Thursday, 23 April 2015

INTA Badging Fiasco

Yesterday I received my joining instructions for the INTA Annual Meeting in San Diego. INTA is an
organisation for brand owners but the majority of its profits come from the lawyers who attend the annual meeting. These people are presumed not trustworthy and are liable to try and swap badges or gain entry to the exhibition without paying. Awful people obviously. I seem to be one of them.

This year there are no guest tickets. On registration we were invited to pay additional sums $100 for our guests to attend events like the Welcome Reception. Yesterday I was informed that there would be no separate ticket for my guest so presumably he will need to be by my side at all times to ensure he is not ejected by the fearsome security. The $100 price is stated to cover ">Opening Ceremonies and Welcome Reception Guest Ticket — Opening Reception Ticket" but it omits the Keynote Address. This is going to be interesting. I am making this post so that those of us who have genuine guests (spouses) can enjoy both keynote address and meet up to enjoy the reception.
 
I hope nobody booked an excursion for an unaccompanied guest, as there will have to be a fight over who gets the badge.

Exhibitors will not enjoy any footfall (or even a bit of help with setting up or taking down their stands) from guests this year either.


I remember fondly the years that badges were sent out in the post. Even with a 9am opening on Saturday I bet there will be a queue. I had not planned to be in San Diego on Saturday as I had not realised there would programming that day so that is one queue I won't join.  If you are staying in the Marriott Marquis San Diego Marina you are forbidden from meeting anyone without a badge. Hotel staff have presumably been instructed accordingly.

Free-riding is a bad thing but I do like a little trust. As a solo practitioner with no colleagues, having a guest with me helps a lot, buy hey ho, he will just have to hit the shops or the game. Maybe we should form a group of lonely would-be guests.

Still we attend the meeting for the educational events. The final programme is now on line and available on the App if you can remember your password. 245 Associate Solo Practitioners and me and my co-Blogger Jeremy @IPkat will be there, so lets hope the ticket barriers don't prevent us meeting up.

Thursday, 16 April 2015

The Moving Series Episode 5: Back To Naming Basics

Out in the wilds of Cumbria, we find Sally bemused that new businesses there are missing some of the most basic steps. Could be that its simpler and cheaper to make a few mistakes and Up North they are often less flash with the cash. Nevertheless Sally has a few FREE tips to avoid some of the more obvious mistakes when setting up a new business.

Here is what Sally has to say:

I hazard a guess that any professional move is going to involve “carrying on with what you do – but not necessarily in the way you did it before”.

Until the end of 2014, my office was often the only result on a search of the (old) website of ITMA for Trade Mark Attorneys in “Cheshire”. Now it’s the only office that appears on a search of the (new) website of ITMA for Trade Mark Attorneys in “Cum
Some Pitfalls a Trademark Attorney can't help with
bria”.

So there’s lots of experience (going back over some 24 years) of explaining both the services a Trade Mark Attorney is qualified to offer and how an Attorney can “add value”.

And (of course) this includes experience of trying to explain to any new business the relevance of checking (and double-checking) whether using a particular name might attract unwelcome attention.

Back in February 2015, Sean Gilday posted “Tell Me Your Invention!” so that he might direct

potential clients to this blog to put their minds at ease on the issue of a Patent Attorney’s (statutory and other) obligations of confidentiality.

Moving an office to a new location brings a new set of challenges and – whilst it’s not the way I would have done if before – I’m posting “Back To Basics” to follow in Sean’s footsteps.

Appearing below are draft paragraphs that see the light of day from time to time when any local business-to-business publication asks for “copy”. I’m posting here primarily so that I might direct any new business to this blog :
You may has registered a company and you (or your company) may own a Domain Name – but using a particular name might nonetheless attract unwelcome attention!
[ Draft paragraphs ]

1) Check at Companies House 

Whether or not you want to incorporate a company at the very beginning of trading, it’s a good idea to visit the website of Companies House . It was at www.companieshouse.gov.uk  but is now part of the portal at .gov.uk.

The “Company Information” section includes a search facility where you can type in the name you want to use and see whether others might be using this name in your line of business.

It’s a mistake to think that once you get your name onto the Register of Companies that’s all you have to do to be sure the name is yours. The website of Companies House includes warnings to this effect.

2) Check with Registrars of Domain Names 

 You’re likely to be running searches on the Internet to see whether another business already has the name you want as part of its Domain Name. All Domain Name Registries are obliged to provide WHOIS information. If you want to know more about a name in the .co.uk space (for example), then visit the website of Nominet at www.nominet.org.uk.  Another useful resource is http://whois.domaintools.com/

Please don’t be one of those people which thinks “I can have [name I want].co.uk – and that is all I have to do to be sure the name is mine”. A registrar site such as Europe Registry at www.europeregistry.com is useful for checking where someone may have claimed [name I want].co.uk outside of the .uk space. However when using a registry site to do searches be prepared to register as searched domains can be taken by those who monitor searches. If you feel domains are going to be central to your brand strategy talk to a trustworthy specialist registrar like Com Laude.

3) Be aware of the trade marks of others 

 Whilst you’re looking at the information that comes to you through searches on the Internet, take care to note any TM or ® symbols. And don’t ignore the “legal” information that’s often at the bottom of a web page: this often gives information about use of the TM and ® symbols.

TM simply means “trade mark”. As a trade mark is (obviously) any mark used in the course of trade, TM serves the purpose of warning that a business claims rights in (say) a name of logo. But use of TM doesn’t provide information on the strength (or weakness) of those rights. In fact, you might want to think of using TM .even if you haven't applied to protect it yet.

The ® symbol also serves the purpose of warning that a business claims rights in (say) a name or logo – but this time it’s “registered trade mark rights” and anyone that’s using a marks that’s the same-or-similar for same-or-similar goods or services risks allegations of infringement of “registered trade mark rights” under (in the UK) the Trade Marks Act 1994. If legal proceedings are taken, they can lead not only to a legal order (an injunction) to stop you using [name I want], but also orders for payment of sums of money (damages of an account of profits) to the owner of prior rights in [name I want].

4) The value of Trade Mark searches

If you want to avoid  for trade mark risk, the best way is to have a professional full availability search carried out against [name I want]. If you prefer not to use a trade mark attorney then the best resource available to you is TMView which will help you cover some of the similar names as well as those that are an exact match. If the UK market is all that interests you, then the UK Trade Mark Registry has a search tool for that here.

If you have been using [name I want] for some time without problems arising, you can file a trade mark application and the UK IPO will give you search results as part of the application process. Unfortunately they can miss some big risks and you may still find yourself faced with an opposition. Sometimes a larger brand may not be too concerned about a local lifestyle business but once that business puts its name on the register, it may be a completely different scenario.

The Duck says It really is worthwhile talking to your friendly local trade mark agent (especially if you are in Cumbria)

No client, no pay ..

The following media release from YouGov ("an international, full-service market research agency which is considered the pioneer of market research through online methods") brings some depressing news for solo/small IP practices in general.  More than one third of the consuming population in the UK are never likely to use a lawyer in their entire lifetimes -- and, if they do, it is likely to be for mundane activities like making a will, buying or renting a home or seeking compensation after having an accident.  What's more, most people who seek legal advice expect to get it for nothing.
Usage of legal services remains unchanged 
New research from YouGov Reports shows that a majority of consumers have used a solicitor or law firm in their lifetime. 
The Legal Services 2015 report finds that most adults (62%) have used a law firm or solicitor at some point in their lifetime; this remains the same as the previous report in December 2013. Adults who fall in the ABC1 social grade are more likely to have used a solicitor (70%) compared to adults in the C2DE grade (53%). 
Additionally, the report shows that usage of legal services increases with age. 85% of the over 55’s have used them compared with 12% of young adults aged 16-24. 
The research found that conveyancing and making a will and probate are the main areas of legal advice among adults who have used a law firm or solicitor in the last three years. 34% of consumers who have used a solicitor in the last three years, used them for will writing and probate services; this is followed by those who used a law firm for legal advice relating to residential conveyancing (24%). The third most popular area for legal advice is personal injury/accidents/medical negligence matters (11%). 
Cost of services is now considered the most important factor when searching for a legal representative. Three quarters of consumers (75%) reported cost as an influence when choosing a legal representative, up by 6 percentage points on the December 2013 survey. Cost has now surpassed experience and reputation of legal advisors as a factor, which is now the second most important factor (74%). 
The idea of solicitors charging for legal consultation the minute a consumer walks through the door is not popular among adults who have used a solicitor/law firm in the last three years. A majority of adults (57%) expected to receive free advice or information about their legal issues; only 7% did not receive this. 
Meanwhile, 29% of the adults who did not expect to receive any free legal consultation from their solicitors (43%) did not receive any. In total, 64% of adults report to have received free legal advice in the last three years – up by 6 percentage points on the December 2013 survey.  
In the last 18 months, one in ten adults (10%) contemplated paying for some legal advice but changed their mind. The main reasons for deciding against the idea was because they could not afford it (4%), it seemed complicated (3%), and they did not want to pay for further advice after initially receiving some free legal advice (3%). 
James McCoy, Research Director of YouGov Reports, commented on the findings: “Costs of services and fee charges now play a much bigger role for most adults using legal services. 
“There has also been an increase in the proportion of consumers who now receive free legal advice – whether expected or not - suggesting that legal representatives are becoming more open to the idea of providing free consultation.”
So the bottom line seems to be that most people -- even among those who need legal services -- are unlikely to come to you for patent, trade mark, design or copyright advice.  If perchance they do, they are likely to be more interested in your charges than your experience. When they ask for your advice they probably don't expect to pay for it and, even if they do contemplate payment, there's a good chance that they'll change their minds. But don't we know this already ...?

Wednesday, 8 April 2015

Amending your Business Structure

Many patent and trade mark agents in the UK were taken by surprise in the New Year to discover that they were ABS because someone other than a regulated person had an ownership interest. I understand that if you unwind this IPREG won't be pursuing you for illegal trading so there is likely time for agents to buy back the shares from their spouses or retire incoporated partners.
For the gospel on this do call the IPREG to make sure you have done it right.

Monday, 30 March 2015

If you can't be an author, librarian or academic ...

Delia Venables' and Nick Holmes's Internet Newsletter for Lawyers ("Making the most of the Legal Web") has long been one of this blogger's favourite reads. It serves two somewhat contradictory functions. One is to fill in his gaps with regard to how lawyers are coping with the world they can reach through their computers; the other is to reassure him that the people who write for it sometimes know even less than he does.

Anyway, the current issue carries a short piece by Delia Venables entitled "Author, librarian, academic, lawyer" which states, in relevant part, that
the most desired jobs in Britain are not what you might expect; they are not even the most reliably well paid ones. Instead of actors and musicians, it seems that an aura of prestige still surrounds the quiet, intellectual life enjoyed by authors (60 per cent of respondents would like to be one), librarians (54 per cent), academics (51 per cent) and lawyers (43 per cent). In most cases, men and women have similar views, although (surprise, surprise) men are far more likely to want to be train drivers, Formula 1 drivers, astronauts and MPs, while women are more likely to want to be interior designers and librarians. ..
These figures come from YouGov research, which also indicates that only 7% of respondents wanted to be call centre workers.

It would be lovely to know how many of the 43% wannabe lawyers imagine themselves as working for large, prestigious partnerships, surrounded by efficient PAs and paralegals and how many yearn for the independence and the freedom of working as a sole practitioner -- or the loneliness of being the only IP professional in an office environment which is inhabited almost entirely by people who work in other fields of expertise.  We should be told!

Saturday, 21 March 2015

Proceedings before the European Patent Office

Not many blog posts recently. I have been reading a new book from Edward Elgar . They kindly sent me an ebook to review but as its very attractively priced at £44 for the paperback if you buy it on line, I recommend it to all practising patent agents and trainees. Its been written by Marcus O. Müller (a chemist) of the Boards of Appeal of the European Patent Office, Munich, Germany,  and Cees A.M. Mulder, European Patent Attorney, Maastricht University, the Netherlands in the style of dumbed up  a FOR DUMMIES book.

What you get is a candid, accurate and informative guide to how the EPO's judicial process works. There are a myriad of out take  Examples and Practical Advice paragraphs designed to make the attorney more effective in this unique environment. How to play with added subject matter and Article 84 are just some of many ploys on which both seasoned and novice attorneys will receive enlightenment by reviewing this text and taking its lessons to heart.

It has been published with the approval of the EPO. The text is completely uncritical but the critical (but hitherto ignorant) reader might find themselves crying aloud about some of the examples given and there are lots. If you happen not to be experienced in EPO opposition procedure but have read suggestions that the procedure of the new Unified Patent Court should be more EPO like (or even that the IPEC procedure already is) , this book will explain what they mean and you should read it so you can stop that idea in its tracks.

However the EPO procedure is what entrepreneurs have, if they are to get a European Patent or a Unitary Patent in the future. You can't get to the wonderland of the Unified Patent Court if your patent can't survive the opposition stage.  Your competitors will take you there if your patent could be a problem for them or even if they just don't like you as costs are no deterrent. Normally each party bears their own costs - but Chapter 6 will explain when you might expect an apportionment of costs, but its not mentioned that it is ever to punish a vexatious opponent, and it is not. 

The book isn't aimed at inventors but one who has been to the EPO and may find himself there again defending a genuine invention may find it valuable. It will tell him not to employ an "old school" agent - who according to the authors' practical advice is one who writes the application with ambiguous terms, woolly stories, twists and turns, instead of in the way the EPO likes to see it, with a single, clearly defined invention, problem-and- solution approach, etc.The authors admit in their conclusion to the chapter on drafting issues that
"quite a few patents are lost after expensive opposition and appeal proceedings, even though there seems to have been an invention that could have led to a valid patent, simply because the original drafting of the patent application was not appropriate." 
PAMIA take note.

Although neither author is an English native, the book is very readable. If I had a trainee he would be reading it as required study in  his second year. I would give him a paper copy and check it at appraisal time. No dog eared corners and sticky notes would not be a good sign for his future career.  The insight it gives into how the opposition division and boards work behind the scenes is very useful. You learn how those alleged minutes are written and who is allowed water or recording equipment. You learn that its worth paying an appeal fee just in case and get the fee back if no one else appeals. I wonder how many appeals start because both sides appealed just in case.

This book is a valuable addition to sparse library available to practising patent agents. Hopefully it will be followed by other usable texts. We are now blessed with a whole academia of intellectual property that delight in studying the issues arising in big court decisions,  but much less is written to help agents make inventions become valid patents that will be valuable business assets. Well done Edward Elgar for bringing us something so usable.

Monday, 9 March 2015

Sally Cooper inquires into Damages at IPEC with Hogarth Help

Some weeks have passed since Hogarth Chambers travelled to Manchester (on 26th January 2015) to engage with an appreciative audience on “Current Trends in IP”. So this is a sadly-belated reference to work of Charlotte Scott on “The IPEC – one year on”.
Hogarth Chambers marketing image

A point made by Charlotte was that, of 14 cases reported in the IPEC since July 2014, 7 were damages inquiries or accounts of profits. Further, Charlotte noted SDL Hair Limited v Next Row Limited (and others) [2014] EWHC 2084 (IPEC) as useful on “general principles”. Mr Justice Hacon does indeed, begin “The Law” in the case [paragraph 31] with the firm statement: “I derive the following [nine] principles from authorities in relation to an inquiry as to damages”.

 I pause here to reflect that, but for Charlotte, I would probably have missed the case completely as it concerns damages in the context of “groundless threats of patent infringement”. Being a Trade Mark Attorney (and no longer an Associate of CIPA) I don’t find the time I once did for reading material that has “patent” in its title. I pause to reflect also that it’s good to have the [nine] principles to hand – both for the client who asks “What will I get if I win ?”  and for the client who doesn’t ask but who ought to be advised on the issue anyway. (The Duck quacks just in case you were interested they got £40,500 plus interest )

 To whet the appetite, the first five principles (with references to cases omitted) are:
(1) A successful claimant is entitled, by way of compensation, to that sum of money which will put him in the same position he would have been in if he had not sustained the wrong
(2) The claimant has the burden of proving the loss
(3) The defendant being a wrongdoer, damages should be liberally assessed but the object is to compensate the claimant, not punish the defendant
(4) The claimant is entitled to recover loss that was (i) foreseeable, and (ii) caused by the wrong, and (iii) not excluded from recovery by public or social policy
(5) In relation to causation, it is not enough for the claimant to show that the loss would not have occurred but for the tort. The tort must be, as a matter of common sense, a cause of the loss. It is not necessary for the tort to be the sole or dominant cause of the loss. I end with the thought that it’s good to see “common sense” having a part to play !

Charlotte also referenced the  NGRS v Staham case which delivered £5200 and is blogged on our big sister here.
The Duck thinks you might also like to check out Harman and Burge which applies the same SDL law to another fact scenario and came to £39,701 plus interest. 

It is sad to reflect that IPEC claimants with damages claims of this order will now be required to pay more in claims fees as a result of the court fee rise that came into effect today 9 March 2015. Valuing your claim realistically is more imporatn than ever if you dont want to pay a £10,000 claim fee for an unquantified amount of damages. Litigator duck quietly sails away into the sunset