If you are European Patent Attorney and hope to practice in the future before the Unified Patent Court, now
There is currently circulating covertly, a draft proposal for rules on the European Patent Litigation Certificate and other appropriate qualifications. As presently drafted any European Patent Attorney who has an LLM or a law degree will have the right to go on the list. I approve. Sadly my CPE didn't get me a degree, so I need to try and persuade Laura Starrs at the UK IPO and her team to suggest some appropriate changes. If you think you may be in a similar position get in touch with your professional body CIPA where Vicki Salmon is working on their submissions or the IPO directly.
Many Chartered Patent Agents are much miffed that other European countries do not recognise that we are lawyers. We have to accept that that battle was lost when the Court of Justice of the European Union decided only solicitors and barristers were lawyers from the UK and that was some time back when OHIM appeals became significant business. The UK government has not helped in all that time and I don't expect them too now.
Thursday, 6 March 2014
Monday, 3 March 2014
May Day happens each year on 1st May and (per Wikipedia) is “an ancient Northern Hemisphere spring festival.” Leeds is a city with a number of road markings that read “XING AHEAD”.
|Here is duck xing sign|
The XING connection is that it “looks Chinese” whereas the real thing is Tingxi Huo of CHOFN (website at www.chofn.com) who delivered a number of formidable thoughts on Trademarks In China.
And 1st May is what we Brits call a “commencement date” : there will be new trade mark rules in place in China just before INTA gathers in Hong Kong in May 2014 !
This small report concerns only four matters that were of particular interest :
1) Translation : Our speaker explained that translation into Chinese characters might be (a) conceptual – so the translation of APPLE (the business) equates to “apple” the fruit, or (b) phonetic – and ADIDAS was given as an example of this, or (c) mixed – so (it seems) STARBUCK combines the characters for STAR (concept)and BUCKS (phonetic). And you can change ! It appears that LEXUS until June 2004 relied on a “conceptual” name – but when Chinese people (even English-speaking Chinese people returning from long-term visits to Europe) failed to link the LEXUS brand with its “conceptual” name in Chinese characters – the company changed to LEXUS in “phonetic” characters. Additional to this were (a) comment on “non-official” names or “nicknames” being used by Chinese-speakers (and the desirability of the brand-owner registering these names as trade marks), and (b) the importance of translating into Chinese characters in relation to goods-for-sale not only the brand-name but also supporting materials (such as labels and manuals).
2) The ® symbol : In China, this means “Registered in China” and Chinese Customs Officers police both incoming and outgoing infringement (emphasis supplied). In consequence : (a) if you intend to export goods from (say) the UK to China (and you have a trade mark registered in the UK or EU so it’s your practice to attach the ® symbol) then remove (or change to TM) so as not to attract the attention of Customs when goods arrive at port-of-entry in China, and (b) if you intend to have goods manufactured in China but don’t have a trade mark registered in China for those goods, then wise counsel is to search (the Register in China) before going ahead with an order for manufacture (and, in any event, be sure not to attach ® to such goods manufactured in China !)
3) Time limits : China became a Member of the World Trade Organisation in 2001 and 1st May 2014 is the date when time limits come into force for dealing with Trade Mark Applications (and for appeals). For example, there will be a time limit of 9 months for dealing with a new Application and a time limit of 12 months for dealing with an Opposition. For the first of these – our speaker made reference to the International system – filing locally in China will attract the 9-month time limit whereas the International system brings with it a time limit of 18 months. For the second of these – “special circumstances” will justify an extension of 6 months (so we wait to see what “special circumstances” will justify dealing with an Opposition in 18 months rather than 12 months).
4) (State) Administration For Industry And Commerce : this entity has 500,000 employees and it has teeth ! If presented with “clear-cut evidence” it will act quickly and effectively. It will not provide a brand-owner with damages, but it will initiate investigates / issue orders to cease infringement / confiscate (and destroy) infringing goods and tools / impose (significant) fines.
I travelled away from Leeds and Walker Morris and Tingxi Huo grateful that I’d learned something of the “similarities” between our systems in the UK / EU and those that will be in place in China after 1st May 2014. Now for INTA !
Friday, 28 February 2014
Barbara (here) and I (here) have already noted the determination of the UK IPO, in the person of Nigel Hanley, to find out what it is that solo and small-scale IP practitioners want (other than a regular flow of helpful clients who are sensitive to deadlines and pay when asked, affordable professional indemnity insurance, peace on Earth and goodwill to all men ...). Just to rub it in, here's the tick-box form that the IPO is using as a means of setting the agenda for a fruitful dialogue with its users:
IPO Customer Visit Programme Discussion Topics
IPO Customer Visits are an opportunity for us to tell you what is happening at the IPO and also for you to discuss issues that matter to you. To shape the agenda please complete this form, selecting the topics you’d like to cover:
Patent Prosecution Highway basic discussion OR
Patent Prosecution Highway presentation (approx 20 mins that qualifies for CPD)
Opinions Service and mediation
Update and questions on the Unitary Patent and Court
Update and questions on the IP Bill
PO Electronic Services – recent and forthcoming changes to IPO Services v
Service Issues you are currently experiencing and your suggestions for service improvement
Search and examination targets and practice
Excluded matter – e.g. Computer Programs
Section 20 compliance period
Guidance for Small Firms and obtaining finance
Would you find it helpful to meet representatives from:
Any other topics or questions you’d like to cover:
Tel:Apart from the obvious question of what would people like to add to this list, which looks pretty good at first blush, this blogger is curious to know if any intellectual property offices outside the UK are currently engaged in similar outreach exercises. If so, which ones are they -- and how do their attempts to hear and respond to the voice of the small practitioner community compare with that of the UK? Does anyone know?
Please return [this form] to Nigel Hanley by email to firstname.lastname@example.org
Wednesday, 26 February 2014
Nigel Hanley (Senior Patent Examiner, UK Intellectual Property Office) has emailed us with the following message:
For my [unspecified] sins I now run the Customer Visit programme in the IPO and I would appreciate a little help in advertising an event we are running in London on 9 April. The annual report for last year's visit programme can be found here, if you are interested [and also if you're not: I checked].
Specifically, we are aware that there are many small IP firms and sole practitioners that we do not get to meet. We are also aware that our current customer visit programme deals with much larger firms and businesses. To rectify that we are holding the meeting at BIS, 1 Victoria Street [it's possible that there may just be more than one of these in the country, but London looks the best bet] so we can meet the smaller firms and here what they think of our services and let them know about some of the new services we offer.For further particulars, pending the arrival of a suitable link to a web page, why not email Nigel here at email@example.com?
Our good friend and trade mark attorney Aaron Wood (now with Swindell & Pearson Ltd but no stranger to solo practice) writes:
As ever, readers' comments and experiences are appreciated, whether from the UK or beyond, on this important issue. Thanks, Aaron, for sharing your thoughts.
legal professional privilege – the ability to tell the client that the mark they have just filed is of questionable validity at best, or that the other marks located by a search are a clear infringement risk, without the risk that this advice will be disclosed in subsequent litigation. It is a central plank of practice that allows a client to disclose all to their advisers. It is a privilege which is not extended to part-qualified attorneys unless suitably supervised, however, and is certainly not extended to unqualified service providers.
For foreign associates and in-house attorneys, it may be worth considering whether the adviser you instruct is suitably qualified or supervised. The UK market has a lot of titles and it can be confusing – there is a world of difference between a Registered Trade Mark Attorney and someone who is simply a European Trade Mark Attorney; ditto a barrister and a barrister (non-practising). Advice from the former in each of these pairs would be covered by legal professional privilege (in the first case, so long as it is in the specialised area) as communications between a client and lawyer; in the latter case, no legal professional privilege accrues and you would need to disclose any non-contentious advice you received (the UK providing that legal advice obtained in relation to actual or contemplated litigation is covered by litigation privilege).
Tuesday, 25 February 2014
|BIS HQ 1 Victoria Street|
Its being held at BIS HQ and to reserve your place you only need to email with your name, firm and indication of interests by 26th March 2014.
I have said I am interested in the opinions service and how the new post IP Bill improvements are expected to work as well as the Trademark opposition process. These are the topics that might come up if you suggest them
- Patent Prosecution Highway
- Opinions service and mediation
- Update and questions on the Unitary Patent and Court
- Update and questions on the IP Bill
- IPO Electronic Services - recent and forthcoming changes to IPO services
- Service issues you are currently experiencing and your suggestions for service improvement
- Search and examination targets and practice
- Excluded matter - e.g. Computer programs
- Accelerated services (you must have noticed the new .gov format consultation on going two track again on trade marks)
- Colour drawings
- Section 20 compliance period
- Electronic citations
- Excessive claims
- Patent Box
- Guidance for small firms and obtaining finance
This is part of the customer visit programme run by the UK IPO . There is a full report of how they got on last year here
Suggestions for a drinks sponsor or a nearby watering hole to facilitate networking welcome. Add a comment if you are coming but don't forget to email to get through security on the day and to ensure your place.
Friday, 21 February 2014
"Call for longer gardening leave to tackle the rise of networking on LinkedIn" is the title of an item in yesterday's Standard that caught my eye. In short, it mentions an observation by Daniel Isaac, a partner in Withers, that traditional gardening leave routines aren't much use in a world in which the social media, and in the case of lawyers LinkedIn, provide the perfect milieu for people to remain in touch with their clients -- and to be visible to them -- even when they leave a firm and are bound by all sorts of post-employment restrictions on soliciting the clients of their former firm.
From the point of view of the IP practitioner who departs from a large practice in order to kick-start his own solo one, post-employment restrictions are most unwelcome -- even if they are technically unenforceable as a restraint upon trade. The exposure offered through LinkedIn, where changes in employment details are automatically communicated to others with whom one is linked, is therefore invaluable. Even if calls for departing professionals to "de-link" from existing clients are heeded, it is not reasonable to expect any individual to disappear so entirely from the social media that he cannot be found by a satisfied client who wishes to retain his or her services in the future.
Thoughts, anyone, and personal experiences?
|Keeping in touch post-employment:|
so easy, when you know how ...
Thoughts, anyone, and personal experiences?