Friday, 1 August 2014

IPREG and its Ambitions

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

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

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

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

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

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

Saturday, 26 July 2014

Go Mobile with the EPO on your holidays

Just in time for the summer break the EPO has brought forth its mobile site so you can keep in touch while away from your patent files. I was alerted to it by this tweet asking what I thought so I had to try it.  First off I picked up the aged iPhone and browsed to www.epo.org and got the usual desktop site.  I went back to the source material and read it again and this time I arrived at a nice clean launch page.

Who is this site for? initially I thought that I as a n agent was the target market, but clearly I am not. The selection of pages suggests that the media and prospective examiner recruits are the target markets. The job site is particularly good. Nevertheless the rest of this review is based on the utility for the professional agent market.

Now I had just received an email from a client assuming that £500 would cover their next renewal fee so the first thing I thought I would do was check the real fee to see quite how far he was adrift. I spend a lot of time clicking through to the fee schedule on my desktop. Law & Practice was a good option but then I ended up at my familiar schedule in an unreadable scale. Never fear I had passed another link to fees on the European Patent Convention page, this offered me the Fee amounts and codes and here they are. Even after turning the phone round, no fee amounts were available to me.
Since the announcement admits that a lot of things are not in the mobile site, I thought that perhaps News was more likely to be useful and it was. I could read that so I marked it as a favorite page. I did that by touching the star and then the "Add to favorites" option that then appeared. Touching the middle symbol next to the star takes you to the menu. You guessed that, sorry.
Sometimes if you scroll down to the bottom of the page there is an option to share the topic and tweet a link to it. You could also share with your friends on Facebook, your colleagues on LinkedIn, Jane who is the only person I know who uses Xing, or the barren planes of Google +. Whether that option appears was a bit random or so it appeared to me.

For most of the material on the incredible resource that is the EPO website, you do need a bigger viewing and reading screen so this iPhone test is perhaps a little unfair. Having a good readable presentation of the legal resources that works on a tablet (but not necessarily something as small as a phone) would be useful. So the things I would most like to be able to read are the Guidelines and recent cases. The register would be helpful too. What price to read it on Google Glass? Maybe the developers can leave that horror for another day unless I can wear GLASS TM at a hearing and use voice commands to amend and then print the amended pages of my patent specification. 

Coming back from that fantasy, I would like the site to know what browser I was using and adapt to that. I don't know how that's done, but someone must have tried to patent it (I hope you refused it). OHIM made a big song that their site was accessible on all formats, so perhaps they will share.

As a final note and because I have been so cruel to OHIM about the frustrating shortcomings of their new website, I will finish this post by advertising one of its best features, the selective search window that lurks at the top of the screen. You might have thought it just searched the site, but activate it by clicking on the magnifying glass and drop down the hidden list to the left of the search box you can get straight to the register or any of the other databases without once being asked about opening another tab

Do share your opinions of what the EPO is doing in the mobile world.

Wednesday, 23 July 2014

Medicine or IP: which was the better choice for the small-scale practitioner?

I was chatting to a friend last night who is a medical practitioner in general practice, together with a couple of partners. He was lamenting the way his work has changed over the past thirty or so years since he qualified. Back in the 1970s and 1980s, doctors were still quite involved in the process of diagnosis and treatment of their patients. They had the benefit of both education and training, and the preponderant majority of consultations ended with the prescription of one of a relatively small number of well-known drugs, the taking of pulse and temperature and/or some reassuring words of comfort or admonition.

Nowadays the position is entirely different. The explosion of information concerning both conditions and their treatment has made it harder for general practitioners to be confident that they are up-to-date and accurate in their assessments. Advances in bioscience, gene technology, laser techniques, materials, cybernetics and other fields of human application have all led medicine beyond its original borders. Moreover, the information gap between doctor and the individual patient has been narrowed and sometimes eliminated by the advent of the internet and the accessibility of data that enables patients to practise self-diagnosis and suggest one or more forms of treatment or therapy. In many respects, the general practitioner has become little more than a forwarding agency, sending patients for ultrasound scans, X-rays, sophisticated tests of body fluids, physiotherapy or specialist diagnosis by a consultant. Apart from sending patients elsewhere, signing passport applications for the healthy and sick-notes for absentee from work, issuing repeat prescriptions and certifying death, there's not much else that he can do.

In contrast, the equivalent-sized IP practice has been vastly assisted by the new technologies over the same period and, while there have been many changes in law and practice over the past thirty or so years, they mainly make the IP practitioner's task easier. Harmonisation of IP rights, the creation of pan-European rights, the growth in popularity of the Patent Cooperation Treaty and the Madrid Agreement/Protocol -- and now even the Hague Agreement -- are of particular note in this regard. "Diagnosis" of legal problems has been greatly facilitated by the internet, where word-search within documents, measures for storage and retrieval, and the availability of both free and commercial searchable databases of relevant treaties, statutes, case law and administrative rulings have meant that, far from acting as little other than a forwarding agency, the small IP practice can handle more work, and handle it more efficiently, than would have been possible in the Bad Old Days. Sending difficult cases to counsel for an opinion is an option -- but one which is exercised only in case of clear need -- and the UK Intellectual Property Office offers its own non-binding, highly competitive, opinions service too.

The conclusion would thus seem to be that, if in the 1970s or 1980s you were faced with a choice of being a medical practitioner in general practice or an IP practitioner with a small firm, you'd be enjoying a higher degree of job satisfaction today if you picked the IP option.  Or am I imagining things ...?

Monday, 21 July 2014

Picture yourself at ... the mercy of LinkedIn

As the moderator of a couple of LinkedIn discussion groups, I find myself logging on to LinkedIn on a regular basis.  Indeed, between approving new members, moderating comments and deleting attempts to post commercial marketing and other unwanted content, I find myself on LinkedIn far more often than on Facebook or other social media.

Picture Yourself at Freshfields Bruckhaus Deringer

  • Jeremy Phillips

Jeremy Phillips

Media and Communication at Freshfields 

This morning, on logging on, I found an image of my own smiling face next to the logo of leading international practice Freshfields Bruckhaus Deringer.  For the benefit of readers whose devices are not downloading images, my portrait and logo were presented beneath the heading "Picture Yourself at Freshfields Bruckhaus Deringer" and the caption beneath them read "Jeremy Phillips, Media and Communication at Freshfields".

While I have the greatest respect for Freshfields and enjoy the friendship and company of several people who work there, I was a little startled by this advertisement. My first thought was that this was not something that I had authorised and that others might see it too. I then decided that, most probably, LinkedIn's software was sufficiently subtle to enable the portrait of the account holder to be displayed only when the account holder logged in. My third thought was that this was presumably a cheap and cheerful way of advertising one's vacant positions only to those people whose interests and skills matched those sought by Freshfields. Clicking through to the link which Freshfields so thoughtfully provided, here, I then discovered that the firm's LinkedIn account has close on 26,000 followers. Who might they all be? Actual and prospective employees? Clients? Hopeful trainees? Information-gatherers from Freshfields' competitors? My final thought, somewhat mischievously, was that I could easily delete the heading, cut and paste the rest on to my email signature and make it look as though I was working for the firm:

  • Jeremy Phillips

Jeremy Phillips

Media and Communication at Freshfields 

All of this leads to the question: how important is LinkedIn to the small and sole practices that make up the core of this blog's readership?

Friday, 18 July 2014

When being 816th just isn't good enough: a response from Who's Who Legal

At the beginning of May I posted an item on this weblog, "Unqualified praise: when being 816th just isn't good enough", which commented on an email which I had received from a publication called Who's Who Legal. It read, in relevant part:
"I am one of a large number of people -- 815, to be precise -- who will by now have received a letter from the Market Manager of Who's Who Legal (WWL). This letter opens with the following text:
"I am pleased to inform you that you have been identified by our independent research with clients and peers as being amongst 815 of the world's leading trademark lawyers".
... I don't suppose that many of the sole or small practitioners who read this weblog will be rushing to spend this sort of cash. They may be wondering if all the time spent qualifying for their professions and honing their skills was worth it. After all, 815 directory entries at even the bottom rate of £1,395 looks pretty much like more than £1.1 million -- more than most readers earn. ...

You may be wondering why this blogger is so cynical about this invitation. It's because he isn't a qualified lawyer, trade mark attorney or indeed anything else -- and has never even come close to practising. He wonders therefore how effective WWL's independent research might be".
April French (Assistant Editor, Who’s Who Legal) has kindly responded to this blogpost. She writes as follows:
"... let me tell you a bit more about how our research process works. Individuals are selected for inclusion based solely on recommendations received from corporate counsel and private practitioners [this may well be the case, but it still begs the question as to which corporate counsel and private practitioners might have recommended me when I'm not a practitioner]. Only those receiving the highest number of recommendations are selected for inclusion. During the research process, your name was recommended to us on several occasions for your trademark work and you were therefore shortlisted for the final edition [at this point I found myself wondering: might the "recommendations" be culled from the increasingly meaningless endorsements that people give on LinkedIn? I've been recommended by many people whom I don't know, for skills I don't have and services I don't provide, according to a regular flow of emails headed "Congratulations, Jeremy! Endorsements help show what you're great at"].

Unfortunately, as you point out in your blog, you are not a lawyer and are therefore not eligible for listing [well, that's a relief]. The aim of the publication is to act as a reference tool and to enable clients to find private practitioners who are available for hire. We will therefore have to remove your current listing from our website – thank you for bringing this to our attention.

We take every effort to ensure that our publications are a fair representation of the marketplace and pride ourselves on the integrity and authority of our findings. This has been recognised by our publishing company having been awarded the Queen’s Award for International Trade [here are the guidance notes for businesses applying for the award. A word search was unable to find the words 'integrity' or 'authority']. We can only apologise on this occasion for not having done our due diligence in reference to your qualifications. ..."
I'm grateful to Who's Who Legal for taking the trouble to explain their position, and I'm happy to accept their apology. However, I can't help feeling uncomfortable about the selection process, or about the functional utility of directories of this nature.  Again, readers' thoughts are invited -- particularly from those who have had either good or bade experiences of listing themselves in them (my original post received five comments -- a very small number but pretty high by SOLO IP standards).

Tuesday, 15 July 2014

Trade Mark Roles at CIPA

This tweet caught my eye. When I was young I served on that illustrious committee. It was a long time ago and much of the work was about the 1994 act. It was great fun but I had no idea what we were supposed to be doing.

So let's consider what the role of the trademark committee should be. It might be to impose its members views on UK trademark policy and influence the IPO accordingly. That doesn't quite sound right does it (but its probably true).

If we look at its latest report in the CIPA journal for June 2014 We find a brief report that suggests that they were interested in plain packaging, goods in transit and not at all interested in the trademark fast-track consultation. Not much inkling on the CIPA policies on these issues might be though. [The Duck notices that the same journal contains a report suggesting that trademarks are outside our comfort zone]

It was CIPA who took forward the IP TRANSLATOR case which has led to real changes in trademark law and practice which are of undoubted benefit to business. This is because a specification that means what it says can be understood by a business man. That was very much seen as a personal campaign of Richard Ashmead's (now a SOLO too). Nevertheless, it gives some indication of what CIPA might adopt as a trademark objective.

Trademarks are a very substantial part of intellectual property practice, so much so that agents have their own institute ITMA which duplicates much of the work that CIPA could be doing. This suggests that CIPA should have a clear objective so that it can work in a way that complements its sister organisation and avoids duplication of effort. Our members are all patent attorneys so when we get involved in trademark practice it is more likely to begin with  technically based businesses rather than fast-moving consumer goods and fashion (though once we become expert there is generally no stopping us). Therefore, could the trademark committee of CIPA focus on collection of evidence on those types of businesses in order to present opinions to legislators, OHIM and the IPO?

In my day the trademark committee also had a role in organising seminars and disseminating information on recent developments, but that seems to have been split off.

We have reports of trademark decisions that appear in the journal. These also seem to be purely objective and outside the scope of the committee.

CIPA also collects royalties on the widely unread,scantily publicised and far too expensive Trademark HandBook the production of which is also outside the scope of the committee.

So what does this leave for the committee to do. Should it be reactive and only respond to consultations or should it have an agenda. Maybe its first priority should be to update its page on the CIPA website

Wednesday, 9 July 2014

Who's the source of those infringements? The tale of Wilko v Buyology

The following post was originally composed by Rebecca Gulbul for the IPKat weblog, Rebecca being one of the new crop of guest Kats. However, just before she could post it, another Kat -- David Brophy, to be precise -- beat her to the draw by posting this.  It would be such a pity if all Rebecca's hard work went to waste, so I've posted it here.  Rebecca thinks the decision is a good one; David coyly doesn't say, and I'm left puzzled and uncomfortable with the reasoning.  Writes Rebecca:
Earlier this week Judge Hacon (Intellectual Property Enterprise Court, England and Wales) gave judgment in Wilko Retail Limited v Buyology Limited [2014] EWHC 2221 (IPEC), an action where a request for a Norwich Pharmacal order [note to non-Brits: this is an order that a party disclose details of a person who is not a party to the proceedings] was sought. Using the test of ”balance of irreparable harm”, Judge Hacon refused the request.

The claimant, Wilko, was a retail business offering consumer products in about 370 stores in the United Kingdom and registered proprietor of the WILKO trade mark. The defendant, Buyology, ran 8 stores in the South West of England and in Wales, offering end-of-line products and discontinued stock at a discounted price. As part of its business, Buyology offered WILKO branded products for sale in its stores. Wilko alleged trade mark infringement and passing off. Buyology did not deny selling these products, but said that their suppliers assured them that they could do so.

Since Buyology did not contest infringement, the sole purpose of the hearing was to determine whether a Norwich Pharmacal order should be made by the court, thus compelling Buyology to disclose the names of the suppliers who had provided them with the WILKO branded products.

Timeline
Wilko sent its first letter of complaint to Buyology on 20 October 2012, asking it to remove WILKO branded products from sale and to disclose name and address of supplier. Being particularly concerned about discovering who Buyology’s suppliers were, Wilko then made two further requests for disclosure – but to no avail.

When Wilko commenced trade mark infringement proceedings in August 2013, it particularised the alleged infringements but made no request for the disclosure of the identity of Buyology’s suppliers. Buyology admitted having sold goods bearing the trade mark in question and undertook to stop doing so unless they received Wilko’s consent to sell the branded products. However, Buyology did sell some further items bearing the WILKO trade mark, which they said were very few in number and accidental. Wilko did not contest this, but said that Buyology’s conduct was ‘excessively casual’.

In November 2013, Wilko sent a further letter to Buyology, complaining about the sales of WILKO branded products in three stores and proposing that the matter be resolved by agreeing to an order, which would then be included in their application to Court. Wilko then provided a draft court order that ontained the relief it sought in its particulars of claim, but which again did not include any requirement to disclose the names of suppliers.

Buyology agreed to the terms of the draft order and to an account of profits, suggesting that they reach an agreement on the amount rather than going through an inquiry. They also told Wilko that, after they filed their defence, they had been offered WILKO products to sell in their stores, without any requirement to debrand the products.

Was there a binding agreement?
Judge Hacon first had to decide whether there was a binding agreement between the parties. Buyology’s counsel argued that the November 2013 correspondence amounted to an offer by Wilko which had been accepted, the draft order laying out the terms of their agreement. No, said Wilko: there had been an offer, and then a counter offer (comprising the additional information that Wilko would collect the goods themselves and that they could agree on quantum for the accounts of profit), which proposed to amend the initial order but which had not been accepted. 
Judge Hacon disagreed with Wilko:  both letters of November 2013 stated unequivocally that the proceedings should be settled as per the draft order. He  saw no counter offer: clarifying that the alternative method of collecting the goods did not change the substance of the agreement, while the agreement as to the amount to be paid was a matter of convenience. He therefore found that there was a binding agreement, which had been fulfilled by the parties coming to court and agreeing to the terms of the draft order. 
Did the agreement stop Wilko seeking Norwich Pharmacal disclosure?
Having found that there had been a binding agreement, Judge Hacon considered whether the agreement precluded WRL from asking for a Norwich Pharmacal disclosure in order to find the identity of Buyology’s suppliers. Wilko’s counsel submitted that a Norwich Pharmacal order was independent of the finding of an agreement and could be made at any point of the proceedings, and was thus unaffected by the finding of an agreement to settle. 
No, said Buyology’s counsel: by agreeing to the draft order, it was understood that it would put an end to Wilko’s claims. Disclosure of the suppliers’ names was beyond the scope of what the parties agreed and the application amounted to an abuse of process. What’s more, it would be contrary to the rule of finality in litigation in Henderson v Henderson (1843) 3 Hare 100, reiterated by Lord Bingham in Johnson v Gore Wood & Co [2002] 2 AC 1.
Despite understanding Buyology’s perspective, Judge Hacon said that it was unlikely that Wilko would be barred from seeking a Norwich Pharmacal order: the Particulars of Claim did not include anything regarding disclosure and Buyology’s letter agreeing to Wilko’s offer did say that they would not disclose the names of their suppliers. Nevertheless, since the request for disclosure had been made as part of the proceedings and not as a separate application after the current proceedings, he found that Henderson v Henderson did not apply, and that Wilko was entitled to seek a Norwich Pharmacal order. 
Should there be an order for disclosure?
Having found that Wilko was not barred from seeking the order, should that order be made? Wilko argued that the court had the jurisdiction to do so on two bases: first under Jade Engineering (Coventry) Limited v Antiference Window Systems Limited [1996] FSR 461 and under Article 8 of Directive 2004/48 on the enforcement of intellectual property rights. However, Article 8 was only implemented in Scotland: the reason for this was explained in the Explanatory Notes of The Intellectual Property (Enforcement, etc.) Regulations 2006:
“By reason of the House of Lords decision in Norwich Pharmacal v Customs and Excise Commissioners [1974] AC 133 no provision is necessary to implement this obligation in England and Wales or Northern Ireland.”
While not seeking to rely directly on Article 8, CounseWilko said that its provisions could provide guidance as to how the law in Norwich Pharmacal disclosure should be interpreted. Buyology’s counsel cited Lord Kerr JSC in Rugby Football Union v Consolidated Information Services Ltd (formerly Viagogo Ltd) [2012] UKSC 55, where he said that the purpose of Norwich Pharmacal orders is to do justice. This involved the exercise of discretion by a careful and fair weighing of all relevant factors, which he then cited. 
In this case, Buyology relied on factor (iv) in particular, which is “whether the information could be obtained from another source”. However, in Judge Hacon’s opinion, what mattered in deciding whether the order should be granted was “the balance of irreparable harm, analogous to the balance applied in the context of an application for an interim injunction” as in Eli Lilly & Co Ltd v Neolab Ltd [2008] EWHC 415 (Ch) which applied the judgment of the Court of Appeal in Sega Enterprises Ltd v Alca Electronics [1982] FSR 516.

Wilko’s case was that, if they could not identify the suppliers, they would be unable to protect their trade marks adequately and to prevent a secondary market in their branded goods. Judge Hacon said that, since Buyology was now subject to an injunction if it sold WILKO-branded goods, it could be assumed that there would be no further infringing goods reaching the market through them. There had been no assessment as to whether, or the extent to which, there may be other chains of supply and, if there were, whether these would cause irreparable harm to Wilko to a negligible or serious amount.

Buyology explained that the retail industry was a small close-knit community and that, if they were ordered to disclose the names of their suppliers, it would result in a lack of trust towards them, undermining their reputation and resulting in suppliers being worried about future disclosure actions. Judge Hacon concluded that Buyology’s business would suffer irreparable harm.

Judge Hacon pointed out that Buyology readily accepted its wrongdoing in its defence and that it also accepted all the other relief sought by Wilko, who would be adequately compensated for the damage caused by the sale of these goods by Buyology —and that the damage would not recur. He therefore concluded that, on the balance of irreparable harm, no Norwich Pharmacal order should be granted.

Comments 
This blogger agrees with the decision. Considering the size of Buyology’s business and the way the retail industry works, the decision seems fair as ordering the disclosure of their suppliers’ names may have indeed caused Buyology to suffer irreparable harm.