Monday, 30 September 2013

Jack of all Trades

Some patent attorneys see themselves as specialists. Others as generalists. I had a friend who worked for me once, who liked telecommunications patents and would occasionally do computer architecture, but he used the analogy of a cardiologist to describe his attitude. He wouldn't touch minor complaints, the coughs and wheezes, constipation or other symptoms that fill the day of the general practitioner.

I am definitely a GP – a general practitioner. I get easily bored and suspect that working in-house in industry would drive me mad. It is the variety of my practice that keeps me happy. I suspect that many sole practitioners cannot afford to be specialists. To put it another way, one can't just be a sole practitioner. One has to do 'eels as well.

'Soles and eels, of course,' the Gryphon replied rather
impatiently: 'any shrimp could have told you that.'"
It's not all cobbling of course. Sometimes new clients have a problem unburdening themselves of their ideas. The wariness of disclosing their invention seems inversely proportional to the size of the client, and, sadly, also inversely proportional to the worth of the idea. Private inventors often have a problem understanding the concept of attorney-client privilege. I explain that like a priest, imam or rabbi, anything they tell me remains in confidence --  but they still have to open up to me, just as if they were on a trip to the dentist.

So what do they need a patent attorney for anyway? Why not write the thing up themselves?

I explain that, when we built the upstairs of our house, I wanted a wardrobe to be dismantled from where it was positioned downstairs and reconstructed upstairs. The problem was that the wardrobe was 242 cm whereas the clearance to the ceiling was a mere 240 cm. Now, being an engineer and physicist, I knew that I wanted to take the 2 cm off from the plinth at the bottom, rather than removing the top of the cupboard. The problem is that this was not really a job for a handsaw. One needs a saw-table. I phoned a carpenter neighbour who came, collected the wardrobe, shortened the sides from the base, and assembled the wardrobe in place. Now the difference between that wardrobe and the others which I assemble myself is that, in this case, the doors line up properly. Of course, I know in theory exactly how to adjust the doors: the hinges have two screws and one can adjust using these. The carpenter who makes and assembles kitchen cupboards and wardrobes for a living can however do the job in practice.

Another analogy I like to use, is that of the tailor. Essentially, I can cut clients a suit to fit their invention like a glove. The more material they give me, the more room there will be to grow. A waistcoat would be nice. Whether the suit will be for a child or for an adult depends on the amount of material they provide. In the case of patents, however, it's not just a question of the amount of material, but also the quality. If they want the suit as provisional protection, that's one thing. If it is supposed to last up to twenty years, a good quality fabric is advisable too.

Composed by Michael Factor and posted for him by Jeremy

Wednesday, 25 September 2013

Merging, Converging or Diverging -: the concept of Complementary Goods and Services

Add caption
This started off as an idea for a post by Sally Cooper to illustrate the theory that services can be complementary to goods and so confusingly similar. Everything is a service in the world of converging technologies but in the old world we mostly just had goods.

Even so, the goods we buy do provide us with services. I love Sally's example which illustrates how different parts of the relevant public perceive the same good:

Whilst putting this note together, I keep thinking of coats (as in coats you wear – rather than coats of paint). As a young person, you buy a coat because it looks good / the price is right / it suits you. As an old person, you buy a coat because it looks good / the price is right / it's likely to last for a long time. In youth, the item is definitely " goods ". In maturity, the item is more "service " than "goods". So perhaps "complementarity " (and I claim credit if I've invented that word) is (in some form) always with us ? And (in the trade mark context) maybe we need Decisions to prompt thinking on whether "Merging" is still moving down the line – or has moved so far down the line that we've arrived at "Merged" ?

In a recent opposition decision - that would have been fast-track had we had them already (Ms Al Skilton – the Hearing Officer - is designated to hear all early Fast-Track Oppositions) - Sally was successful in persuading the hearing officer that software programming and design services were similar to computer software. If you turn to paragraph 39 of that decision you find the very reasonable assessment:

"Dealing first with the applicant's computer software, software is the end result of software design and/or programming service. Such a relationship, which is complementary, is likely to be one where the average consumer regards the same undertaking as being the provider of both the goods and services."

Looking back in the decision, I see that the Hearing Officer very properly reminded herself about the European case law on the subject of complementary goods and even quotes from El Corte Inglés v OHIM Case T-420/03,
“96(sic -its paragraph 98)...goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (Case T-169/03 Sergio Rossi v OHIM-Sissi Rossi [2005] ECR II-685).”

However we see that this idea of complementary goods has diverged in European jurisprudence from the broad relationship that Sally envisions. The concept seems to be carefully limited so in another El Corte Inglés case T-39/10 (under appeal)  we find "By definition, goods intended for different publics cannot be complementary."

Nevertheless we can confirm that the jolly similarity tool  from OHIM does say that 'computer programs' in class 9 are similar to 'design and development of computer hardware and software' as having the same purpose and public and being complementary (factor 4 from the famous early Canon decision - not that you got much guidance about what it meant in 1998 its just a word in paragraph 23 ) On the other hand wine glasses are not similar to wine, however much they may complement each other. So complementarity is never enough alone.

Sally recalls that it was some twenty years ago (so 1993) that a conference in Manchester (directed at "entertainment") brought Cd's (new technology – before DVDs) to the attention of those attending. Cd's were head-lined as the music-carriers of the future. But the company that stole the headlines at the conference was not a music company – it was OCEAN (wikipedia : "one of the biggest video game developers / publishers of the 1980s and 1990s"). The music people had not thought things through – CD-content was not limited to music. This "technologies are merging " awareness played out through many years afterwards, and (inevitably) the law followed (or did it - says the Duck). Some fifteen years later, in the trade mark context, the Decision I was looking for on "technologies" went on record, being the Decision of the First Board of Appeal at OHIM in 2009 [ Case R 1215/2008-1 ]. The marks were identical CLIMAX. The Applicant's goods in Class 38 (simply "broadcasting services") and in Class 41 ( "(amongst other things) television programming services; production of television programmes ") came up against opposition from a barrage of " (electronic) games " goods in Class 9 and related "(electronic) games" services in Classes 41 and 42. The gem from this decision is : " a product covering essentially the same subject-matter will be complementary to the rendering of the service, particularly where it is offered by the same undertakings to the same consumers " [ paragraph 20 ]. The Opponent's " games [ goods and services ] " prevailed (in context) against the Applicant's " broadcasting / television " services. Product and service were complementary.

The jolly similarity tool is still (just) on side accepting that games software has a low degree of similarity with entertainment.

How far do you think this complementarity should go?

Friday, 20 September 2013

Developing inventions: going for brokers?

A perennial problem faced by IP practitioners, particular those in practices that attract an SME clientele at the micro end of the range, is that clients are sometimes unable -- and practitioners are occasionally reluctant -- to draw a clear line between professional skills (eg advising on patentability and registrability, drafting applications, licences and the like) and the exercise of judgment based on experience in dealing with questions like "now that I've got my patent/design/trade mark, where do I go from here?"

The dilemma facing any practitioner is painful. Do I abandon my client to the market where, armed with his own ambitions, experiences and credibility when seeking capital or collaborators, he will sink or swim? Or do I steer him along, to the best of my ability but leading myself into fields of expertise that are distant from my core professional skills?

It is at this point that enlisting the assistance of a third party such as an innovation broker may appeal to both practitioner and client -- yet the absence of accepted standards for professional innovation broking, plus the deleterious effect of stories of painful scams in which vulnerable innovators part with hard cash and sometimes their IP rights, remove the attractive force of enlisting their support. There may well be as many honest, capable and effective innovation brokers and advisors as there are incompetent and deceitful ones -- but who can tell, and who is prepared to say to a client, hand-on-heart, that they should go to one?

It would be good to know what SOLO IP readers think, and what experiences they have had in this regard.

Thursday, 19 September 2013

Unified Patent Court: let clarity and love remain

I want to practice before the unified patent court. This is the court that will achieve the ambition of a single court to decide patent disputes for a large portion of the European Union. It needs a procedure that is simple and accessible. While patent litigation is probably inappropriate for litigants in person, it should still not require representatives that need to have studied in big law firms for many years before becoming competent. The rules of procedure need to be clear and understandable. They were put out to public consultation recently. It's a sham and a disaster because this is a network of contradictory, messy, detailed rules that sometimes try to adjust the principles set out in the agreement. It seems that the computer system to support the court is to be developed soon. The designers of that will need to understand how the court is supposed to work. They won't.

Perhaps we should bring in the teaching professions at this stage. How would you teach this system to a student. What are the principles:
  • How are the issues between the parties set out ?
  • Who is in control of the procdure: an efficient court administration or the parties themselves as in the UK?
  • Is it all done on paper?
  • Where do we file?
  • How and when do we exchange documents?
  • What are the fees?
  • Where is everything published online?
These are the things a student needs to know and the IT people designing the support and workflow system need to know them too. Where do we find them in these rules.

It would be interesting to see what professional service process designers think of this. Maybe I should ask my friends at SNOOK ? It certainly seems to me that leaving the parties in control for 6 months before anybody can reign them in means that we have the same old expensive system where most of the early work is wasted as it is in most EPO oppositions.

Obviously this rant is not helpful and the detailed and wondrous AIPPI paper (sent to members on 11 September and not yet on the AIPPI UK site ) is likely to be more in line with the consultation requirements, dealing as it does in great detail with drafting points on many of the 382 rules and they aren't things like "Don't be Ridiculous - this is being funded by taxpayers who don't even provide legal aid any more to their own citizens" in respect of the section on Legal Aid but Article 71 says the Rules of Procedure must deal with it for natural persons so we must, but we hardly need to repeat the Article in Rule 375 do we?

The legal aid we all need is simple easily navigable rules, so we can eliminate the need for a new profession of UPC procedure rules experts at €400 per hour.

Wednesday, 18 September 2013

À la recherche du temps perdu -- and the cost of time lost

"I'm sure it's in there somewhere ...!"
This blogger has received a media release informing him that "the average employee in the Professional Business Services sectors wastes 1.59 hours a week looking for documents and information they have misplaced. The value of this on an annual basis is around £2.1 billion, or £40.91 million a week". This data has been compiled for information management specialists EDM Group, who would appear to have the envious task of making money from others' mismanagement.

Other findings from the EDM Group research include:
· The average London employee wastes the most time looking for lost documents / information at work (1.89 hours) every week, compared to N Ireland which has the lowest lost time (1.17 hours) 
· The average employee in healthcare wastes 1.64 hours a week doing this, which was the highest of five sectors reviewed (the figure for retail workers was 1.33 hours, which was the lowest) 
· 2% of the workforce – some 491,000 people – spend over 5 hours every week looking for lost documents/information at work. 9% (2.2 million people) spend between 3 and 5 hours every week doing this 
· One of the main reasons for this is that people now have to deal with far more data and material at work than ever before. 56% of people claim that they receive more information at work than they did three years ago 
· 18% of people claim that they have seen an increase of over 50% in the amount of information and data they receive at work when compared to three years ago.
The EDM Group says that this issue will get worse because the amount of information and data employees receive is increasing at a dramatic rate.

Though self-employed himself and inclined towards a paperless scheme for organising his own activities, this blogger probably spends more time looking for electronic documents than he should, not least because his own somewhat linear filing system depends on his remembering which of a number of possible names or designations he has given to his folders and files.  He wonders what experiences the readers of this blog may have in this regard, and how they deal with the frustration of knowing that, when they can't find a document, they have no-one to blame but themselves.

"Answerable to no-one but my wife": introducing Michael Factor

One of the new members of the SOLO IP team is Michael Factor, a patent attorney, seasoned blogger and enthusiastic advocate for solo practice. In this post, Michael gives a little background to his perspective on blogging, on practice in his jurisdiction and on the thrills and spills of working by oneself. He writes:
Solo practice means having to be
prepared to blow your own trumpet
"I am an Israeli patent attorney and have been blogging since November 2004 when I first went solo. My blog, IP Factor, is focused on IP from an Israel perspective, and I try to cover all Israel patent office decisions, IP related decisions of Israel courts, and IP developments relating to Israeli companies abroad. Israel is a small country where, "if you have the right connections, you don't need to rely on favoritism or nepotism", as the saying goes. The entire IP field in Israel is incestuous: everyone knows everyone else, and may have been in partnership with, formerly married to, trained by or otherwise related to each other.

What the average sole
practitioner is thinking 
about at any given moment?
Occasionally, my writing annoys some fellow practitioners -- often to the delight of other colleagues. A few years ago, I offended a patent office employee. I apologized and we moved forwards. One of the more brutal powerful practitioners in Israel was unhappy when I noted that he had an apparent conflict of interest and had done his client a disservice by the strategy he'd taken in a high profile IP suit. One firm had a malpractice suit that went to the Supreme Court and down again. A couple of patent attorneys have sued previous employers. These issues are of interest to the profession, but some of my colleagues might prefer that I did not cover certain events and can be fairly threatening and nasty about it.

As a sole practitioner I take responsibility for what I write, and it is my call. I have never felt to proud to apologize where I've got a fact wrong, but When in partnership, or worse, when an employee in a large firm, one doesn't have the same freedom to blog. And it's not just blogging. I decide whether or not to get up in the morning and go into work, or whether to work from home. Apart from my wife, I am answerable to no-one, and this is a major advantage in being a sole practitioner".
We look forward to introducing further new members of the blog team in the not-too-distant future.

Monday, 16 September 2013

Lost in Translation : its all GOLDEN BALL

While I was tweeting and the IPkat was posting, our new SOLO blogger, Sally Cooper was pondering ...
Buy them
There is cause for celebration this afternoon arising from the Decision in Case T‑437/11Golden Balls Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Intra-Presse [as summarised on IPKat] where (simplistically) GOLDEN BALLS prevails over BALLON D’OR.
     This writer was, for a number of years, involved in registered trade marks owned by a multi-national company with its Head Office in France – but had to work hard at language skills.
     She remembers (at a later date – still working on her language skills) seeing the UK Trade Marks Registry publish the mark JOLIE BIJOUX for goods in Class 14 including “jewellery; costume jewellery; fashion jewellery” and thinking “Surely BIJOUX is JEWELLERY ?” and “Surely JOLIE is PRETTY ?”.
     She no longer has either the letter of Observations she wrote to the Registry at the time nor the Registry’s response (saying the mark was accepted / her letter of Observations made no difference), but this afternoon’s news has promoted her to revisit the Registry’s Manual on “Non English Descriptions which are most likely to be understood”.
     The current version says : “The average UK consumer may well be familiar with the non-English name of a product or service, or the local name for its geographical origin.
For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known in the UK as ‘Burgundy’ and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Similarly, the average consumer of olive oil is likely to know that ‘Toscano’ is the Italian word for the region known in the UK as Tuscany. Consequently, these names are not registrable for wine and olive oil, respectively”
     Key to this afternoon’s Decision (for this writer) is the part which says : “Due to the fact that the signs at issue are in different languages, a  manifest distinction is created between them so that ... the average  consumer will not immediately associate them without undergoing an intellectual process of translation ...".
     So maybe JOLIE BIJOUX for “jewellery” is OK after all. And perhaps we’re going to end up with more and more “Non English Descriptions” on the UK Register because (let’s face it) a lot of us are not very good at the “intellectual process of translation” ?

Hopefully this decision will have some impact on whether the revisions to the Directive and CTMR that I blogged about here to make translations of earlier marks into account as bars to later marks, are implemented or kicked into the long grass where they belong.


Another possible meet-up?

Back in September 2008 SOLO IP organised an informal meeting in the London office of Olswang LLP at which a team from LexisNexis presented some of the company's online practice and client development products and sought reactions (other than the predictable ones about cost). Barbara wrote a neat little report on the meeting for this blog, which you can read here.

I've received an indication from LexisNexis's Paul Caddy that the company would be interested in hosting a meeting some time in the future and that it was even prepared to pay the cost of refreshments for the privilege of doing so.  Such meeting is likely to be again in London and would probably be late afternoon or early evening.

As soon as there's any concrete information, I'll let you know.

Friday, 13 September 2013

Examination Matters -- but at what price?

"Examination Matters 2013" is the title of an attractive and interesting seminar organised by the European Patent Office in a couple of months' time.  It looks like this:

Examination Matters 2013

ExamMattersVisual2013 (JPG)Seminar for patent professionals
19 - 20 November 2013
European Patent Office, Munich

Register here

With "Examination Matters" the European Patent Academy is organising an in-house training seminar for Professional Representatives before the EPO.

First-hand experience on important aspects of your daily work will be exchanged by examiners and practitioners, which will give participants an insight into an EPO examiner's daily work and their way of thinking. The workshop-type character of most sessions will give the opportunity to discuss relevant aspects with the "other side" in detail and provide immediate feedback on your questions.

Target group

This event is directed to patent attorneys who are active in the prosecution of European patent applications before the EPO. 
The event is not just aimed at this: it gives the EPO a chance to indulge in a little data-grabbing. This is a bit like tagging migratory birds to see where they end up and how they get there -- it's relatively painless and provides all sorts of helpful data, one hopes.  The data grab is attached to the registration process and the first of its five pages look like this:
Registration form for seminar PS05-2013
The seminar "Examination Matters" takes place from 19.11.2013 to 20.11.2013 in EPO Munich.

Personal data

Section 1 of 5

Questions/Problems with your registration?
So far, nothing has been said about the cost:
Registration fee
EUR 350,-
This fee covers conference material, catering for the whole event and dinner on the first day for one participant. The fee cannot be split and is not refundable if cancellation is requested less than 28 days before the start of the event.
That's just the registration fee.  Let's not forget the cost of getting to Munich, if you're not already there, plus accommodation, plus the hidden cost of the time consumed by travel, waiting in lines for security and customs etc and the disruption to one's professional obligations -- many of which are urgent and time-sensitive, clients being what they are.

This blogger hopes that, once all the data is captured, the EPO will contrast the proportion of registrants who work by and for themselves or in small practices with the proportion of such practitioners within the profession as a whole.  Might that just persuade them to offer a wider selection of seminars and events that are accessible online, and thus easier to access for many people who can greatly benefit from them?

Guardians of the Orb : Know your Certification Marks

Sally Cooper keeping us up to date, warm and well loved on the delightful ITMA lecture programme

GUARDIANS OF THE [HARRIS TWEED] ORB is the title of a talk given last evening (12 September 2013) by Colin Hulme of Burness Paull in Edinburgh – though an alternative title could well be HARRIS TWEED – A WELL-LOVED BRAND. Not wanting to spoil things for those planning to attend this talk in Leeds next Monday - still time to book, this note is limited to information that is stored away for future use (e.g. Quiz nights).

  •  The Harris Tweed Certification Trade Mark is the oldest British certification trade mark still in use  
  • A heroine in the history of Harris Tweed is the Countess of Dunmore who, in the 1800s, was passionate about clothing made from this tweed produced in the islands of the Outer Hebrides
  •  The Harris Tweed Act 1993 established the Harris Tweed Authority (taking over from the Harris Tweed Association)
  •  Part of the definition of Harris Tweed set out in the Act is that it’s “a tweed which has been handwoven by the islanders at their homes”
  • 1996 was a high point in the history of Harris Tweed when 7.6 million yards were spun (think of all those jackets !)
  •  Japan is currently the largest market for Harris Tweed
Colin talked further about the (legal) protections in place for Harris Tweed, not only in the United Kingdom but in other countries of the world. But what’s most important to Harris Tweed are the protections it gains from (brand) popularity and mystique. The Authority finds its best policemen are its loyal customers, and also finds that sometimes it’s appropriate to draw back from circumstances where legal action might be threatened (or taken) to protect the brand. This writer found herself recalling seminars in past times on the branding attached to successful films (say, STAR WARS) and pondering whether the time has come for “well-loved brand” to be a stand-alone term in the legal lexicon ?

Thursday, 12 September 2013

How Many Conversions are There?

The reinvigorated blog today has a guest post from distinguished Northern Trade Mark Attorney, Sally Cooper who has been pondering Conversions:

   We are not talking about currency conversions or faith-to-faith conversions or even kicks-that-score-three-points in the game of rugby union.

   No – the concern is Article 108 of the Community Trade Mark Regulation ("CTMR") which begins " The applicant for or proprietor of a Community trade mark may request the conversion of his Community trade mark application or Community trade mark into a national trade mark application …… ".

   Linked to this are :

(1) Article 109(2) CTMR which sets out " If the Community trade mark application has been published, receipt of any such request shall be recorded in the Register of Community trade marks and the request for conversion shall be published " and

(2) (in the UK) Regulation 10(2) of the Community Trade Mark Regulations 2006 [SI2006/1027] …… which sets out : " … where the request [for conversion] has been transmitted [by OHIM] it shall be treated as an application for registration of a trade mark under the [Trade Marks Act 1994] " which brings into play section 38(1) Trade Marks Act 1994 : " when application for registration has been accepted, the registrar shall cause the application to be published in the prescribed manner ".

   This writer has come across two instances of conversions being recorded on the OHIM Register and on the UK Register :

(1) EU Trade Mark Application 8321382 has a filing date of 26th May 2009 : the record notes " Application withdrawn " and " Conversion " with only the UK as country designated : the mark went on to become  UK Trade Mark Registration 2559508 which has a filing date of 26th May 2009 (corresponding to date on the OHIM Register) and a section noting " Converted trade mark details "

(2) EU Trade Mark Application 7414361 has a filing date of 24th November 2008 : the record notes " Application refused " and " Conversion " with designations of Cyprus, Denmark, France, UK, Greece and Ireland : the mark went on to become UK Trade Mark Registration 2574526 with a filing date of 24th November 2008 (corresponding to date on OHIM Register) and a section noting " Converted trade mark details ".

  This writer has not come across either :

(1) any co-ordinated information provided by OHIM which sets out (for example) :

(a) the number of conversion requests received in any year

(b) whether those requests were received before or after publication of the mark by OHIM

(c) whether the requests for conversion came from Private Applicants or from Representatives

(d) whether fees of OHIM were paid and conversion requests were then transmitted to designated countries

(d) whether registration was achieved in designated countries thereafter, or

(2) any co-ordinated information provided by the UK Registry which sets out (for example)

(a) the number of conversion requests transmitted by OHIM in any year

(b) whether the (now local) Applications achieved publication

(c) whether the (now local) Applications achieved registration

(d) whether any reports have been made to OHIM regarding (b) and (c).

  A recital in the 1988 Directive (to approximate the laws of Member States relating to trade marks) says " Whereas in order to reduce the total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise, it is essential to require that registered trade marks must actually be used " (emphasis supplied).

  The availability of " request(s) for conversion " played a major role in OHIM's promotion of the " new " Community Trade Mark system in the 1990s. The fact that such requests might actually increase the " total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise " was not greatly considered – probably because, until its doors opened for business in 1996, the Community Trade Mark system had no idea how many Applications it would receive.

  Now seventeen years have passed by, perhaps there should be an interest in whether the availability of " request(s) for conversion " has, in fact increased the " total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise " ? And perhaps it's time for OHIM and local Registries (including the UK Registry) to provide some numbers ?  

More evidence of an upturn -- for some

On Monday, SOLO IP commented on the suggestion that the job market for IP practitioners was up 15% over the previous six months. Some corroboration for the notion that there is a bit of a pick-up comes in a press release this Tuesday from InterExec ("who act as confidential Agents for Senior Executives earning £150k to £1m+"), say that there has been a 14% increase in the number of unadvertised vacancies notified to them in July/August, with a 35% increase in the professional services sector. InterExec adds, "Recruitment of Senior Executives usually precedes the recruitment of more junior positions, so the 14% increase, which follows a 40% increase in the first half of 2013, would indicate that there is likely to be a substantial increase in broader recruitment over the next six months".  The company's figures, which are broken down by sector, show that the growth is not evenly spread.  Financial service are still limping along with a growth rate, if you can call it that, of around 0%, while the media and IT sector is way ahead of the average.

It's not easy to predict what these figures mean for the IP professional with a micro-practice. Some may wish to join or return to larger practices, where size is equated with comfort and security, while others will consider that the recruitment of senior and then junior professions can be equated with increased overheads that in turn will make larger practices have to work harder to compete with lean, mean smaller practices.  What is apparent, though, is that this growth is apparently confined to the private sector, since the public sector -- where accountability and transparency are becoming the norm -- are hardly likely to be busily filling unadvertised vacancies.

Wednesday, 11 September 2013

Blogposts by email: a fresh start?

Like many other weblogs, SOLO IP has a Google Group which it uses for the purpose of sending out its blogposts as emails to interested subscribers. The grandly-named SOLO Independent IP Practitioners Group exists for precisely this purpose but, for various reasons which are of little interest to ordinary folk and which are best forgiven and forgotten,
  • a number of people who believe that they've joined the Group don't seem to have been receiving emails
  • other people who thought they'd joined the Group found that all they had done was sign up to an RSS feed
This blogger has had one final go at tinkering with the settings to see if he can get the Group to work properly.  To sign up for it, visit the SOLO IP weblog's sidebar, at the top of which you'll find something that looks like this:
179 readers now receive the SOLO IP weblog by email circular. Why don't you?
To subscribe, just type your email address in the box below, then click the 'Subscribe' button
If you want to sign up, it's not difficult to work out how!

If this latest effort to breathe fresh life into the Google Group doesn't work, we'll create another one from scratch.

Monday, 9 September 2013

15% more tonic -- or just another bubble?

Is there finally a genuine and measurable pick-up in the market for jobs in law?  No, say the earnest youngsters (and not-so-youngsters) who keep sending out those CVs, filling in online applications and asking this blogger to write them references.  But perhaps they are the unlucky ones since there is some suggestion that things are improving -- in the British market at any rate.  Recruitment agents Robert Walters (53 offices spanning 24 countries, in case you're planning to go into exile) have issued a media release stating that the sun is shining on 15% more applicants than six months ago.  According to the media release (in relevant part):
Rise in job levels by 15% boosts both private practice and in-house markets 
... The UK legal jobs market has benefited from a healthy influx of activity over the past six months ...

Within private practice there has been a significant increase in job levels across real estate finance, private equity, intellectual property [so, we are one of the top four areas of growth] and restructuring. These trends have been driven in part through recruitment activity by new boutiques and US law firms offering market-leading remuneration packages and greater levels of responsibility [Some clarification is needed here. Boutiques ]have to be pretty well established to be able to offer 'market-leading remuneration packages' -- but all boutiques and small firms can offer 'greater levels of responsibility', which range from 'do your own filing' to 'eat what you kill'].

Within in-house, lawyers with financial services experience are receiving a number of offers and market leading salary packages as the impact of new regulations starts to bite. Demand outside of the capital has been boosted as businesses seek to cut costs by relocating some functions away from London [this sentence could quite plausibly have been written in 1983, 1993 or 2003. Does nothing change?].

The news supports the findings of the latest Robert Walters European Jobs Index, which indicates that burgeoning market activity generated a 14.9% increase in legal vacancies advertised in the UK between the first and second quarters of 2013. ...  

The legal market update can be found online here.
All this can mean one of a number of things, including the following: (i) the bad times are over, (ii) a lot of people have given up their IP careers and are being replaced, (iii) law firms are stocking up with suitably qualified staff ahead of their own anticipated pick-up in the economy.  The choice is yours.

Friday, 6 September 2013

GSK Legal Disability Confidence Day

A little advert in the latest supplement to the CIPA Journal caught my attention. Glaxo SmithKline are organising an event on 2nd  October 2013 at their office in Great West Road Brentford TW8 9GS.

They say "the purpose of the event is to give attendees an overview of working at GSK in the in-house legal team, which includes solicitors and patent attorneys. You will gain a better understanding of in-house and law firm recruitment practices. The aim is also to increase awareness of disability within the GSK legal function.

This event is aimed at disabled students with a legal or scientific background, trainees, qualified solicitors, patent attorneys and others to whom the topic is of relevance."
For further information and to register it set to attend you are invited to email

Wednesday, 4 September 2013

Educated, qualified and experienced -- but held back by client expectations?

The Lawyer, Thursday, 29 August 2013, ran this little piece which, if nothing else, shows that it's not only IP bloggers who have to scratch around for content during the long, slow summer months:
Hands up, who did a law degree?

Here is an interesting statistic for you: the number of people making a change of career mid-stream is on the up. In 2009, 14 per cent of students enrolled on the graduate diploma in law conversion course at the University of Law were career changers. Three years on and this figure has risen to 20 per cent.

We spoke to four 'career changers' over the summer, including former Blur drummer David Rowntree who is now a solicitor with Kingsley Napley and former A&E nurse Jennifer Bethlehem who is currently working at Freshfields Bruckhaus Deringer, to find out how they got on after choosing law as a second career.

Little did we know what a hornet's nest we had wandered into. has been flooded with comments, some of you are outraged that you can become a lawyer without first doing a law degree.

One commentator opined: “Lawyers seem to be allowing for the destruction of their own profession by allowing any old person to come along and proclaim, indeed be, a lawyer.” Another suggests career changers must be interested in the law itself rather than “money, prestige and ego”, if they are going to be successful.

We've also heard from mothers who have taken career breaks before converting to law at a mature age and encountered no difficulty in making the change or indeed landing a job.

We have a shrinking profession attempting to be more diverse in its makeup. Is the biggest hurdle to diversification lawyers themselves? Let us know what you think.
IP practitioners in England and Wales, which is this blogger's home turf,  are already educationally and professionally diversified to a remarkable extent.  There are conventionally legally-educated qualified solicitors and barristers, then there are cross-overs who start as one and end up as the other, taking with them not only the education that led to their earlier qualification but also the attitudes and hang-ups.  Less conventional are those who studied another subject at university first, tacking law on as an uncomfortably intensive afterthought.  There are also patent attorneys, with what should be an in-depth scientific background, and trade mark attorneys (the mongrels of the IP world with no discernible common ancestor or pedigree).  But this fairly diverse scene is only the beginning of the story: there are private practitioners, in-housers -- drawn both from the ranks of those mentioned in the previous paragraph and from those who have worked in the granting and challenging of IP rights, being patent or trade mark examiners.

I'm pretty certain that IP lawyers are not the biggest barrier to their own diversification. If there is a barrier at all, it might be provided by client expectations that the professional representative of its choice will conform to a stereotype that may be unrealistic and may indeed no longer exist.

Monday, 2 September 2013

Best ... and worst?

In the past week or two this blogger has spent a fair bit of time talking to friends and colleagues, one of whom is considering shuttling away from an academic career and setting up as a sole intellectual property consultant, while the other is pondering a move from a large firm to a small practice. In each case the person concerned has been assuming that "the grass is greener on the other side", not least because the career move under consideration is one based on escaping from an unhappy position rather than taking a positive step towards a desired goal.

These discussions set this blogger thinking: what words of comfort or caution might the readers of SOLO IP have for anyone thinking of taking the plunge? Suggestions are very welcome!