Updating UK Patent Rules

With so much emphasis on the Unified Patent Court and European patent with unitary effect or unitary patent if you prefer, administered by the mighty EPO, the humble UK national patent can

Baroness Neville-Rolfe champion of UK IPO

easily be forgotten. However, its importance, particularly to entrepreneurs looking for early grants and the inventors of those technologies shunned by the EPO is not to be underestimated. Any innovator who finds the prospect of €10,000 as the starting price for litigation and has been taken with the access ability of the Intellectual Property Enterprise Court should still be very very interested in the UK national patent.

The UK IPO has been doing a little tidying up and recently produced a consultation on proposed changes to the Patents Rules. Responses are sought by 22 April 2016.

There are a number of specific rule proposals but there is an open question (17)which invites any other proposals for rule changes or clarifications. There is a hint that you might want to consider the extensions of time rule but the question is not limited to that and if there are any other rules of bug you now is the time to say so that they can be included in the amending statutory instrument under construction.

The Patents Rules live here  But only in PDF downloadable format. Isn't it time they came in a nice HTML version for easier referencing.

Some of the proposals are very straightforward and it will be difficult for anybody to dissent from the idea that we should no longer have to file multiple copies of form 51 when appointing an agent or triplicate copies of international applications (does anybody really file international applications with the UK IPO in paper. It might even be time to make electronic filing compulsory what do you think, or are you still reliant on the fax machine. In cases of Internet meltdown and bearing in mind that large parts of the country have dire Internet connections, it may be a little too soon for that step to be compulsory but we should certainly be encouraging paper elimination.

The object of the rule changes is to benefit did businesses and individuals making use of the patent system (which naturally includes those at risk of being patent infringers)

Omnibus claims
The proposal is to discourage them- not by relying on clarity objections but by introducing a new rule prohibiting references to the description or drawings. I entirely agree with the ambition but I'm less certain that this is the way to do it. The scope of these claims is unclear. The reason that they refer to the description and drawings is to limit them to the embodiments and it may well be that for some inventors limiting their claim to the embodiment described is all they can afford. If the embodiment is described clearly and often it isn't, this might be an acceptable claim but a very narrow one. The really offensive part of an omnibus claim is the "substantially as herein described" phraseology not the reference to the drawings.  After all Article 69 says that every claim has to be interpreted by reference to the description and drawings.

Rewriting paragraph 14 .124 and .125 of the Manual of Patent Practice to reflect current case law might be the answer.

As to the transition I would be happy if no omnibus claim were allowed from now on but  the idea that it should apply to granted patents when the rule comes into force could be a very Draconian hit on some self filers who may find their patents no longer exist in any valid form despite payment of renewal fees. IPEC may well have to continue to construe those claims narrowly as they have done before.


Most applicants will also have a main claim so we could achieve the same effect by limiting the number of independent claims.The requirement for a statement of invention harks back to the need for the omnibus claim to be no broader than claim 1. I have always thought statements of invention were bad drafting practice and made patents more difficult for the lay reader to understand. The solution of the invention is defined by the appended claims does the job.

Photographs Q10 

The proposals include the possibility of photographs, but not CAD Drawings which might be shaded. Reproducibility is what it's about and it drawings can be reproduced it shouldn't matter whether they are in black-and-white colour or gray scale. However, line drawings are often likely to be the best choice.

I wonder what our illustrious professional body is going to say about these proposals

Preparing for 23 March and the European Union Trade Mark

This name will disappear on 23 March 2016 so are we ready for the change? The page that the soon to be European Union Intellectual Property Office has created is here.

Although there is a new Harmonisation Directive the approach taken for our favourite CTMR 207/2009 is that it is amended so we need a consolidated version. I haven't found one yet. Will we still call it CTMR for old time's sake?

The simple things we need to do is change the name of OHIM  which becomes European Union Intellectual Property Office and community trade mark becomes European Union trade mark. What is the consensus for the abbreviations: EU IPO and EU TM is my choice. European Union TM is officially sanctioned in Art 1(2) of the amending regulation.

Not much will change about day to day filing except that you will have to decide whether you want to receive the search of earlier rights on the Community Trade Mark Register Register of EU Trade Marks . This is now known as an EU search report but it still only covers EU TMs. You can say you don't want it but they have to create it even if you don't want it because they are still sending out those pesky surveillance notices. We are now allowed to opt out of receiving them though and I shall be looking at how to do that, especially where I am the representative for one and two letter logos.

Graphic representation is now (well with effect from 1 October 2017 and we can expect the EU IPO to tell us what representations are acceptable)  not essential and there is plenty of hot air about the possibilities of registering non-traditional EU TMs. Forget it. They also amended Art 7(1)e so you cannot register:

‘(e) signs which consist exclusively of:
(i) the shape, or another characteristic, which results from the nature of the goods themselves;
(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;’

Now Arnold J had a go at the Taxi CTM not long back and at paragraph 215 of his judgement killed it under  the substantial value provision. The same has to be the case for the smell of perfumes. Even if the representation is not graphic it is still required to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. I don't know of any self-contained sound representations. Even a recording needs something to play it and the sound file also needs to be easily accessible and durable - quite a challenge. My best advice is stick with registration for traditional marks.

The amendments allow for Certification EU TMs but these points of the Regulation will not apply until 1 October 2017 so we have more time to prepare for those.

We have already seen the benefit of the reduced renewal fees when renewing EU TMs that were due to expire after 23 March.

Thinking of Brexit, the provisions on representation  Art 93(1)b now simply says

(b) professional representatives whose names appear on the list maintained for this purpose by the Office.

If UK representatives are on that list they will still be there after Brexit so the old campaigners should be able to continue to represent. The requirement for representation is also amended so that it is only applicants outside the European Economic Area who need representation as opposed to outside the Community. Its possible, but uncertain, that the UK will stay in the Economic Area. This is the area for free movement of people and that is a big issue for many LEAVE voters who might feel betrayed if we stayed in the EEA and were simply told what to do by Brussels without any say in the negotiations.

A lot more of  the changes are less likely to affect our daily lives, but there are a lot of them so we might be surprised.

is it the end for the Series Trade Mark?

UK Trademark UK00002200698

First I must apologise for the long absence. I am missing my retired co-blogger and there has been an excess of litigation files in my life recently. There are many things that are sent to try us, from IT calamities to Brexit (more of that in a later post) but one issue that recently vexed me was the attack on the vires of the series trade mark in the UK.

It came in the long running and much commented saga between Comic-Enterprises and 20th-Century-Fox. The court of Appeal issued their decision on 8 February 2016 and for those of you interested in wrong way round confusion the full decision can be found here and I would have cited Wragges case note had they not re branded as Gowling WLG but you can still see how The Guardian reported it to the average consumer  here

The image of the mark it was all about is shown here.  Red, black and white are elements of the first mark in the series. You thought they both looked grey, but no the top one is brightly coloured and I suspect the staple is not intended to be an element of the sign either. It derives from 1999 before colour could be handled by the IPO and certainly before the sophisticated understanding encapsulated in the 2014 European Common understanding of black and white marks

In the 20th Century Fox case, Fox made an application for permission to amend its defence and counterclaim to introduce a claim that the registration is invalid because s.41 of the 1994 Act (which allows series marks to be registered) is not compatible with the requirement in EU law that a trade mark must be 'a sign' in the sense of being a single sign and capable of being 'graphically represented' as such pursuant to Articles 2 and 3 of Directive 2008/95/EC ("the Directive") and s.3(1)(a) of the 1994 Act. Now bear in mind that graphical representation is about to disappear from the reformed Directive. Signs will henceforth need only be represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. The Court did not decide the matter. Instead they noted the IPO comments and left the matter as an outstanding issue, which is hardly satisfactory for the series using public.

The relevant part of the judgement is at paragraph 23:

Mr Alan James of UKIPO responded very promptly by letter dated 4 November 2015. In broad outline he submits on behalf of UKIPO that s.41 of the 1994 Act is wholly compatible with the Directive and that any doubt about this stems from a misunderstanding about the meaning and significance of a series of trade marks: a series of trade marks is a bundle of separate and individual trade marks each of which must comply with the requirements of the Directive, and each of which is entitled to the protection afforded to every trade mark under EU law. There is, he continues, nothing in the Directive which governs or restricts the form of trade mark registrations, and there is nothing which prevents Member States from enacting a national law permitting a number of trade marks to be registered together. We are extremely grateful to Mr James for dealing with this request so swiftly. However, in light of his submissions and the limited time available at the hearing of the appeal for the parties to consider them, we decided, at the conclusion of the hearing and with the agreement of the parties, that we would, if necessary, give further directions for the resolution of this issue after giving judgement.

It is perhaps disappointing that Mr James' spirited defence of the trademark agent's favourite two for the price of one offer was not immediately accepted. Now we must wait to see if Fox pursue the matter. They are not it seems guilty of passing off but only of trade mark infringement so invalidity of the registration would provide relief from their difficult situation.

Should we stop using series? What do you think?

E- Filing at The Intellectual Property Enterprise Court and a plea for sensible fees

Electronic working with IPEC - wonderful I thought last November (Friday 13th) when I saw that a new Practice Direction had been issued to say that all Rolls Building Courts could be accessed electronically and not just by the fortunate few, such as myself, who have offices round the corner.

The scheme had been piloted through the Technology and Construction Court but I don't have friends who practise there. Wandering aimlessly round the Internet I discovered C-Track™ E-Filing, developed by Thomson Reuters Court Management Solutions. I wasn't at the time quite sure that was the thing but I registered anyway.  Fortunately now there is more information to help us on Judiciary.gov.uk website so start here. There is link to the Practice Direction and to the Home Page of CE-File which is the name for the new service. The Judiciary claim this puts them in the forefront of modern technology around the world - a bold claim indeed.

The CE-File home page contains a link to a USER GUIDE. If all else fails read the guide and wandering aimlessly in CE-File is not a rewarding experience, trust me, but the user guide is very straightforward. Unfortunately there doesn't seem to be a demo option so you can test drive without the stress of a live case. The system is available for Litigants in Person as well as Solicitors and Patent and Trademark Agents.

How are you going to pay the fees. Credit Card is an option here as is Fee Account with the Court Service. Now fees can be rather large and my business credit card doesn't go very high and a £10000 fee might be OK on your card but I don't have American Express so that won't do nicely.  Accordingly I explored the possibility of a Fee Account. Normally I pay fees with a debit card at the counter at the Rolls Building.

Here is the page on Justice for fee accounts. The link to the terms and conditions sends you here which provides an application form and a leaflet explaining the system but no ts & cs. I have emailed the designated address to ask for them since in this case I felt that I probably would Be considered to have read them when I tick the box to say that I had on the application form. As a consumer, of course, I blithely tick I have read terms and conditions boxes without doing so but in this case I'm acting in my professional capacity and I can't treat the court service the same way as I do Apple.

The application form for a fee account presented no particular difficulties and I hope that it will get more response than my request for such an account with the Foreign & Commonwealth Office. Fee accounts are available for a variety of types of organisations not just solicitors but as a patent or trademark agent you can say you are legal firm. If I ever see the terms and conditions I will let you know whether my application succeeds.

As a solo practitioner I nearly fell down at the requirement for a secondary contact. I've given them my next of kin. I'm not sure what he will do when he is contacted by her Majesty's Courts and Tribunal service.

The fee account service is a direct debiting system from your business account. Therefore, you can make sure there are sufficient assets to cover any ginormous fees. Even so, I had some doubts about what credit limit I should ask for. It's not very often I'm going to be issuing two claim forms a week, but even so, if you ask for a very large credit limit and have a fat finger moment you could make a serious dent/hole given with the level of fees that are now expected by the court service. It really is time that IPEC persuaded The Ministry of Justice that issuing a claim in IPEC should be subject to a reasonably circumscribed fee and that an appropriate proportion of any damages awarded should be paid back to the court. That way the court wouldn't suffer but the level of fees would not be a barrier to access of justice.

If you are a CE-File user please let us know your thoughts

Happy New Year - Welcome the Year of EUIPO

The greeting from supporter of new entrepreneurs Goodwille

The one good thing about the turning of the year is that it or nearby dates are observed as a holiday by most lawyers wherever they are on the globe, so the emails have slowed and those that are observing today as a working day are catching up and going home early. Even some solo practitioners might allow themselves a seasonal break.

What will 2016 bring. For those of us dealing in trademark, its the demise of the Community Trademark and the Birth of the European Union Trademark. OAMI and OHIM will, as from 23 March 2016, no longer need explaining as the office will become the European Union Intellectual Property Office. The package of amendments to the CTMR is all agreed and published here on Christmas Eve. The day previously we had the new Updated Harmonisation Directive. At least this one is a continuous text and not a bundle of amendments. We will have to learn to refer to it as Directive 2015/2436. It has to be implemented by 14 January 2019 and the day after our old friend is repealed. For those of us in the United Kingdom we are not expecting major new legislation. The own name defence for companies has to go and no doubt the clever people in the IPO will find something to gold plate into an Statutory Instrument and ever after the judges will refer directly to the Directive.

The updated CTMR provides a more immediate offering to update clients. The fee changes on 23 March 2016 are so slight they are hardly worth gaming. We do get to see EU Certification Marks for the first time. It seems likely that most of the changes will benefit the internal operations of the office allowing it greater flexibility to change procedures and fees. Search reports seem to become entirely optional and if the later applicant declines the opportunity it seems the burden of those surveillance notices will also decline.

Do share your best ideas for encouraging more business from this event after you have toasted the New Year and created your new email database for 2016.

FCO not ready to recognise Enterprise

FCO's  Hanslope Park

I have been defeated by a lowly civil servant. All my efforts since 2008 defending the validity of the community trademark and then enforcing it are as nought (not quite only nought if the defendant stays away which is quite useful).

Orders made by the Intellectual Property Enterprise Court are not recognised by the Foreign &Commonwealth Office.

Why does that matter? If you want to provide a document to an overseas lawyer he wants to know it's authentic. The time-honoured way of doing this is by means of a chain of trust. The Hague convention establishes what is called an Apostille and this is attached to verify the authenticity of the seal or signature. The seal or signature is what verifies the document.

Application of the apostille in England and Wales is controlled by the Foreign & Commonwealth Office. It is a responsible duty and they should discharge it with care. They discharge it in a remote part of the country (see picture above - a bleak and desolate spot to work so it may explain their bitterness) where the nearest civilisation is Milton Keynes.  The government website describes exactly how TO GET A DOCUMENT LEGALISED . The process is described with admirable clarity here. High court documents are specifically mentioned amongst those that the Foreign & Commonwealth Office will apostille directly. I would have preferred to hand deliver and collect the documents myself. What is the point of living in the centre of London if you can't do that? There is a premium service provided by the FCO. It didn't respond to my request to register. It didn't even bother to laugh in my face. Nevertheless there are businesses that are registered with them and eventually I paid one of those to take my document in, but I get ahead of myself.

Of course I had tried the way recommended on the website. This requires making the payment in advance; and filling in by hand an awkward form (after printing it out) including copying (very carefully) the 16 digit payment number from the screen and  and posting it all off. That was a waste of time. In due course they took the money and then refunded it less the postal charges and sent the papers back by snail mail so a week later I am no better off. The letter of rejection mutters about solicitors signatures and makes no sense in relation to a sealed document. Its standard letter No 2.  I ring up the helpline. It has very limited hours and a premium rate number (midday to 4pm Monday to Friday) and when I get through a very nice man says yes they've made a mistake and will I send an email. I send them an email. I send it again several times but no response not even a laugh in my face. The email address does not do delivery notifications either.

This is where I resort to the type of firm that is able to go to the Foreign & Commonwealth Office and cross their palms with silver. They procure an explanation from the great and mighty (This is the lowly civil servant. I'm feeling frustrated so it's ironic ). This Explanation is that they don't recognise the seal. It has a date in it. Apparently seals with dates in them are not OFFICIAL and cannot be verified. All IPEC seals have dates. Now you do get stamps from the court which are just to say when a document was handed in. These are usually square and black.  Now the FCO is clearly saying that this document is not what it says it is. Nevertheless, if a solicitor signs it they'll happily apostille it so I can perpetrate something they think they know is a deceit.






The Foreign & Commonwealth Office do attach their apostille to a document prepared by a notary public that suggests Filemot had told "Mr Jones" that this was a copy of a document. The FCO apostille of course is only verifying that the notary public's signature is authentic. Even in foreign parts it seems likely that anyone in authority will be less than convinced by this triple hearsay. It  sounds suspicious to me especially when it is attached to a document which very plainly is not a  copy at all and isn't as described by the notary public.

This leaves me telling the client that he better go to one of those clever international law firms that know how to do these things, because having survived an Alicante torpedo and much else this order is never going to get personally served on anyone overseas. Of course in England a seal (even with a date in it) is authentic and the order so sealed can be served in person without more ado. The IPEC will even enforce them and charging orders and bench warrants for recalcitrant parties are all possibilities if they live in Milton Keynes or thereabouts.

So there we have it end of road in Hanslope. 

Recommendations welcome.

A tribute to Jeremy Phillips by Peter Groves

On Wednesday 25th, I had the honour of speaking at Jeremy’s penultimate event before his retirement, the annual IP editors and publishers lunch. Jeremy, as I reminded him and explained to the audience, had impressed me with the careful consideration with which he evidently approached the issue of the invitation: it was after last year’s event but before we had left the building, and we had found ourselves standing side by side in circumstances which decorum prevents me from describing in greater detail, prior to setting out for our next engagements. “Would you like to give the keynote talk next year?” he asked me. I replied to the effect that I would be pleased to do so. “That’s one thing off my to-do list,” he said.

I told the audience that, in the same spirit, I had set aside a few minutes the previous day to prepare my talk. In truth I thought about it, off and on, for the entire year, although that probably didn’t show.

Being a publisher and editor as well as an author, I wondered which hat I should wear for the occasion. But being also a member of the Management Committee of the Society of Authors, I quickly decided to take the opportunity to address a roomful of publishers as a trade unionist. I put on my red tie.

This is not the talk I gave. That would be too boring. As I remarked to Andy from the 1709 Blog and Barbara the following afternoon, during the tea break of Jeremy’s final event, had I been giving the talk then it would have been rather different. Better. This describes the improved version.

More than 20 years ago, when I was teaching at London Guildhall University on the then-new Legal Practice Course, my intellectual property class found itself discussing oxymorons. I suspect I was responsible, having embarked on some digression or other. Someone wanted to understand what an oxymoron was. I think someone suggested “pretty ugly”. “Military intelligence”, another offered. “Scottish Amicable” said another, a trade union officer of whom I had expected better, so I swiftly closed down the discussion. Now every time I encounter the phrase “creative industries” that episode comes back to mind.

No industry creates anything. Individuals create. They may be employees, but of course that only affects the ownership of the rights in their creations. I know that the expression is being used loosely (although as lawyers we should resist laxity like that) but when all the authors, composers, artists, film directors and so on in the world are lumped together anonymously under a single heading, their work is devalued and they are demeaned. Just like when their work is referred to as “content”.

I don’t go the cinema very often, but a poster for a film called “Slavery Free” recently caught my eye. That’s also an oxymoron, I suppose, but it’s also axiomatic: of course slavery is free, that was always its unique selling proposition! And if by slavery you mean the condition of being forced to work for another for no or very low pay, there is a lot of it about in the legal publishing field.

Of course, legal authors are not required to work for nothing. They choose to do so, and often their firms encourage them to. Consequently few if any authors make a living out of writing legal books. Legal authors make their living by practising or teaching law, not by writing about it. There is not a class of professional legal authors.

This is my great-grandfather, Matthew Henry Groves. To the best of my knowledge he is not the

subject of a well-known (to Jeremy, anyway) song by Fairport Convention. He was a founding member of the Institute of Chartered Accountants of England and Wales. His son, my grandfather, was also a member of the Institute, and so was my father, and so is my brother. They all share the same facility with numbers. I don’t. I am more comfortable with words, so I became a solicitor.

Lawyers are professional wordsmiths, but not all are equal. Words and language are the tools of our trade. We are all, in a way, full-time authors, but some are more professional than others. Just because you’re a lawyer doesn’t mean you can write well. Jeremy explained the problem very well in his valedictory editorial in JIPLP: lawyers write well for themselves or their clients, but they often fail to write well for their readers.

A professional author will recognise a parallel construction, and be able to execute it correctly. They know what a splice comma is, and that it must be avoided. They understand that “however” is not a conjunction. They take care to avoid compound preposition, unless they need to write a minimum number of words. They might even have an idea about the subjunctive – but if not, so be it, although if I were you I would familiarise yourself with what someone like Fowler has to say on the subject.

A professional author will also be able to use the terms “verbal” and “oral” correctly, and knows that “a verbal contract ain’t worth the paper it’s written on” isn’t merely funny, it’s hilarious. He or she begins work on a document by using the search-and-replace function to change “shall” to “will”. And finally (enabling me to segue neatly into the next part of what I want to say) he or she appreciates that an acronym is a special type of abbreviation, not a synonym for it.

A professional author is more likely to produce material that is right first time. Every piece of work benefits from the attention of a good editor, of course, but how much better to receive material that needs only a light touch. Using professional authors, and treating them like professionals, will pay publishers dividends.

So how should professional legal authors be treated? My trade union has recently launched a campaign using the catchy acronym “CREATOR”. It concerns the terms on which writers are contracted to publishers.

• C - clearer Contracts, including written contracts which set out the exact scope of the rights granted. 
• R - fair Remuneration. Equitable and unwaivable remuneration for all forms of exploitation, to include bestseller clauses so that if a work does far better than expected the creator shares in its success, even if copyright was assigned. 
• E - an obligation of Exploitation for each mode of exploitation, also known as the 'use it or lose it' Clause 
• A - fair, understandable and proper Accounting clauses. 
• T - Term. Reasonable and limited contract terms and regular reviews to take into account new forms of exploitation. 
• O - Ownership. Authors, including illustrators and translators, should be appropriately credited for all uses of their work and moral rights should be unwaivable. 
• R - All other clauses be subject to a general test of Reasonableness, including a list of defined clauses which are automatically deemed to be void and a general safeguarding provision that any contract provision which, contrary to the requirement of good faith, causes a significant imbalance in the parties' rights and obligations arising under the contract to the detriment of the author shall be regarded as unfair. One example would be indemnity clauses which put all the risk on the author. 

No author is ever completely satisfied with their publisher. But publishers must be aware of the value of what authors create for them, and recognise their contribution in an appropriate fashion. Without authors, of course, there would be nothing to publish – and as technology provides new ways for authors to get their material before readers, it is high time that legal publishers started to show that they appreciate what professional authors can do for them.