30 December 2008

Practice: Motor Industry - Parallels with the Legal System

The University of Southern California held a conference at San Diego earlier this month on Leading Legal Innovation. It seems to have attracted some distinguished academics and a sprinkling of practising lawyers though, sadly, none from the UK so far as I can see.   

Susan Block has reported on what seems to have been one of the more interesting conference papers which was presented by Prof. Stephen Burbank of Pennsylvania Law School in yesterday's AMLaw Daily, "The Innovation Agenda: Are Lawyers Stuck in GM's Tire Tracks?". According to the report Prof. Burbank drew interesting parallels between the structures and attitudes of the US motor industry and legal professions. As we all know US car markers have problems as indeed do car makers everywhere including the UK.

Can parallels be drawn here? There are certainly similarities. Parts of our legal profession have done very well over the last few years so why fix it?   I think the answer to that is provided by Professor Stephen Mayson in his article "Referral Repercussions" which appeared in Counsel in July 2008:
"One thing I am sure about, though, is that the future challenge is not about the quality of legal services. There is no doubt that the legal profession, and the bar in particular, is well able to provide high quality advice and advocacy. The real challenge lies in clients who cannot afford that quality - or, more challenging still, those who can afford to pay choosing not to. No business has a future unless it provides services that its market is able and willing to pay for. Lawyers have to be quite clear that there is value in what they do for the fees they charge - whatever protestations they may wish to make about the client's (often misunderstood or self-denied) need for quality."
If we are to survive as a profession then we are going to have to change attitudes and business structures.

29 December 2008

Software Patents: New Guidance from the IPO

On 8 Dec 2008 Sean Dennehey signed a new practice note on the patenmtability of computer programs to take account of the CA's decision in Symbian. The main changes relate to:
  • what constitutes a technical contribution for the purpose of determing whether a program is patentable; and
  • clarificaiton of the exclusions in s.1 of the Patents Act 1977.
Technical Contribution
The Intellectual Property Office had previously recognized inventions that either solve technical problems external to a computer or solve "a technical problem within the computer" as potentially patentable inventions. The sea change of Symbian is that 
"improving the operation of a computer by solving a problem arising from the way the computer was programmed - for example, a tendency to crash due to conflicting library program calls - can also be regarded as solving "a technical problem within the computer" if it leads to a more reliable computer. Thus, a program that results in a computer running faster or more reliably may be considered to provide a technical contribution even if the invention solely addresses a problem in the programming."
Other Exclusions
The other development is that examiners will now object to the computerization of what would be a pure mental act if done without the aid of a computer as both a mental act and a computer program as such. A similar logic will apply to the other exclusions.

Liverpool Seminar
Amplification opf this new practice will be given by Julian Elbro, Deputy Director of Patents at the IPO and the person responsible for IPO practice in the area of excluded matter, at our seminar on Software Patents after Symbian and Bilski at Liverpool on 5 February 2009. Click here to register your interest.

20 December 2008

Company Names: Not Quite the Real Thing

The new Company Names Tribunal, which I mentioned in my announcement of our chambers new fixed fee service on 10 November, has just published its first three decisions. They are:
None of the respondents defended the applications and the adjudicators found for the applicants in all three cases. Costs of £700 were awarded (£400 for the issue fee and £300 for the statement of case). Our fee for settling a statement of case is £300 + VAT.

Merry Christmas!

12 December 2008

Practice: Desmond Browne: 'The Bar is not for me'

On the very day that Rio Tinto announced 14,000 redundancies, Sony another 8,000, Mercedes short term working and Woolworths finally gave up the ghost The Independent published an extract of a speech by Dersmond Browne (the Chairperson-Elect of the English and Welsh bar) entitled  'The Bar is not for me' – words no one should say to themselves"  Giving Browne as much credit as one can, it was good that he bemoaned the under-representation of black, minority, ethnic barristers in the self-employed bar, on the bench and in silk. I've just become a member of a minority group (and quite a vulnerable one at that) and appreciate his concern. The problem is that the only way to change that balance without a purge of those already there would be to recruit more barristers. At a time when every other industry in the world is cutting capacity ours must be the only one that is actually talking about expanding it.   That, of course, is ridiculous.

Let there be no mistake, if the bar promised a good living together with a sense of purpose for those who practise in it it as it did when I was called by Lincoln's Inn in 1977  there would be just as many able "black, minority and ethnic" candidates for our profession as there are for say professional football or for the NHS. 

The bar has always been difficult to enter and very competitive. Most of the students with whom I dined in the 1970s fell by the wayside for one reason or another. But for these who stuck the course and established themselves there were some real rewards to which we could look forward. 

First, there was the prospect of an appointment with a good salary, high social and professional status and an inflation proof pension.   The bar was the only route to the High Court bench and the best route to the circuit and administrative bench.  Not any more.    And since at least one Chancery judge (who is sadly no longer with us) resigned his appointment after a few years, and since another got himself into a spot of bother by talking to as firm of solicitors about a job, it seems to me that life on the bench can no longer be all that it was cracked up to be.

Secondly, there was legal aid in 1977 for everything including even intellectual property. That enabled the bar to expand from about 3,000 when I was called to over 14,000 as it is now. I never did a lot of legally aided work but nearly every case I did that ran the distance had an assisted party somewhere in the distribution chain. Usually it was the lowly cove who squeezed the post mix spirit into the soft drinks bags or flogged snide jeans in Bury market.  The only thing that such people had to lose was their liberty which was why an interim injunction with a penal notice threatening a spell in Armley or Strangeways for disobedience was sought in just about every infringement action.    Legal aid for these cases was abolished by para 1 (h) of Schedule 2 to the Access to Justice Act 1999. At a stroke that cut away 80% of the court work that I used to do.

Thirdly, it is now a lot more expensive getting to the bar or indeed any profession than it used to be. When Gordon Brown, Desmond Browne and I went to university our fees were paid and we actually enjoyed a small maintenance grant which together with a holiday job with the British Council driving visiting scholars around London not only paid for my board, lodging and a few books but actually allowed me to run a car and take myself skiing in Austria once a year.   When I left university my bank account was actually in credit by a few pounds. Virtually nobody who graduates now can say that unless he or she has been supported all the way by spouse or parents. After law school or the conversion course (more expense) there is the vocation course (yet more expense) a year of pupillage (supposedly funded if you can get one) and the long slog to get established.   Who in the right mind would want to incur liabilities without some assurance that he or she can discharge them from his or her earnings except in the absence of an alternative.

But nowadays there are plenty of alternatives.   If a young person is attracted to advocacy, there are so many ways that he or she can do it. Of a bright spark wants to shine at the Bailey he or she can apply to the CPS. If he or she wants to argue points of patent or trade mark law before a hearing officer in the IP Office or a board of appeal at the EPO or OHIM that young person is best advised to become a patent agent. I know of no counsel who have appeared before the European Commission in an article 81 or 82 case but I do know solicitors who have done that.   Similarly I know of no barrister who has ever appeared before ICSID on a dispute under a bilateral investment treaty but I do know of one solicitor who has carved a practice in that area of the law.   There are whole areas of advocacy that are effectively closed to the bar.

Now this is all very uncomfortable for people like me but no government is ever going to repeal the Courts and Legal Services Act 1990 and Access to Justice Act 1999, restore legal aid or even cut fees for childcare work. We have to realize that we are a service industry just like everybody else. We barristers will continue to make a living only if we provide serviced that the market wants to buy rather than nag the public into providing a market for the services that we want to provide.

We've got to change our working practices and business structures. For a start we have to make it worthwhile for barristers to invest in their practices (including training the next generation of barristers). That means giving them the opportunity to recover their investment preferably with some capital gain. Other professionals do that by selling their shares or goodwill.  We need to be allowed to form the same sort of business structures as solicitors, patent agents and accountants. There is a consultation by the Bar Standards Board on partnerships between barristers and legal disciplinary practices.   I sincerely hope that barristers respond thoughtfully to this document in the sort of numbers that they responded to the consultation on the footling issue of court dress.

We have to develop new services tailored to our market.   I'm trying to do that through my network of clinics . inventors' clubs, mediation and training services,. by re-packaging traditional services like injunctions in a way they should appeal to business (see www.nipc-injunctions.co.uk) and forming alliances with other professionals like IP Yorkshire and IP North-West.   My business model is to develop services for the start-ups and SME who have never gone to the bar before but whom we are very well suited to serve. It's too early to say whether it will work but its better than moaning about clerks, solicitors and the Ministry of Justice.

NIPC Mediation: New Specialist IP Dispute Resolution Service

When I trained to become a mediator in 2000, mediation was regarded as the answer to lengthy delays and rocketing costs in the civil justice system but it has recently begun to acquire a bad name. The process has become expensive with the result that it sometimes hinders rather than facilitates a just resolution of a result.

One of the things I was told during my training that a good mediator can settle any kind of dispute irrespective of the subject matter of the dispute. Much the sort of guff as used to be spouted by generations of Rumpoles on advocacy. The notion of the all rounder able to turn his or her hand to any kind of case was never true of advocacy and I very much doubt that it is true of mediation.

I have often felt the need for a specialist mediation service with panellists who understand licensing and know how to value intellectual assets as well as being familiar with IP law and practice.   Of course, no single practitioner is likely to have all those skills.   Patent counsel should know about litigation and the law generally but we have little experience of licence negotiation and none at all of royalty valuation.   Similarly, transactional lawyers who are good at establishing science parks or negotiating collaboration agreements between universities are unlikely to have much experienced of the Patents Court or know how to handle a hearing officer.  The ideal mediation service would therefore consist of panellists from a number of professions.   At least one advocate, of course, because it is only through advocacy that one can understand judicial thinking and hence how a judge will apply the law to a new situation.   But there should also be someone who has negotiated and drafted licences, joint venturers and outsourcing agreements not to mention a forensic accountant.

I discussed this two of my friends, Eileen McMorrow of YorSolicitor and Michael Swift of Bennett Brooks. We have decided to work as a team and have set up a specialist intellectual property and technology dispute resolution service to be called NIPC Mediation. 

We already have a website at www.nipc-mediation.co.uk where we describe the diverse expertise of our panelists as our principal advantage. We provide not just mediation but also other dispute resolution services such as expert determination and early neutral evaluation.   Also we offer seminars on mediation and other forms of dispute resolution of IP issues. Our first will take place at Bennett Brooks' new premises at Gateway House, Wirral International Business Park, Old Hall Road, Bromborough, CH62 2NX and you can register your interest by completing the on-line form.  We charge two sets of fees: one set for administration and another for the panellist.   My rates appear om my section of the website.   If you visit that site you will find some articles by me about dispute resolutionn, ADR and so on. There are also some case notes on how I resolved trade mark oppositions and computer supply disputes.

If you want to refer a dispute to mediation please complete one of the on-line enquiry forms. Perhaps more urgently. we are looking to supplement. consolidate  and diversify our skill set and are hence recruiting more panellists. If you are qualified as a mediator, have experience of any area of technology law and share our mission we'd like to hear from you. Maybe you would wish to complete the on-line form.

11 December 2008

Trade Marks and Passing Off: Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd & Ors [2008] EWHC 3032 (Ch) (9 Dec 2008)

When I worked for VISA in 1984 I believe I had lunch at the Hotel Cipriani in Venice. I can't remember a vast amount about it other than that one had to take a boat trip. The food was OK though it can't have been all that outstanding because I can't remember what I ate. By contrast, I can remember every morsel of a meal at The Auberge de l'Il in Alsace.   Having said that I have always been a bit down on Venice (Sorry Jan Morris) for various reasons. Not least the proclivity of the the local dustmen to clatter their bins at about 3 AM and carry on a conversation at the top of their voices every day without fail when I had to get up early to do a day's work.

Anyway the owners of the Hotel Cipriani have just won an action against the owners of the Cipriani London for trade mark infringement and passing off (Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and Others [2008] EWHC 3032 (Ch) (9 Dec 2008). Not the least remarkable feature of this case is that the claimants allowed the defendants to operate them restaurant from April 2004 even though they had held a Community trade mark for the word CIPRIANI for hotels, restaurants and the like in class 43 since 1 April 1996. The judge could not forbear quoting Lord Justice Jacob in  Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244, [2007] RPC 5 at [8]:
"It was in 1879 that James LJ observed that 'the very life of a trade mark depends on the promptitude with which it is vindicated', Johnston v Orr-Ewing (1879) 13 Ch.D 434 at p. 464. Nothing has changed. Like gardens trade mark cases always get worse with neglect – even if rights are not actually lost, delay is apt to turn what would be over in a few weeks by a quick application into a mini State Trial. As here."
The defendants ran a number of defences:
  • there was no likelihood of confusion because there had been no instance of confusion in the market place;
  • they were merely using their own name in accordance with art 12 of the Community trade mark regulation; and that
  • the Community trade mark registration was invalid because it had been obtained in bad faith.
None of these was to any avail. Mr Justice Arnold concluded that the defendants were liable for trade mark infringement and passing off and that the claimants were entitled to an injunction.

Probably the most interesting bit of the judgment is the rejection of the "own name" defence where the judge reconciled pretty niftily the ECJ's decision lat year in Celine Sarl v Celine SA [2007] EUECJ C-17/06 (11 Sep 2007) with Asprey & Garrard Ltd v WRA (Guns) Ltd [2001] EWCA Civ 1499[2002] FSR 31 and Premier Luggage & Bags Ltd v Premier Co (UK) Ltd [2002] EWCA Civ 387, [2003] FSR 5. 

Also of practical use to your actual trade mark lawyer in Battersea (or for that matter Barnsley) was his discussion of why there can be a likelihood of confusion between a registered mark and the defendant's mark when there has not actually been any confusion during the whole time the defendant has been trading.  I've got a case where I have to argue that point before the Registrar and Richard Arnold has made my task a whole lot harder.

02 December 2008

My Memories of Sir Hugh Laddie

I was on my way to a conference when I heard of Sir Hugh's death and could manage only a short announcement. But, I had to say more because I was really sorry to learn of his death. I can't say I knew him at all well but I did see enough of him to like and respect him. Here's why.

VISA Trade Mark Application
I first met Hugh Laddie in 1983 when I was legal advisor to VISA International for Europe, the Middle East and Africa.  My employer had instructed Lloyd Wise (now part of Marks & Clerk) to apply to register VISA as a trade mark for travellers cheques and payment cards. In those days, trade marks could be registered in the UK for goods but not services (see Aristoc v Rysta [1945] RPC 65). In the USA it was possible to register "service marks" for services but service marks were unknown here. The examiner smelt a rat and refused the application on the grounds that our application was tantamount to an application to register a trade mark for a service. We appealed and Lloyd Wise briefed Hugh Laddie to represent us before the Registrar. Although trade mark registrations were handled centrally from San Mateo, I attended the hearing as I was the local in-house lawyer. 

I think the hearing officer was Mr Egan.Hugh Laddie's instructing agent clearly held him in awe. He spoke admiringly of the inventor of Anton Piller orders (search orders as we call them now) and explained how they were known as "Laddie orders" in some parts of the world. He had done all that before he had even taken silk.   When I met the great man I was surprised how ordinary he looked. Not particularly tall or imposing in the way that some counsel looked. The hearing was nothing like any court or tribunal hearing that I had ever attended. It was very informal. There were only four of us - Mr Egan, the agent, Hugh Laddie and me. I knew how much was on his brief and I was surprised that he or rather his clerk in FTB could justify it.   However, I changed my mind very quickly once he got started. I had read the Act and the cases and thought I knew the point well but was amazed at the arguments he could conjure. Clearly a very bright man.

After the hearing he had a little chat with me.   I told him that I had been called to the Bar. He replied "Well why aren't you in practice? You really should come to the patent bar."   I am not sure that he meant it but I took him at his word and, many years later, here I am. I came by a different route from most IP barristers. It's not been easy. It's still not easy. In fact it is harder now than it has ever been to carve a living. But I am very glad I followed his prompting. IP is the most interesting area of the law and I have enjoyed myself.   I owe a lot to Sir Hugh just for that.

The Only Time I was against Hugh Laddie
I was instructed by a large firm of solicitors in Leeds (now part of a legal conglomerate) which was acting for a well known toy and games manufacturer to advise on a claim for breach of confidence that had recently been launched on legal aid. The claimant ("plaintiff" as he or she would have been called in those days) had submitted an idea for a game which had not been acknowledged. Low and behold the games manufacturer had launched a game with all the features of the unsolicited proposal. Imagine my surprise when I looked at the pleadings and found that they had been signed by Hugh Laddie. They were, incidentally, beautifully settled. What impressed me most was that the statement of claim was accompanies by a separate set of particulars of breaches rather like particulars of infringement in a patent claim under RSC Order 104 even though the Rules did not require it of other IP claims.  I learned that trick and it went down a treat among the sort of Manchester solictors who turn up to LES dinner meetings.  Another thank you for teaching me that trick.

Fortunately, we had an audit trail and could point to the author of our game and show that she knew nothing of Hugh Laddie's client or his unsolicited suggestion.   I was curious to find out more about my client's business and found that it employed a host of people to devise new games. They seemed to have come up with just about everything under the sun. And I learned just how far the odds were stacked against private inventors and other members of the public who make unsolicited suggestions to established businesses. One of the bits of advice that I give at every IP clinic and every inventors' club is to make the invention yourself. Don't just do the rounds of the manufacturers. They are unlikely to be interested. And if one actually takes up your suggestion don't expect gravy for life. They are looking out for their shareholders - not you - and at least some of those shareholders will want to weasel out of paying royalties if they possibly can.   One of the things I said at Sheffield this evening.

The Patent Bar Dinner
Hugh Laddie became chair of the Patent Bar Association (as the IP Bar Association was then called) and he gave a speech to the Association's dinner in Middle Temple just before his elevation to the Bench. Three generations of patent judges were there: Sir Douglas Falconer, Sir William Aldous and Sir Robin Jacob.  Taking a maritime analogy, Hugh Laddie compared Sir Douglas to a majestic galleon in full sail, Sir William to a sturdy battle cruiser and Sir Robin to a rubber dinghy with an outboard motor. Sir Robin was very disgruntled afterwards.

On the Bench
I was driving through France in June 2005 when Alex Khan texted me to say that Sir Hugh had resigned.  I had never heard of such a thing. I stopped the car at the first service station and called all my friends in England to find out whether it was true and if so why. I got the answer to the first question soon enough but I have never received an answer to the second. I think it was a great pity that he went when he did.   He gave some very bold judgments such as Series 5, Arsenal, Cala Homes and Zeno Davidoff which to my mind made a lot of sense even though they were reversed or just not followed. Lord Denning did the same thing.   His judgments stuck because he became Master of the Rolls. Who knows how far Sir Hugh would have changed the law had he stayed on the bench.

01 December 2008

Sir Hugh Laddie

I, together with the rest of the Patent Bar, have just learned from Richard Miller QC that Sir Hugh Laddie died on Saturday and was buried yesterday.   

I feel this personally because it was he who first steered me towards the IP Bar 26 years ago. He was always very fair to me both at the Bar and the High Court bench. 

I shall be adding my own tribute later but in the meantime I should like to refer readers to Jeremy Phillips's post on IPKat.   

I send my sincere sympathy to his family, friends and connections.