A joint approach for SOLO Marketing

In Bradford on 22 October a group of independent SOLO IP practitioners will come together to exhibit at the Creative Careers Fair organised by two Bradford-based creative and media organisations, Artworks and bmedi@ at the Great Victoria Hotel.

The initiaive is the idea of Jane Lambert of NIPC fame. She is speaking on confidentiality in the Seminar programme for industry professionals. The fair has an associated exhibition and the plan is for the stand to be manned during the course of the day by a variety of local IP practitioners who will be able to offer friendly advice to those starting out in their careers in Media as well as to their prospective employers. The banner over the stand will be IP Yorkshire.

To generate interest they will be offering free trademark searches, thanks to the good offices of Leeds Library Service.

This is a great opportunity for promotion without bearing the exhaustive burden of exhibiting alone. I am looking forward to the feedback from the day as it seems to me that co-operative exhibiting is a very interesting model.

The Professional Body

The arrival in my post of a ballot form to enable me to vote in charter amendments for the Law Society made me realise how concerned our professional bodies are becoming about their future role. This is a perfect opportunity for the membership to demonstrate what they need.
I am a solicitor though at present I don't practice as such but I'm still on the roll and still a member of the Law Society and still do my CPD so I get to vote.
The Law Society want to extend their membership to others in the legal field. They are thinking of offering post-nominals, i.e. initials designating qualification for use after your name that chartered engineers, patent attorneys and even trademark agents that are members of the Institute have enjoyed for years.
My other professional body, the IET has already undertaken reforms which widened its membership. There was quite a lot of resistance to that but it has made the organisation more vibrant and active and those aren't adjectives you typically associate with the Law Society at present.
How do we see the Law Society in future - what does the SOLO practitioner want from Chancery Lane - an expensive restaurant or something more practical that we can use to help develop our businesses. Speak up, they are listening because they have to.

Let's learn about professional indemnity insurance

It has been a difficult month for most IP Solo lawyers as the underwriters have taken their time to give quotes, and refused to insure some firms. I personally have been extremely worried and distracted by this issue, but thankfully now it’s all sorted for Azrights. However, I feel great empathy for anyone still trying to secure insurance so late in the day.

The whole experience has left a nasty after taste. The fact that ones business can be so arbitrarily at risk of ending up in the assigned risks pool, and having to pay 27.5% or more of turnover for insurance cover, is mind boggling. Some law firms have had to take a rapid decision to shut down, and provide their services as non regulated experts. It is shocking to have to take such action so suddenly, when you have not had time to survey your clients first in order to establish the likely impact on securing future work. On the other hand if you secure insurance for a vastly inflated premium your run off cover premium is going to be that much higher if you shut down next year.

What is unclear is whether the assigned risks pool is actually likely to happen to any firm with a clear record who still hasn’t found insurance cover by 1st October, and wants to stay in business as a law firm. The assigned risks pool is, after all, supposed to be for firms that are a poor risk due to their level of past claims or other extreme circumstances. Is it the case that for firms that do not fit the profile of an assigned risks pool firm, they are likely to find that one of the insurers will quote, albeit at a steep price (hopefully lower than 27.5% of turnover though).

It is difficult to get accurate information about what is going on and why. Is it a combination of market conditions, and the fact that the SRA has raised the bar for being a regulated law firm so high, that explains why some firms are now facing this terrible situation? Another noteworthy point is that some firms that have been dropped by AON have managed to get alternative quotes, often by reclassifying their work as ‘commercial’ rather than IP. It seems the market has hardened more for IP than for commercial work in general. There is a particular problem if you have ‘US domiciled’ clients, and anecdotal evidence is that if your turnover is less than £50,000 you are unlikely to secure insurance as an IP practice.

Jeremy suggested we run an event soon where we invite an insurance broker along to discuss this whole question of IP risk. I am willing to organise this, and would also want to invite PAMIA along (PAMIA insures trade mark and patent attorney firms for extremely low premiums). I would be curious to know who insures barristers and whether they have a broker we could also invite along.

However, it would first be useful to establish whether there is sufficient interest for such an event. Please let me know here, or indeed let me have any comments by email or on this blog.

Domain names as property

Yesterday, I presented what CLT call a Webinar on the subject of domain names. I was inspired to devise the presentation in the first place because it was clear that other lawyers would talk about domain names, URLs, IP addresses and other things as if they were all the same thing, so a brief technical explanation (a brief one, composed withte dubious aid of Wikipedia, being all I was qualified to compose) seemed likely to be of some utility. I then realised that there was a further substantive legal issue involved, concerning how domain names are treated in law. Are they, or are they not, property? The fact that no-one told me yesterday that I am worrying unnecessarily encourages me to post this here.

The question is still open, of course, but there is at least a strong argument for saying that domain names registered with Nominet aren't property: the terms and conditions are pretty clear about that. But in transactions, domain names frequently do get treated as another type of intellectual property - and it seems to me that this might not work, and lawyers who allow their clients to proceed on this basis are doing them a disservice.

First, contracts and other documents (including many, if not all, precedents) include domain names in the definition of Intellectual Property. This is doubtful enough to begin with, but the consequence is that the document will purport to transfer or assign the domain names in the same way as everything else included in that definition, and worse still will give warranties to the effect that the transferor owns them.

The assignment clause, taken together with the further assurance clause (of course there will be one of those, won't there?), probably serves the purpose of getting the domain name registration transferred. It's not elegant, but it works. I don't think it's right for a lawyer to present his or her client with a solution that merely works, though: our job is to ensure that it is done properly, and that means that the contract should deal with domain names in the way that the registry says they should be dealt with.

It's the warranties that worry me most. If they state that the transferor owns the Intellectual Property, and the Intellectual Property includes domain names, there's a strong likelihood that there is a breach of warranty. Indeed, if the transaction includes a Nominet registration, the warranty is patently at odds with the terms and conditions of the registration. The breach may be de minimis, but surely no lawyer should allow a client to sign up to such a warranty. The problem is that, as far as I know, the precedents that our non-IP colleagues work from lump domain names in with the IP.

Authors wanted for Trademark Reporter

If you feel inspired to put pen to paper and write something about trade marks, may I invite you to consider approaching someone on INTA's Trademark Reporter committee - such as me? I'd be delighted to hear from you ...

An area for co-operation?

I received instructions from a friend in India today (yes, as it happens, one of my INTA running friends) to file a priority application for a CTM. When the papers arrived in a later email, it transpired that I have about 48 hours in which to secure the priority. He's still a friend, but he's living a little dangerously.

Not for the first time, I thought how much simpler life would be if I had a deposit account at OHIM. And then I thought, perhaps the SoloIP group could set up a deposit account for members' use. There would be some careful bookkeeping to be done, of course, but it struck me as something that we could do together that individual members probably couldn't. Similarly, a deposit account could be opened at the Patent Office. OK, you know the place I mean ...

Is there any interest in such an idea? Or am I actually the only person who doesn't have a deposit account already?

What's going on with Professional Indemnity insurance?

It is always interesting to compare notes when meeting other practitioners. So, it was reassuring on Wednesday when chatting with other sole practitioners to discover that the vast majority have yet to receive a Professional Indemnity renewal proposal. At least I'm not the only one I thought.

I have since asked around and found out that some SPs have already received quotes, but they are invariably clients of Zurich or Travellers. I gather there are only 3 insurers for IP solicitors - QBE, Zurich and Travellers.

Zurich seems to have been quick to tell those SPs they were not going to offer terms to. They were given at least 2 months notice. Other Zurich clients seem to have received their terms already.

However, it was only today following a lunch of (non IP) sole practitioners, that I discovered that no one has received a quote from AON. What is going on at QBE (AON's tied insurer)?

I know AON dropped some SPs only last week, which is appallingly short notice. But who knows whether it is just sole practitioners who have been kept waiting by AON.

It may comfort the sole practitioners who were there on Wednesday, and were clearly extremely worried, to know that IP lawyers are not the only ones who have yet to receive renewal proposals.

AON is certainly cutting it fine to leave law firms dangling for this long - especially given that some people filled in their proposal forms back in July. Whatever is going on - we will find out in due course. However, in the meantime, one has to question the wisdom of having the entire legal market renewing on the same date. Most firms I am coming across do not feel the current rules are satisfactory or make for a competitive framework.