Saturday, 25 February 2017

CIPA consultation on CPD

CIPA Education Committee have produced a document which is fulsomely described as a Framework for Professional Development. They want our comments on it by 10 March 2017 so do jump to it - they clearly need help. I had hoped it was going to propose the end of the CPD hours culture in favour of results, but no.

The idea seems to be that they need to know what a qualified patent agent needs to learn in order to develop and maintain his professional competence. This will guide the educational provision.

Once one has got over the "Teach Speak Jargon", we find that they believe we need to have skills, knowledge, values and behaviours. I accept that skills and knowledge can be learned taught and developed, but I am not too sure about the last two. Once upon a time lawyers studied ethics which generally dealt with the practicalities of not acting for both sides in an argument and managing the clients funds but such practical issues don't seem to be within the scope of this framework. Least said about "behaviours" the better.

Let me turn to what I do understand. There are lists of skills and lists of knowledge.

At the end of the list on knowledge we have:
2(g) a member should have a sound understanding of the law and practice as it relates to designs, trade marks, copyright, licensing, due diligence, contract and competition law to enable them to identify the implications of such laws and practice for clients and to enable them to refer clients for further professional advice and guidance as relevant and appropriate
Frankly this narrow focus on patent practice is disappointing. Now that CITMA has its charter are we dropping our interest in the core intellectual property fields of trademarks, designs and copyright? I think we need to put Mr Ferrara right.

The list of skills is extremely flowery. Some are the basic drafting skills that are a prerequisite for qualification. Other so-called skills are frankly patronising : do you want to be trained in how to "be able to adapt style and approach to meet the needs of clients".  One skill that seems to be particularly important is managing the expectations of clients who expect their unadapted applications to be examined any time soon by the EPO or UK IPO.

This list does not provide any suitable structure for developing educational offerings.

When seeking education, focusing on knowledge always helps. The core of the CIPA offering needs to be keeping up to date with developments in IP law in our home jurisdictions. The suggestion that the same level of emphasis needs to be placed on ALL overseas jurisdictions is odd. Its all too easy for CIPA to succumb to visiting overseas' professionals desire to give "marketing" updates in the name of education. Education in the laws and practices of the main trading partners of this country is what we need. We need to direct our eager marketing volunteers into discussing practical issues that are likely to be relevant to our local clients.

Item 2(f) : approaches to competitor IP is not knowledge -its a skill.

The values and behaviours are the province of IPREG and codes of conduct.

An educational framework needs to be more skeletal and be a tool that those organising programmes and events can work with. This framework does not seem likely to help.

We need courses and support on:
  • keeping up to date on IP law
  • improving  skills of drafting and advocacy for preempting and responding to office actions
  • developing litigation skills
  • listening and receiving feedback from users of IP on what they need
  • managing our own businesses - includes ethics
What do you think you need CIPA to provide for you?



Saturday, 18 February 2017

IP Entrepreneurs: the practical checklist

CITMA magazine in February 2017 published an article under this title with contributions from a panel of  trade mark attorneys who have started out independently. If this has inspired you, here is a more practical checklist (in no particular order). We have covered quite a few of these issues before so its always worth a read of the archives particularly Sally's Moving Series from 2015

Legal Structure

Sole trader or incorporate a company. A company keeps your business life separate from your personal life but if you are going to be regulated don't do anything clever with the shares or you may find yourselves a one man ABS. Creating a company is ridiculously easy but maintaining requires  a little more effort. It may be worthwhile using a company secretarial service who can help with . I use Goodwille.

Accounts

The article emphasised the value of getting a good accountant you can work with long term. Bookeeping is vital from day one and it makes sense to decide whether you will outsource that - maybe to your compnay secretarial service - or do it yourself.  Software is readily available and it helps if your accountant can read your data. After many years using Sage I have converted to the Clearbooks online system that can cope with multicurrency accoutants and is very handy for my EU IPO and EPO deposit accounts.

Bank

Keeping business money separate from personal money is vital so you will need a bank account. Thats not as easy as it was. A bank with a good online banking interface is useful for avoiding excessive costs. I use Barclays. I've tried Lloyds which was quite helpful in providing a debit card which is useful for paying fees on websites. Business credit cards may not be that easy to get hold of on day one.

Funding

You do need some start up funding and not just to live on before you start paying your own salary. Starting softly as a tied consultant to a former employer can minimise the sums required. If you are using your own savings then recording your loans is vital so you can pay yourself back once bills get paid.

Regulation

If you want to benefit from advertising yourself as Chartered you will need to deal with IPREG and that means creating your terms of trade consistently with their requirements and creating some policies and procedures.

Insurance

Even without regulation some professional indemnity insurance is desirable. PAMIA is the goto service for most pure IP attorneys. Other insurers are available. Don't forget to put a limitation of liability into your terms of trade too.

Office

You need somewhere to work especially if you intend to employ other people. A solo practitioner can work at home with a laptop at least to begin with.

Record Keeping

For a trademark or patent attorney having some way of maintaining records is important. I use Marco a system that Filemot licenses to others at very reasonable cost. its based on Microsoft Access. Today folk seem to want web based services like WebTMS and others are available. Please comment if you have your own recommendations.

Clients

This can be an issue. If you are coming out of employment, restrictive covenants will stop you workign for you old clients, but only for a period. Business networks, contacts of all sorts and advertising will find business. If you look at the number of "agents" names appearing in the UK Trademarks Journal that include the word "trademark" you will appreciate just how much business is driven today by GoogleAds. However these are expensive clients to procure, very price sensitive and seldom provide repeat business. Working all possible work referrers is the best method. Let your satisfied clients know that you would love it if they mentioned you to their contacts. If you dont ask for referrals you won't get them. Some say you need a website or use social media.

Payroll

The whole object of workingis to generate income so you need to pay yourself and contribute to your pension (even if you dont want to -its the law). HMRC has a lot of helpful information and tools for new employers including free payroll software to calculate PAYE and NIC.

 

 


Monday, 30 January 2017

Patent prospects in an uncertain world

From our individual silos, it is often difficult to ascertain whether a downturn in patent  instructions is just affecting us or part of a larger decline affecting everybody. Clearly the source of your patent work will determine which factors are most influential on your practice.

There is only one firm of patent agents which is listed on the stock exchange and which therefore has an obligation to publicise its results and provide guidance on its profit expectations. This is Murgitroyd Group PLC, a business based in Scotland but with a substantial European and worldwide footprint. I have a small investment in this business. Today (30th  January 2017) they published their interim results. Last Tuesday, 24th January 2017, they issued a trading statement. As a result, their share price which had a 52 week high of 570p has suffered a rather substantial decline. At the time of writing I could buy a share at 382p. Given that their board still expects "to announce a modest increase in dividend at the interim stage" 5p on 23 March if you are on the register by 10 February, it's quite an impressive return at least for the moment.

So what do we learn from them about the reasons for the admitted dip in profits. They say that revenue has increased (benefiting from the sustained depreciation in the value of sterling -  otherwise it would have been broadly flat) but there is lower than anticipated revenue growth -that would be none then. This follows an acquisition and organic expansion so it does suggest that the attorneys are not working as hard as they did in the previous year or that they are charging less for their services.

Obviously they blame uncertainty, but is there evidence of the reasons for the underlying fall in demand? Murgitroyd can and does invest in business development and is probably better placed than most of us solo practitioners to try and grab a bigger share of the market. The chairman's statement says that they are taking measures to address the level of administrative expenses including the scale of investment in business development activities. Some of those business development activities will be denominated in dollar or euros so it's going to be a hard act to keep them down.

The chairman's statement doesn't make much of their unique position to retain EUIPO business. He does mention the Unified Patent Court, but purely in a factual way. We do not know whether he sees it as an opportunity or a threat. He is not prepared to big it up, so let's call it a threat shall we. All we get is that "the UPC will bring with it new challenges and opportunities" but the question is to whom.

Murgitroyd generate substantial revenue from North America (49%) so may be more vulnerable than you are to the tightening of the budgets of US mega filers.

Murgitroyd divide their revenues between their administrative work (34% of total revenue) and the attorney practice group.  They mention their November 2016 introduction of a new online annuities platform. This is for clients and there isn't much price comparison information to indicate whether this service is competitive with some of the horrendously profitable other commercial offerings.

These statements are made to investors most of whom are not patent attorneys and have little understanding of the patent business because they only have an opportunity to invest in one of them. Nevertheless, do read between the lines.

All comments are greatly appreciated and of course this is not investment advice.

Tuesday, 24 January 2017

Finding a Trade Mark (or even a Patent) Adviser

IPO IP Events
The UK IPO does an excellent job in promoting the benefits of intellectual rights to business. Its programme of events offers workshops round the country and also promotes some third party events for business, but professionals should keep an eye on it too. The consequence is that an increasing number of trade mark applicants are unrepresented. Some of these applicants are developing portfolios of significant size.

These go it alone business men sometimes save themselves some money on external advice but on other occasions, the exercise incurs expensive fees, takes up valuable management time that could be better spent and delivers inadequate protection. Recently I spotted a series of three separate trademark applications filed by a new business based in Bath. The first was plainly a pure description and has been withdrawn. The second, a simple logo, also withdrawn. The third an elaborate logo, now published. All marks included the geographical name so its clearly intended for a local business so a national monopoly might not be that helpful.  The other time a lack of representation may be a handicap is when an opposition comes in. The natural response of an unrepresented applicant can be to waste a lot of energy producing irrelevant evidence. A short session with an adviser is worthwhile when you need to assess an opposition threat.

How would this applicant have found a cost effective adviser? The first instinct would be to search the web and we know there are good trademark advisers in Bath and nearby Bristol as well as excellent solo members. Google delivers a reasonable result but does not distinguish between the unqualified advertisers and the regulated adviser.

Our business owner could have gone to the IPREG Find An Attorney site and found a very reliable result. He would not have discovered that opportunity in his Google results, but it is by far the best way to look for a local adviser.

You might expect the Chartered Institute of Trade Mark Agents to help you find a member. Not all registered trademark agents from the IPREG site are Chartered but all of those on the IPREG site are qualified and regulated.  There is a nice orange button marked Find an Expert on the site and that will lead you to a public search tool that delivers very unhelpful results on a map, so if that's what you get go search on IPREG.

Maybe its time CITMA went on a membership drive in order to help the unrepresented find helpful advice.

Tuesday, 10 January 2017

Say a good Farewell to EU IPO practice

There will be no gold clocks for retirees from EUIPO practice
All the UK practitioners (including myself) that cannot claim an Irish passport or buy a Cypriot or Maltese one, will shortly find their careers as EUIPO representatives ended as a result of Brexit. I undertstand that some continue to hope that our businesses will be saved but while that would be welcome, it isnt to be expected within the complexities of the negotiation that must deliver a departure to which we are unlikely to be able to attach conditions. Concessions may come later as they did for Swiss Norwegian and Icelandic representatives.

Nevertheless, there are a few years of dealing with the office to go and we should use them to show that a UK lawyer is always worth having on side especially a chartered trademark agent.

The EUIPO runs a system that is constantly evolving and evolved in quite a significant way in March 2016 with the introduction of the revised Regulation and Implementing regulation 2868/95

Just in case you had had not noticed European Union trade marks expire 10 years after the date of filing and must now be renewed prior to the expiry of the registration. (Article 47 (3)). You used to have until the end of the month. Not any more  and a day late means a 50% surcharge ouch.  I expect you knew that but I just thought I'd remind you.

Another little improvement I noticed is in Article 50 which came into effect on 23 March 2016. This provides that the validity of a surrender made after an application for revocation (non-use or genericide - see article 51 for the grounds of revocation)  is now conditional upon the final rejection or withdrawal of of that revocation. Before this change you could apply to surrender before the decision so that conversion could be made into the territories where you had use.  This option is no longer possible.  In the amended guidelines Part E which came into force in August 2016, it says that the other party in the cancellation proceedings will be notified. Indeed in today's webinar on the new guidelines the presentation says that the cancellation applicant will be invited to comment. However there may be subliminal surrenders prior to August where the cancellation proceedings are continuing unawares.

This amendment also means that getting in an application for revocation of a non-use is an even more powerful technique against an EU trademark, which may be in use only locally. Since use is exceptionally difficult to prove a cheap revocation is a mighty powerful weapon that makes everybody's EUTM extremely vulnerable. By contrast, hearing officers in the UK IPO are much more likely to believe your proof of use. They even assume that witness statement are true.

I made the case that EUTM were mis-sold back in 2015 . Now that we are faced with Brexit, it appears that many non-EU applicants are filing both EUTM and UK national marks simultaneously. If you're thinking of opposing a EUTM do check, you may have to file two oppositions, but the canny chartered trademark agents of the United Kingdom are already aware of that.


Monday, 28 November 2016

Immunity from threats actions for regulated lawyers survives an unexpected attack

The Intellectual Property (Unjustified Threats) Bill has been making its way through the stages in the House of Lords and has finally been published again in the form in which it has been reported back to the House for its third reading before it goes to the Commons.

This is a bill that deals with unjustified threats of infringement in respect of registered rights and design right. It tries to create a balance between what the owner of the rights can say and those that may be affected by unjustified threats. It also allows immunity to professional advisers who are acting on instructions. This is probably the most important bit.

It only covers patents, registered designs, design right and all forms of registered trademarks. If you own copyright you can continue making unjustified threats without reference to this new law when it is finally enacted. This is perhaps because there was no previous law on unjustified threats of copyright infringment to be amended to bring them all into harmony. In the 2014 report the Law Commission said "We have not been asked to look at threats of copyright infringement, which raise different (and highly contentious) issues." 

This page, provided on the UK Parliament website, links to the various stages and documents relating to this Bill (but not the oral evidence I tweeted about).  The Law Commission also has a useful page showing the historical background and consultations that led to the Bill

I was rather surprised when I read the debate on report that there was resistance to indemnifying the professional representatives from a somewhat unexpected quarter - a former patent attorney, Sharon Bowles (as she was when on he register, before becoming a Baroness) . She tabled an amendment that would have required the instructions to be "specific". You can read the discussion in full here. Essentially, like Robin Jacob's evidence, the amendment was meant to probe the risk that some professional advisers might be wayward and that those from overseas who are still exempted if regulated, might not be disciplined by their regulators for taking an aggressive common cause with their client. While there are exceptional cases, the serial copyright infringement threatener (2009-2102), Andrew Crossley for example, it would be unfortunate to lose the protection that is so much needed by the vast majority. Only once have I and my then firm been personally threatened with an unjustified threats action. It did indeed turn out to be fatal to the client relationship even though it was not pursued. Accordingly, I was personally pleased that the amendment was withdrawn after a spirited defence of the underlying principle by the current Baroness who is  Minister of IP. She also took the opportunity to clarify that the indemnified professional advisers include those in employment.

Saturday, 26 November 2016

Buying Time for Christmas: a guide for UK Trademark Opponents and Applicants

This is the season when many trademark agents look at their docket and realise that some of those imminent deadlines (and maybe even ones early in the New year) can't possibly be met now that their clients have run off to enjoy the Thanksgiving holiday without providing the material that is needed for their evidence in a UK opposition.

If you read The  Manual of Trade Marks Practice  - the bible of practice published by the UK IPO -  Paragraph 4.9.1 of the Tribunal Section chapter at page 438, you will obtain the impression that extensions are not readily available:
"The timetable is to be adhered to. It provides more than enough time, in the vast majority of cases, for facts or submissions pertinent to the pleaded grounds to be gathered and presented to the Tribunal. Parties should not regard this timetable as a ‘starter for ten’, to be varied at a later date. The Tribunal will, in exceptional cases, consider requests to extend the time allowance. Such requests will need to be fully supported with explanations as to not only what has been done to date but, more particularly, what is left to do and how long it will take to produce the evidence. The Tribunal will also need to be satisfied that the extra time is warranted in the context of the pleaded grounds and what is necessary to determine the case efficiently and fairly."
Therefore a trade mark applicant might reasonably expect things to move along. For the new business applicant this can be necessary, especially if there are investors concerned about a shadowy or real threat of infringement proceedings following on from a successful opposition.

If you read the cases published on extensions you will find this hard line endorsed.

But wait. This is not the full picture.The decisions on extensions that are published are the ones where a refusal of the extension decided the whole case. If the extension is allowed the reasons don't get published. This is an omission that could be rectified if interim hearing decisions were published.

In ZILLION O-193-16 Ann Corbett refused a retrospective extension of time. It was a cancellation action, rather than an opposition and it would have been possible for the case to be re-started. Nevertheless, Ms Corbett held
"Despite the fact that evidence has now been received, and notwithstanding that this may lead to the commencement of another action between the same parties covering essentially the same subject matter (a matter on which the applicant may wish to consider seeking professional advice), I was not persuaded, in the circumstances of this case as set out above, that the requested extension of time should be granted. The request was therefore refused."
Note that these were litigants in person and you, my friend, are more likely to be a professional and know that you regularly get extensions with the flimsiest excuses if the evidence is in by the time of the hearing and there are other grounds so that the case will not close. If you have  a decent reason and can show reasonable efforts you are even likely to get the extension in response to a request without a hearing.

If the UK Registry provides an indication that the extension will be allowed there is absolutely no point in the other party objecting. It will be futile and will simply increase their costs and costs exposure. Never do it. Hearings arise when the UK Hearing Officer is minded not to allow the extension. When the requesting party would prefer the initial indication be maintained they will likely put some effort into preparing for the hearing. The first thing to do is ask your counterpart if they plan to have evidence submitted in time. If they do, back off and forget it. Of course they may deceive you, which is unprofessional, or simply not answer.

If you fail to have the evidence ready for the hearing life can be harder as even a professional representative found in ALOHA  where on 27 April 2016 Heather Harrison refused an extension to an opponent without completed evidence, with this level of reluctance:
Whilst I am satisfied that the reasons in support of the original extension request were sufficient to justify the length of time granted, nothing has been provided to persuade me that the opponent has taken any steps to finalise its evidence in the intervening period. Whether the parties continue to negotiate is clearly a matter of uncertainty. In making my decision, I have kept in mind that an apparent lack of diligence by a party does not mean that an extension cannot be granted. I have also considered Ms Hobbs’s request that I impose a further, final deadline and I have some sympathy for her position. However, in the absence of any information about the current state of the opponent’s evidence, let alone an assurance that it is near completion and will be filed imminently, it would not, in my view, be appropriate to allow the opponent further time
Once again this decision only came to be published because it led to closure of the opposition file.

You should copy the other side and the Manual suggests in bright green letters
"Failure to Copy to the Other Side or to Provide Detailed Reasons Will Result in Refusal of the Extension."
This is also not true, but why risk it.

There are also alternatives to an extension. If there are negotiations or you could initiate some, you might be able to persuade the other side to agree a stay. That has the bonus of not requiring a fee, but you do need consent and you still need to support it with convincing reasons for the request. Turn to page 439 and section 4.9.2 of  The  Manual of Trade Marks Practice  .

So if you need to buy time, remember:
  • your reasons
  • your fee (yes sometimes lazy opponents try to avoid the fee - a retrospective request also costs more)
  • that you do need to have the evidence complete before any hearing
  • it would be helpful to have some non-evidential grounds and a reasonable prospect of being able to start over