Tuesday, 16 December 2014

Money Laundering

The tale end of Rule 11 says: Every regulated person must ensure they comply with all legislation
pertaining to “money laundering” and “proceeds of crime”.

No problem. Back in 2008 Solo posted about it. The 2007 Regulations don't apply to patent and trademark agents.   I was therefore surprised by the IPREG advice page.  In August they took advice from Mr James Ramsden, a junior counsel, who opines that the Treasury is wrong (as is SOLO). Brave man! I was alerted to this development by the report at the back (page 655 to be precise of the recently arrived CIPA Journal on the webinar in September. Personally I would have made it front page news as we know from the secret diary that no-one reads these features. Webinars are of course for CPD points getters not for any useful information. There is also a summary published clandestinely on the CIPA web site in October here.

The consequence of Mr Ramsden being right and me being wrong is (amongst other things) that all solos now need to become nominated officers to submit Suspicious Activity Reports (SARs). The National Crime Agency has a nice on line interface for enabling us to pursue our new career as a nark. Under the law as I understand it, if someone asks me to participate in a dodgy transaction, I can just say no. I have no further obligations. Yes you do need to be aware of the possibilities of money-laundering and now that we all have client accounts, we may be tempted by suggestions that we use them to facilitate interesting trades that our clients have in mind. Don't do it. Just say No. Client accounts are for managing credit risk in a way that is fair to the client.

The reason why the Treasury were wrong apparently is that we are independent legal professionals who by way of business provide legal services to other  persons, when participating in financial transactions concerning the managing of other assets (where the other assets are patents and trademarks). Me thinks he is stretching it. We do manage patents and trademarks but participating in financial transactions concerning their management? I don't think you can have  had in mind the payment of renewal fees as a financial transaction. Managing assets means looking after an investment portfolio, a load of houses - something of that ilk, not keeping a database of renewal dates. Probably you should read the opinion yourself.  Paragraph 17 to 22 are the knub of it.

Under the 2007 regulations, I only have to do client identification procedures when I am establishing a business relationship to participate in these strange financial transactions. Therefore, it seems to me that I had better not even get close to doing that.

Since IPREG took counsel's advice in August, one would have hoped that they have managed to engage with the FCA (Financial Conduct Authority not Crime Agency) and work out who is the supervisory authority for us.

ITMA recently conducted a survey to find out how many members had held money in an escrow account as part of an assignment exercise. Was that what they thought managing assets meant? An independent legal professional that is involved in financial transactions concerning the buying and selling of business entities is caught by the Money Laundering Regulations. However a trademark is not a business entity. A business is a business entity and the business might include a trademark but it would be remarkable if the trademark agent acted in the sale of the business entity just to get the trademark. If something like that comes along, pass it on to a business solicitor.

I am also confused by the Statement from CIPA and ITMA that you can see here. The first paragraph while true does not seem to support any assertion. Are they asserting that we don't need client accounts or that we should not be covered by the 2007 Regulations. The next paragraph bemoans the fact that we are not covered and some people (not many)  have had difficulty getting client accounts (as to which see my earlier post). Hopefully someone who knows will provide an illuminating comment. Maybe it could be you!

The Agreed Fee and Your Client Account

Now that the  UK patent and trademark agents amongst us have heard from our regulator that there will be no suspension in the introduction of the new rules on client money that will commence on 1 January 2015, many of you will be polishing up your procedures manual.

The purpose of this post is to explain how Agreed Fees work. I mentioned them in my February 2014 post here.

The example I have in mind is that you have undertaken to do a piece of work for a client that involves substantial disbursements. This could be a foreign filing program for a trademark or a national phase entry program on a PCT application.  You have carefully worked out what you expect the disbursements to be because it's highly unlikely that the client will instruct you without knowing what he is in for. 

Some of these disbursements will be in overseas currencies so you've done the sums on today's exchange rate.  Your terms of business will have explained your client how you bill disbursements, which might for example include adding a percentage to cover the administrative costs.

If you want the money in advance then the simplest way forward to is to use an Agreed Fee. An "agreed fee" is one that is fixed - not a fee that can be varied upwards, nor a fee that is dependent on the transaction being completed. An agreed fee must be evidenced in writing. This definition comes from Rule 17.5 of the Solicitor's Accounts Rules. I see no reason why IPREG would not follow this example and when operating under those rules (which I did for many years, my firms relied on it a lot). You issue your VAT invoice (The best possible evidence in writing) for the agreed fee and when it's paid, its office money.   It never touches your client account. Simples. Even if your client can only afford to part pay the invoice that's fine, the part he can pay goes into your office account and stays there (SRA Rule 12.7 (c) (iv) is your authority if you need it). 

The downside of an agreed fee is that it is fixed. If exchange rates move against you, tough. Therefore, you might say to your client that you will do the work and bill it when you have complete certainty. This is fine if you have a lot of working capital. Again, you don't need to use a client account.

If however, you want to ask the client for a sum on account of costs generally, you can and must stash any such payment into your client account. You need to make it clear on what terms this sum of money is paid and what interest will be paid to them on it. I am a big fan of 0%.  When the time comes to issue an invoice for the work, you transfer payment from the client account into your office account. The downside of this is that it makes life awkward if you don't have very much working capital and need to use the clients money to pay the disbursements as you go along so that you are forever dipping into the client account. This really does need a good bookkeeper, so its not a plan for a solo. The best approach then would be to pay all the disbursements out of client account at the same time as you issue your invoice to the client. Do remember to make it clear on the invoice that you wish you exactly how much he now needs to pay you.  If you end up being overpaid then you have to put the overpayment into your client account or send it straight back.

Now that you can fix a renewal fee budget with a supplier like Envoy or get Valipat to help you manage the costs of a PCT national phase, the agreed fee is relatively risk free.

Wednesday, 10 December 2014

Sally Cooper in Munich finding that Small is Beautiful

Munich ? December ? Trade Marks ?
From Heather Cowper

But surely Munich = EPO ?

And surely Munich / December = Christmas Markets ?

YES - but Munich in December in 2014 was logo host-City for INTA’s last Conference of the year : “When Trademarks Overlap with Other IP Rights”. The Conference took place in the nicely-named district of Arabellapark. As cold and dense fog were the order of the day, around 350 or so persons eschewed walks in the park – they sensibly stayed indoors and diligently followed proceedings. This is true. From 9.00am on Monday 8th to 6.00pm on Tuesday 9th the focus of interaction was the Conference Hall. A heavy first day worked through “Trademarks and Copyright Law” and “Trademarks and Designs” and a heavy second day worked through “Trademarks and Geographical Indications” and “Trademarks and Unfair Competition Law” and “Trademarks and The Right of Publicity”. For me, the glue that held these Sessions together was the format of a full-time academic beginning the Session and “perspective” Speakers following. There was surprisingly little repetition and a lot of learning and a lot of fun : well done to all Moderators ! Along the way I learned about the Skydisk of Nebra  decision from Germany and the Tripp Trapp chair decision from the CJEU  and Darjeeling Lingerie (a Decision in favour of the Indian GI for tea in Taiwan but a Decision against the Indian GI for tea in Israel) and was given a wake-up-call on what we all (as IP lawyers) owe to the Paris Convention (1883) and the Berne Convention (1886).

Mr Campinos Thanks to Mladen Vukmir
The Conference ended – appropriately - with Antonio Campinos (President of OHIM) looking forward to (amongst many other things) a reduction in fees for users of the Fast-Track Trade Mark Application procedure. And slotted into proceedings was a short (VIP Interview) Session on Trademarks and Patents : yes – we were in Munich after all ! And right at the beginning / present throughout was Jeremy Phillips. He introduced himself as the gypsy violinist – in attendance as Keynote Speaker trusting thereby to enhance the experience of those partaking of the (Conference) feast. He reported just about all of the Conference proceedings on the IPKat blog “in real time” (thereby – to the relief of this writer - making further reporting on content redundant). Indeed, I suspect Jeremy pressed the “post” button on his Address “Overlaid, Overlegislated and Overloaded: Trademarks in the Twenty-First Century” before his Address began (so quickly did it appear on Twitter #INTAMunich) !.

For me, there were two “take-aways”. The first was the pleasure of being at a Conference where trade marks were “a given” : the focus was firmly on the many other IP rights that work alongside trade marks (sometimes overlapping / sometimes not) and Speakers from across the world should be congratulated on underscoring the significant “education” task confronting INTA’s Related Rights Committee. The second is in my notes of the concluding remarks of OHIM’s President Antonio Campinos : that “the majority of businesses are small – not large”. Thank goodness someone said this!

Thursday, 4 December 2014

Rule 11 and opening your Client Account

I was pondering (as you do) whether the profession was ready for ABS licensing and client accounts. Back in February we were all told Rule 11 meant we had to have our client accounts open and ready for 2015. See my post at the time.

I was pondering because I happened to notice  a few days ago, on the SRA Question of Ethics page, a note about the operation of client accounts and how evil it was to have the interest paid into the client account because the interest on a general account is office money (at least in SRA land it is - IPREG may have other ideas but I doubt it). In any event the interest on the overpaid sum of £35 that came from an Australian client and which would have been lost in exchange rate differences and banking fees if I had paid it back was going into my client account. Oh woe! Now don't worry that client account has always been IPREG regulated so I wasn't about to get hung drawn and quartered as promised by the helpful Ethics police at the SRA. Even so I got in touch with my Bank (Barclays fortunately not a Building Society) and they have made me honest by directing the interest to my office account. OK so if you have set up your client account in readiness you too might want to check where the interest will go.

Meanwhile the Bar Standards Board have started an escrow service BARCO regulated by the Financial Conduct Authority. If you use that they charge you 1% but it seems to be capped at £250 per transaction. Presumably you have to pay that out of your funds rather than the client's so I'm not thinking of using BARCO myself for that overpaid £35. If you charged the £250 to the client would that be "protecting client money" - the tenth SRA principle.?

Next I heard from ITMA via their Chief Executive's Bulletin today (4 December 2014):

Unfortunately the current banking practice only allows true client accounts to be opened by a profession included in Schedule 3 of the Money Laundering Regulations 2007 and currently the IP profession is not included in this schedule making it difficult for those bound by the new rules to comply. The new Rules are due to come into force on 1st January 2015 and we have written, together with CIPA, to IPReg to request they delay bringing into force the new rules until it is possible for our relevant members to fully comply. We will advise as soon as we have any further information on this matter.
Its very easy to blame "banking practice" and I would be interested if others have found difficulty with the mainstream banks. I didn't and all litigators have needed to have client accounts for a while.

I was surprised to hear that postponement of the rules was being requested on my behalf. The bar has managed to prepare itself and given that we nearly always deal with business clients we should be able to manage a client account or credit risk  by now. Moreover delaying the new regime would presumably knock back those who are ABS and want to offer more co-ordinated business and IP advice to their clients.

Anybody know more about this? Please comment

Wednesday, 26 November 2014

A visit to CIPA towers with Darts-IP

I had a chance to see where CIPA allow Neil Lampert, our media guru, to chill out in CIPA towers today during the coffee break in the free training seminar (complete with mini-croissants, Belgian chocolates and 2 CPD points) given by Darts IP. I have previously discussed the wonderful statistics you can generate using their carefully analysed data on trade mark decisions.  I am sorry but I managed to sneak out without being given an evaluation form so this is it. Obviously top marks for the quality, comfort and location of the venue (such a shame I don't get to go there more often). The catering  was pretty good too, but then you give me chocolate of such quality and I would say that.

Today they showed us just how finely you could tune your searches by combining options in the box on the left with the Points of Law, Trade Mark Comparison and Goods and Services options across the top. You can find all sorts of information on parties or previous decisions in oppositions involving marks like the pair in front of you. If only the courts were consistent, you could predict the result of your case without going to the trouble of fighting it.

The demonstration was preceded by a talk by Michael Edenborough QC master of European Court trade mark practice. He warned us that OHIM were even more experienced than he was and they could use that experience to defeat you. OHIM can be involved in most cases, but sometimes they are on your side as in the recent Rubik's cube decision of 25 November 2014 which is already in the Darts database (see above) . I highlighted his name because Lucas & Co a trademark firm of great repute had instructed him on that case for which Brian Lucas (CPA) developed the "black cage theory" that with some brilliant legal development by his QC and the fact that OHIM were on the trade mark proprietor's side succeeded in showing that this mark, unlike a LEGO brick, was a completely registrable trademark for so many reasons but mainly because all its functional parts are hidden and a black cage is inherently distinctive. (End of Boast).

The options for subscribers allow some amazing pattern matching. Your mark has three identical letters and a different fourth. You can find all the similar fact cases in any jurisdiction. This is just too smart. Knowing how OHIM and indeed any office does not like to be bound by its own mistakes I wonder how wise it might be to rely heavily on  an obscure precedent from an earlier opposition decision, especially if it is an isolated one. I now know how some adverse parties have found obscure cases to cite.

However even OHIM are trying to be consistent on their similarity of goods assessments and Dart's technicians have managed to do some really smart visualisation of how similar or dissimilar a good might be to other goods. Everybody who has a paying subscription really needs to beg to have the tool for statistics on product similarity added to their pack. Its the perfect way to craft a specification that could lead your mark to the register for a limited specification with much reduced risk of opposition.

If you are learning your craft, Darts detailed analysis of cases will allow you to become an expert in no time at all by finding the matching cases that have gone before you. If you have a subscription, use it. If not you need to grab Gary Cook.

Wednesday, 19 November 2014

Accounting the Cost

KPMG site
One of the major worries when setting up as a solo practitioner is how to deal with the financial side. Even if you are only borrowing from yourself (or perhaps especially then) you need to keep a careful record of all transactions. My strategy was to buy some accounts software and later recruit an accountant to do the end of year accounts and tax work. I asked for recommendations, visited several firms, sent enquiries to others. It was rather hit and miss. Small business is not that attractive. (It might be different if you are in a smaller local community than the heart of London and you can network with local providers). Since then accounts packages have moved into the cloud and pay by month Software as a Service has become a popular option that feeds our just in time culture. I was therefore intrigued when I received a cold call from Big Brand Accountants KPMG promoting their service which combines everything you need in the financial way from book keeping through VAT returns and payroll to the end of year accounts and tax - all bundled into one neat monthly fee and accessible from anywhere (provided the cloud is still in the sky). Prices start at £150 per month (this year but what about next?) and depend on how much of a burden you are predicted to be!

The accounting package at the heart of it is Xero - a brand I had not heard of before. You could try the Xero software for free to see if you like its approach - but it seems to be able to deal with € and $ as well as £.

The benefit of having an accountant on board when you start should be that things get set up properly. It ought to impress prospective clients too that you are well managed and regulated even if small.  That does seem to worry some transferring clients that have been used to the apparent re-assurance of big firm providers.
Xero Direct
I am not being paid to write this and I am not a user but it certainly looks an interesting and innovative approach to the problem. The idea of having an accountant that you can call with a VAT query without risking another bill seems to address exactly the problems that some small CIPA members were having as reported during Congress.

This type of product could also be beneficial to not so solo firms too. If anyone has has experience of cloud based book keeping or dipped a toe in the water please comment. What do you see as the risks and benefits of this approach?

Thursday, 13 November 2014

Small and British: are you feeling busier ...?

More work -- at last
The latest H W Fisher survey of small and medium-sized law practices in the UK reflects the fact that the economy is picking up a bit, with firms in this sector experiencing a reported turnover some 4% higher than a year previously. However, this good fortune (assuming that increased turnover = increased profit) is not spread evenly: this because the turnover of the larger firms within the legal SME sector rose by around 10%. This wouldn't seem to leave much for the smaller firms. Interestingly, litigation is said to have dropped from 36% of the surveyed firms' work to around 26%. I doubt that this would be reflected in the IP sector, where the Intellectual Property Enterprise Court's recently-spawned Small Claims track has apparently been buzzing with activity.

Tuesday, 4 November 2014

The Professional Meeting

The Anti-Slavery Society Convention, 1840 by Benjamin Robert Haydon
Tomorrow (Bonfire night) there will be an Ordinary General Meeting of the Chartered Institute of Patent Agents Attorneys. The agenda is essentially a vote to allow the entry of new members. The meeting is scheduled directly after the council meeting in the hope that the necessary 10 fellows can be persuaded to stay on and tick the boxes to elect the hopeful new members. I suggested to our esteemed secretary Chief Executive that this was rather a parody of the idea of an ordinary general meeting. That was on twitter here.

The purpose of this blog is to explain what ordinary general meetings were when I first became a member and before  CIPA became a CPD points machine. Members of the profession gathered together to discuss matters of interest to the profession. This would generally be by a chaired debate with some prepared paper followed by discussion from the floor. In this way members of Council were able to learn the views of the profession. Topics on which policy needed to be formed could be debated. A certain amount of learning would take place especially if the papers were well prepared. The papers were published.

It was also important that these meetings were open to everybody. They did not require additional fees. They did not come with free beer, but members might adjourn to a local public hostelry. However now that element is all that remains and without the initial food for thought, we are just left swigging gin and discussing Christmas plans.

When voting for council members, it was always important to see how many OGM they had attended. Were they in touch with the membership?

Now it came to pass that firms of patent attorneys were less keen on their staff departing from the office to attend such early evening meetings. Gradually only unmarried partners would attend and as attendances fell off and the programme planners failed to plan programmes we have what we have now, an OGM that is simply for admitting new members.

Mr Davies would like to rewrite the Charter and bylaws so that he can admit new members without an OGM abolish OGM. Unfortunately, I don't think he understands the principle behind the original plan but he is reading my blog so kudos to him.

If we are to believe the essential truth behind other parodies of council meetings, we must begin to wonder how CIPA is a representative body.

Fortunately, there are other intellectual property organisations such as AIPPI UK that do have meetings that discuss IP policy and developments and no doubt the membership will defect to those.

The default reasons for membership belong mainly to the young who are aspiring to qualify - hence the decision to bring the informals inside the dying shell. The patent examination board and IPReg will continue but one has to doubt the viability of the body that founded them if it doesn't meet. There can be no body without its members and if there is no membership, then the officers have no authority (and no funds).

Saturday, 1 November 2014

Is a Fax Machine Essential ?

It appears that my co-blogger is planning to move office and to that end she has been busy working out what needs to be done. I am hoping that she will share with us some of the useful information she gathers in this exciting process.

She asked OHIM whether it was still necessary for representatives to provide a valid fax number for communications. She reports that they said No.

Today I had rather late instructions to file an appeal. It should have been the simplest task to enrich OHIM with 800€ from my deposit account and say that the grounds would follow later. Barely 5 minutes work really. OHIM even provide a very detailed note of how it is supposed to work. Sadly that is not how it does work, due to the delights of the OHIM website.

I really mean it
Once upon a time if you logged into your dashboard and selected a mark, it would be opened in a new tab after asking that infuriating question about whether you wanted to be told that ever again. I have lost count of how many times I have said I don't want to see that message again. That's not the bug I am concerned with.

The bug is that having arrived  in my new tab the header says I am logged in but the record says I am not. The bug seems to be temperamental as its sometimes there and sometimes not. Maybe this is due to the time I have been logged in? To me it seems just to appear to annoy me when I am trying to achieve something.

Now having got to my record there is a button to appeal but it wants me to upload the form. I am a smart bunny, I know where OHIM have hidden the link to the forms at the very bottom of the home page. You can also find a link in that very detailed note. If you are reading this because you have work to do (and a typewriter) here is the link to the Appeal Form.

OK you have the form and you download it and fill it in in Acrobat Reader. Oh no of course you cannot save it, but you can print it and scan it. Now it would be easier just to fax it but I have not got a printer and a fax to hand at the moment. I do however have a full licensed copy of Adobe Acrobat  so that should be simples. I can fill the form and save it and then attach it to the e-communication. No. I fill it and save it but when I attach it, its blank except for my signature. No information on the deposit account I want to take the fees from, no indications of the appellant and the decision. All just blank. Why? It looks just fine on my PC. I try to print it using a pdf printer but the security defeats me again and generates an error message as if I was trying to print a picture of some currency rather than spend it.

All I am doing is a standard obvious action that OHIM should have tested many times. It is months after the website was launched. They tell me how to do it in their tutorial but it does not work that way unless you are prepared to use a typewriter or a fax machine or scanner.

So Sally I am sorry they misled you but I strongly recommend you get yourself a little USB fax modem from Maplin so you can send faxes from your PC. This is the one I have and its a bit of a bore to plug it in instead of the phone but it should work (I hope) or this appeal ain't going to be filed. Just as well I don't leave things to the last day but even so post wouldn't work either.

So come on OHIM its bad enough that I must appeal but at least take my money without quite so much pain. I may cry.

Friday, 31 October 2014

He who pays the piper dresses the worst

"Does How You Dress and Look Impact Your Career?" is the title of a LinkedIn Pulse post ("A Must-Read for Jeremy") which, since I received it, has probably been received by most if not all of the readers of the SOLO IP weblog. Thanks to the growth of the social media and the increasing level of informality that attends even formal intellectual property events, I need to dress up less often and, when I do dress up, I do so less smartly.

My feeling is that there are different standards within intellectual property. On the whole, practitioners in the field of trade marks and branding tend to turn up to meetings looking pretty smart and spruce -- and those who deal with IP in the fashion sector are particularly well turned-out.  Copyright lawyers are more likely to be a lightly rumpled, couldn't-care-less version of 'smart casual', while patent folk are those who are least likely to be confused with those who practise the art of sleek, smooth professionalism.  Indeed many look as though they have just stepped outside their garden-sheds for a breath of fresh air and a chance to blink in the unaccustomed light of the sun ...

Within the different skills sets offered within IP there are divergent clothing codes too.  Patent attorney litigators and solicitors often seem better turned out than the somewhat scruffy and threadbare patent bar (do some barristers have a 'lucky suit' which they favour in court, only discarding it when it falls apart or when it has become so shiny that the judge can see his face in it?).  Those involved at the hard end of licence negotiations are dressed for the comfortable end of smart if they're sensible, since they don't know how long it will be before they get the chance to change them.

At the wrong end of the spectrum are the clients.  On the basis of "he who pays the piper calls the tune", many of them turn up looking as though they've taken their fashion cues from the Pied Piper. Or am I being unfair?

Tuesday, 28 October 2014

Legal 500 or Famous Five? When the holiday option is best

Managing Intellectual Property publishes league tables for IP firms in different countries. Sole practitioners are unlikely to be mentioned. The more clients one has, the more likely it is that a number of clients will recommend one.  One practitioner is likely to have fewer clients than two -- and two are likely to have fewer clients than four or five.

A sole practitioner, no matter how effective he or she is, will be limited by the amount of work he or she can do. In addition to billable work, sole practitioners and partners in small firms will generally also spend time doing accounts, marketing and other tasks that are dealt with by dedicated staff in larger firms. Many sole practitioners do more billable work and earn better than junior partners with similar experience in a larger firm, but they still won't rank in the league tables.

In Israel, the International Business Directory, Dun & Bradstreet, ranks patent firms only by size. When they publish their annual rankings, most Israeli business papers base an article on their press release. The headline in the accompanying newspaper articles usually relates to leading firms. This means that the smaller firms, no matter how good they are, will never be mentioned and can't be leading firms (it also explains why fully or semi-retired staff members have their licences paid for by the firm so that they can play the numbers game, and why there is more than one patent attorney with Alzheimer’s that is still listed as practising to make up numbers).

I assume that Dun & Bradstreet rankings for IP firms in other countries are generated the same way and receive similar press coverage.

Established firms, including small ones, tend to work for a solid core of regular clients. One does, however, need constantly to try to bring in new clients, as existing clients do sometimes disappear. Sometimes they run out of cash. Sometimes they are taken over. Sometimes their patents all issue or are abandoned. It hardly matters why, but such clients cease to generate work and need to be replaced. In a recession, and the world seems to have been in one since about 2008, there is less work around. Existing clients often do less IP related work. New clients typically come in by recommendation, and I am not convinced that participating in international conferences and holding events necessarily works. However, I still attend conferences and hold events because it is fun.

I have a number of nice certificates showing that I have accumulated academic qualifications, and one stating that I am a licensed practitioner, and a new one each year showing that I pay my dues. However I don't have trophies and medals as a leading practitioner since directories rarely assess practitioners, but rather assess firms. I was, therefore delighted to be recognized as a Leading Practitioner by a UK based company, ACQ, that publishes a directory of leading practitioners in which I can take out a full colour advertisement for a small fee. I can also purchase a trophy with my name engraved on, or more than one (for office, conference room and mantelpiece).  It does seem a little self-indulgent to purchase such trophies and to pay for an advertisement in a magazine that no-one reads in order to leave it on one's coffee table in the waiting area. For the same money we could have a family holiday.

Are clients sufficiently gullible to be taken in by such trophies? Presumably. After all, the companies offering them have been around for a while. Someone buys their trophies. I did go into the ACQ website, and can see that there are patent firms that pay to advertise there.

Posted for Michael Factor by Jeremy

Sunday, 26 October 2014

The new approach to correspondence with the EPO earns 5 stars

Forgive me if you are already up and away with the delights of the new case management system  (CMS) from the EPO but if not here he is a brief review from a tentative user.

In the past to file electronically with the EPO you needed their stand alone on line filing application. Now this was a brilliant piece of software which I have been using since last century. In the beginning it put paid to those days of sending paper in triplicate by post or worse still using a fax machine. It was instant and incredibly over the years has been allowing us to file more and more of our day to day correspondence with not just the EPO but also our national offices and WIPO. For solo practitioners it was the most wonderful gift and its server version meant that it provided a solution for even the largest practices. In its last hurrah it has just opened up the possibility of filing a demand for examination of a PCT application (which is not yet possible on CMS). Nevertheless the constant updates were a chore and it wasn't always easy to make corporate IT departments understand what you needed.

For some time the UK IPO has adopted web filing which allows us all, whether sole inventors, corporate departments or agents of whatever size to file new applications, other forms and responses using a secure web interface. Now the EPO has decided to follow suit.

For those of us with smart cards already the Case Management System seems the best option. However there is also a web filing option (WFF) that provides for instant registration and usability. Here is the guide for that ( a modest 29 pages).

The more sophisticated CMS option has a guide too but it is 207 pages so get comfortable. First you need to tell the EPO you want to use CMS. There is a web page for doing that. Once the support email has come through you can slot your card in its reader and attempt to go to the start page by clicking on the button on this web page (see picture to the right)
. At first it kept giving me a 404 error but clicking on the EPO logo in the top left (I'm not sure what is under the logo but its worth a try for any 404 errors you get ) was the clue for getting past that one. We are now up to version 1.9 and for the non-solo readership, the release notes suggest it is now possible for one registered user to register others in their organisation.

Having got in, it is fairly intuitive to get on and fill in forms. Its a nice thing that addresses and names you set up in Demo are available when you come to do real work so you can experiment with real data. Don't throw away the on line app just yet, but this is a simpler option for everything it does. You set up your default language in the Preferences option and away you go. I was slightly disconcerted not to see English is the amazing list of filing languages but "Same as Procedural Language" works just fine.

Your PDF files have to be well behaved and as with the app you and the document need to know the number of pages there are and if you have not accounted for them all it will tell you that overlaps are not allowed.

I have not managed to make the little eyeball viewer work happily yet. Maybe it wants my PC to have a tiff viewer (it doesn't) but then I was using Firefox and I think you are probably better off in Internet Explorer.

Despite that, I have managed one live filing that has moved along so I am pretty chuffed and you can probably do the same without having to read the 207 pages but its nice to know that it and the efficient support@epo.org are there to help.

Do share your experiences.

Friday, 24 October 2014

Dealing with email tsunamis: any suggestions?

Don't dismiss this post as being entirely off-topic. It's about my perennial battle to cope with vast quantities of email that arrive every time I take a day off -- or even spend a few hours off-line when travelling by plane. I can easily receive over 200 emails a day and, in recent times, have frequently topped the 300 mark.

Intellectual property law is an area in which information-flooding is rife.  Apart from the fact that there are so many suppliers of information at local level -- publishers, conference and event managers, service suppliers, government departments and the like -- the global nature of IP protection and commercialisation means that we are always hearing from countries far afield, often countries with which our clients have little or no interest, whenever local law changes, offices close for public holidays, or recent commercial and litigious outcomes are reported. Then there are lists of fee-changes, both for office and private practice, solicitations, and lots more, The list is endless, or seems to be.

I'm sure that I'm not the only person in the world of IP who struggles to cope with incoming email and I was wondering whether readers of this blog -- most of whom probably don't have a secretary or assistant to screen their email before they get to it -- might have some useful algorithms, techniques or procedures for prioritising and processing larger quantities of incoming email than the eye can readily absorb and appreciate.  Suggestions, please!

Friday, 17 October 2014

S for Service

I am horrified to recall that it is now a whole fortnight since the famous Congress of the Chartered
Institute of Patent Attorneys broke up. The final event was a dazzling introduction of the CIPA Strategic Plan. As you can see from the picture this has caused the need for much study. The debate on the day was perhaps a little handicapped by the fact that those attending the webcast and others, like me, who had arrived just for the public part of the Congress and a piece of stolen cake, did not have access to this paper publication at the time. It is slightly soft and silky (but at least it doesn't have a lightbulb like the newsletter).

It was heartening to discover that the complacency of the Council  in assuming that members would simply stay on board forever, despite the fact that that membership is completely unnecessary to remain regulated patent agent, had been exposed by our new (ish) chief executive Lee Mark Davies. He gave a great presentation to keep the Friday afternoon pack awaketo explain what the ideas were and why we needed them. Maybe he is motivated by the desire to get an award himself from the Associations Network which provides a support body for people in his position. Interestingly though that is free to join because CEOs of associations are very good buyers, whereas patent agents aren't.

There's a lot of good stuff packed into this leaflet. Some of it may even be achievable. Some like agreeing and publishing internally a comprehensive policy playbook, clearly isn't. What that simply means is that the present Council will say what its personal opinion is. This year's Council opposes grace periods for example but there are an awful lot of members who support them and now CIPA have to justify why they are out of line with a lot of other interests such as the IP Federation and the University's representative body

The main purpose of this post is to highlight the fact that there is no S for service. It seems to me that the S for service is about CIPA being a hub which can direct people to its members, whether that's identifying a firm with with expertise in your technology  or someone who can help in a litigation emergency pro bono. Somehow IPReg as custodian of the register seems to have got that job and they are not well suited to doing it. They are well suited to allow punters to check whether a particular identified person is or is not registered or whether they have a disciplinary black mark over them, but not to help them find one in the first place. The UK IPO does an excellent job in all its literature of saying "go to CIPA or ITMA if you need a relevant professional". For example you find the page about patenting your invention on the UK IPO web site, you are taken straight to CIPA where you will find a hopeful little block that says find a patent attorney. This doesn't give you a lot of options apart from geographical area. It will also tell you that Filemot doesn't exist either but don't let that worry you, nobody would search for that.

Are we providing sufficient service to the community at large with this very basic tool. Obviously all firms do their own marketing but the public still feels reassured if they find a rated professional from a trusted source. At the moment, we are leaving them to Google. Does this give us much S for status?

Wednesday, 8 October 2014

WIPO go to Manchester to visit Sally Cooper

My thanks to WIPO and the IPO for coming to Manchester. WIPO in the persons of Mr Yo Takagi, Mr Victor Vazquez, Mr Michael Richardson and Ms Asta Valdimarsdottir, and the IPO in the persons of Mr Tom Walden, Dr Hazel Craven, Mr Mike Foley and Mr Gareth Woodman.

Though the formal title for the Seminar was “WIPO Services and Initiatives” we all know the real title was “WIPO – What (More) Can It Do For You ?”.

One thing WIPO certainly provided is a memory stick with 6.54 GB of free space - along (of course) with the 168 slides used in the course of the Seminar and much information besides.

Not wishing to spoil things for those who will be meeting WIPO / IPO in Glasgow tomorrow (and those who may soon benefit from in house seminars following from the London Seminar), there follow nine slides which were of interest to the writer (with reasons) :

(1) WIPO - History : It’s always good to be reminded that everything began in Paris in 1883 : did I miss the party in 2013 (celebrating 130 years) ?

(2) WIPO - Present Times : It’s also good to be know that WIPO isn’t a static organisation but one that is embracing challenge
3) United Kingdom – good news : from 3rd in a global index in 2013 to 2nd in a global index in 2014 has to be GOOD NEWS !
4) Patents : if I were a Patent Attorney there might be more about patents – but it’s good news for WIPO that the PCT market share (top part) is increasing

(5) and (6) Designs : If I were regularly involved in Design Registration there might be more about designs. As it is – pending the UK government going forward with joining the Hague Convention – it’s the case that a “User” can apply directly to WIPO (per (5)) and, as the UK is a Member State of the EU (the Top Filer per (6)), it would appear that filing at WIPO under the Hague Convention is already an option ! (though you can't tick the UK box yet and those you can tick are not as exciting as they hopefully soon will be)

(7) WIPO – Resources : Probably the part of the Seminar that had the greatest impact on me was the reminder of the many research tools now available on the website at www.ipo.gov.uk (Really Sally its the so much more snappy https://www.gov.uk/government/organisations/intellectual-property-office )

(8) WIPO – Resources – Trade Marks : As a Trade Mark Attorney, it was good to be reminded in particular of the “ image “ search tool that can be found on the Global Brand Database

(9) WIPO – Alternative Dispute Resolution : This is clearly an important part of WIPO’s work (even if some of us have, to date, only encountered services offered by WIPO in the context of disputes about Domain Names). It’s perhaps trivial to end with this slide suggesting “Model Clauses” but – in the alternative – maybe taking the pain out of drafting will result in more persons / firms / companies / other entities remembering what WIPO can offer should a dispute arise ?
 Poof says the Duck I am glad you didn't post all 168! but for those who couldn't make it there is always the 24hour WIPO website http://www.wipo.int/services/en/