Sunday, 17 August 2014

Reviewing the Written SOLO Complaints Procedure

If you are regulated by IPREG you are required to have a written complaints procedure (Rule 12 of the Code of Conduct) if by the SRA, its an indicative behaviour (IB1.22 under client care ) rather than a micro-managed obligation.
Ways to Complain?

Since the only complaint adjudicated and published  by the Disciplinary Board of IPREG concerns the absence of such a document for which the the Board decided on 9 September 2013 that the agent had
"breached his professional obligations over a long period of time in a significant way and the Board therefore imposes a fine of £500 to reflect the serious nature of this breach " ( the Duck says yes really that's what it says - IPREG won't get rich this way especially as it did not ask for costs to the surprise of the Board )

It seems useful to consider what your complaints procedure might look like for a SOLO as opposed to a sole practitioner (who might have complaints arising from work done by his staff).

The client of a regulated SOLO must be able to complain and the only person he can complain to is you so terms of trade need to draw attention to that and indicate that for some clients (individuals and micro-enterprises as defined by the EU) there is a right to refer the complaint to the Legal Ombudsman (LEO) so bearing in mind that the complainer has to give you 8 weeks to deal with the complaint, this is what has to happen:

  • identify the complaint as a formal complaint
  • ask for the complaint to be set out in writing
  • notify your insurer (its not a claim a this stage but its always good to put insurers on notice)
  • acknowledge the written complaint and indicate when you will reply (2-4 weeks would seem to be reasonable depending on what investigation is needed and whether your insurer would like to review it)
  • prepare a written response and resolution proposal including details of his LEO rights if any
  • sleep on it
  • send it
  • follow up within 8 weeks of identification.
Obviously how it goes depends on the nature of the complaint. Larger firms refer the investigation and  response to a more senior partner which offers an independent eye as there can be a tendency for the person complained about to go "head in sand". As a SOLO you simply cannot do that. As well as notifying your insurer you could contact a trusted professional friend. This may well help with the resolution proposal. You might think your professional body could help. At the moment, I doubt it, but its certainly a service they could think about offering to members.

LEO has now handled a number of complaints from the IPREG - regulated but does not publish details.

Since the LEO compensation options are limited, expect a professional negligence claim if the client is after substantial compensation. As can be seen from the published judgement there is not much in it for the client when complaining to IPREG.

There is no copyright in that bulleted list.  I commend it to the public domain, if it is a literary work (which is doubtful). Please feel free to offer your own versions of this apparently essential document.

Wednesday, 13 August 2014

Who is filing the unsearchable UK Patent Applications?

Is the UK IPO flooded with patent applications? That seems to be the implication of the observed backlog and the newly published discussion document on the publication of patent applications. You can find it here and the IPO would like your comments by 26 September : note thats 11:45 pm and not close of business.

The implication of the document is that a lot of people are filing patent applications for the sake of getting a publication which they can be certain will go into the search files of other patent offices properly classified. The IPO think that it is a waste of time them searching these cases. That implies to me that they are software related and perhaps filed directly. The document refers to the practice of action before search (ABS). It's supposed to put a brake (pun intended) on these applications by promising to refund the search fee if the application is withdrawn. That gets rid of 75% of the hopeless cases, but the remaining 25% are a problem.

So I wondered where they come from. I have only ever had one ABS and that was a case which was filed as a priority document and destined to enter the US backlog. Generally I turn away the hopeless cases. The cost of drafting a hopeless case is a high price to pay for a publication.

One solution that struck me on first reading this document was that they could simply give themselves the option of deferring search until examination is requested. The Act already gives the examiner the ability to determine whether or not the search would serve any useful purpose (section 17 (5)). A more aggressive use of this power might enable applications to be published and further action delayed until the applicant requests examination. If he only wanted publication he won't request examination.  That still leaves classification to be done.

I'm writing this blog so that you can tell me where you think these applications come from. The document is a little coy about who the applicants are that don't want a granted patent. Who are they protecting?

I greatly value the prompt and efficient searches carried out at low cost by the UK IPO for my entrepreneurial clients who would like to know where they stand before shelling out extortionate substantial PCT fees. Therefore, if there are problems down in Newport that are overwhelming our examiners, we should look to help them out. Even an increase in the search fee might be tolerated. Could we have a sliding scale for the more hopeless fields? 

Thursday, 7 August 2014

Looking for LPC funding? Here's a straw to clutch ...

Small and solo IP law practices in England and Wales are not the most likely destinations for trainee solicitors, since in many instances their resources and the breadth of training experience they can give, added to the responsibility of providing adequate supervision, make the adoption of a trainee an expensive and difficult venture.  However, wannabe solicitors in England and Wales who can't find a law firm to fund the cost of their attending the Legal Practice Course (LPC) and who can't finance it themselves may wish to note the following competition, announced in today's Legal Web Watch:

LPC Scholarship from Datalaw to be won

Datalaw, a leading legal CPD provider, will pay the tuition fees for the Legal Practice Course – a prize worth up to £12,000 – to the winner of its new competition. The competition is open to paralegals and trainee solicitors in England and Wales who are available to start their LPC in September 2015. Applicants will be asked to answer a series of questions posted on the website. From the responses, 50 hopefuls will be selected to write a blog or submit a five-minute video explaining why they want to become a solicitor. Those submissions will be assessed by a judging panel, and a shortlist of 10 candidates will be chosen for a final interview with the winner to be announced in mid-March. Details can be found here.
It would be great if the winner of this competition were an IP trainee -- and a reader of this weblog.  If you're interested, go for it!

Entering a competition in the desperate hope of getting LPC funding does rather smack of clutching at straws. However, there are indications that this competition may be run on an annual basis so, if you can stay afloat for a year, you may just have another chance.

Wednesday, 6 August 2014

Competing with supervised pro bono students

From our good friend and Afro-IP blogger Kingsley Egbuonu comes this link to a news item, "USPTO Adds Additional Schools To Law School Clinic Certification Pilot Program: Newly selected law schools to join the patent and trademark programs in fall 2014".  According to this item:
" ... The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the selection of 19 law schools that will join the USPTO’s Law School Clinic Certification Pilot Program this fall. Five law schools will join both the Patent and Trademark portions of the Program, four law schools will join the Patent portion of the Program, and ten law schools will join the Trademark portion of the Program. These law schools join the 28 law schools currently participating in the Program.

The selection committees chose these schools based on their solid IP curricula, pro bono services to the public, and community networking and outreach. The Program enables law students to practice patent and/or trademark law before the USPTO under the guidance of an approved faculty clinic supervisor.
“Expanding the USPTO’s Law School Clinic Certification Pilot Program will provide more students – future intellectual property lawyers – with the real-world experience and tools crucial to tackle the complexities of today’s IP law landscape. [said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee] The addition of law schools and students in the program will also increase pro bono representation to American businesses and entrepreneurs, thereby helping ensure they have the resources to grow, create jobs and compete globally."
The participating law school clinical programs provide patent and trademark legal services to independent inventors and small businesses on a pro bono basis. Clinic clients can expect to receive searches and opinions, advice from clinic law students regarding their intellectual property (IP) needs under the supervision of a faculty practitioner, drafting and filing of applications, and representation before the USPTO. The law school clinical programs possess solid Intellectual Property curricula supporting a participating student’s hands-on learning in the Program; a commitment to networking in the community; comprehensive pro bono services; and excellent case management systems. Students in the patent and/or trademark portions of the Program can expect to draft and file applications and respond to Office Actions. Each law school clinic must meet and maintain the requirements for USPTO certification in order for student practitioners to practice before the USPTO".
This blogger is fascinated by this scheme, but he wonders what impact it has on the environment in which small and sole practitioners operate.  Many such practitioners may act for large corporations where they have a long-standing relationship with them, such as where they opt to go solo (or are involuntarily outsourced) after working for them in-house, but few will routinely pick up work from the major IP owners. It is therefore largely from the pool of smaller clients, start-ups and SMEs that they will receive instructions.  In the US, at any rate, small practitioners can now expect to compete with students enrolled in accredited law school programmes, offering free and highly supervised services. Unless the pool of prospective clients continues to grow, one might be forgiven for foreseeing tough times ahead for some small-timers, unless they can make a valuable selling-point of the degree of continuity in time that a qualified practitioner can offer and which the advice of even a well-supervised student lawyer may be hard to replicate.

Tuesday, 5 August 2014

Will a division please bid for my EPO files

I was a bit shocked to receive an examination report from the EPO reprimanding me for addressing a response to the Examiner and not to the Division
Now we all need to encourage the EPO in their mission to work more efficiently and provide better service. There were no personal remarks in the letter. While it is tempting on occasion to criticise the examiner's understanding. It is never helpful so I don't do it.

Back when I first began responses to office actions were wrapped in ribbon and couched in very formal terminology. None of that was at all helpful in developing a forceful and effective argument.

The exam report comes with the name of the examiner on it. This I had thought was to facilitate communication. Sometimes I try to call examiners to clarify a point. This is a lot easier in the UK IPO than at the EPO. It seems to me this is helpful to the efficiency we need.

If you consult the guide intended presumably for unrepresented applicants, it does not make demands for Dear Sirs responses.

Is there a role for a less formal layer of communication with agents? It would need to be voluntary. In this case the objections were all formal or might be thought so. A call or an email with a proposal might get the whole matter sorted more quickly. Now I am left wondering whether I will be hit with an added subject matter objection if I delete the "about" the Examiner says is unclear. I am not a division. I am a Solo so no pair of supporting acts to ask about that. On balance I think not but its going to take me a formal response and another two years for feedback from the EPO examining division. Naturally the idea of initiating an informal communication after that reprimand is out of the window.

The renewal fees on this case are paid through an agency so in these two years of fallow between activity, it generates no income so my financial controller quite rightly asks why I am doing it, if its not for love of the inventive concept and a desire to see it commercialised for the benefit of Europe and the applicant.

Monday, 4 August 2014

Unqualified praise Part III: the price of fame

Readers who recall this blogger's recent posts "Unqualified praise: when being 816th just isn't good enough" (here) and "When being 816th just isn't good enough: a response from Who's Who Legal" (here) will know that he was none too impressed at the fact that he had been recommended for inclusion as a leading trade mark practitioner in Who's Who Legal on the basis of its impeccable research, notwithstanding the fact that he is not, and never has been, a trade mark practitioner.

There is a further sequel. This blogger has now received a copy of Who's Who Legal: Trademarks 2014, together with a cover letter that reads, in relevant part,
"I would like to congratulate you on being nominated by your peers as one of the world's leading practitioners in this field ... 
Please note that should you require any additional copies of the publication enclosed they are available at the price of £100 per copy (or four copies for £300) ..."
£100 for a 56 page paperback with a shelf life of only one year might seem a bit steep, but it's a snip compared to the cost of paying to have your bio details included, as some sweet folk have done [you can get some idea of the pricing here].

Friday, 1 August 2014

IPREG and its Ambitions

Rolls Building
the access door to UK patent justice
IPReg, the regulator of patent and trademark attorneys has recently published its proposed budget and  business plan for 2015. The regulated tend to think of IPReg as the maker of rules of conduct and the provider of discipline. However, its true role is quite different from that. Perhaps its primary purpose is to protect consumers, which includes micro-businesses, against the wiles of us nasty professionals. Nevertheless, we are funding it, so it is worth while understanding what we are funding them to do and whether it is in parallel, diverges from or is directly in conflict with our interests as professionals.

'Promoting and maintaining adherence to the Professional Principles' is is right at the bottom of the list of IPReg's objectives in their Plan.  One of the interesting ones higher up is 'Improving access to Justice'. I am all in favour of a improving access to justice. What I am not too sure of is whether the best way for me to do that is by paying IPReg to do research. They tell me with priority 2 they are going to commission and review research on uregulated intellectual property legal services and monitor the small claims track of the intellectual property enterprise court.

Personally, I would love to monitor the small claims track of the intellectual property enterprise court. I can do so by spending time in the Rolls Building and paying £7 to borrow the book listing claims issued for a few minutes. That's about as far as a member of the public can go. I hope IPReg have greater access.  In reality, the only way their small organisation which the chairman boasts in his 24 July letter is staffed entirely by part-timers, is to commission some external profit making organisation to do this. Universities are included even if they need the profit to maintain their over ostentatious buildings and other activities that don't result in a dividend to shareholders. Frankly how does financing research help and what can IPReg do with the evidence. We need to have a better understanding of where they are going with this and how it will impact on/benefit the regulated or the consumer.

The first limb of this research might be welcomed by the regulated profession as it may propvide detailed evidence of the competitive environment in which we live and work. Unfortunately, the huge growth in unregulated services is often to the benefit of the consumer. See for example Renewals Desk which recently attracted a lot of interest over on the IPKat blog. We can also expect more well qualified people to move away from the regulated profession simply to keep their own costs down. That chairman's letter promises us that our cost of regulation is about to go up. He says it compares favourably with that charged by other regulators such as the SRA (details of their proposed  fees for 2014-15 are here). The difficulty is that in order to provide access to justice I need to be regulated by both and the market I see is mainly for pro bono work.

Turning to the IPEC small claims track (which IPReg think is important enough to be a priority over IPEC as a whole or even the UPC which has been taking up CIPA's time at the moment), it is designed to allow trademark and copyright owners to get do it yourself justice without the need for expensive regulated advice. Since a good part of IPReg's work is regulation of patent attorneys and infringement of patents and registered designs is outside the scope of the small claims track, it is difficult to see why this minority area is a priority for IPReg. Moreover, is there a real need for consumers to have access to justice for trademark infringement?. No there is not. Only traders have trademarks. It's possible that a number of micro-businesses also guarded by the regulators are being bullied by brand owners on the small claims track and the possibility that this is doing injustice is certainly worthy of research and investigation but please not out of IPReg fees. The IPO (who already have IPEC research under way) and the Ministry of Justice are more appropriate entities to deal with such matters.

By the way there is one of those Consultation things on the IPReg budget and buiness plas so another task for ITMA and CIPA to get to grips with and we can see what CIPA did say after 18 September as they are now publishing consultation responses in one easy to find place.