Reaching the Cap in the Intellectual Property Enterprise Court

A splendid Cap

For claims started after 1 October 2013 it is going to be a little easier to reach the £50 k and £25k caps on Practice Direction 45 have just got a bit richer and are in rounder numbers. You can find them in the Practice Direction Making Document
costs for trials and enquiries as to damages respectively. This is because the Tables which set out the maximum costs of each stage as set out in CPR
and below.  





Table A

Stage of a claim                        Maximum amount of costs
Particulars of claim                                                    £7,000
Defence and counterclaim                                         £7,000
Reply and defence to counterclaim                           £7,000
Reply to defence to counterclaim                              £3,500
Attendance at a case management conference           £3,000
Making or responding to an application                     £3,000
Providing or inspecting disclosure
or product/process description                                £6,000
Performing or inspecting experiments                       £3,000
Preparing witness statements                                   £6,000
Preparing experts' report                                         £8,000
Preparing for and attending trial and judgment         £16,000
Preparing for determination on the papers               £5,500

Table B
Stage of a claim                                                          Maximum amount of costs
Points of claim                                                              £3,000
Points of defence                                                          £3,000
Attendance at a case management conference                £3,000
Making or responding to an application                         £3,000
Providing or inspecting disclosure                                 £3,000
Preparing witness statements                                        £6,000
Preparing experts' report                                             £6,000
Preparing for and attending trial and judgment              £8,000
Preparing for determination on the papers                    £3,000

Who is that behind my Advocate?

In court its important to be sitting in the right place. There is an interactive civil court scene provided here by the Judiciary of England and Wales ,who also provided the nice illustration of a judge (though he is hearing a criminal case - no red sashes in the Intellectual Property Enterprise Court).

What that judge sees is an Advocate or more for each party and behind them sits a lawyer or some representative from the law firm. In Scotland it has just been announced that they intend to abolish their rule that an agent of the client, normally a solicitor sits behind the advocate in court. It is not an absolute rule in the courts of England. Obviously it does increase costs if there are too many people earning money and doing nothing useful. Nevertheless litigators regulated by IPreg are under a duty to attend or arrange for the attendance of a responsible representative throughout any Court hearing attended by Counsel (3.4 of the Litigators Code). Now clearly in a case where a litigation practitioner is acting as Advocate there is no need and thankfully no duty to have someone to watch your back. It is of course useful to have an ally in court and someone to make notes and pick up the papers you have dropped is convenient. This is an  anomaly between the IPReg rules and the SRA code Chapter 5 which now reduces things to principles rather than prescriptive rules.

Soon we can expect Barristers to get the freedom from their regulators to get down to some real solo litigation but in court his rules currently allow him to satisfy himself that a redundant solicitor or patent agent is uneccessary, or more precisely

706. A self-employed barrister who is instructed by a professional client should not conduct a case in Court in the absence of his professional client or a representative of his professional client unless the Court rules that it is appropriate or he is satisfied that the interests of the lay client and the interests of justice will not be prejudiced. 

Come on IPReg, you seem to be out of line!

Script for introducing a Witness in an English Civil Court

That may seem an odd title for a blog post. It is there because it illustrates an item of information an unversed advocate may be ignorant of. If you Google it, you will not find the answer but you will find litigants in person fruitlessly making similar enquiries on those useless forum sites that Google will insist on on indexing. Since you may be reading this for the script I had better provide it for a civil proceeding before proceeding to my rant on advocacy education

The Witness is called to the stand and the court associate will ask him if he wishes to affirm or swear. If a special holy book may be required for any of your witnesses best to mention this to the associate in advance.
Advocate: Your name is [Joe Smith - these bits in square brackets should match the information you put in that Witness' statement that is in the trial bundle]
Witness: Yes
Advocate:Your address is [ 1 High Street, Midtown]
Witness: Yes
Advocate:Your Job is [Bricklayer]

its not like this in an English court. For info

Witness: Yes
Advocate: You have made a statement in this case on [date] which appears at page [25] of the bundle. Can I ask you to turn to that now. pause Is that your statement?
Witness: Yes
Advocate: Please turn to page [27] is that your signature?
Witness: Yes
Advocate: Are there any corrections or alterations you want to make to that statement
Witness:  No  (If there are make sure you have given the other side details in advance)
Advocate: I submit [Mr Smith] for cross-examination.  sit down

The real reason why Patent Agents do not exercise their rights of audience in the soon to become The Intellectual Property Enterprise Court (it is the Patents County Court until 1 October 2013 when  the Civil Procedure (Amendment No. 7) Rules 2013) and provide access to justice at a proportionate cost is that they are inhibited by ignorance and lack of confidence.

So we have education and training. This is expensive so you want to be certain of its value.

Last month I attended a short lecture on advocacy given by an English barrister from which I learned that in his opinion at the Nuremberg trials, Sir David Maxwell Fyfe QC was more successful in cross-examining Herman Goring than Justice Robert H Jackson. This was because he asked something called closed questions. This lecture did not leave me any more able or confident in my excursions in advocacy. However this month I attended a course run by a trainer (also a qualified lawyer but principally now a teacher so he was not even indirectly looking for my instructions) and learned what the first speaker meant. This is because the second course was run interactively and we had ample opportunity to practice and be critiqued on our performances. We received the necessary signposts to the material that we needed to learn in the CPR. While the first speaker mentioned case theory, the second taught me to use one. The necessity of preparation came across much more effectively than if we simply listened to a speaker telling us that preparation is necessary. We came away understanding how the preparation each of us had invested gave different results. We also saw that some lucky people have more inherent credibility than others, but the rest of us learned how to catch up fast.

The first lecture was recorded so now I can re-listen to it and get about 200% more out of it.

The downside is that the second course cost me the Filemot training budget for this year and next as well as three days. Nevertheless if you get an opportunity to attend a course with Peter Lyons of CPD Training, try it.  Why? Because its excellent value. As well as the training there is an assessment day which ensures you consolidate the work you did on those days. Indeed when you consider the requirement for an eminent assessor and SRA and IPreg endorsement, the cost is proportionate to the overriding objective of education in justice.

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.