Practice: an IP Practitioner's Diary, 31 May 2009

I am often asked by solicitors whether I go to the Patents Court. Or by trade mark attorneys whether I represent clients in the Registry. Or by Business Link whether I can do a risk analysis or draft terms and conditions for their clients. Or by businessmen and women whether I can review a draft contract.   The answer to all those questions is a resounding YES.

All of those things are within the traditional scope of the intellectual property barrister and I m as much an intellectual property barrister as anyone in Lincoln's Inn or Grays.  Confusion may arise because there are some things that I don't do. I don't apply for patents, trade marks or registered designs. I don't issue claim forms or even send letters of claim in my own name. I don't even accept instructions to appear in court or other hearing in a matter that requires lengthy correspondence or investigation such as reviewing documents and interviewing witnesses unless the client has instructed a solicitor or other authorized literature as well as me.   The reason why I do not do any of those things is that barristers keep their eye on the law and leave legal management to such as solicitors, patent agents and other professionals who are trained and equipped to manage clients' legal business. Moreover, as the law stands, barristers are not even allowed to hold clients' funds.

So that members of the public and indeed other professionals can enjoy a clearer picture of what intellectual property counsel like me can do, and also what we do not do, I shall publish a monthly diary.    This supplements the FAQ and case studies on my personal website.

I practise as an arbitrator and mediator as well as a barrister. One of the panels upon which I sit is the WIPO's domain name dispute resolution panel. The last domain name dispute to come before me was Case No. D2008-1531 Intesa Sanpaolo S.p.A. v. George Papadakos.  In that case the complainant, which carried on business in many parts of the world though not in Canada, complained that the respondent had registered one of its brands with the addition of the word "canada" as a domain name and had parked that domain name on an "under construction" page of the Yahoo website. The "under construction" page generated all sorts of sponsored links and searches some of which led to the complainant's competitors.   The parking of the domain name on the "under construction" page raised the possibility of preparations to use the domain name for a website for the bona fide goods and services which might have afforded a defence. Also, I was not persuaded that the automatic generation of sponsored links and searches outside a respondent's control was necessarily a sign of bad faith. Whether automatically generated links and searched infringe a trade mark is a question that has recently been referred to the European Court.   To help me draw inferences I took the unusual step of making a procedural order requiring the respondent to a written statement identifying the preparations (if any) that he may have made to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services exhibiting any draft web pages or other material to such statement.   

I have of course been been in court and in the IPO.  In one design case that went to trial before the Patents County Court both parties were able to keep their costs well below £17,000 and the claim was tried within 8 months of the issue of the claim form.   The issues in dispute were not straightforward and were closely argued over 2 full days.   This shows that intellectual property litigation need not be ruinously expensive or take forever. However, even £17,000 is a lot of money for most people and litigation is to be avoided wherever possible.

One forum where costs are very tightly controlled are is the Trade Marks Registry. Costs in proceedings before hearing officers are awarded on a fixed scale unless a party has acted unreasonably.   The Intellectual Property Office in Newport which I attended a few weeks ago on a trade mark invalidation hearing was one of the most convenient venues that I have ever visited. I was allotted a parking space just a few feet from the entrance to the hearing rooms and my opponent and I were offered refreshments afterwards. NIPC are looking into the possibility of opening an annexe in Newport for proceedings in the IP Office.

However, most of my work is non-contentious and I have done lots of advisory and drafting work. I have had to draft terms and conditions for several e-commerce sites, review patent licences and assist parties to a joint venture to go their separate ways.   Much of that work comes to me under the public access scheme.   Some of it is funded by Business Link and other funding bodies.   Some by the clients themslves.

I have also done a lot of pro bono  work through NIPC Clinics.  At present I run IP clinics in 8 centres: Barnsley, Bradford, Halifax, Huddersfield, Leeds, Rotherham and York in Yorkshire and Bromborough in the Wirral. That is just about as much as one woman can manage and as I want to run them nationally we shall be reorganizing them shortly in association with local professionals.   Any solicitor, patent attorney or other professional who would like to take part is welcome to drop us a line. Everyone who has assisted us has found found NIPC clinics to be a good source of work.