Yours sincerely: newly-minted professionals, same old problems

Something for newly-minted junior practitioners to chew on

Here's a slow-burner: some four month ago, members of the Canadian Copyright and Trade-mark Law" LinkedIn group were treated to the following practice Question from Kieran Moore: "What is the best way for a newly minted trade-mark agent to build a practice? What are the best sources of trade-mark clients?" Although responses have not been coming thick and fast, the question is still active and readers of this weblog might wish to reflect upon it.

Leaving aside the two most obvious questions ((i) why would anyone want to build their own practice in a recessionary economic climate, (ii) why would anyone who knows the answers to those two questions want to share them with their competitors in the same economic climate?),  readers of this blog may want to meditate over the words of Bart Cormier as they eat (or, if business is that bad, steal) their Christmas turkey:

"There is no magic source of clients and it's unrealistic to think that anyone can become a rainmaker overnight. In my experience, it's hard for a junior professional to convince a client to trust them with their work.

...[U]se the next few years to become more visible in your local community. Offer to speak to industry groups on trademark issues. Join your local Chamber of Commerce and go to the breakfast events (free coffee and interesting conversation!). Volunteer for causes that you're passionate about. Get to know the industries and businesses around you and meet lots and lots of people. Help the people in your network by connecting them to one another.

Make an effort to meet your opposite numbers at the companies you'd love to have as clients. You currently have much more in common with a junior executive/engineer/marketer/accountant than you do with a Vice President or CEO. Meet these people now while they're on their way up. Learn about their companies and how they work.

Do all these things sincerely, because you're interested in other people; not because you're just looking for referrals ...".

This last point, in my opinion, is crucial. n the same way as many small children instantly detect insincerity in adults, many prospective contacts instantly detect insincerity in people who seek to obtain instructions or referrals from them. The big problem is how to be sincere ...

Lower Cost IP Business Advice

One of Hargreaves's recommendations was that SMEs needed access to lower cost IP and commercial advice. The BIS and IPO announced today that the IPO are going to consult businesses, business advisers and IP specialists on how this might be achieved. I can already see the professional bodies girding up their loins to defend the profession and say there is nothing wrong. FICPI have launched a survey designed to show that almost all firms of patent agents offer some free advice and do their marketing at events where entrepreneurs gather. Its true we do and Hargreaves knew that so his conclusion was not made in ignorance. What we need to work out is how the advice can be delivered in a way that is both trustworthy and usable by individual businesses.

• The call to the IPO. This is the most obvious first step for many. Not a bad idea. It connects you to someone paid £17k pa who has the whole of the wisdom of the IPO to call on.
• The British Library Business and IP section is a great place to go and get information and do your market research.
• Inventors clubs. These allow inventors to get together and share information. Leeds is just one example.
• On line resources such as  a BetterMouseTrap and IdeasUploaded that will link you to designers and others and provide plenty of shared learning experiences.
• University |Tech Transfer or KT offices. UCL and Greenwich have been particularly keen lately to help all local comers.

This is just a sprinkling of the offers for those intrepid enough to do the research. The mix of business and IP varies considerably from almost all IP at the top of the list to almost all business at the bottom. Mix was important to the Hargreaves recommendation and the professional classes are not very good at mixing it. Indeed we barely try.

So why are the start ups on the Silicon roundabout telling Cameron they are unhappy. Free advice is not enough for them. Its either an untrustworthy grant aided offer from the inexperienced (OK that's harsh but one thing an SME knows is that he is not competent to judge quality and price is often the best indicator of value) or pure marketing designed to sell something paid for (the classic offering we professionals make).

A conundrum

Could we design an ABS that would be *for profit* but not at the super margins of the City law firms but still of interest to shareholders. It would need staff and it would need to mix them up a bit and therein is the hard part because the trend today is for lawyers to become ever more specialised and what we are saying no you cannot do trademark oppositions all day, you need to be able to hack some proper advice about where the marketing budget should be spent as well. Its a tall order and people with those skill sets tend to be CEOs of large organisations not settling in the provinces on a £17k salary. Right we cannot staff it with individual super consultants so it has to be a consultancy that brings teams together and works with the classic pyramid of effort. Hey aren't the accountants rather good at their consulting offers. Oh SMEs cannot afford to go to Accenture. If our ABS IP/Business consultancy is to make a profit it either takes a range of clients and very soon - like large patent agencies and grown up venture funds (3i anyone)  - decides that start ups are not worth bothering with, or it takes real investments in the start ups. Might work. Would the start ups want to share their equity with their consultant. its not a novel business model. To some extent ?What If  do it and it might sound a bit like Intellectual Ventures. Anyone in?

Electronics patent attorneys, trees and haystacks

Pete Fellows' latest piece on employment in the patent attorney profession makes interesting reading. In "Electronics Patent Attorneys No Longer Grow On Trees But They Might Be Hiding In Giant Haystacks" (here), he suggests that a pre-recessionary state of affairs has apparently re-emerged:

"Towards the end of 2009 and through the beginning of last year, I noticed a very unfamiliar trend. That was, for the first time in a very long time, there were more patent attorneys with a technical background in electronics looking for work than there were jobs.

That was short-lived. 

In an absolute reverse of where we stood in February 2010, there are now many more jobs than there are people for them. The options for electronics patent attorneys are myriad and there is certainly no shortage of firms clambering over each other to find a new a recruit in this area.
However the picture is not necessarily as simple as it might sound. There do remain some difficulties for this now coveted category of Patent Attorney. ...

It might be easy to move private practices but getting a job in industry is still extremely difficult.... The problem is that there are quite a lot of Attorneys who do fancy moving but are not particularly interested in another private practice. These are the people that seem to appear from nowhere when an industry position arises. Salaries for industry positions are nowhere near what they were (and getting a bonus of any size can be arbitrary at best; as difficult as mowing the lawn with nail clippers at worst) and hence added to the tough competition for in-house positions is a need to compromise on earning potential far more than many are prepared to stomach....

It’s also not necessarily easy for Attorneys who either are, or nearly are Partners and wish to move to a competing firm. There has been an apparent and brutally quick upturn in work across the electronics sector but practices themselves are in many cases still suffering from at least two years of economic uncertainty. This has a few implications: 1) Equity Partners are less interested in reducing their own share of the pot; 2) Firms are less interested therefore in hiring attorneys that might be banging down the door for partnership; 3) This has meant that the surge in demand is really only at part qualified, newly qualified and recently qualified levels. Having a client following does help circumvent the politics to some extent, although as getting work in electronics is not really the problem for many firms it is far less attractive than one might think ....."

Do readers of this weblog agree with this analysis?

Licensing Seminar

Skipped away at lunchtime to the Tower - there to partake of luncheon and a seminar from @IPKat. The law firm, RPC were hosting in their glass castle set beside the water of St Katherine's Dock where once it was suggested OHIM might reside in London.

Jeremy announced as an appetiser that the idea of a small claims track for IP disputes that was suggested by Hargreaves is to be implemented.

Paul Joseph an RPC lawyer took us through the basics and differences between breaches of IP and contract. A bit of contractual interpretation law followed with reference to the leading cases ICS v West Bromwich 1997 on basic principles from Lord Hoffman, followed by AG of Belize on implied terms and finishing with the Supreme Courts Rainy Sky case advicating business common sense (2011 Lord Clarke). Then he tested our attention by seeing what we thought the punch line of a greeting card would be. It was the lesser of two Weevils so the intelligent follower will know he was talking about the Deakin v Card Rax 2011 case.
Trade mark licensing then came under the spotlight with special attention to competition law issues and territorial restrictions. Finally we touched on IP rights in products that turned out to derivative products in Global Coal.

We were then handed over to Neil Wilkof on the subject of sub licensing, a subject which has apparently not troubled the English courts, excusing a diversion into the more beloved US law. The Carey case is from 1964 and attempts to distinguish it from a situation where licensor gets someone else to produce the licensed goods. Next we had an intrinsic definition from Canada as opposed to Carey's comparative view. Next he strove to find a rationale for sublicensing. I wasn't sure why we needed one. We didn't need an excuse to create multi - level goods distribution. That was an aside as Neil is now into the delights of Scandecor and by point 5 he says let's forget the case law. The panic seems to be about never creating an unwanted agency arrangement.
Another of Neil's favourite US case is DuPont 1985 which comes from Delaware. There was a *have made* contract and then a contract to sell back to producer to deal with. This was to get round a prohibition on sub licensing. It was neatly tailored drafting but even so the Appeal decided it was a sublicense neverthless. You want more, ask Neil for the slides. There is no photograph because he keeps walking in front of the bright light.

The End of Representative Bodies

Back in April my professional body and that of at least some of you made an announcement seeking any interest for a specialist interest group for SOLO practitioners. I reported it here. In the October issue of the CIPA Journal the Business Practice Committee report that the suggestion is not viable. There is also an announcement that says:

In the April 2011 Journal, page 206, we asked for views from those practising as sole practitioners or in small firms, as to whether CIPA and ITMA could help establish some form of support network.
We received a handful of positive responses, but the overall level of interest was, we feel, insufficient for the Institutes to set up a formal support scheme at this stage.
However, we remain open to suggestions from CIPA and ITMA members should there be a desire to organise something in the future.We will also do whatever we can to support such future initiatives, for example in the ways suggested in our April 2011 note.
In the meantime, we will continue to help individual practitioners who need guidance and support from their representative bodies. Advice on specific business practice issues can be sought directly from the Joint CIPA/ITMA Business Practice Committee; more general information is also available in the Business Practice Guidance Note which is available through the websites of both Institutes.
We would also urge those who work in small practices to join the CIPA and/or ITMA LinkedIn forums. These provide a good way of keeping in touch with, and sharing experiences with, other attorneys, and a convenient mechanism for raising questions and initiating discussions.
If you are ever in need of support or guidance from either CIPA or ITMA, please don’t hesitate to get in touch with either Mick Ralph (MichaelR@cipa.org.uk) or Keven Bader (keven@itma.org.uk).

So where does this leave the SOLO practitioner in relation to our alleged representative body. Now that regulation has been separated out, we need to decide whether next year's subscription is really worth it.  Most of the work of CIPA and ITMA is carried out by volunteers drawn from the retired and larger firms and its not always at all representative of my thoughts on a topic. It certainly does not do a lot of canvassing of opinion amongst the membership. CIPA membership used to be essential to the student as a primary source of free professional education but all current educational offers are subject to a price tag. So will I pay to use the letters CPA next year?
If you are a member of CIPA what do you think

Mediation, IP practice and the good of one's soul

If only ...!

When an actor is out of work, he is never said to be unemployed: the polite euphemism is that he is "resting". Euphemisms for "unemployed" extend far beyond the sphere of thespianism, though. Thus a footballer who is no longer selected to play for his team is "regaining match fitness"; a politician who is voted out of Parliament is "considering his options"; IT consultants are "between projects", and so on.

Recent conversations with intellectual property practitioners -- both those who are unemployed and those who are underemployed -- have caused me to wonder whether we too have a euphemism for this condition. It's called "doing some mediation".

It's true that there are some fortunate souls who excel in this area, bringing not only satisfaction to those who engage them but creating and sustaining an income stream that, if not constant, is at least relatively stable and predictable. Many others, it seems, are only really dabbling in mediation as a means of keeping their hands in, retaining their sanity and temporising until something better comes up.

There are some good courses on mediation both within the IP sphere and outside it, and -- while there is little case law on the topic unless you count domain name dispute resolutions --while there is also a small but growing body literature on the subject, it seems to me that there is not much that's available on the subject which is so close to so many people's hearts, and that is their wsallets. How do you bill for your services with genuine conviction and turn IP mediation into a real living? Or is it, like a practice based on a minor IP right like registered designs, always likely to be the icing on the top of the cake rather than the cake itself?

IP/IT lawyers in India

I am trying to find a reasonably priced IP/IT lawyer in India to review an NDA and later, if my client proceeds with developers in India, a development agreement for an IPAD game.  This is essentially just a rubber stamping exercise as the document is written under English law, and drafted by us.  I would not expect to pay a lot for lawyer in India to read the drafts in order to let me know whether there are any changes required to comply with local laws. As I myself virtually always works to fixed fees, based on an hourly rate of £250, it came as a surprise to find Indian lawyers charging more like £450 an hour.    Does anyone know a commercially minded, less expensive IP/IT lawyer in India?