Tuesday, 26 April 2016

Going out of Business : Insurance Issues

Selling a small IP practice is no easy thing. Giving one away is even harder.

When you go out of business you need to consider what happens if someone makes a claim against you. You could disappear so you cannot be found for the claim to be made or you can buy Run Off insurance. This means you will pay a sum of more than twice your usual annual premium to walk away. If however you can persuade an existing business to buy your practice and take on the liabilities you wont need to pay a run off premium but the enlarged entity may be asked to pay a larger premium due to enlarged turnover but it wont kick in immediately and will depend on the increased turnover being achieved and will not be subject to anything other than the usual multiplier.

It therefore makes sense to give your practice away rather than close it. However if you are giving away a practice rather than selling it, prospective purchasers are going to be worried that there are all sorts of hidden liabilities and wont want to touch it. So you had better sell it for a price and agree some warranties about the extent of the liabilities. Now the question is can you get cover for the cost of the cap you place on your liability or keep a reserve from the sale price.

Saturday, 23 April 2016

Getting used to EU IPO

It is a whole month since the end of the community trademark and the rise of the EU TM.

Everything still works - but a tad slower perhaps but maybe thats just catch up. On filing applications I have discovered that if I want to be on the fast track I must forego the right to receive the search report of earlier European union marks. I am expecting that I will be able to see the search report online as there is still an obligation for the search to be carried out.

I have noted that I can still claim priority and seniority on the fast track if I provide the evidence.

There has been lots of excitement about the possibility of clarifying the class heading registrations using the Article 28(8) procedure. You can only do it between 23 March 2016 and 24 September 2016 inclusive. There is an online form or rather you use the existing online form choose Recordal then EUTM and then the big inviting button labelled "Declaration under Article 28(8) EUTMR"

Its not a complicated form just a box that invites you to provide your declaration, identifying your Goods and Services per class. There is no fee. Maybe it will be a hot topic of conversation at INTA in Orlando. I will be there. Sadly I suspect that having advised clients in the past to say what they mean, this is not a marketing opportunity that will be profitable. You cannot use Article 28(8) procedure

 If the specification includes specific terms plus the class heading then chances are you are okay anyway and dont need to use the service

 If the specification only includes part of the class heading then you cannot use the service

 If the specification includes the class heading with an exclusion then you cannot use the service

If the applications were applied for after 22 June 2012 then you cannot use the service

Corsearch have ingenuously offered to create a new report that identifies by owner name relevant registrations from the right period which include class headings that might need to be amended. I have not been paid to promote this product but Corsearch continue to support the newly Chartered Institute of Trade Mark Attornies evening lectures with canapes and wine.

Tuesday, 29 March 2016

Updating UK Patent Rules

With so much emphasis on the Unified Patent Court and European patent with unitary effect or unitary patent if you prefer, administered by the mighty EPO, the humble UK national patent can
Baroness Neville-Rolfe champion of UK IPO
easily be forgotten. However, its importance, particularly to entrepreneurs looking for early grants and the inventors of those technologies shunned by the EPO is not to be underestimated. Any innovator who finds the prospect of €10,000 as the starting price for litigation and has been taken with the access ability of the Intellectual Property Enterprise Court should still be very very interested in the UK national patent.

The UK IPO has been doing a little tidying up and recently produced a consultation on proposed changes to the Patents Rules. Responses are sought by 22 April 2016.

There are a number of specific rule proposals but there is an open question (17)which invites any other proposals for rule changes or clarifications. There is a hint that you might want to consider the extensions of time rule but the question is not limited to that and if there are any other rules of bug you now is the time to say so that they can be included in the amending statutory instrument under construction.

The Patents Rules live here  But only in PDF downloadable format. Isn't it time they came in a nice HTML version for easier referencing.

Some of the proposals are very straightforward and it will be difficult for anybody to dissent from the idea that we should no longer have to file multiple copies of form 51 when appointing an agent or triplicate copies of international applications (does anybody really file international applications with the UK IPO in paper. It might even be time to make electronic filing compulsory what do you think, or are you still reliant on the fax machine. In cases of Internet meltdown and bearing in mind that large parts of the country have dire Internet connections, it may be a little too soon for that step to be compulsory but we should certainly be encouraging paper elimination.

The object of the rule changes is to benefit did businesses and individuals making use of the patent system (which naturally includes those at risk of being patent infringers)

Omnibus claims
The proposal is to discourage them- not by relying on clarity objections but by introducing a new rule prohibiting references to the description or drawings. I entirely agree with the ambition but I'm less certain that this is the way to do it. The scope of these claims is unclear. The reason that they refer to the description and drawings is to limit them to the embodiments and it may well be that for some inventors limiting their claim to the embodiment described is all they can afford. If the embodiment is described clearly and often it isn't, this might be an acceptable claim but a very narrow one. The really offensive part of an omnibus claim is the "substantially as herein described" phraseology not the reference to the drawings.  After all Article 69 says that every claim has to be interpreted by reference to the description and drawings.

Rewriting paragraph 14 .124 and .125 of the Manual of Patent Practice to reflect current case law might be the answer.

As to the transition I would be happy if no omnibus claim were allowed from now on but  the idea that it should apply to granted patents when the rule comes into force could be a very Draconian hit on some self filers who may find their patents no longer exist in any valid form despite payment of renewal fees. IPEC may well have to continue to construe those claims narrowly as they have done before.

Most applicants will also have a main claim so we could achieve the same effect by limiting the number of independent claims.The requirement for a statement of invention harks back to the need for the omnibus claim to be no broader than claim 1. I have always thought statements of invention were bad drafting practice and made patents more difficult for the lay reader to understand. The solution of the invention is defined by the appended claims does the job.

Photographs Q10 

The proposals include the possibility of photographs, but not CAD Drawings which might be shaded. Reproducibility is what it's about and it drawings can be reproduced it shouldn't matter whether they are in black-and-white colour or gray scale. However, line drawings are often likely to be the best choice.

I wonder what our illustrious professional body is going to say about these proposals

Saturday, 5 March 2016

Preparing for 23 March and the European Union Trade Mark

Go to home pageThis name will disappear on 23 March 2016 so are we ready for the change? The page that the soon to be European Union Intellectual Property Office has created is here.

Although there is a new Harmonisation Directive the approach taken for our favourite CTMR 207/2009 is that it is amended so we need a consolidated version. I haven't found one yet. Will we still call it CTMR for old time's sake?

The simple things we need to do is change the name of OHIM  which becomes European Union Intellectual Property Office and community trade mark becomes European Union trade mark. What is the consensus for the abbreviations: EU IPO and EU TM is my choice. European Union TM is officially sanctioned in Art 1(2) of the amending regulation.

Not much will change about day to day filing except that you will have to decide whether you want to receive the search of earlier rights on the Community Trade Mark Register Register of EU Trade Marks . This is now known as an EU search report but it still only covers EU TMs. You can say you don't want it but they have to create it even if you don't want it because they are still sending out those pesky surveillance notices. We are now allowed to opt out of receiving them though and I shall be looking at how to do that, especially where I am the representative for one and two letter logos.

Graphic representation is now (well with effect from 1 October 2017 and we can expect the EU IPO to tell us what representations are acceptable)  not essential and there is plenty of hot air about the possibilities of registering non-traditional EU TMs. Forget it. They also amended Art 7(1)e so you cannot register:
‘(e) signs which consist exclusively of:
(i) the shape, or another characteristic, which results from the nature of the goods themselves;
(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;’

Now Arnold J had a go at the Taxi CTM not long back and at paragraph 215 of his judgement killed it under  the substantial value provision. The same has to be the case for the smell of perfumes. Even if the representation is not graphic it is still required to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. I don't know of any self-contained sound representations. Even a recording needs something to play it and the sound file also needs to be easily accessible and durable - quite a challenge. My best advice is stick with registration for traditional marks.

The amendments allow for Certification EU TMs but these points of the Regulation will not apply until 1 October 2017 so we have more time to prepare for those.

We have already seen the benefit of the reduced renewal fees when renewing EU TMs that were due to expire after 23 March.

Thinking of Brexit, the provisions on representation  Art 93(1)b now simply says
(b) professional representatives whose names appear on the list maintained for this purpose by the Office.
If UK representatives are on that list they will still be there after Brexit so the old campaigners should be able to continue to represent. The requirement for representation is also amended so that it is only applicants outside the European Economic Area who need representation as opposed to outside the Community. Its possible, but uncertain, that the UK will stay in the Economic Area. This is the area for free movement of people and that is a big issue for many LEAVE voters who might feel betrayed if we stayed in the EEA and were simply told what to do by Brussels without any say in the negotiations.

A lot more of  the changes are less likely to affect our daily lives, but there are a lot of them so we might be surprised.

Tuesday, 23 February 2016

is it the end for the Series Trade Mark?

UK Trademark UK00002200698
First I must apologise for the long absence. I am missing my retired co-blogger and there has been an excess of litigation files in my life recently. There are many things that are sent to try us, from IT calamities to Brexit (more of that in a later post) but one issue that recently vexed me was the attack on the vires of the series trade mark in the UK.

It came in the long running and much commented saga between Comic-Enterprises and 20th-Century-Fox. The court of Appeal issued their decision on 8 February 2016 and for those of you interested in wrong way round confusion the full decision can be found here and I would have cited Wragges case note had they not re branded as Gowling WLG but you can still see how The Guardian reported it to the average consumer  here

The image of the mark it was all about is shown here.  Red, black and white are elements of the first mark in the series. You thought they both looked grey, but no the top one is brightly coloured and I suspect the staple is not intended to be an element of the sign either. It derives from 1999 before colour could be handled by the IPO and certainly before the sophisticated understanding encapsulated in the 2014 European Common understanding of black and white marks

In the 20th Century Fox case, Fox made an application for permission to amend its defence and counterclaim to introduce a claim that the registration is invalid because s.41 of the 1994 Act (which allows series marks to be registered) is not compatible with the requirement in EU law that a trade mark must be 'a sign' in the sense of being a single sign and capable of being 'graphically represented' as such pursuant to Articles 2 and 3 of Directive 2008/95/EC ("the Directive") and s.3(1)(a) of the 1994 Act. Now bear in mind that graphical representation is about to disappear from the reformed Directive. Signs will henceforth need only be represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. The Court did not decide the matter. Instead they noted the IPO comments and left the matter as an outstanding issue, which is hardly satisfactory for the series using public.

The relevant part of the judgement is at paragraph 23:
Mr Alan James of UKIPO responded very promptly by letter dated 4 November 2015. In broad outline he submits on behalf of UKIPO that s.41 of the 1994 Act is wholly compatible with the Directive and that any doubt about this stems from a misunderstanding about the meaning and significance of a series of trade marks: a series of trade marks is a bundle of separate and individual trade marks each of which must comply with the requirements of the Directive, and each of which is entitled to the protection afforded to every trade mark under EU law. There is, he continues, nothing in the Directive which governs or restricts the form of trade mark registrations, and there is nothing which prevents Member States from enacting a national law permitting a number of trade marks to be registered together. We are extremely grateful to Mr James for dealing with this request so swiftly. However, in light of his submissions and the limited time available at the hearing of the appeal for the parties to consider them, we decided, at the conclusion of the hearing and with the agreement of the parties, that we would, if necessary, give further directions for the resolution of this issue after giving judgement.

It is perhaps disappointing that Mr James' spirited defence of the trademark agent's favourite two for the price of one offer was not immediately accepted. Now we must wait to see if Fox pursue the matter. They are not it seems guilty of passing off but only of trade mark infringement so invalidity of the registration would provide relief from their difficult situation.

Should we stop using series? What do you think?

Tuesday, 12 January 2016

E- Filing at The Intellectual Property Enterprise Court and a plea for sensible fees

Electronic working with IPEC - wonderful I thought last November (Friday 13th) when I saw that a new Practice Direction had been issued to say that all Rolls Building Courts could be accessed electronically and not just by the fortunate few, such as myself, who have offices round the corner.

The scheme had been piloted through the Technology and Construction Court but I don't have friends who practise there. Wandering aimlessly round the Internet I discovered C-Track™ E-Filing, developed by Thomson Reuters Court Management Solutions. I wasn't at the time quite sure that was the thing but I registered anyway.  Fortunately now there is more information to help us on Judiciary.gov.uk website so start here. There is link to the Practice Direction and to the Home Page of CE-File which is the name for the new service. The Judiciary claim this puts them in the forefront of modern technology around the world - a bold claim indeed.

The CE-File home page contains a link to a USER GUIDE. If all else fails read the guide and wandering aimlessly in CE-File is not a rewarding experience, trust me, but the user guide is very straightforward. Unfortunately there doesn't seem to be a demo option so you can test drive without the stress of a live case. The system is available for Litigants in Person as well as Solicitors and Patent and Trademark Agents.

How are you going to pay the fees. Credit Card is an option here as is Fee Account with the Court Service. Now fees can be rather large and my business credit card doesn't go very high and a £10000 fee might be OK on your card but I don't have American Express so that won't do nicely.  Accordingly I explored the possibility of a Fee Account. Normally I pay fees with a debit card at the counter at the Rolls Building.

Here is the page on Justice for fee accounts. The link to the terms and conditions sends you here which provides an application form and a leaflet explaining the system but no ts & cs. I have emailed the designated address to ask for them since in this case I felt that I probably would Be considered to have read them when I tick the box to say that I had on the application form. As a consumer, of course, I blithely tick I have read terms and conditions boxes without doing so but in this case I'm acting in my professional capacity and I can't treat the court service the same way as I do Apple.

The application form for a fee account presented no particular difficulties and I hope that it will get more response than my request for such an account with the Foreign & Commonwealth Office. Fee accounts are available for a variety of types of organisations not just solicitors but as a patent or trademark agent you can say you are legal firm. If I ever see the terms and conditions I will let you know whether my application succeeds.

As a solo practitioner I nearly fell down at the requirement for a secondary contact. I've given them my next of kin. I'm not sure what he will do when he is contacted by her Majesty's Courts and Tribunal service.

The fee account service is a direct debiting system from your business account. Therefore, you can make sure there are sufficient assets to cover any ginormous fees. Even so, I had some doubts about what credit limit I should ask for. It's not very often I'm going to be issuing two claim forms a week, but even so, if you ask for a very large credit limit and have a fat finger moment you could make a serious dent/hole given with the level of fees that are now expected by the court service. It really is time that IPEC persuaded The Ministry of Justice that issuing a claim in IPEC should be subject to a reasonably circumscribed fee and that an appropriate proportion of any damages awarded should be paid back to the court. That way the court wouldn't suffer but the level of fees would not be a barrier to access of justice.

If you are a CE-File user please let us know your thoughts

Thursday, 31 December 2015

Happy New Year - Welcome the Year of EUIPO

The greeting from supporter of new entrepreneurs Goodwille
The one good thing about the turning of the year is that it or nearby dates are observed as a holiday by most lawyers wherever they are on the globe, so the emails have slowed and those that are observing today as a working day are catching up and going home early. Even some solo practitioners might allow themselves a seasonal break.

What will 2016 bring. For those of us dealing in trademark, its the demise of the Community Trademark and the Birth of the European Union Trademark. OAMI and OHIM will, as from 23 March 2016, no longer need explaining as the office will become the European Union Intellectual Property Office. The package of amendments to the CTMR is all agreed and published here on Christmas Eve. The day previously we had the new Updated Harmonisation Directive. At least this one is a continuous text and not a bundle of amendments. We will have to learn to refer to it as Directive 2015/2436. It has to be implemented by 14 January 2019 and the day after our old friend is repealed. For those of us in the United Kingdom we are not expecting major new legislation. The own name defence for companies has to go and no doubt the clever people in the IPO will find something to gold plate into an Statutory Instrument and ever after the judges will refer directly to the Directive.

The updated CTMR provides a more immediate offering to update clients. The fee changes on 23 March 2016 are so slight they are hardly worth gaming. We do get to see EU Certification Marks for the first time. It seems likely that most of the changes will benefit the internal operations of the office allowing it greater flexibility to change procedures and fees. Search reports seem to become entirely optional and if the later applicant declines the opportunity it seems the burden of those surveillance notices will also decline.

Do share your best ideas for encouraging more business from this event after you have toasted the New Year and created your new email database for 2016.