Wednesday, 17 May 2017

INTA 2017 FC Barcelona v RCD Espanyol

The trademark profession will gather in Barcelona. The convention is in the Fira Gran Via or is it? There are two football teams in Barcelona and I suspect there may well be two INTA conventions, with the other one taking place in central or beach venues.

Many Solo practitioners will want to gain some insights into current practise so I expect to be found at least in the mornings in Hall 8. The programme is here  or you can access the App on the web or download it to your phone so you can map the location of the official events. The App has lots of useful detail about the sessions.

 Maybe I will see you at the EUIPO session on Sunday morning, which conflicts with our very own Sir Richard Arnold talking about jelly bears or why distinctiveness is not the same across Europe including Switzerland.

Meet the Bloggers is on the beach on Monday evening - look out for lucky people with ribbons and beg for one.

Monday lunchtime there is a tweet up but to find the right coffee shop you will need to follow #INTATweetup #INTA17 on your twitter feed.

Catch some law, some #Brexit strategies, some sunshine. See you there and thanks to all those good people who have organised this amazing event.

If you aren't spending all your time in the convention halls you might want to search out an Espanyol football shirt.

Monday, 1 May 2017

Website licensing misery

I'm really not clever enough to use my own photographs to illustrate my own website. Therefore, I turn to stock photography libraries which used to supply royalty free licenses which meant that businesses like mine, which refresh their website once every blue moon, don't have to worry about paying royalties just a one-off fee to the photographer for the right to put the photo on the website and leave it there for some unspecified period. However, when I visited Alamy, I was offered a five year licence for website use. Is this an impracticable new trend or have I just been out of the stock photography market for too long?

For the purposes of this blog, I usually go to Google image search and look for Images that are labelled for reuse. Some might argue this website is commercial (even though it is not written for any direct economic benefit, but is that the test) so I tend to look for unrestricted reuse so I'm afraid I can't show you the Tate's image of St Joseph at work (I'm writing this on his feast day) even though the original artwork is out of copyright. However, thanks to the generosity of a photographer in the Philippines and Wikimedia Commons you can enjoy this image of a church sign in the Philippines.

The photographer donated this to the public domain and I am grateful for his generosity. However I must remember not to speak to the German market. According to a recent newsletter I received from the German IP firm Meissner Bolte a reform of German copyright contract law became effective on 1 March 2017. This amends the German copyright act and appears to prevent my desired single payment for the use of a copyright work. I am not clear whether this simply prevents exclusive licences, which might be okay because I'm not looking for an exclusive licence. Section 40 a of the German copyright act now provides that a copyright owner can after 10 years exploit and otherwise dispose of work himself regardless of previous contracts.  I shall be seeking further clarification when I meet my German colleagues at #INTA17 in Barcelona.

Copyright law is seriously ripe for reform as voices more authoritative than mine (Sir Richard Arnold) have been saying for some time. You can listen to an excellent BBC Radio 4 programme on the topic here.  Unfortunately it's an enormous topic and the level of protection required for a website ready photograph, a doodle and a truly original painting by Sir John Everett Millais really isn't justifiably the same.

I think my website might be words only.  That's going to be really boring.

Friday, 14 April 2017

James Peel looks at the UK IPO fees review

by kenteegardin
Fellow Patent SOLO James Peel of J.P.Peel & Co Ltd has been taking a look at the recently published Consultation document from the UK -IPO as they seek to balance the books. Here is his summary:

The proposed changes are a balance between a desire to increase income whilst changing the behaviour of applicants to simplify the UK IPO workload, particularly by encouraging applicants to file “better quality” patent applications. As an example, they report that in one year, ten individuals filed 3000 patent applications of which 51 were examined and only three resulted in granted patents which were renewed for just a few years.

The UK IPO says that they break even on costs/income after a patent has been renewed for 15 years. The fee increases may be needed to pay the salaries of the new patent examiners as their numbers have more than doubled in the past six months. Pressure had been exerted by CIPA to sort out the backlogs which were making it hard for the UK IPO to meet their own deadlines. Some years ago, national patent offices in Europe appeared to be struggling to find a role for themselves with a drop off in filings because of the success of the EPO. The UK IPO marketed itself as providing a fast and low cost route to patent protection. This appears to have been successful but at a cost to their non-urgent work. It must be a sign of confidence in their strategy and offering that the UK IPO are putting their fees up.

Two approaches to the fee increases are proposed: the introduction of new fees and increases in prosecution fees or an increase in renewal fees but with lower new fees and lower increases in prosecution fees. The latter approach is unlikely to change applicants’ behaviour though, and an opportunity might be missed.

The new fees are a charge of £10 for each page over 35 pages to be included in the application fee and a fee of £30 for each claim above 15 claims to be included in the search fee. The UK IPO predicts that the introduction of a claims fee will increase their income per case by about £210 as the average case has 22 claims. This calculation assumes that the behaviour of applicants will not change. I wonder if they took the elimination of omnibus claims into account. Also, the fees for long specifications in other jurisdictions can largely be eliminated on most cases by careful choice of font size, margins and line spacing.

In percentage terms at least, the biggest change is to the application fee which in one proposal is being tripled from £20/£30 to £60/£90 with a 25% surcharge for late payment. It is this fee which is aimed at dissuading “frivolous” applications. Such an increase in upfront costs is balanced with smaller increases to the search and examination fees.

There are greater fee increases for paper based transactions and so I wonder if we are being guided towards online transactions.  (Wonder no longer, James, the UK is going digital). This may inadvertently favour lone applicants as online transactions are on a case by case basis: it is not possible to make batch payments online.

Following the unpredictable result of the dramatic increase in claims fees at the EPO in April 2008, it is good that the UK IPO are consulting about the changes. It is now up to us to respond.

We are invited to respond by email by 6 June 2017 (Note the precise 11:45pm deadline). The earliest date on which the new fees could come into force is 1 October 2017.

Saturday, 8 April 2017

Preparing for the Unified/Unitary Patent

Subject to any rebellion in Germany it now appears that the Community Patent will emerge from its enormously long gestation period in 2018. It won't be called a Community Patent it will be a "European Patent with Unitary Effect" mostly now called a  Unitary Patent (UP). There is Unitary Patent Package of legislation which seems to be where UPP comes from. The Package includes the arrangements for the Unified Patent Court (UPC). Not even the name is consistent so what can we expect of our attitudes to it.

I have just registered for the CIPA webinars which promise to help us get practical. Book soon the first is on 27 April 2017.  These webinars are free to members as it is considered desirable/essential that everyone who claims to be a patent attorney should be fully up to speed.

AIPPI also have en event on 31 May 2017 and you can book here. There should be a webinar for that too.

The main immediate concerns are
  • Choosing between an UP or a conventional EPO bundle when grant decisions are imminent after the package takes effect, and
  • Opt out of the UPC jurisdiction for existing European Patents 
The first concerns me most and I have been pondering the factors we need to put into the mix.
Is your client is exploiting the patent? are there licences? what are the probabilities of a dispute arising? what are the probabilities of an opposition? will your client want to maintain long term? does it  envisage significant growth or being bought out?

For what I would call the ordinary SME using its own patents, only filing for true innovation, and having a fairly parsimonious attitude to renewal fees the teenage UP would probably be an unlikely survivor but it is an easy choice in the early years. The fee scale was established in 2015 so these figures are probably going to increase before you pay them.

The other big issue for UK clients is Brexit and whether the European market is available for new innovations is accessible. Its also possible the unitary region wont include the UK after Brexit  but UK owners of UP will still be able to own them.

My current thinking is that the UP is good for optimistic entrepreneurs who see a growth future, but for the more established business who knows its market probably not.

To keep up to date follow BristowsUPC and for the progress of the court see the official Unified Patent Court site. You could also stroll past the court building in Aldgate and dream of appearing there

Monday, 27 March 2017

Keeping the UK Trade Mark Register pristine

I am sure that many times you click the link to VIEW OWNERS OTHER MARKS and you don't always get what you expect. Strangely your trade mark seems to a lone wolf. Don't be misled? Many trade mark owners never bother to synchronise their portfolios.

Even though the UK -IPO do not charge a fee for the update of a name or address using a Form TM21A most representative's will charge for the update. Making this type of change is currently fairly time consuming for an owner or his representative. I have just spent 40 minutes from start to finish dealing with one simple change. If I had done the same thing at the EU IPO it would be all sorted in maybe 4 - or perhaps two times that because I did the change of representative on my UK case at the same time and that would have been a separate operation prior to the name change at EU IPO.

So because its really nice to View owners other marks and because its even nicer to offer owners a free service to make these simple updates - could we ask the smart masters of the website to consider whether the next form to migrate to being online could be the TM21.

It might need some added security as we don't want incorrect updates to be registered and being fee-free might allow some nefarious activity to take place. However I am sure that could be managed. I have no evidence that EU IPO have suffered unduly from false amendments.

With many trade mark owners reviewing their portfolios in readiness for #Brexit this would be a good time to make this available.

What do folk think ? would this improve the service to both the public and the trade mark owners.

Saturday, 11 March 2017

ACID stands up for the UK profession

One of the greatest supporters of the UK creative sector is Dids Macdonald and the Anti Copying In Design Group ACID which she masterminds. I frequently suggest to my creative clients that they become members as they start their business journey. I notice on twitter that Dids was concerned that Brexit meant the loss to UK designers of Community Unregistered Design Right - not something that is much enforced. In the UK our own unregistered design right has a far longer duration but it obviously does not give you free rights beyond the English channel.

As I have previously discussed many design clients are generally unwilling to pay for even great value legal support.
Cath Kidston's registered Design DM/093635-12

The real loss to those UK based designers is the ability to register a Community Registered Design without legal representation. Post Brexit they will need to work with a representative. This can't be a local UK one unless some deal is done. Its hardly likely that a deal will be done to allow UK representative to act before the EU IPO. Its not going to be a high priority for the UK government in the negotiation due to the low value of existing business to the UK legal profession that will be lost.

However the UK government is committed to joining the Hague System. At present a UK designer can access Hague as an EU citizen because the EU is a contracting party. Not that many do as you can see from the Hague Express Database which reveals only 3 designs with GB addresses registered so far in 2017. However post the UK accession to Hague it will become a great deal more attractive. With a single application you can have a UK registered design and a Community Registered Design and if you wish ask for protection in any of the other territories which are Hague Contracting parties Switzerland Norway and Turkey are the useful European contracting parties. US and Japan are the most likely to be of economic value to British designers.

Therefore my free advice to British creatives is that registration via Hague is your best route to protection beyond these shores. Cath Kidston thinks registration may be useful but her highly creative company is choosing to register the type of textile fabric design that is the simplest to represent as shown above. The Cath Kidston business will also have copyright in that design but  no doubt appreciates that the proof of copying element of a copyright case can be onerous.

Planning for Brexit for our UK clients is something we should now be considering. Using Hague is just one proposal. In future posts I would like to consider what is the best advice for our UK clients to prepare their IP portfolios. It seems we can rely on CIPA and CITMA to do the best they can for our overseas clients.

Saturday, 25 February 2017

CIPA consultation on CPD

CIPA Education Committee have produced a document which is fulsomely described as a Framework for Professional Development. They want our comments on it by 10 March 2017 so do jump to it - they clearly need help. I had hoped it was going to propose the end of the CPD hours culture in favour of results, but no.

The idea seems to be that they need to know what a qualified patent agent needs to learn in order to develop and maintain his professional competence. This will guide the educational provision.

Once one has got over the "Teach Speak Jargon", we find that they believe we need to have skills, knowledge, values and behaviours. I accept that skills and knowledge can be learned taught and developed, but I am not too sure about the last two. Once upon a time lawyers studied ethics which generally dealt with the practicalities of not acting for both sides in an argument and managing the clients funds but such practical issues don't seem to be within the scope of this framework. Least said about "behaviours" the better.

Let me turn to what I do understand. There are lists of skills and lists of knowledge.

At the end of the list on knowledge we have:
2(g) a member should have a sound understanding of the law and practice as it relates to designs, trade marks, copyright, licensing, due diligence, contract and competition law to enable them to identify the implications of such laws and practice for clients and to enable them to refer clients for further professional advice and guidance as relevant and appropriate
Frankly this narrow focus on patent practice is disappointing. Now that CITMA has its charter are we dropping our interest in the core intellectual property fields of trademarks, designs and copyright? I think we need to put Mr Ferrara right.

The list of skills is extremely flowery. Some are the basic drafting skills that are a prerequisite for qualification. Other so-called skills are frankly patronising : do you want to be trained in how to "be able to adapt style and approach to meet the needs of clients".  One skill that seems to be particularly important is managing the expectations of clients who expect their unadapted applications to be examined any time soon by the EPO or UK IPO.

This list does not provide any suitable structure for developing educational offerings.

When seeking education, focusing on knowledge always helps. The core of the CIPA offering needs to be keeping up to date with developments in IP law in our home jurisdictions. The suggestion that the same level of emphasis needs to be placed on ALL overseas jurisdictions is odd. Its all too easy for CIPA to succumb to visiting overseas' professionals desire to give "marketing" updates in the name of education. Education in the laws and practices of the main trading partners of this country is what we need. We need to direct our eager marketing volunteers into discussing practical issues that are likely to be relevant to our local clients.

Item 2(f) : approaches to competitor IP is not knowledge -its a skill.

The values and behaviours are the province of IPREG and codes of conduct.

An educational framework needs to be more skeletal and be a tool that those organising programmes and events can work with. This framework does not seem likely to help.

We need courses and support on:
  • keeping up to date on IP law
  • improving  skills of drafting and advocacy for preempting and responding to office actions
  • developing litigation skills
  • listening and receiving feedback from users of IP on what they need
  • managing our own businesses - includes ethics
What do you think you need CIPA to provide for you?