Wednesday, 24 December 2008

Proposal for a UK Solicitors-only IP Group

If you practice as a solicitor in England and have not been contacted by Shireen - get in touch.

Sadly regulation seems set to divide even SOLO IP practitioners. Creating a practising solicitor-only group allows you to concentrate on things like Investors in People and Lexcel accreditation that may bring down the cost of the dreaded professional indemnity insurance. Lexcel is run by the Law Society and accredits practice management. I agree that practice management is the key to managing risk but I don't agree that paying someone else to confirm that I manage my practice well is a good idea - especailly in these times when it is difficult to persuade clients to pay their bills. The process of accreditation usually requires the production of a lot of paperwork and manuals - the sort of thing that is needed to communicate across an organisation so for true SOLOs its a bit redundant.

One of the most important things for good practice managment is a good database and mine MARCO helps me enormously. Special 2009 deals are available for group members. OK thats an advert as my company aims to make a profit out of licensing the software - haven't got anywhere near it yet - but there's always hope. Meanwhile I would hate to see anyone exposing themselves to risk because they cannot afford practice management system.

Happy Holidays

Friday, 12 December 2008

Lessons of Intelmark

Flipping through the Financial Times How to Spend it supplement over lunch as every SOLO practitioner (who gets a free copy) does at this time of year gave rise to a discussion of whether under current law this stunning advert takes advantage of the 007 brand .

To half the office - those with good eyes - the small print legend Bahama Islands 10:07 >makes the link. The other half of the office says just nice advertising but interesting that even the big brands play with each other. Now we are loooking for educational comments please. But I must say Sean Connery washes up well. Of course it might be licensed use ...

Contribute to the training effort and have your say.

Monday, 1 December 2008

New name, new website, same old headache, speedier recovery?

The new Intellectual Property Office or IPO (formerly UK-IPO, formerly Patent Office) website has just gone live. It's divided between pages that are for the use of practitioners (the Professional bit) and those for the use of laymen and amateurs (the standard bit, or IP-lite if you prefer). You can switch between the two, using the little box at the top right hand corner of the active part of the web page. Once on the Profession pages, the Law & Practice, Forms & Fees and Online Services bits are easy to access. The IPO, to its credit, sought and received user input in the form of that cute little software that lets people sort cards corresponding to their frequency of use of different pages on the site.

There's always the headache of bookmarks being lost, but the IPO reckons that users will be redirected to the the 100 most heavily-used bookmarks, which should soften the blow.

Can I suggest that, through the Comments feature of this blog, we take note of the new site's good points and bad points? I had hoped that the page background of the Professional and standard pages would be in different colours, so that users could instantly see if they were in the right place for forms and fees or if they were about to be confronted with Novelty Norvello ...

Thursday, 27 November 2008

Rethinking insurance

I am pleased to hear that the Law Society is considering staggering the renewal dates for Professional Indemnity insurance and a return to the Solicitors Indeminty Fund (SIF) (although whether the latter is the best option is not something on which I am qualified to comment).

Clearly something drastic was needed following the insurance fiasco firms faced this summer. This resulted in a six fold rise in the number of firms that went into the Assigned Risks Pool – a place normally reserved for firms with poor claims records, or some other serious problem. As the insurers were taking their time in issuing quotes it was scary. Many of us were left imagining how awful it would be to end up in the ARP on the one hand, and then thinking surely that's impossible given that I have a completely unblemished claim free record. What I hated the most about the experience was that one was completely powerless to do anything about it. Only 3 insurers would look at IP work, so this so called competitive market place where one could shop around was simply non existent. What made matters worse was that some brokers were implying that IP was a No Go area - far too risky to entertain.

Interestingly, some of us had a meeting with Redvers Cunningham of the Bar Mutual Insurance Fund Ltd. He is also a director of PAMIA. Amazingly he told us that IP is in fact one of the lowest risk areas of work – particularly where that work is done by practitioners who specialise in the area. So, I hope the Law Society’s PII group will speak to knowledgeable individuals like Redvers when reviewing PII.

VAT Change for SOLOs

I've been struggling with the VAT change. I've dredged up from my memory the horrors of bills with two VAT rates so I was pleased to find this paragraph in the detailed VAT guide rather than the confusing summary that arrived in the post.

If you are making a single supply of a service which is nevertheless carried out over a period of time which spans the change in rate (e.g. the service provided by a solicitor in preparing a will) the whole supply can be charged at the new 15% rate. Any VAT already accounted for at 17.5% (e.g. on payments on account made before 1 December 2008) may be adjusted using the special change of rate rules described in paragraph 3.1.

I think my IP jobs are analogous to preparing a will so I have stopped fretting as to whether I need to bill all my work in progress before the end of the week. Anyone have thoughts ? The idea of being asked to sub up the 2.5% to the VAT man because I have made a mistake and charged the lower rate when I should have charged the higher one.

So its back to the credit control , oh joy

Saturday, 22 November 2008

After-the-event Insurance, and possible Christmas drinks

I have been sitting for the past couple of weeks on a proposal concerning free drinks for members of the group, for which an apology is clearly in order.  In fact, the drinks are not entirely free: the proposal comes from a friend in the ATE insurance business, who would very much like an hour of your time in return for which he will sponsor a SoloIP Christmas drinks event somewhere in London, probably around the Temple (subject to finding a room).

In addition to the drink(s), you get an hour CPD.  And some invaluable knowledge about ATE insurance, which I for one consider extremely important when dealing with impecunious clients who need to sue infringers ...  and I doubt I am the only one with such clients.

Please could I have an indication of interest in this, so I know whether we are going to be able to do something?  Either before Christmas (best) or if necessary in the New Year.

Tuesday, 18 November 2008

The Solo Practice university

Here is a link to a podcast that is likely to be of interest to SoloIP practitioners: Charon QC (alias - well, taht would be telling) has an interview with Susan Cartier Liebel, author of the Build a Solo Practice LLC blog in the States, and founder of the Solo Practice University - which Charon descrives as "a very innovative concept for US lawyers to continue their training under the guidance of experts where their law school left off."

His description of the podcast goes on:

"Susan covers the idea behind Solo Practice University, the mission, the faculty, the response so far and the likely opening date. It is a fascinating concept and Susan’s enthusiasm is very clear. The interview was recorded over a telephone and sound is not as good as I would have liked."

No warranties, as I haven't listened to it, but I bet it's fun and interesting going by earlier ones in the series. (I do not include my contributions in that assessment.)

Monday, 17 November 2008

Subscription pricing, solo practitioners and the current crisis

Following on from the theme of the previous post, I was undecided as to whether to be surprised by the magnitude of Westlaw's 36.66% subscription price-hike for the SOLO IP group or to say that I'd been expecting it all along, on the basis that the original deal for solo practitioners was a honey trap.

Left: the small subscriber in the credit crunch -- not waving, but drowning ...

However, whether Westlaw is prudently seeking to maximise the value of its vast and vital database or whether it is cynically exploiting the segment of the IP community that is least able to defend itself, one thing is probable: Westlaw's pricing policy is not made on the spur of the moment and is the result of a lengthy process that involves a complex interplay of factors that do not concern members of the SOLO fraternity, such as overheads, marketing strategy and sales bonuses, as well as the one thing that obviously concerns us all -- how much the service costs.

My guess is that the process leading to the 36.66% price hike therefore commenced a long time before the current economic crisis and therefore has not taken it into account. If this is right, Westlaw -- and organisation not famed for its spontaneity of decision-making -- should be urged to think again before it asks what might become of small practitioners as a whole during the coming year, including not just the SOLO IP group but sole and small practitioners throughout the legal professions. With smaller client bases, many sole practitioners are extremely dependent on just one or two larger clients and, if these go to the wall, the practitioner may go under too. Sole practitioners are already faced with soaring insurance premiums and an inconveniently invasive regulatory regime; for many there is no cost-saving option in reducing staff levels since there is no-one to lay off. Westlaw and its competitors should think twice before raising subscription levels so sharply, or they may be snuffing out the precious seeds of profitable subscriptions in the future.

Saturday, 15 November 2008

Westlaw Inflation

The elite group of seventeen SOLO Westlaw IP subscribers have been receiving invitations to renew their subscriptions commenced last year. Now the Westlaw model is that they add new material to their databases each year so in principle the product becomes more valuable. There is also the question of entry level discounts so that a certain upward spiral is to be expected.
At 36.66% I fear some of you may be contemplating not renewing, which allows them to say that the reduced numbers justify the decision to increase the rate for the remainder. The drop out rate for law firm subscribers who have bought 17 seats is probably quite low so we are a special case.

What are we getting with Westlaw IP - access to some of the best IP books on the shelf - The CIPA black book, Kerly on Trademarks and Copinger are the ones I use most in my practice. We also get case law, which is up to date and includes EPO case law but not general English law which can be frustrating when dealing with a contract points, IP statutes including European material in updated form and a selection of journals including EIPR as well as Current Awareness. It is a very valuable library but even so when you are a SOLO practitioner the occassions for use mean the books stay on the shelve from time to time.

For those of you who weren't in on the recruitment campaign last year and are interested in subscribing at a decent rate even after inflation do get in touch. Sorry if you are a barrister or in a larger law firm or based overseas. If we increase the group size then we have greater negotiating power to flatten the spiral.

Because the absolute level of the subscription is confidential please restrict comments to the percentage increase you would bear to renew. Personally I will renew but I think if the group stays the same size we should be allowed to renew at a 20% increase instead of this rate. What do you think?

Thursday, 13 November 2008

Easy way to grab 3 CPD points

If you're looking for CPD points, there are 3 up for grabs at the Class 46 Rapid Response Seminar on trade mark dilution in the light of Intel v CPM on Tuesday 2 December 2008. It's an 11am-3pm seminar, organised by Hardwicke Building together with the Class 46 European trade mark blog team. The registration fee is just £50, inclusive of VAT. Full details are available here.

Wednesday, 12 November 2008

Three Judges Chatting

Last night's excellent seminar hosted by Sir Hugh Laddie of UCL gave a platform for three judges from three jurisdictions to address their concerns about the patent system. The audience was drawn from all sections of the profession, patent attorneys, barristers and solicitors with a good sprinkling of SOLO members amongst the generally swanky city suits. It was a complacent audience and you sensed that it did not care too much when David Kitchin expressed his concerns that the Patents Courts lists were full but only with cases of those spending millions on settling their disputes.
Judge Rader gave us a masterclass in the double-edged compliment but, to be fair, the insulting flattery game had been started by Sir Hugh Laddie. Apparently the one thing the global IP judges have in common is a school boy camaraderie of cheek. Randy's substantive address was about the US approach to the grant of injunctions, which he attributes to English principles of equity. No doubt it is expedient to prevent abuse of the patent system by those with patents that relate to a relatively unimportant contribution. The US has a problem with trolls, but no compulsory licence provisions so the judiciary has had to invent them. There was a certain amount of discussion of trollism but there were many who benefit from the University IP market so there was little agreement on how to define them. The ownership of trivial patents that are infringed in big established and financially successful products or services like EBay or mobile phones seems to be a key feature.
There was some publicity for the Burdon plan to reduce litigation costs and several times it was stated that the Patents County Court had failed. Costs caused everyone lots of problems much to the amusement of Randy. Our (former) European judge, Jan Brinkhof smiled inscrutably knowing that mega-costs are not such a problem in mainland Europe.
The EPO came in for some criticism with one member of the audience complaining that the EPO opposition and appeal procedures were so cheap and accessible that his rich clients did not enjoy the exclusive use of resources as they did in the English Patents Court. David Kitchin did have some sympathy about the slowness of the EPO and said it was less likley today for UK cases to be stayed pending resolution by the EPO
Sadly we got a good understanding of the problem, but no solutions to the accessibility to patent resolutions for players with fewer resources than Nokia and Merck.
We look forward to more provocative seminars from IBIL. Thank you.

Sunday, 19 October 2008

A joint approach for SOLO Marketing

In Bradford on 22 October a group of independent SOLO IP practitioners will come together to exhibit at the Creative Careers Fair organised by two Bradford-based creative and media organisations, Artworks and bmedi@ at the Great Victoria Hotel.
The initiaive is the idea of Jane Lambert of NIPC fame. She is speaking on confidentiality in the Seminar programme for industry professionals. The fair has an associated exhibition and the plan is for the stand to be manned during the course of the day by a variety of local IP practitioners who will be able to offer friendly advice to those starting out in their careers in Media as well as to their prospective employers. The banner over the stand will be IP Yorkshire.
To generate interest they will be offering free trademark searches, thanks to the good offices of Leeds Library Service.
This is a great opportunity for promotion without bearing the exhaustive burden of exhibiting alone. I am looking forward to the feedback from the day as it seems to me that co-operative exhibiting is a very interesting model.

Thursday, 9 October 2008

The Professional Body

The arrival in my post of a ballot form to enable me to vote in charter amendments for the Law Society made me realise how concerned our professional bodies are becoming about their future role. This is a perfect opportunity for the membership to demonstrate what they need.
I am a solicitor though at present I don't practice as such but I'm still on the roll and still a member of the Law Society and still do my CPD so I get to vote.
The Law Society want to extend their membership to others in the legal field. They are thinking of offering post-nominals, i.e. initials designating qualification for use after your name that chartered engineers, patent attorneys and even trademark agents that are members of the Institute have enjoyed for years.
My other professional body, the IET has already undertaken reforms which widened its membership. There was quite a lot of resistance to that but it has made the organisation more vibrant and active and those aren't adjectives you typically associate with the Law Society at present.
How do we see the Law Society in future - what does the SOLO practitioner want from Chancery Lane - an expensive restaurant or something more practical that we can use to help develop our businesses. Speak up, they are listening because they have to.

Thursday, 25 September 2008

Let's learn about professional indemnity insurance

It has been a difficult month for most IP Solo lawyers as the underwriters have taken their time to give quotes, and refused to insure some firms. I personally have been extremely worried and distracted by this issue, but thankfully now it’s all sorted for Azrights. However, I feel great empathy for anyone still trying to secure insurance so late in the day.

The whole experience has left a nasty after taste. The fact that ones business can be so arbitrarily at risk of ending up in the assigned risks pool, and having to pay 27.5% or more of turnover for insurance cover, is mind boggling. Some law firms have had to take a rapid decision to shut down, and provide their services as non regulated experts. It is shocking to have to take such action so suddenly, when you have not had time to survey your clients first in order to establish the likely impact on securing future work. On the other hand if you secure insurance for a vastly inflated premium your run off cover premium is going to be that much higher if you shut down next year.

What is unclear is whether the assigned risks pool is actually likely to happen to any firm with a clear record who still hasn’t found insurance cover by 1st October, and wants to stay in business as a law firm. The assigned risks pool is, after all, supposed to be for firms that are a poor risk due to their level of past claims or other extreme circumstances. Is it the case that for firms that do not fit the profile of an assigned risks pool firm, they are likely to find that one of the insurers will quote, albeit at a steep price (hopefully lower than 27.5% of turnover though).
It is difficult to get accurate information about what is going on and why. Is it a combination of market conditions, and the fact that the SRA has raised the bar for being a regulated law firm so high, that explains why some firms are now facing this terrible situation? Another noteworthy point is that some firms that have been dropped by AON have managed to get alternative quotes, often by reclassifying their work as ‘commercial’ rather than IP. It seems the market has hardened more for IP than for commercial work in general. There is a particular problem if you have ‘US domiciled’ clients, and anecdotal evidence is that if your turnover is less than £50,000 you are unlikely to secure insurance as an IP practice.

Jeremy suggested we run an event soon where we invite an insurance broker along to discuss this whole question of IP risk. I am willing to organise this, and would also want to invite PAMIA along (PAMIA insures trade mark and patent attorney firms for extremely low premiums). I would be curious to know who insures barristers and whether they have a broker we could also invite along.
However, it would first be useful to establish whether there is sufficient interest for such an event. Please let me know here, or indeed let me have any comments by email or on this blog.

Friday, 19 September 2008

Domain names as property

Yesterday, I presented what CLT call a Webinar on the subject of domain names. I was inspired to devise the presentation in the first place because it was clear that other lawyers would talk about domain names, URLs, IP addresses and other things as if they were all the same thing, so a brief technical explanation (a brief one, composed withte dubious aid of Wikipedia, being all I was qualified to compose) seemed likely to be of some utility. I then realised that there was a further substantive legal issue involved, concerning how domain names are treated in law. Are they, or are they not, property? The fact that no-one told me yesterday that I am worrying unnecessarily encourages me to post this here.

The question is still open, of course, but there is at least a strong argument for saying that domain names registered with Nominet aren't property: the terms and conditions are pretty clear about that. But in transactions, domain names frequently do get treated as another type of intellectual property - and it seems to me that this might not work, and lawyers who allow their clients to proceed on this basis are doing them a disservice.

First, contracts and other documents (including many, if not all, precedents) include domain names in the definition of Intellectual Property. This is doubtful enough to begin with, but the consequence is that the document will purport to transfer or assign the domain names in the same way as everything else included in that definition, and worse still will give warranties to the effect that the transferor owns them.

The assignment clause, taken together with the further assurance clause (of course there will be one of those, won't there?), probably serves the purpose of getting the domain name registration transferred. It's not elegant, but it works. I don't think it's right for a lawyer to present his or her client with a solution that merely works, though: our job is to ensure that it is done properly, and that means that the contract should deal with domain names in the way that the registry says they should be dealt with.

It's the warranties that worry me most. If they state that the transferor owns the Intellectual Property, and the Intellectual Property includes domain names, there's a strong likelihood that there is a breach of warranty. Indeed, if the transaction includes a Nominet registration, the warranty is patently at odds with the terms and conditions of the registration. The breach may be de minimis, but surely no lawyer should allow a client to sign up to such a warranty. The problem is that, as far as I know, the precedents that our non-IP colleagues work from lump domain names in with the IP.

Wednesday, 17 September 2008

Authors wanted for Trademark Reporter

If you feel inspired to put pen to paper and write something about trade marks, may I invite you to consider approaching someone on INTA's Trademark Reporter committee - such as me? I'd be delighted to hear from you ...

An area for co-operation?

I received instructions from a friend in India today (yes, as it happens, one of my INTA running friends) to file a priority application for a CTM. When the papers arrived in a later email, it transpired that I have about 48 hours in which to secure the priority. He's still a friend, but he's living a little dangerously.

Not for the first time, I thought how much simpler life would be if I had a deposit account at OHIM. And then I thought, perhaps the SoloIP group could set up a deposit account for members' use. There would be some careful bookkeeping to be done, of course, but it struck me as something that we could do together that individual members probably couldn't. Similarly, a deposit account could be opened at the Patent Office. OK, you know the place I mean ...

Is there any interest in such an idea? Or am I actually the only person who doesn't have a deposit account already?

Friday, 12 September 2008

What's going on with Professional Indemnity insurance?

It is always interesting to compare notes when meeting other practitioners. So, it was reassuring on Wednesday when chatting with other sole practitioners to discover that the vast majority have yet to receive a Professional Indemnity renewal proposal. At least I'm not the only one I thought.

I have since asked around and found out that some SPs have already received quotes, but they are invariably clients of Zurich or Travellers. I gather there are only 3 insurers for IP solicitors - QBE, Zurich and Travellers.

Zurich seems to have been quick to tell those SPs they were not going to offer terms to. They were given at least 2 months notice. Other Zurich clients seem to have received their terms already.

However, it was only today following a lunch of (non IP) sole practitioners, that I discovered that no one has received a quote from AON. What is going on at QBE (AON's tied insurer)?

I know AON dropped some SPs only last week, which is appallingly short notice. But who knows whether it is just sole practitioners who have been kept waiting by AON.

It may comfort the sole practitioners who were there on Wednesday, and were clearly extremely worried, to know that IP lawyers are not the only ones who have yet to receive renewal proposals.

AON is certainly cutting it fine to leave law firms dangling for this long - especially given that some people filled in their proposal forms back in July. Whatever is going on - we will find out in due course. However, in the meantime, one has to question the wisdom of having the entire legal market renewing on the same date. Most firms I am coming across do not feel the current rules are satisfactory or make for a competitive framework.

Reflections of LexisNexis SOLO Meeting at Olswang

A group is not a community unless it meets face to face. The nice picture by Phisica illustrates that a mirror may provide instant gratification for a child. But it's not enough for a solo IP practitioner.

On Wednesday evening Jeremy Phillips kindly hosted us at Olswang's offices and a select band of solo IP practitioners could be observed vaulting over boardroom tables and large leather chairs to get to talk to one another. The presentation for the evening was by Lexis Nexis and this had brought out many practitioners who practice on the softer side of IP. There was a diverse range of experience both of the law and practice alone. We had competition on the night from an IPI presentation at which the CEO of the UK Intellectual Property Office, Ian Fletcher was speaking on the future of IP, which sadly meant that some of our agency-focused members had defected to that, even though they did have to pay £50.

The Lexis Nexis team told us about their four pillars of activity deemed to provide all the IT tools that any practice of any size could ever want. Most of the audience were familiar with the case law research tools and had, perhaps like myself experienced training sessions on the use of the user interface. It's that interface and its ease of use rather than the data that provides a competitive advantage to companies like Lexis Nexis and Westlaw. However, neither outfit seems to have access to all the resources which can be frustrating for those who cannot afford to learn to use two interfaces let alone pay for them. Jeremy Phillips has already started a debate on this on the IPKat.

The team also introduced the client development and practice management tools and spent some time explaining the suite of patent research and drafting tools, which were of particular interest to me. These are products that have been primarily aimed at the US market, which is far more sophisticated in their business models, and it will be interesting to see how the rather more fragmented and parsimonious UK patent agency world regards them. Once we have tried them out look out for more on this subject.

It surprised me that several people expressed an interest in precedents especially as last year only one solo member took up the offer of a trial subscription to the Lawtel product. Let me know if you're still interested. Meanwhile Peter Groves - the famous IP runner, volunteered to start contributing to our blog and it occurred to us that we could use our GoogleGroups page to load documents that we were prepared to share. No warranties, no promises and no liabilities of course - we are all lawyers and responsible for our own work product. This page is only accessible to members of the group which you can join by using the link on the left to receive postings by e-mail.

Another subject of debate both during the meeting and at the Bung Hole afterwards was exchanging recommendations to overseas lawyers. Between us we certainly have a wealth of knowledge which mostly we would be delighted to share. While the group has been in existence I have certainly put quite a number of members in touch with each other and made some good connections that are very helpful in my own practice. Perhaps we now need to move to a more sophisticated solution for exchanging references. Any ideas? However, good conversation over a glass of wine is often an excellent way to build up a working relationship and we will certainly be arranging more meetings in the future.

As regards new meetings, the credit crunch seems to have made people slightly more relucant to offer me free rooms. A warm dry space with chairs and access to basic refreshments is all that is needed and you get masses of publicity for your generosity. So once again thanks to Olswang for hosting this meeting. As they probably now have the sole remaining UK legal patent prosecution team, I do hope Lexis Nexis made a sale there.

Monday, 8 September 2008

This week's meeting

Don't forget: this coming Wednesday, 10 September, is the date of the forthcoming SOLO IP group meeting (details here). It's 5pm to 6.30pm at the London office of Olswang (address and map here). Speaker: Stuart Greenhill (LexisNexis), aided by Bruce Dullea. A great chance to network, partake in a pleasant refreshment and let off some steam. All welcome, no admission charge. If you're planning on coming but haven't yet said so, please email me here and let me know.

Friday, 5 September 2008

An Alternative Business Model based on Quality

Consumers of business legal services including intellectual property who seek value, have discovered that direct access to barristers is a great way to go straight for the experience and expertise they need .

The barristers of Northern Intellectual Property Chambers embraced the opportunity of direct access since it first became possible in July 2004. NIPC continues this tradition today and as many of our readers know, Jane Lambert is a very effective networker devoted to enabling clients achieve their objectives. Last night she arranged a great gathering in Bradford of experts from her panel. Hence the picture of the National Museum of Photography, Film and Television taken by Gunnar Larsson . I took the opportunity to visit this wonderful exhibit (or rather a small bit of it) while straying so far from my London basement.
Jane hopes to build on her current practice by expanding the network to provide a Quality -Guaranteed referral network. As business people know the best advisers are those which come personally recommended by other clients. A recommendation from a peer comes without bias but a business peer may not know whether he has received the best possible device only other advisers know that. Jane is hoping to build a network that can leave Solo practioners running their own practices but with a platform that enables them to work in teams to provide the services the client needs. This is a great idea because there are business consumers who need experience and are offered only inexperience when they approach big branded law firms because they are compelled to ask for the lowest possible fee. Judging by the company last night there are huge opportunities for businesses to achieve excellent value by using solo practitioners and other great value practices that Jane has sought out.
I look forward to seeing how things develop as well as contributing to the clinics, publications and training as well as other initiatives. Entrepreneurs and established businesses can only benefit. This approach to putting the client's needs first is likely to help many solo practitioners develop their own practices while retaining their independence.

Sunday, 31 August 2008

Further thoughts

I was encouraged to see some interest in the topic of my post ‘Food for thought’ in the form of two anonymous comments and a few emails from people, the majority of whom were not looking to join my proposed network – indeed could not qualify given that they were neither UK solicitors nor UK based. But people did raise interesting points which I would like to answer in this post.

One theme that emerged from comments was how much some solos value the solo life with its absence of hassles of managing staff, having to recruit, run offices etc etc. Life is so much simpler just working solo, and the regulatory burdens are not too onerous for many in other jurisdictions. This may possibly be because they don’t operate the equivalent of our client accounts. Without doubt in most jurisdictions operating a client account is what brings into play the full weight of the regulatory burdens. Many also feel that their clients receive a better service from them than from large law firms.

I have to say immediately, that facilitating for solos the sort of lifestyle they currently enjoy and want to maintain is precisely what I’m trying to offer them the chance to continue in the future when it may be less possible to practice as solos – at least in the UK as solicitors. They could do so by joining the Azrights network and working from home.
As to the threats on the horizon that is potentially going to endanger the lifestyle of true solos See for example comments in the Law Society’s Gazette in the July 2008 supplement on Professional Indemnity Insurance (which unfortunately is not available online for me to link to), by Simon Young, a practice management consultant and Law Society Council member who

“predicts that increasing compliance demands are likely to give further impetus to the wave of mergers among smaller firms. He draws a parallel with sole practitioner independent financial advisers (IFAs), who struggled to cope with compliance issues on their own when the amount of regulation affecting their practices grew exponentially. IFAs were either forced to merge, outsource compliance at great cost or be roped in as tied agents…. There are now very few one-man-band IFAs. Compliance for the legal profession is undoubtedly a resources issue and I am afraid it militates against small businesses and sole practitioners in particular"..

By trying to find a way for solo lawyers to exist in peace in future as practising solicitor solos, I am hoping to find a solution that produces a WIN WIN outcome for everyone. Anyone who can see the writing on the wall – namely, that the growing regulatory burdens in the UK are going to increase the costs of operating a law firm, and so make it unviable for solo firms to operate as sole practices in future, will want to look around for possible solutions. The one I mentioned of joining Azrights network is one such possibility. Doubtless there are others. However, burying ones head in the sand is not a sensible option.

In view of the incredulity from some people showed as to whether the Inland Revenue would accept that solicitors operating in this way could be self employed, rather then deemed employees, I can confidently say 'yes' because the model is not a new one. There are many law firms operating this way, and indeed IFAs too. So at the time of writing the Inland Revenue does not have a problem accepting this way of working in the legal profession as anything but self employment. For further information about this and how the lifestyle works, here are some articles relating to a law firm in the UK – Keystone Ltd - here and here

They are by no means the first or only such business, as there have been others before them, such as Woolley & Co who were one of the first virtual law firms.
My hope is to do something interesting using this model for growing an IP and Technology law practice. It remains to be seen whether there will be sufficient interest from small IP practices in the next few years to make it happen. Watch this space as they say!

Thursday, 28 August 2008

Thomson summer sale -- someone to speak to

I posted this note last month on the intellectual property titles available in the Thomson summer sale, with a candid review of the various books' applicability and format. Gavin McGivern, on behalf of the publishers, has offered to make himself the point of contact for any readers of SOLO IP who would rather deal with a named human than with the customer service people. Gavin can be contacted by email or by phone on 07717 340658. If you happen to be a small or solo practitioner, Gavin also turns out to be the human face of Westlaw.

Wednesday, 27 August 2008

Food for thought for IP lawyers

Times are tough – and in some ways, perhaps more so for sole practitioner solicitors in the increasingly onerous regulatory climate being imposed by the Solicitors Regulation Authority. Running a business for a ‘one man band’ is hard enough – never mind once you add into the equation an extra layer of compliance obligations.

Clearly the new era of regulation will make it untenable eventually for true sole practices to continue in business. This is already evident from anecdotal stories of lawyers being refused insurance to set up new sole practices. How many of us are now waiting anxiously to find out the new premiums our insurers will impose? It is traditionally one of the worst times of the year for small firms of solicitors. On top of that is the impending difficulty small firms are expected to face in responding to the new questions the SRA will ask at practising certificate renewal time.

So, when a fellow sole practitioner mentioned that he was considering closing his practice, paying run off cover, and re-establishing himself as an IP consultancy, I thought there must be a better way. Surely it should be possible for highly skilled IP lawyers to be able to use their skills and solicitor title without having to run their own businesses, or go and find a job in a law firm. Many lawyers simply want to get on with their client work. They are not interested in running a business, especially one which involves spending more and more time familiarising themselves with and implementing an array of new regulations.

Then it occurred to me that perhaps I could help my friend, and he could help me. I want to grow Azrights into a top notch IP and Technology practice , and would welcome experienced lawyers on board to help achieve this. By joining Azrights as self employed lawyers, my friend and others would be able to continue working as solicitors, based either at home, or in their own offices anywhere in the country. They would continue to act for their own clients, except that they would do so under the Azright brand.

Among the benefits to them would be leaving all the regulatory and client account headaches to Azrights to manage. We would also provide the IT and email infrastructure to enable remote working. An added bonus is our website and blog which will soon appear prominently in search engines, providing an excellent resource for marketing. Lawyers in the network will be part of a firm, and will have opportunities for interacting with each other and giving and getting cross referrals. Further benefits include access to administrative and junior legal staff so that there is the option to delegate work which should be done at a more junior level,.

Clearly there is a huge difference between the network of lawyers I have in mind for Azrights, and some other types of lawyer networks, which are really only agents collecting revenue from the fees generated by self employed lawyers. If any IP solicitors out there are interested in discussing the possibility of joining Azrights network please get in touch.

Friday, 22 August 2008

UK relative grounds opposition changes: did they change your life too?

Way back on 1 October last year, the UK IPO changed its practice regarding trade mark oppositions on relative grounds. Instead of examiners using their own judgment and initiative and deciding that an applicant's mark was confusingly similar to another mark already registered, a notice-based procedure was implemented (see here for details). This change was the subject of a very enjoyable meeting of the SOLO IP group at the rather cosy offices of London law firm Collyer Bristow. Anyway, to cope with an expected tidal wave of inter partes oppositions, some extra Appointed Persons were appointed so that appeals against the extra number of oppositions could be expeditiously dealt with.

Is there any evidence, real or anecdotal, that the number of inter partes oppositions based on relative grounds since 1 October has (i) gone up, (ii) gone down or (iii) gone nowhere? Do let me know, either by posting a comment below or by emailing me here.

Tuesday, 19 August 2008

Kerly's Law of Trademarks

This blogger is looking for a used but handsome copy of Kerly's Law of Trademarks. Any ideas of where one can get a copy, even those older than 10th Edition would be appreciated.

For those interested in news from another jurisdiction, as reported by Afro-IP here, Uganda's parliament will soon debate the long awaited Trademarks Bill.

Tuesday, 12 August 2008

Does anyone know?

Here's a quick question for practitioners (two actually, but one is a bit rhetorical): is a Power of Attorney, drafted overseas in a foreign language and intended to be of effect in that foreign country, but signed in this country before an English solicitor, a foreign document or a UK one for apostille purposes? And is there any serious justification for getting documents apostilled in this day and age?

Monday, 4 August 2008

Bank transfers and the fluctuating US Dollar - a view from Uganda

This is my maiden voyage on solo ip so thanks for getting me on board!

I have a relatively different angle I wanted to raise regarding bank transfers as we in Uganda do not have any regulations similar to the new Law society Accounts rules in the UK. My current challenge as a solo ip practitioner relate to the tremendous volatility of the US dollar against our local currency the shilling during the past 12 months. We have had the dollar falling by over 400 Uganda shillings which can amount to a substantial difference when dealing with large trademark filings.

One of the problems associated with this is that we typically communicate our schedule of fees early in the year to our clients. This however becomes difficult when the currency in which we are charging fluctuates so frequently. We have been forced to increase our charges once since the year began but the weakening dollar has also led to an increase in other costs, which we could not reflect in this increase, so as not to destabilize our pricing.

I have considered setting up an online payment system that would enable payments by card which could minimize our loss to some extent. Problem is that the visa costs themselves seem less than humble! Any views from a solo practitioner in this regard would be helpful.

UK Trade Mark Rule Changes

Its back to school for UK trade mark agents to get to grips with the new Rules we will have to work to from 1 October 2008. As discussed earlier in this blog the UK IPO consulted about these housekeeping matters so there are no real surprises. The SOLO approved (we had two comments so that was a big vote of confidence) shortening of the opposition period comes in at two months- extendible for another month. A nice compromise making the fast track that little bit faster.
Non-use actions that succeed because the trade mark owner has moved away from his noted address become that bit more difficult as there is a new Rule 43 that allows decisions to be set aside if the proprietor did not recieve the documents. Lots of discretion and the registrar has to be reasonably satisfied that the form did not arrive not just that it was binned. The rule applies to abandoned applications and oppositions as well.
Of course all our carefully learned numbers change as well. Extensions of time are now Rule 77 and are tinkered with once again. Late extension requests are now limited to two months. This, they say, is to comply with the Singapore Trademark Law Treaty. The "discretionary" standards for extension now only apply to the time limits set out in Schedule 1. These now include the opposition period. Fighting about extensions for evidence now seems to be futile as the rigistrar can do what he likes whatever the other party says, though they do still get a copy. Lets hope the registrar wants to keep proceedings moving otherwise we could be back to evidence at the convenience of the filing party.
We can forget having to file priority documents too. See new Rule 6. This brings the UK into line with OHIM. Sadly the transitional provision means that we still have to file a priority document for cases filed before 1 October 2008.
Perhaps the Registry will be planning workshops to introduce the rule changes. I think it would be nice to have a SOLO one

Protecting IP clients from Bank Charges

The new practice note issued by The Law Society on 30 July 2008 relating to bank charges for money transfers is something that those looking at the introduction of financial regulation for patent and trademark attornies should read with care. The new note reflects the practice as I have always understood and applied it under the Law Society Accounts Rules. Applying it in a UK solicitor's firm while conducting an international law practice puts you at a disadvantage to the unregulated attorney as I know from experience. When financial rules were introduced by the patent and trademark attorney regulator I had hoped they would be more realistic but so far the regulator is trying to avoid making such rules. I personally doubt that this is likely to be acceptable. Why should an IP client be faced with different regimes? If the new regualtory scheme is to work there has to be a level of harmonisation.

Personally I think there is a middle ground particualrly for payment of overseas fees which we may want to bill in advance. Lets tell the client how we calculate and then he can compare terms of trade as between attornies. The cartoon relates to the introduction of bank notes to replace payments in gold by the Bank of England in 1797.

My rule at Filemot is to convert at the rate given on and add 3% plus £10. I make my payments through TransGlobal's PayFac ® service. If I have money on account then the client gets the disbursment at actual cost which is a tad less because TransGlobal offers very competitive rates. If you use your bank you might need to check whether 3% is enough and of course the £10 charge may vary. Transglobal don't charge you a membership fee. If you want to include an element of risk of currency fluctuations it would be fair in these times to make the percentage more but then you could make a profit.

If you want this procedure to comply with the Solicitors accounts rules you must pay into client account or immediately return any profit you make when the disbursment is paid. You could also include the losses as a disbursment but the Law Society told me once that it was alright to absorb them. It works OK when you are billing the management of an international portfolio on a regular basis.

It would be helpful to know what IP clients think about this. Do they ever enquire how their foreign payments are handled whether they are using law firms, registered attorneys or other agents?

Thursday, 31 July 2008

Next meeting: LexisNexis in the hot-seat

The next meeting of the SOLO IP group -- which is free and to which you are all invited -- is on Wednesday 10 September 2008, 5.00pm to 6.30pm at the London office of Olswang. The keynote speaker is Stuart Greenhill, who is improbably titled as the "Small & Mid Law Market Champion" for LexisNexis. For his own support, comfort, guidance and possibly protection he's bringing a colleague, Bruce Dullea, who is the LExisNexis IP Solutions Consultant.

Right: pressing the 'help' button, I noticed a dramatic improvement in the guidance on online information ...

This will be an interactive session, since Stuart and Bruce are coming to listen and to discuss as well as to speak. Once the serious part of the meeting is over, there will an opportunity to nibble some delicacies while sipping a glass or three of an appropriate beverage.

If you're planning on coming, please email Jeremy and let him know.

Monday, 28 July 2008

Summer sale

If you've not bought these books already at their full price, you can probably manage without them at their reduced price too -- but Thomson/Sweet & Maxwell (which one is it?) is currently holding an IP Grand Summer Sale, with 20% reductions on some of its IP titles. Featured products are

* Domain Names: Global Practice and Procedure;

* Practical Intellectual Property Precedents;

* Encyclopedia of UK and European Patent Law (you can save £171.20 on this one);

* Trade Marks, Trade Names & Unfair Competition: World Law and Practice;

* The Community Trade Mark Handbook;

* The Trade Mark Handbook.

Kindly wishing to spare the blushes of some fine colleagues, I must confess that I only ever use two of these titles -- and there are another two that I probably wouldn't want to be paid to take. And here's a curious little fact about them: all six are loose-leafs, an increasingly unpopular format in the era of the internet. There is no indication as to whether anyone who buys these titles at the summer sale prices will be charged summer-sale prices for future supplements.

The closing date for purchases is 31 August 2008. You can get full details from the publisher's Summer Savings 2008 webpage here.

Monday, 21 July 2008

Calling all small firms of solicitors

In the face of the stream of weekly release of information in the Law Society’s Gazette, such as this news story that some Professional Indemnity Insurers are abandoning the legal market and refusing to insure small practices, and this one about how the SRA will be requiring a lot of information from firms which small practices are going to find difficult to supply I am getting increasingly concerned that the Regulatory climate around the corner is going to make it difficult for small law practices to focus on their work. I know a number of sole practitioners who work from home, do not hold a client account, and service a few long standing clients, and rarely take on new ones. These feel unconcerned about Money Laundering and all the rest of the obligations piled on Solicitors’ practices. Even news about the heavy handedness of the SRA when inspecting law firms does not move them. If ours is a group comprised predominantly of such practices then it is unlikely that the group will share my concerns. However, for those who would like to find a better way of practising without the stress and anxiety they currently face, I would like to convene a meeting to consider possible solutions. If you are interested in attending please email me here

Wednesday, 16 July 2008

Apprentice or Pupil?

As training within the IP profession gets ever more sohisticated, I have decided on a backward step and revert to the old fashioned apprentice model. ITMA are consulting the membership on a new compulsory course. I have trained in both ways. As a patent attorney I was "apprenticed" in the sense that I worked for a qualified attorney and gleaned what I could to pass the exams. The CIPA informals lectures and tutorials were helpful but not exactly a structured course of training. The success of this technique is down to the apprentice/master relationship and access to a variety of work and a willingness to put in the hours of research to find the answers. Fortunately my University
course had taught me the basics of research and even at school I had done a lot of self-teaching in science and maths. When I decided to qualify as a solicitor I did formal distance learning courses for the law "degree" part and reverted to the self-teaching for the "Finals".
In my opinion its the difference between active and passive learning. Passive taught courses seem to be the favored method today but I still think the enthusiastic apprentice can outperform his spoon-fed colleagues. If any reader would like to offer to share training opportunities or ways Solos can contrubute to the training of the next generation of IP practitioners, please comment..

Sunday, 6 July 2008

Statements of Use at UK IPO

I haven’t had time to mention my trip to LA which was interesting on many counts. Unfortunately have no time to do more than touch on it in this post because am short of time. I have a new website going live later this month which is taking up loads of time, and am grappling with ordinary workload, staff absences on holiday, and the after effects of being away at INTA in May and LA in June!

Two points stood out for me from the trip as regards IP practice. One is that in the USA IP is regarded as an extremely high risk area of work, and it can be almost impossible for niche practices to get insurance apparently. What is even more surprising is that your risk profile is improved if you can do a proportion of non IP work. To my mind the risk of being negligent or would Decrease rather than Increase the more specialised you were so why the insurers see it differently baffles me. They must know better, so if anyone has thoughts on this point I would love to hear them.

The other striking point that emerged during the trip is that the majority of practitioners who have become wise to the risks of signing trade mark forms on behalf of clients now refuse to do so. They will NEVER sign a trade mark form, preferring to post it to the applicant to sign him or herself. So, I intend to adopt this practice despite the many inconveniences this will cause, including the introduction of paper into our otherwise paperless office. But what else can one do given that the UK IPO will now only allow a form to be filed online if one ticks a box stating that ‘The trade mark is being used by the applicant or with his consent, in relation to the goods or services stated, or there is a bona fide intention that it will be so used’. In fact if I had time I would take this up with the UK IPO, as it seems a retrograde step which will discourage online filing. Any thoughts on this would be most welcome.

Wednesday, 2 July 2008

OHIM Website Discussion July 3rd

I hope you've visited the new calm blue OHIM website. This little image on their front page takes you to a discussion forum where they are going to answer your questions live tomorrow. It looks rather promising.

Tuesday, 1 July 2008

Networking or Nepotism

In an age where everyone is encouraged to network, whether at face-to-face business luncheons or online with sites like LinkedIn and Facebook, it's difficult to remember that nepotism used to be a dirty word. It seems to me that we need to distinguish between recommendations that are made by someone who is putting their own reputation at stake and those that are made to reinforce the power of the person making them. The latter are usually made at the behest of the recommendee. If I employ Alice because she is a friend of the Queen, the Queen's reputation will not suffer if Alice turns out to be a lazy employee. However,if you asked me if I knew of any good trademark attorneys in Wonderland and I recommended Alice and she turns out to be an expensive disappointment, my reputation will suffer.

Work referrers are a great resource, but it is really important not to let them down by providing a poor service to the client - even if the client doesn't know its a poor service. For those businesses who rely on recommendations, I wonder how many ask about the relationship with the recommended firm. If they do ask how do they rate the answers. I recommend this adviser because I use them myself sounds the best - unless that advisor is also paying commission for the recommendation. Of course, if you are practising as a solicitor, keeping on the right side of Rule 9 of the solicitors code of conduct probably means that work referral is a no-go area for the solo practitioner. See here if you want to keep on the rails.

I wonder how the newly formed patent and trademark regulator is going to approach this issue.

Sunday, 29 June 2008

Why does no one post comments?

Many thanks to my fellow bloggers for their helpful posts and comments to my blog posts. I certainly get a lot out of blogging as a result of what I learn from their comments. However, I feel baffled as to why there are so few comments from others, and wonder whether this might be because no one else is reading the blog apart from the 3 of us!

What would it take for people to take a more active part in this blog? There is a danger that the blog will become untenable if no one else expresses sufficient interest in it....

I do remember having had some responses to posts via the google groups, and am curious to know whether this is because people want their comments to remain private, or whether it is because it is more convenient to give comments in that way. Certainly google does not make it easy to post comments to blogs, as I have found out from my own failed attempts at posting comments. Am really interested in the answer to this as my own firm's blog gets no comments, and am wondering how to improve the situation. Does it have somethng to do with the google blogging comment facility which makes it difficult to comment.... Dying to receive your comments....

Thursday, 26 June 2008

The name of the game: CONTRO£?

CONTRO£ might look more like a typo or a wheeze devised by a cybersquatter for getting more click-throughs -- but it's the name of a new scheme set up by major UK law firm Addleshaw Goddard with the aim of providing

"a cutting edge approach to funding civil litigation which reduces the cost of disputes and provides clients with more financial control and certainty during disputes than ever before". The cutting edge turns out to be conditional fee agreements, after-the-event insurance and third party funding (or a combination of all three), thus enabling their clients to be placed fully in control of the amount of risk they take. The firm adds: "We can reduce the day-to-day cost of running disputes; we can reduce (or eliminate entirely) the amount of our client's costs and expenses (including opponents' costs) if the client loses, and we can give our clients financial certainty in an inherently uncertain area.

Right: The Joys of Google Image -- search for "control freak" and on the first page of results you end up with Keira Knightly

The litigation landscape is changing dramatically ..., especially for clients who might have had a good case in the past, but ruled out making a claim because of uncertainty and potentially high costs. Our approach is very different to the standard approach by other law firms and represents a great value proposition for clients. By standing shoulder to shoulder with them, backing our judgement and sharing the risk we're demonstrating more commitment to clients than ever before".

This looks like a good topic for discussion, since there would seem to be plenty of ways in which this package of goodies can be deployed -- and plenty of opportunities for lawyers on the other side to exploit their adversaries' strength. Thoughts, anyone?

Sunday, 22 June 2008

Why has the IPO changed its practice re online filing?

I too am still struggling post INTA and LA networking trip from which have just returned.

As life is so busy it is not always possible to get to grips with all the details one needs to know. So, it would be extremely useful if somebody who is familiar with the reasons behind one recent IPO change of practice which is puzzling me but which I don't have the time to look into would either please post a blog item on it or comment on this blog. The change in question is that it is no longer possible to file an application online unless one pays for it straight away. Previously, we used to file the application, wait till its details were posted online, check that it was correct, and then send in a cheque to complete the application. If for some reason we needed to abandon the application we did so without incurring a charge. This worked extremely well for me as I left junior staff to file the desired application but could check it later before making payment. Now, according to my junior staff, it is necessary to submit the paper form if we wish to have this same flexibility of abandoning the application should we want to. Is this the only way? Is it really necessary for us to print out and post the application form? We are a paperless office and given that the IPO seems to also want to cut down on paper, it seems nonsensical for them to have introduced changes which increase the volume of paper they will generate. Can anyone shed light on the reasons behind this change of practice, and indeed whether there is another way to achieve the possibility of abandoning an application if necessary?

Friday, 13 June 2008

Still struggling

Some weeks after I've returned from the INTA conference in Berlin in May, I'm still struggling to catch up with myself. I reckoned I lost a week, all things told, and I'm still about two days behind myself. Am I alone in this regard? Are there techniques for dealing with this sort of thing?

Sunday, 8 June 2008

Attractive Insurance

Several times recently I have been told by a prospective SOLO that their quote for professional indemnity insurance premiums was lower than they expected. Given an attractive quote based on an anticipated turnover, the temptation is to take it and not ask questions about the method of calculation. After all we must be able to trust the insurance world to play fair. Newvertheless it is wise to ask how the premium is computed before you get on the escalator. One way they do it is to apply a rate to the average fee income over the preceding N years. This is great in year 1 as there is no income but then comes year 2 and the premium rises and so on until you have completed N years.

Now for a policy that pays on a claims-made basis -which means if the claim is made during the policy year, you are covered even if it was for work done last year or the year before - this is quite sensible when you think about it. When you first open the doors chances are you won't receive a claim in that first year at all but the risk increases the longer you have been in practice and so does the premium which can be a surprise and an embarrassment if your income is not on such a steep escalator.

Solicitors, of course, must choose from an approved list of providers as required by the SRA but for the unregulated freelance there are alternatives. Professional insurance is available from a wide range of sources. The cover will never be as all-embracing as the gold plated SRA policy terms but may be adequate. In my travels I discovered this interesting page . Comments very welcome. UK and Irish patent attornies have a mutual insurance association PAMIA. They also consider trademark specialists. For them N is 3.

Tuesday, 3 June 2008

A Guest Blog on Why be Solo

Hello Shireen,

You may remember that we met at the last Solo event in London.

My reasons for going 'Solo' are similar yours in that I was looking for flexibility in my working hours (for family reasons) but I also wanted to undertake good quality IP work without commuting to London (I am based in Oxford). (I have written briefly about my experience in an article published in the May issue of the LES Newsexchange.)

Although I was an Equity Partner at a couple of firms, now that I have experienced the freedom of working for myself I think it would be hard to relinquish it!

Having said that, I don't think the benefits of operating a Solo practice are just for the practitioner. I believe that clients can receive better value and support from sole practitioners than they might from larger firms because we can be more flexible in meeting client needs and more adaptable to changing circumstances.

I am a great fan of Solo and, like you, believe that we can all benefit from sharing with one another our knowledge and experiences of running Solo. With that in mind I would be interested to hear what accounts software Solo practitioners are using and whether they would recommend it.

Dr Belinda Isaac

Monday, 2 June 2008

Why is it So Hard to Join the GoogleGroup

Sometimes it may seem that joining the Google group associated with this blog is more of a struggle than commuting to work.

Everyone in the whole world can read the blog and anyone with a RSS reader can receive the posts but if you want to receive them directly to your e-mail then you can join the group and all the posts will arrive. You will also be able to send messages to the other members of the group. For example, if you wanted to get a friendly recommendation for a lawyer in Australia you could ask the group.

This is the reason I wanted to make the group closed so that you would know that if you sent such a message it would go to like-minded Solo practitioners or sympathetic real IP professionals. We all have to cope with a lot of spam but I would prefer that the group wasn't responsible for generating any more. Therefore, if you are trying to join the group, there is apoint where you will see a free text box. The idea is that you spend a few minutes to me that indicates you are seriously interested in IP. It easy for those of you who are and surprisingly difficult for those just looking to harvest e-mail addresses.

Sunday, 1 June 2008

Why are we sole practitioners?

At the recent INTA conference I met a few sole practitioners from other parts of the world, and had a chance to chat to some of the UK sole practitioner contingent that were present at the Meet the Bloggers session organised by Jeremy Phillips. Finding out why people are now in sole practice is really helpful as you can learn from their experience. So, anyone feeling generous, why not write a piece for us about your story? Where are you now, why are you there, and where are you heading?
In the meantime, I chanced upon Charon QC’s The Blawg here who has posted a podcast interview with a well known sole practitioner, Susan Singleton here The podcast is well worth listening to. Susan is firmly committed to sole practice. Certainly her name is very apt for sole practice.
The reason I myself set up alone was the lack of flexible working options when I wanted to return to work after more than 5 years out of the workplace. Having no family living nearby, and after a year or so of unsatisfactory childcare solutions when I worked part time at Reuters after the birth of my first daughter, I decided to just focus on raising my two daughters. Little did I know how difficult it would be to get back into a suitable job.
No employer was offering the flexibility that I needed for my child care responsibilities when I tried to return to work in 1996. Ideally I wanted to work till 3pm, leave to collect the children from school, and then carry on working later in the evening at home once my husband was back from work. But this was not an option. At the time my youngest daughter was still just 3. So, I ended up doing various consultancy jobs, and even worked for a while in a professional support role at Eversheds. Although the job was part time, it was hardly flexible, and I didn't want to be a support lawyer anyway. So, in the end afer a couple of years back in the work place, I gave it all up. It was simply too hard.
In the process I probably became totally unemployable as I no longer had the distinction of being ‘freshly out of an LLM degree course’ once I began to look around again in 2002.
Setting up my own firm seemed the way to use my legal skills while having enough flexibility to be around for my daughters who were by then 10 and 12. But I was completely clueless about what would be involved in running a law firm, and having my own firm has been a massive learning curve. For example, if only someone had warned me not to have a client account! I reckon I now spend more than £5,000 a year complying with the requirements of the Solicitors Client Account Rules.
Reading business books, such as Sahar Hashemi's 'Anyone can do it' have inspired and taught me a lot about running a business. Also important have been some key contacts I’ve made through networking, including through the Solo IP network. Sometimes when I have lacked the knowledge or skills to do a piece of work completely alone, rather than struggle over it, I have involved another specialist, and this has benefited both me, the expert, and the client. If nothing else this group has the potential to help others in the same way.
In the process of developing Azrights I have become employable judging by the one or two offers I have had to enter discussions about joining existing firms. I also suspect that now I would be able to work flexibily too, because firms would realise that working flexibly does not mean I work part time hours - far from it.
However, having now created Azrights, I have loads of ideas for developing the practice further, and am reluctant to give it all up, and give it all over to a larger firm. A large law firm would just restrict my freedom, introduce a layer of politics I am not suited to, and I suspect many of my ideas would be rejected out of hand by the other partners. So, I intend to stay solo for the foreseeable future – although it would be wonderful to meet like minded individuals to join forces with, as I definitely want to grow the practice.
I am hoping that some of the wonderful sole practitioners I met from other countries will be persuaded to join this group and contribute their stories.

Tuesday, 27 May 2008

Will you be able to represent clients in European pat lit?

The EU Council's Document 9124/08, addressing the Working Party on Intellectual Property (Patents), is the grandly-titled Draft Agreement on the European Union Patent Judiciary. This document, which was agreed last week, is 49 pages in length and tackles, among other issues, professional representation before the proposed Community Patent court. It states:
"Article 28: Representation

(1) The parties shall be represented by lawyers authorized to practise before a court of a Contracting Party who may be assisted by a European Patent Attorney, who is a national of a Contracting Party entitled to act as professional representative before the European Patent Office (hereafter: European Patent Attorney), and/or by patent attorneys with proven patent litigation experience.
(2) Notwithstanding paragraph 1, European Patent Attorneys and patent attorneys with proven patent litigation experience who are in possession of a European Union Litigation Certificate may represent the parties in actions for revocation of a patent before the central division.
(3) Representatives of the parties and their assistants shall enjoy the rights and immunities necessary to the independent exercise of their duties.
(4) Representatives of the parties and their assistants shall be obliged not to misrepresent cases or facts before the Court either knowingly or with good reasons to know".
I can foresee problems here for sole and/or occasional practitioners in the field of patent litigation. Thoughts, please?

Sunday, 25 May 2008

INTA Follow up

Having barely recovered from the INTA trip - what a busy few days those were - I am now preparing for the June networking trip to LA which the Law Society has organised. At least this time I will know to take more than one box of business cards - as had to have more cards couriered over to INTA!
I had intended to post a blog from INTA but there was no time. Now having returned I can't write something about my experiences of INTA as am still seriously short of time.... But am making time to post this blog in case any readers are able to help with suggestions for following up with all those contacts made at INTA.

For example, does anyone know of a good card reader, or at least pros and cons to look out for when buying one? If so, I would be really pleased to hear from you as it could potentially save time - mine and anyone else's who is in the same boat. In the meantime, just wanted to thank Jeremy for hosting the Solo IP meeting at INTA, as it proved to be an excellent chance to meet and talk to some of the readers of this blog.

Saturday, 17 May 2008

Navigating Berlin

This intrepid INTA traveller has been having fun on Berlin's transport system to which your badge provides free access. Matching up the station locations with the map of lines had me beat for a time but the U2 line is a winner and will get you to Potsdamer Platz on Monday evening. No 1 is not the glitzy glass building but the old brick building covered in scaffold at ground level. See picture on right. The Olswang office is on the 14th floor but the top floor offers a most impressive panorama if you happen to find it during daylight. See picture below looking north - the blank space on the right is the Berlin Holocaust Memorial - not for the feint - hearted it will drain the joy from your soul.

Friday, 16 May 2008

Come and say hello

SOLO IP is among the 15 blogs at the "Meet the Bloggers" reception in Berlin next Monday evening, which coincides with the International Trademark Association's Annual Meeting in the same city. For details of the reception at the top of Olswang's building at One Potsdamer Platz -- which you are welcome to attend -- click here. For blographies of all 15 intellectual property blogs, provided by Managing Intellectual Property magazine, click here.

Thursday, 15 May 2008

Thanks for the New Opposition Form

For rather longer than is decent, the UK IPO has been forcing us to use an opposition form that was only available as a PDF and not an editable one at that. particularly frustrating for those SOLO practitioners who act as our own secretaries So thank you very muchfor the new form - that they have put on to their website here. I am delighted that there is a WORD version.
We had hoped that there would be a nice online form for doing oppositions like the new TM3, but perhaps that will come after the downtime at the weekend...
Anyway, that's one less thing we can complain about to the UK IPO representatives when we arrive in Berlin. I do hope they and you will be taking the opportunity to go to the Bloggers reception on Monday evening at 1 Potsdamer Platz - see the earlier post

Tuesday, 13 May 2008

A Triumph for Machine Translation

I have just received a fax from OHIM's fax Department. It is in Spanish. Why am I so pleased. I don't read Spanish. I can cope with French and German but my Spanish is limited to the strictly survival variety. However, when dealing with an opposition matter I had to send a communication in Spanish. I wrote it in English and translated it using a very cheap SYSTRAN product. It was not an entirely straightforward submission so it was good news when the response came back indicating that my submissions had been understood and acted upon.

However, a little later the same day I sent a fax in English. It was only partially received at OHIM and because they had received a fax from me in Spanish just minutes earlier, they sent the Spanish fax transmission failure notice. Now I am pleased not only because that shows initiative and a positive attempt to be helpful on the part of OHIM's guardians of the fax machines, but also that my machine translation passed the test of appearing to be written by a Spanish speaker.

Hopefully, the increasing availability of machine translation will not only help SOLO practitioners be linguists but also help the wider profession solve the impasse facing the community patent. It won't help with oral proceedings but they are only a small element of any patent case.

Tuesday, 6 May 2008

A chance to meet!

The International Trademark Association Meeting (Berlin, 17 to 21 May, details here) is a magnet for IP practitioners large and small from around the world. One of its lesser-known attractions is the informal "Meet the Bloggers" session, now in its fourth year, which gives IP bloggers and people who read their blogs a chance to get together for a chat and a refreshing drink or two.

Right: there's more than one way to meet in Berlin ...

SOLO IP is among the weblogs that will be represented at the "Meet the Bloggers" informal session in Berlin on Monday 19 May 2008. Indeed, all three members of the SOLO IP team will be there. If you're going to be in Berlin on this date, and you'd like to pop in and chat with some very active members of the Solo Tendency, please take this as an invitation to do so.

"Meet the Bloggers" is free to all -- and everyone is welcome. The hospitality is available, courtesy of Olswang's Berlin office, from 8.30pm to 10.30pm. To find the venue (One Potsdamer Platz), click here. Ideally, if you plan to be there can you please email your intention so that the catering corps can ensure a reliable supply of bottles, glasses and nibbles ...

Wednesday, 30 April 2008

Small business clients

One of the challenges of dealing with small business clients is avoiding misunderstandings, which can arise all too easily given that they are less sophisticated. For example, a few weeks ago I was ecstatic when a client emailed to say they wished to go ahead and file both their trade marks across the entire list of Madrid Protocol countries. I raised the requested payment on account invoice (which including a few non Madrid countries) and came out at about £80,000. I had a warm glow inside, which was rapidly blown apart on receiving the client’s email back to say they had nearly fallen off their chairs when they received my request for payment… Apparently, the example price schedule I had sent them showing the filing costs in 3 countries was taken as the price to file in all the Madrid countries. As happens quite often, the client had not read my accompanying letter, and had formed an impressionistic view of the costs from the various documents I had sent them. So, that is why working for the small business client does involve not only trying to convey the law in the simple, black and white terms they prefer, but also involves, a constant refining of ones communications to ensure they are crystal clear.