Don't Hold Me Back

Dead Wood shackled in NZ by Sarah McMillan

One of the biggest obstacles to leaving your firm and going SOLO is the restrictive covenants in your existing employment contract. Equally if you are taking on staff these contractual terms matter if your firm's book of business is not going to walk out the door. Case law is infrequent so I took note when  Michael Scutt tweeted about his blog on the Farnsworth case.

In this case Mr Lacy had been promoted during the course of his employment but had not signed the new contract that he had been given. He sought to argue that the restrictive covenant, which was for 6 months and prevented him working for a competitor and soliciting defined customers, did not bind him because the contract lay in a draw unsigned.

The obvious lesson for the employers amongst you is not to crack open the celebratory champagne or pay the new salary until the contract is signed.

As always, this case is very much on its own facts. The problem arose out of the take over of Pooles of Wigan as reported here.  The Judge was (rather against his inclination ) deciding a preliminary issue as to whether Mr Lacy was bound by his contract and must suffer a few more months of an injunction that was already in place. He does. The Judge ending up relying on the evidence that Mr Lacy had applied for private medical insurance (PMI) for his family, a benefit to which the new contract entitled him.

The law applicable to the case is basic contract law (paragraphs 19 to 31). The judge had to decide whether the offer in the revised contract had been accepted.  The Claimant enforcing the contract carried the burden of proof. There needed to be "an unequivocal act implying acceptance" and in accordance with the Solectron test this must be "only referable" to his acceptance of the new terms.

While the Claimant started out with five possibilities: revised salary; provision of a better motor car;  enrollment in a profit related incentive plan; movement to a defined contribution pension scheme, and the application for PMI. Only the last was only referable to the contract. Sadly litigants often forget that winning on four points and losing one is still a loss.

Of course if you can't work for a competitor you might be able to set one up, but be wary of any reasonable solicitation covenants as even the legal advice may be expensive and inconclusive.

Selling for Solos

There is no shortage of marketing advice out there. Everyone seems to be prepared to offer me some service to develop my professional image and bring in new clients. Our Professional Bodies ITMA and CIPA are offering a Webinar that will tell us how to do it and it seems we have come a long way from the days when a brass plate and a tombstone advert in Yellow Pages were considered daring. Even the EPI consider that European Patent Attorneys can advertise

Advertising is generally permitted provided that it is true and objective and conforms with basic principles such as integrity and compliance with professional secrecy.

IPREG insists

Publicity and promotional activity of any kind by regulated persons is permitted if it is fair, honest, accurate and is not misleading and is not otherwise in breach of these Rules.

Networking - some of our bigger competitors are enjoying an #AIPPI2012 trip to Korea at the moment, article writing, and websites are now the norm.

This blog's co-found Shireen Smith of Azrights has gone one further in adding value to advertising material and is selling her educational and informative book to her target audience.

Our competitors are banding together in marketing groups like Quality Solicitors, who are also producing jolly TV adverts that can gain even greater publicity by social media, such as this.

While these methodologies may be perfect if you want to grow your business and recruit, they may not be ideal if you want to maintain a steady workload. For that, perhaps we need to nurture our existing clients and work referrers. Of course if you have been too successful with the marketing techniques, you can perhaps pass some on to another SOLO practitioner.

I would love to see some comments on how others are managing to control the workflow.

Party time: the Law Society may need you

This blogger understands that the Law Society for England and Wales will soon be recruiting new members for its Intellectual Property Working Party.

If you are interested in joining the Working Party, why not email Isabel Davies for further particulars? It would be good to know that, at a time when IP litigation has trickled down from the Court, through regular Patents County Court to the new small claims track, the experiences and understanding of smaller practices are shared with their bigger brethren.

Driving on the Small Claims Track

The barriers to enforcement of small IP claims will be lifted from 1 October 2012.
If you are an aggrieved designer, photographer or even brand owner, relief is at hand on the Patents County Court Small Claims Track. Question is how do you drive on it.
Are you eligible?:
Your claim must relate to a trademark, passing off, a copyright or unregistered design right and be worth less than £5000 and that presumably includes cases where all you want is an injunction to stop someone trading as you. But note that you must wait for the trial to get that injunction as there is no interim relief on this track.
How do you start?:
First write to the person setting out the problem as you see it and give them time to reply. Tell them what your rights are, what they have done wrong, what you want and when you want it by. The letter should comply with the pre-action protocol and should say so. Be reasonable and polite the court will see this letter.
If you don't get what you want you need to fill in your Claim Form. You need to set out the particulars of your claim and say you want the  claim to be allocated to the small claims track.
What does it cost?:
The fee depends on how much money you are claiming. For a photograph used without permission it only seems likely you will get more than the National Union of Journalist's Guidelines. See a judgement from the Court in Delves- Broughton v House of Harlot. If you want an injunction its £175 and if you want damages it adds from £35 to £120.

Where do I get help?:
From one of the regular readers of this blog who is a solicitor and will offer you a fixed fee deal. However it doesn't have to be a solicitor. You can use pretty much anyone if you are prepared to attend court with them. You can also use the free mediation service provided by the Courts. If you do use a solicitor there is minimal scope for costs recovery so expect to pay a fee for help and do a lot of the work yourself. Finally there is not a lot of court resource for this service so it all may take a bit of time if there has to be a hearing. However because you can have the matter resolved by the Court that is a big incentive for your claim letter not to be ignored as it may have been before.

The above is intended as something of a idiot's guide intended for  users rather than our email subscribers. Lots of lovely detailed chapter and verse can also be found on Jane Lambert's blog. Its also worth reviewing the Government responses to the call for evidence on this as published by the IPO in March 2012.

Patent Disputes in Proportion

The UK IPO is currently pondering how to expand its Opinion Service after the recent closure of the latest consultation.

I also note from the IPkat's recent post that the Patents County Court is still in full-blown self-congratulatory mode as it prepares to launch its small claims track (Legislation here Rule 10 ) so maybe its time to raise some issues.

There is no doubt that the new regime has made it practical and possible to resolve disputes using the court system. However, to deliver the real cost savings in litigation that make the costs proportionate to the dispute, it is necessary to conduct this type of litigation in a new way. The way I have chosen is to do it single-handed - eliminating the costs of communication between members of the team. Indeed, many litigants in the Patents County Court are representing themselves. These are the difficulties we all face:

• Communication with the court is a real problem. Phones don't get answered and emails bounce unless the court wants something but not if you do. In-person enquiries tend to be unproductive as well. You are on your own. The best a litigant a person can do is try the Citizens Advice and its current location in the Family Division tends to suggest its focus but they might help you fill an acknowledgement form and there is no-one in the Rolls Building who could even do that for a defendant determined to represent himself this month.
• The court filing system. It would be nice if there were one. I have never printed so much paper. It seems a waste that it serves no purpose.
• Application procedures don't quite work in the way described in the Patents County Court guide, where the court itself is supposed to decide whether a hearing is necessary. If you can't agree a date or even availability with the other side, it's a dead end or a long wait.
•  Time lines are long. The period for a defence was deliberately set long because the idea was as that there should be full pleadings (not just long ones). However, in patent cases where there has been protracted pre-action correspondence another 10 weeks can be a bit of a bitch to say nothing of the wait for a trial date. I was so vexed by the boast that a case could be decided in a day I tracked down the patent on Ipsum where you can find some of the pleadings relating to Invalidity in an infringement case CC11P03258  that actually started in September 2011 so a judgement in a year is nice but not seriously different from the timescale in Big Brother Patents Court. It also seems that these timescales are lengthening.  Let's hope that the fast-track does not put those who are looking to settle patent and trademark disputes into the long grass of several years.  It is inevitable that costs get greater if files are put down and forgotten rather than got on with, to say nothing of the impact on SME business that does not know if it is racking up a damages claim or not.

We might solve some of these issues with a bit of help and collaboration from the IPO. The trademark litigation section cope pretty well with a large number of files and you can contact it by phone and email. Although it doesn't have the ability to post its files to the Internet as the patent side does, hopefully that is coming. Let's see all the Patents County Court documents on line so that we can all know what's going on including the Judge.

Despite this I have managed to achieve quite a lot, but it does help being next door.

Somebody's Here : A Guest Response

The following is a guest post From Daniel Smart of Colman Smart in Manchester. He is a big IP supporter and once upon a long time ago (you can tell by the size of the computer) he even used to help support me. 

The recent 'Is Anybody There?' post left me thinking. How could I, or we, relieve this feeling of blogging loneliness and provide a contribution?

What is the main difference between large IP practices and solo or small IP practices (including those in-house)?

I suppose the key word here must be resources.

Learning resources are important when you do not have in-house trainings geared towards your specific field. Thankfully, there are talks performed by various professional bodies and even if you are not a member of some, you can often still attend them - and find out about them through the likes of the IPKat. However, external courses and seminars do not come cheap and there are, of course, time factors. Geography is a related factor. Few of us can attend all of them and we need to prioritise. We see the programmes in advance, but choosing the best ones to attend can be a bit hit and miss. Previews of upcoming events and reviews of past events could therefore be useful, perhaps?

Business support services can be a small, but critical, cog in managing a business successfully. Managed offices give you that peace of mind that your post will get taken care of, your phone is answered and the printer will always have toner and paper in (although much of this actually depends on the package you sign up to). However, how much value would you give to this? This should help you determine if the price is right. We have answerphones and we can divert calls to our mobile. Personally, I don't mind a trip out to the Post Office to send letters once in a while. It gets me out (as I am mostly e-mail working, like most of us I imagine). Saying this, arrive at the Post Office on a bad day and the wait can be quite long. I could also add that I am glad I don’t have to venture out today; thunder and rain where I am.

I am interested in what kind of record-keeping, formalities and paralegal support solo and small practices have or need. My interest is an obvious one as my firm specialises in this area. Ensuring you are stocked up on paper and toner may involve a trip to the likes of Staples on a Saturday morning whereas once you've counseled a client, completed searches, finalised a list of goods and established jurisdictions of interest you'd quite like to have someone else arrange for the 10 trade mark applications to be filed around the world? Of course, I've worded this in a biased way but I am merely trying to offer food for thought. You may prefer 'office admin' to be outsourced whilst retaining personal control over anything IP related no matter how routine.

How you manage the data of your IP portfolios can be important to ensuring an efficient running of your practice. I have recently blogged on IP databases - from large and small practice perspectives - so check it out if this might be of interest to you.

In the UK, many large law firms - and patent/trade mark attorney firms are also joining this trend - now provide platforms for independent practitioners to benefit from their support structures in place. They take a hefty chunk of commission for work introduced to you. When you introduce the work, the commission is much less. You benefit from being associated to the bigger firm and the backup systems, additional expertise and record-keeping capabilities. It is arguably more attractive to lawyers in the provinces that can then charge hourly rates closer to that of the City.

Best bank, best mobile phone, best technology, best networking events, etc. are aspects that seem to be ever changing but I believe we would be interested in any recommendations others have. These can also help you manage your business effectively and make best use of your resources.

Is Anybody There?

Small IP practices continue to be started. Some grow big and others stay small. The question that troubles my co-blogger is why, apart from me, no-one is particularly keen about blogging about the experience. Since this blog offers no rewards and has a small but entirely charming following, this is perhaps understandable. Nevertheless is it an excuse to give up?

Sometimes its useful to share news of an event that may not have caught your attention. For example the Bird & Bird associates are promising a most interesting offering on 20 September on the Unitary Patent System - that may well be of value to patent agents who have gotten rather bored of the litigators haranguing about their pet Articles and allow us to get our heads round, what it means for patent applicants.

Or you might want to spend £25 of your training budget with IBIL Questioning the Trademark Judges on 17 October 2012. But details of that and a great many more are to be found on the IPkat's famous forthcoming event's page.

Much of what a SOLO IP practitioner needs to know on the subject of IP is the same as someone in a bigger firm so that does not offer a special need.

There is a presumption that we all act only for small clients - which is wrong - because the best large entities recognise that a SOLO is the best way of getting a specialist on board - and so this blog should deal with the special requirements of the impecunious micro-entity.

Probably the only unique issue for the SOLO is those tools that help us to be uber-efficient. We should perhaps be carrying a review of Dragon Naturally Speaking 12 voice dictation software ; or a comparison of the best offers for Managed or Virtual offices; or the best business bank accounts; or whether its a good idea to join a marketing group.

If you would like to write any of those items or others do get in touch. Meanwhile have a great Bank Holiday