by class headings in three classes is desirable. Nevertheless the imperatives of translation have led to an assessment that only 11 sub parts of the WIPO class headings are in fact insufficiently clear leaving 186 phrases you can use following a report made in May 2013. Meanwhile, if you need real IP translating the translate button in Euroclass now renamed TMClass as it is not limited to Europe, works miracles of high quality translation of specification terms useful for your global portfolio.

The Observatory also had its own presentation and is set to become an important policy setter. Its principle immediate objective is to complete research on mapping the landscape of IP enforcement  and that means understanding citizens' perceptions of it and they do mean copyright as well as patents and trade marks. The US has reported that 27.7% of jobs are IP related and 34.8% of US GDP is IP related. We should soon have comparable figures for Europe and they are not expected to be uniform across the region. Once we know, expect to see IP campaigns coming to a cinema screen near you. The IP toolkit will give you an idea of the messages you are likely to hear.

OHIM intend to *Keep Walking* towards a more efficient future and we hope to be by their side in this journey which we all hope will benefit European jobs and economies.

IP attorneys: would you want your daughter to marry one?

This blogger has just read the following media release:

Today, Lawyers.com is releasing findings from a new survey asking parents if they want their child to grow up and become or marry a lawyer. Highlights from the survey include: 

• 64% of survey respondents with children in the household want their child to become a lawyer.

• Moms (55%) are more likely to be interested in having a lawyer as a son- or daughter-in-law than dads (38%).

·         80% of parents with household incomes of less than $25,000 per year said they’d like their child to become a lawyer, versus 54% of those with household incomes over $75,000. 

Full details are in the release below and on the Lawyers.com blog.

It seems strange that, in a jurisdiction in which lawyers are so widely disliked, distrusted and generally subjected to generalised abuse (just key 'lawyer jokes' into your favourite search engine and see what you get). However, the perception that lawyers earn a lot of money is widely held, as is the faith that a lawyer in the family will do whatever damage he or she does outside rather than within his or own domestic patch, in much the same way as cats like to use other people's gardens as lavatory facilities rather than soil their own.

It would be good to know how many people polled would, if informed of the option, prefer their child to be or to marry a patent or trade mark attorney -- even if they knew the truth about what many IP practitioners, particularly those working in-house or for themselves, were actually taking home after deductions for tax, social security, pensions and whatever.

Lost in Translation : Trademarks

Buy the music instead

One of the issues that often vexes me is why a word may be registrable as a trade mark in Europe but not in the US or, far more commonly, vice versa. A change that the European commission intends to introduce to both the Community Trademark Regulation and to the Directive in the current revision proposals may bring some harmony in the area of foreign language marks. This is an extension to the absolute grounds for refusing a trademark to allow an objection such as descriptiveness to be raised notwithstanding that the grounds of non-registrability obtain only where a trademark in a foreign language or script is translated or transcribed in any script or official language of a member state.
There is also going to be an obligation on applicants to provide a translation or transcription.
Now this may make sense for the European problem of having community registrations for composite mattress marks from Germany refused because of the now highly distinctive and famous MATRATZEN registrations in Spain, but does it go too far? Will Chinese and Arabic marks  highly distinctive in Europe suddenly find themselves refused as descriptive. Will we find that our invented words are considered to be transcribed versions of Chinese characters. This new absolute ground could be quite a nightmare and it certainly attracted most interest at the Marques conference on Monday.
They already have this rule in America but it isn't an absolute embargo as this legislation seems to impose.  The "ordinary American purchaser" has to be likely to stop and translate the foreign words into its English equivalent. While it seems fair that a community trademark as a unitary right should be denied registration if they can't be distinctive across the whole of the European Union, why do we have to put this into national legislation? Is the British consumer to be denied hypothetically descriptive marks in the Greek script?  The Max Planck study concluded that there was no need to clarify or otherwise amend article 7 (2) CTMR but it seems the commission disagrees. While no doubt this may be a welcome change for the minority languages spoken in Europe which are not recognised as official languages so dont get considered in Alicante towers, it does seem a little overwhelming to protect every language in the world in this way.
The objection can be overcome by acquired distinctiveness but we all know that that is very difficult to prove. If nothing happens, the brand creators will have to move all those obscure languages dictionaries from their creative resources to the desks of those who try to clear their suggestions. If your trademark can be translated better get it registered in Europe while you can and don't forget to use a great value solo practitioner to help you.

Do you really matter?

The hardest message to
get across to a prospective
client ...?

No, this isn't an attempt to be rude or to undermine your confidence -- it's an allusion to a paper which was discussed yesterday in one of the International Trademark Association's Scholarship sessions, "Do Trademark Lawyers Matter?" (you can see the abstract here), in which the authors -- Deborah R. Gerhardt and Jon P. McClanahan -- sought to explain their findings, which were based on getting on for 30 years' worth of filing and grant data from the United States Patent and Trademark Office (a note on this session was published on the IPKat here).

At base, there are three factors that tend to influence the success of a US trade mark application. One lies beyond the control of the applicant, and that is whether the application is opposed or not. Unsurprisingly, unopposed applications fare far better than the other sort. The other two factors are however highly significant: statistical analysis of a vast quantity of data suggests that (i) trade mark applicants who are legally represented tend to fare better than those who do not, and that (ii) experience, in the long run, is as good a predictor of success as is being legally represented.

One challenge for any solo or small practitioner is to explain to an often ill-funded and undercapitalised client why, when trade mark registration is open to all and when trade mark registries are increasingly user-friendly, it may still be necessary to instruct a professionally qualified and, ideally, experienced, representative rather than take the do-it-yourself route.  This research by Gerhardt and McClanahan provides much material to strengthen the hand of the practitioner when selling his or her services.