Update: Sheffield Inventors' Club, IP Clinics and Training

I shall be speaking on how the economic downturn will affect inventors at the Sheffield Inventors Club at Sheffield Central Library, Surrey Street, S1 1XZ on Monday 1 Dec at 18:00.   I have already given this talk in Leeds and Liverpool where it seemed to go down very well.

We are also pleased to announce a new IP clinic at Catcliffe near Rotherham on Tuesday 13 January 2009.   Many thanks to Professor Ron Jones and Wei Huang of Horizon Composites for hosting that event.    We shall also be marketing the Barnsley clinic very much harder.   More details of the clinics are on our website at www.nipc-clinics.co.uk.

Finally, we also have a website for NIPC Training at www.nipc-training.co.uk.   You will see that we offer advanced courses for specialist lawyers and patent and trade mark attorneys known as "the IP staff college" and introductory and intermediate courses for the general public and non-specialist lawyers known as "the IP academy".   Both sets of courses are accredited for CPD points by the SRA. We have never had a barrister on our courses but if any member of the Bar wants to turn up we shall seek ad hoc accreditaiton from the BSB so long as he or she gives us at least 2 weeks notice.

Trade Marks: A Very Satisfied Client

On 12 September 2008 I mentioned a trade mark case which shows just how well the panel works.   Yesterday I received this really nice email from the client:

'I was absolutely amazed with Jane's quick grasp and understanding of our trade mark versus any merit in the opposition (which in this case was a very big company). Jane was able to advise me with confidence and knowledge that I should continue with my business and succeed at it and she believed the two marks were so different that the opposition would not stand. I felt relieved after speaking with her and could concentrate on my business. Thank you Jane

Barbara Cookson also got a pat on the back:

'I was facing a trade mark opposition from a very big company and I hadn't even started trading yet. I quickly managed to get representation and was amazed with the advice and reassurance from Barbara that the opposition had very little chance of success and it was merely a Big Brother attitude. The stance and firm position Barbara took and the brief explanation to the opposition why they could not succeed made the opposition withdraw their application within twenty four hours. I could not have got better, faster and efficient service. Well done Barbara and thank you very much.

This sort of appreciation makes it worthwhile to get up in the morning.

Trade Marks: No Names, No Pack Drill but here is a Success Story that shows how the Panel works.

Last Friday lunch time my manager received an urgent phone call from a gentleman who had attended my Bradford IP clinic and an IP awareness talk at the Bradford Chamber of Commerce.    He had applied to register his own UK trade mark and the application had been published in June.   The deadline for opposition was this Monday.  Just before 13:00 he had received a letter from a London trade mark attorney in the following terms:

"We act on behalf of AB SA. of Spain. Our client is the proprietor of Community Trade Mark Registrations Nos. .................. and ............. copies of which are enclosed.

Our client has noticed your UK trade mark application, above, for the mark XYZ in respect of “Clothing and clothing accessories” in class 25 and “Retail services connected with the sale of foodstuffs and beverages” in class 35. As you can see, our client’s registrations cover a mark – SYZ – which will be pronounced identically to yours and which is registered for identical or similar goods in classes 25 and 35. This gives our client a good basis to object to your application.

Our client therefore requests that you limit your UK application to exclude classes 25 and 35. Failing that, our client will have to file Opposition by the deadline of 6 September 2008, i.e. Monday. Please note that if an Opposition is successful then costs are awarded by the Registry on a standard scale.

We hope that it will be possible to resolve this without resorting to Opposition, and look forward to hearing from you."

On returning from lunch I called the client immediately and looked through the papers.   I formed the view that there was insufficient similarity between the Community trade mark and my client's mark. In a brief email I advised him of the provisions of s.5 (2) of the Trade Marks Act 1994 and that there was no need to withdraw the application.   I added:

"Now I could draft a letter for you to send back to [the trade mark attorneys] to that effect but I think you should instruct a patent or trade mark agent to send it on your behalf.    The reason I say that is that trade mark oppositions can beocme quite difficult and [the trade mark attorneys] may be encouraged to push their luck with you if they think you are unrepresented.   Many unrepresented parties make mistakes in such proceedings. Consequently patent agents often persist with weak cases in the hope that the other side will make an error."

I introduced my client to all 4 patent and trade mark agents on the NIPC panel (3 of whom are from Yorkshire and one, Barbara Cookson, from London) adding

"Although all 4 agents are probably equally good, Barbara has the advantage of being in London which means that she will be within walking distance of the UK-IPO if she has to attend a hearing whereas the others would have to travel from Yorkshire and would charge you for their time and expenses."

Brabara was on the train from Yorkshire when I called her and she responded immediately.   She contacted the other side first thing on Monday morning and offered them a deal that limited the application in respect of the one class of goods that was important to them but of no immediate importance to us.   There was a delay in the other side's obtaining instructions so an opposition was filed but I am glad to say that the deal was settled.

The client was delighted: "It is great news", he said in an email Barbara adding "thank you for being so wonderful in handling this opposition so well. Your email..... was well constructed and firm and they must have seen no grounds of opposition after they read that.  In a PS to me he said "Thank you Jane for placing me in exceptionally capable hands with Barbara."   Well, that's how the NIPC IP Yorkshire Panel works, folks.

PS Barbara and I have just had some really nice commendatory emails, see "Trade Marks: A Very Satisfied Client".

How the Panel Works: An Interesting Comment from Barbara Cookson

Last Thursday I convened a meeting of the NIPC panellists in Bradford for a CPD event. I also took the opportunity to explain how the network of inventors clubs, IP clinics, IP practitioners staff college and all my other initiatives work and hand together.    One of my guests was Barabara Cookson of Filemot Technology Law who contributed the very next day a very interesting post to the Solo Indeopendent IP Practitioners Group blog entitled An Alternative Business Model based on Quality which explains my concept beautifully.

The Solo Independent IP Practitioners Group, incidentally, is a group of IP sole practitioners and partners of small firms. It developed from a meeting of patent counsel, specialist solicitors, patent and trade mark attorneys, law publishers and other professionals at a pub in London on 15 February 2006 who had been brought together by Prof. Jeremy Phillips.   It was all very jolly.   After a very short speech by Jeremy and some serious advice on practice building from Margaret Briffa we agreed to meet regularly.   There was in fact a meeting at Olswang's yesterday with Stuart Greenhill, a marketing executive from Lexis Nexis, Unfortunately, I missed it but I hope to catch up with Barbara later today to let you know how the group got on.

IP Law Foundation Course: Bradford 2 Oct 2008, 14:00 - 17:00

This half-day course is intended primarily for solicitors with general, commercial, civil or commercial litigation practices who do not regard themselves as IP specialists but who nevertheless find themselves advising start-ups and other small businesses on how best to protect their investment in brands, design, technology and the creative works. 

However, it should also be useful to practitioners who intend to specialize in IP and technology law but who have not yet done much IP or technology work. And even for experts it would be useful revision. We have aimed to make that course the best introduction to IP law on the market and priced at £25 + VAT we do not believe that anyone could offer better value except perhaps as a loss leader.

What will the Course Cover?

Essentially everything that can conveniently be fitted into 3 hours allowing for breaks and discussion. The course will be divided into 3 sessions:

• an overview on IP covering terminology, mine and  various other people's definitions of IP, legislative and judicial policy, the IP system (TRIPS, the treaties, WIPO and institutions), sources of law, legislation, national and regional IP offices and the courts;
• obtaining intellectual property rights and exploiting them: contrasting IPR that arise automatically such as copyrights and design rights with registrable rights such as patents, trade marks and designs, the patent, trade mark and design registration processes, the cost of patenting and its advantages and disadvantages compared to trade secrets and design rights and the need for IP insurance, licensing and joint ventures and top tips for clients; and
• enforcing IP rights: how IPR are infringed, the methods of enforcement, remedies, CPR Part 63, PD63 and the Patents Court Guide, threats actions, costs of litigation and methods of funding and alternatives to litigation such as the UDRP for domain names and advisory opinions on validity and infringement from the UK-IPO.

There will of course be tea and comfort breaks and time for questions and discussion.

What about Handouts?

This is where we score over the competition. We don't just give delegates copies of the PowerPoint slides. Every delegate receives a 22 page resource pack containing the following materials:

• a table showing how each type of intellectual asset (i.e. brands, design, inventions etc)  is protected in the UK and elsewhere;
• extracts from relevant statutes and cases on subsistence and infirngement of IP rights;
• a table of UK, European and international institutions governing particular types of IP right;
• a table showing relative costs of enforcement in the UK and other industrial countries
• a discussion on the Protocol on Interpretation of Art 69 of the European Convention and the changes brought about by the insertion of a new art 2;
• comparisons with the US doctrine of equivalents;
• extracts from The Code of Practice for pre-action conduct in intellectual property dispute
• s.74A and s.74B of the Patents Act 1977, and 
• overview of the Uniform Domain Name Dispute Resolution Policy.

In addition there will be a 4 page glossary covering everything from the Berne Convention to the WTO Agreement and a lost of Internet addresses for the main treaties, directives, statutes, practice directions and other materials such as the Code of Practice to the Chancery and Patent Court guides..

To facilitate comprehension there will be plenty of questions for discussion such as

"If a client came to you with a domain name dispute, in what circumstances would you advise him not to use the UDRP or similar scheme"

and

"Would you always advise a start-up to apply for a patent and if so why?"

Who will present the Course?

I will. Many of you are aware already that I know my stuff because you have instructed me. Those of you who don't know me, 

• take a look at my profile above 
• look around my website, 
• read my articles on the IP/IT Update blog and website, in print and elsewhere; 
• look up my reported cases in the Fleet Street and other reports and on the Internet; and
• my decisions as a domain name panellist on the WIPO website.

Gower Ashgate are about to publish my practical guide on enforcing IPR for small businesses and creative and innovative individuals.

How will this Course benefit me?

A half-day course will not make you into an IP expert but it will give you a really good start. It should be a lot easier to understand the text books, statutes and cases when you have to look up the law in a hurry. You should be able to appreciate correspondence from patent agents and solicitors on the other side a lot better. You will be able to instruct specialist counsel more effectively and make better use of their advice.   It will qualify you for slightly more advanced courses such as our intriductions to patents, copyrights, trade mark and design registration which we shall present later in the year as well as advanced courses on licensing, IP litigation and other topics.   All of these courses function as building blocks for a qualification which we shall ask a university to accredit.

CPD Accreditation

We have applied to the Solicitors Regulation Authority for accreditation of this course and should receive our assessment by 19 September 2008. If all goes well I should be able to award 2 1/2 hours points.   As a practising barrister I can also award CPD points for counsel.

Venue

The course will take place at Gumption's boardroom which you can see in the picture above. You will find Gumption at

Glydegate

Bradford

BD5 0BQ

Telephone 01274 299300

It is almost opposite Bradford ice rink and about 100 yards from the National Media Museum. There are inexpensive pay and display car parks at Wilton Street and behind the National Media Museum. If you arrive by bus or rail, Gumption is a short walk form Bradford Interchange bus and railway station.

How to Book

As you can see from the photo above, space is limited to 14 including me so if you want to book you had better book early.   You can apply for a place right now by filling out the electronic form below.    Alternatively, you can print out the form below and post it to together with your cheque for £29.38 payable to NIPC Ltd. for the attention of Ms. Toni Wilson.

NIPC Ltd

The Media Centre

7 Northumberland Street

Huddersfield

HD1 1RL

Tel 0870 990 5081

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IP Foundation Course

Gumption Centres Brandford

2 Oct 2008, 14:00 - 17:00

Please reserve me a place on the above course. I enclose my cheque for £29.38 payable to NIPC Ltd.

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IP Foundation Course Booking Form

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