Monday, 30 March 2015

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

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

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

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

Saturday, 21 March 2015

Proceedings before the European Patent Office

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

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

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

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

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

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

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

Monday, 9 March 2015

Sally Cooper inquires into Damages at IPEC with Hogarth Help

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

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

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

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

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

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

Sunday, 8 March 2015

Use it AND Lose It: Trade Mark lessons from Cambridge University

A very respectable number of SOLO practitioners forgathered on Saturday in Cambridge for the CIPIL Annual Spring Conference which addressed the question "Use it  or Lose It" across the range of intellectual property rights from trade marks, through patents, to copyright and related rights. The event was expertly chaired by Mr Justice Richard Arnold who provided his own incisive commentary on the presentations.

You might think that it was obvious that governments grant monopolies to be used, but intellectual property law has become so convoluted that even this simple tenet can no longer be assumed and there was much to discuss.

This note only addresses the trade marks presentations and more specifically some issues that arose in the presentation by Appointed Person: Emma Himsworth QC . She addressed the issue of whether, when word marks are registered, use in a variant form is genuine use. Did the figurative fig leaf ( a term created by Mr Justice Arnold in his Starbucks decision of 2012 (it was noted that there is an appeal to the Supreme Court on that case to be heard on 25 March 2015 but it considers other aspects and the fig leaf remains firmly in its place in the firmament of IP case law) alter the distinctive character of the plain word.

In a straw poll of the audience we were prepared to accept that use of Catwalk (right) would be use of the word. But it was not. Geoffrey Hobbs' September 2013 decision is here. It was admitted that "the evidence was disastrous" was a major factor with no evidence of oral use or on invoices in any of the cases. Our chairman also felt that none of them had much distinctive character in their own right.

 The audience was in agreement that the sideways rabbit mark would not so easily be recognised as the word mark CB. That decision was made by Iain Purvis in June 2013.
Following down the catwalk was Amanda Michael's decision where HOME MAID was considered not used when represented in either of the forms shown.
As a result we were left with the conclusion that it was a case of Prove you are using it or lose it. Its simply not enough to use your mark, you must be able to show probative evidence of use preferably as registered with sufficient indications of the place, time and extent of use. Its got to be clear, precise and detailed and if the use is limited, you must dispel any doubt as to its genuineness with additional evidence. In a final gleeful addition, Ms Himsworth pointed out that brand owners opposing UK registrations must do all this concisely in accordance with the new practice note TPN 1/2015 which limits you to 300 pages without leave. 

When questioned on the practicality of this for well used marks which were being put to proof of use in face of obvious use, I was informed that such brand owners normally had more recent registrations on which to rely in their oppositions. So it appears that the Appointed People are at one with the registry in condoning the abusive use of refiled registrations to avoid proof of use challenges, and it is only the miserable SME who relies on registration and renewal that is to be mocked by this enforcement burden.

Dissipating Goodwill

There was also a master class by Hazel Carty of Manchester University on the concept of goodwill and whether it could be abandoned or dissipated more slowly. Hopefully once we have the views of the Supreme Court on Starbucks which our chair indicated was likely to review in some depth the Star Industrial case from 1976 (which discussed abandonment (by assignment)), it may be clearer whether it is ever safe to resurrect a zombie mark. Certainly the band cases and the Masylyukov v Diageo case concerning the registration by the appellant of the names of some closed whisky distilleries decided in 2010 by our chair suggest that its a risky option. However the point made Mr Justice Arnold made was that the goodwill was not dissipating in the Masylyukov case but was still being created (even if the whisky was no longer being distilled) as there was stock and it was being sold.

We were also treated to some perspectives from Australia by Robert Burrell who showed that there, an unused mark with dissipating goodwill could remain on the register.