Thursday, 18 December 2014

Brilliant Beckton


















In an email to the Intellectual Property Bar Association, our Chair Henry Carr QC reported that he and a party of other IP lawyers and patent attorneys visited 1000 Dockland Road, Royal Albert Dock, London E16 2QU last month. The reason for their visit is that the site has been identified as a possible venue for the London section of the central division of the Court of First Instance of the Unified Patent Court.

The estate agents' particulars sound idyllic:
  • "Fully accessible raised floor
  • Suspended ceiling with 1.5m planning grid
  • Cat 5 lighting
  • Excellent natural light
  • Views over Royal Albert Dock
  • Four pipe fan coil air conditioning
  • 7 underground car parking spaces and bicycle storage
  • 3 passenger lifts
  • Five-storey winter garden and building reception
  • On site coffee shop, cafeteria and news agents."!
Henry's note is also pretty encouraging:
"1. The facility is, potentially, very good for a European Institution. The space is large and will allow about five big courts as well as meeting rooms. Proper IT can be installed. There is a good, large canteen on the ground floor and catering can be brought to the meeting rooms.
2. There was slight aircraft noise at the front where some meeting rooms would be, but it was not intrusive. There was no noise at the back where the courts would be.
3. The journey took 40 minutes and involved one change. It is not ideal, but bearable. This situation will change in early 2018 with Crossrail as there is a station close to the site.
4. As well as direct flights, there are flights to City Airport from Amsterdam and Zurich, which are hubs for the rest of the world."
In my view, the location  could not be better. Not only is it close to London City Airport and the Crossrail line it is linked by dual carriageway to the M11 which leads to the M25 making it accessible to all parts of the country.  The building overlooks a marina. It is close to Beckton District Park. There is plenty of hotel accommodation nearby for parties, witnesses and legal representatives to suit all pockets. The building is in an attractive position overlooking a marina and not far from Beckton District Park.

Not everyone likes the proposed site. Henry reports that AIPPI in particular wants a central London location. That would be much more convenient for practitioners in central London but this is a court for most of the EU with parties and lawyers coming from the whole of the UK, the rest of Europe and around the world. Our needs have to be considered too and for us Beckton is brilliant.

Tuesday, 9 December 2014

WIPO Panellists Meeting

WIPO Head Office
Photo Wikipedia


























Jane Lambert

Last Wednesday I attended the annual domain name panellists' meeting at the World Intellectual Property Organization ("WIPO")'s head office in Geneva. The meeting normally takes place on the third Monday of October but this year it was postponed until December.

The WIPO is one of five domain name dispute resolution service providers that have been approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") for the resolution of disputes between trade mark owners and those who have registered domain names. The other service providers are the Arab Centre for Dispute Resolution, the Asian Domain Name Dispute Resolution Centre, the Czech Arbitration Court Arbitration Centre for Internet Disputes and the National Arbitration Forum.

By a memorandum of understanding between the US Department of Commerce and ICANN dated 25 Nov 1998 the US government entrusted the oversight and management of the domain name system to ICANN. By paragraph C-3 of the memorandum ICANN agreed to:
"Collaborate on the design, development, and testing of a plan for introduction of competition in domain name registration services, including:
a. Development of procedures to designate third parties to participate in tests conducted pursuant to this Agreement.
b. Development of an accreditation procedure for registrars and procedures that subject registrars to consistent requirements designed to promote a stable and robustly competitive DNS, as set forth in the Statement of Policy.
c. Identification of the software, databases, know-how, intellectual property, and other equipment necessary to implement the plan for competition."
The accreditation process devised by ICANN pursuant to paragraph C-3 (b) of the memorandum requires registrars of generic top level domain names to enter an accreditation agreement with ICANN. Under the latest version of the agreement domain name registrars have to incorporate into their agreements with those seeking to register domain names dispute resolution procedure provisions known as the Uniform Domain Name Dispute Resolution Policy ("UDRP"), Under the UDRP, domain name holders have to agree to refer any dispute between themselves and a trade mark owner to a "mandatory administrative proceeding" before a panellist appointed by an accredited dispute resolution service provider.

The cost of the proceeding is born entirely by the complainant unless the respondent opts for the appointment of a panellist of his choice to sit with a panellist of the complainant's choice and a presiding panellist appointed by the service provider, in which case the respondent pays the extra cost. The WIPO's fee for the appointment of a single panellist is US$1,500 of which $1,000 goes to the panellist and the balance to the WIPO Arbitration and Mediation Centre ("the Centre"). The fee for a 3-member panel is US$4,000 of which $1,500 goes to the presiding panellist, $750 to each co-panellist and $1,000 to the Centre. A decision is rendered within a matter of weeks. If the panel finds for the complainant, the registrar is obliged to transfer the domain name to the complainant after 10 working days unless the respondent challenges the order to transfer the domain name in the courts.

The matters that a complainant must prove are as follows:
(i)  the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
There are in practice four probanda because the complainant has to prove that the domain name was registered and is being used in bad faith. Proceedings are almost always in writing though the panel has the power under rule 13 of the UDRP Rules to conduct a hearing in an exceptional matter.

There is no appeal against a panel's decision though a respondent may apply to a court for an order not to transfer the domain name. For that reason. complainants have to submit to the jurisdiction of the courts where the registrar is domiciled or those where the domain name appears to be domiciled when they bring a complaint (rule 3 (b) (xiii) of the Rules). Theoretically, the administrative proceeding is an interlocutory procedure that exists to assist the courts but in practice there are very few challenges to panels' decisions. Consequently, those decisions tend to be final.

I have been a panellist for the WIPO for just over 10 years. Most of the disputes that have come before me have been undefended.  Even in those uncontested cases panels have to examine the complaint and make sure that the three elements mentioned above have been established.  In several of the cases that have been contested I have served as a co-panellist on a 3-member panel.

The annual conference is one of the means by which the WIPO maintains the quality and consistency of its panellists' decisions. The conference begins at 09:00 and there is a full day of talks until 18:00 which are broken only by lunch in the WIPO canteen and short breaks for morning coffee and afternoon tea. Those talks discuss issues that have arisen in the course of the year. Most of them are given by members of the WIPO panel. The rest are by guest speakers or members of the Centre's staff. As at Chatham House, those attending the meeting are free to use any information that they may receive but they may not reveal the identity or affiliation of the speakers, or that of any other participant. The information that I have received in those talks has been useful not only in my work as a panellist but also whenever I have been asked to advise on a domain name dispute or a transaction involving domain names.

I enjoy the annual conferences very much. Over the years I have made the acquaintance of many of the panellists and several members of the WIPO's staff. It is always good to see them.  Although the focus is on domain name dispute resolution we touch on other aspects of WIPO's work. This year, for instance, we were shown WIPO's new conference hall which is capable of accommodating over 900 participants.

Should anyone wish to discuss this article or domain name matters in general, he or she may call me during office hours 

Monday, 24 November 2014

Bringing high quality advice and advocacy to those who need them most but can often afford them least

Jane Lambert















When I practised on my own account from the Media Centre in Huddersfield my strapline was
"Bringing high quality advice and advocacy to those who need them most but can often afford them least."
 Although I now have to charge more because I have much higher costs I try to do the same in London.

It is now more necessary than ever because the Legal Services Consumer Panel wrote at page 5 of their report 2020 Legal Services How regulators should prepare for the future November 2014:
"The core challenge ahead is to extend access to justice to those currently excluded from the market because they cannot afford legal services. This need and other forces, including government policy, consumer empowerment, technology and the effects of liberalisation, will combine to result in less involvement by lawyers in many of the tasks that until now have made up their staple diet. Consumers will seek alternatives to lawyers or use them in different ways. In place of lawyers will be greater self-lawyering, online services, entry by unregulated businesses, and also by regulated providers, such as accountants and banks, who will diversify into the law. Calls will grow for more radical solutions that cut lawyers out, such as an inquisitorial style of justice and online dispute resolution, which are better suited to the new funding realities. The consumer interest will lie in resolving the tension between cost and quality, and determining when a lawyer is needed and when alternatives can safely suffice. Regulated lawyers should be viewed as a small part of an increasingly diverse ecosystem of legal services delivery; improving access will require looking at how the whole system will work in future around consumer need."
This is consistent with the speech of the Canadian futurologist Jordan Furlong to the Legal Futures Conference ("Knowledge gap between lawyers and consumers 'narrowing all the time'” 21 Nov 2014 Legal Futures).

This might sound rather depressing news for lawyers but it need not be. In reviewing Professor Susskind's Tomorrow’s Lawyers for the Law Society Gazette on 14 Jan 2013, my friend Joanna Goodman wrote:
"Tomorrow’s Lawyers, Susskind’s latest book, has a more optimistic title than The End of Lawyers? (2008), which he has referred to as ‘The End of Lawyers – question mark’.Tomorrow’s Lawyers removes the question mark and sets out a vision for the profession’s future."
In other words we do have a future so long as we respond to the "core challenge" identified by the Legal Services Consumer Panel. When it costs hundreds of thousands of pounds to litigate in the Patents Court and possibly more to fight a passing off or copyright dispute because of the need for oral evidence to prove confusion or copying it is not just the poor who are excluded from the legal services market but quite substantial businesses and institutions.

What can we at the IP Bar do to make the law more accessible? "Reduce your fees" is the usual call but that ignores the fact that it takes a lot of time and money to train a lawyer and even more to run a law practice. The answer is to use lawyers more effectively and technology certainly has a role there.

The other thing we can do is to make clients (particularly small businesses and their lenders and investors) aware of the cost saving opportunities that already exist. You don't have to patent every technology in every country in order to protect your investment in technology. Other legal and sometimes non-legal solutions can protect your investment and position in the market just as effectively. You don't have to fight every case in the multitrack. Most of the copyright, design right, passing off, trade mark and breach of confidence cases that I fought before the Vice-Chancellor of the County Palatine of Lancaster and his deputies over the last 30 years could now be litigated in the Intellectual Property Enterprise Court Small Claims Track where the costs and risks are minimal (see
Patents County Court - the New Small Claims Track Rules 20 Sept 2012 NIPC Law and the articles and presentations linked to that article. You can resolve generic top level domain name disputes for just US$1,500 by using the Uniform Domain Name Dispute Resolution Service (see "Always consider the UDRP first" 31 Aug 2014 NIPC Law) and many patent disputes through the IPO opinions service (see "Intellectual Property Act 2014: The New Law on Opinions" 29 Oct 2014 NIPC Law).

If you want to discuss this article, dispute resolution or intellectual property generally, give me a ring on 020 7404 5252 during office hours or message me through my contact form.

Wednesday, 5 November 2014

Intellectual Property Act 2014: Annual Report on Innovation and Growth: First Annual Report from the IPO

Jane Lambert











If there is one thing that the IPO is good at it is writing reports which is just as well as it was ranked 12th in 2012 in the the list of top 15 patent offices by number of patent applications which was the last year that the World Intellectual Property Office ("WIPO") published that particular league table (see page 17 of WIPO IP Facts and Figures 2012). No doubt it will slip still further after unitary patents become available because why would anyone want a monopoly of an invention for a small, crowded, offshore island which came within an ace of fragmentation last September when they can get a European patent for nearly the whole of the EU as though it were a single state?

S.21 (1) of the Intellectual Property Act 2014 requires the Secretary of State before the end of the period of 6 months beginning with the end of each financial year to:
"lay before Parliament a report setting out—
(a) the Secretary of State’s opinion of the extent to which during that year—
(i) the activities of the Patent Office have contributed to the promotion of innovation and of economic growth in the United Kingdom, and
(ii) legislation relating to intellectual property has been effective in facilitating innovation and economic growth in the United Kingdom, and
(b) how the promotion of innovation and of economic growth in the United Kingdom was taken into account in the case of any legislation relating to intellectual property that was passed or made during that year."
As the Act was only passed last May this obligation does not arise until next year but "the IPO wanted to start this good practice immediately" so this is the first report on the IPO’s work to support innovation and growth in the UK, covering the period from April 2013 to March 2014.

The report Supporting Innovation and Growth: a report on the work of the IPO  2013/14  appeared on the IPO's website yesterday. There are the highlights of the report as set out in the executive summary:

  • increasing the exceptions to Part I of the Copyright, Designs and Patents Act 1988 which is said "to ensure that our copyright framework reflects the impact of new digital new technologies" and somehow "contribute over £500 m to the UK economy over 10 years";
  • concluding negotiations on the European Directive on Collective Rights Management, signing the Beijing Treaty on the Protection of Audiovisual Performances, working in collaboration with other IP Offices to tackles issues around increasing patent backlogs and giving direct support to over 200 businesses dealing with IP issues worth over £370 million and helping a further 3,400 UK businesses through outreach and education work;
  • developing new ways of working to improve efficiency without loss of quality such as a new electronic processing system for trade mark applications and working with customers to develop on-line services for patents;
  • building awareness for IP;
  • passing the Intellectual Property Act 2014;
  • tackling IP crime; and
  • completing a programme of research to strengthen the evidence base on intellectual property.
Apparently the UK was judged to be the best location in the world for obtaining, exploiting and enforcing the main IP rights but the executive summary does not say who did the judging.  

Wednesday, 29 October 2014

Website Changes





Jane Lambert

As you can see from the above video the Intellectual Property Office has moved to the Government portal.  The new address of the site is https://www.gov.uk/government/organisations/intellectual-property-office although you can get through to the new site if you key in http://www,ipo.gov.uk. The new site is not as pretty as the old site and it takes a bit of getting used to but everything that I need seems to be there.

I use the site for the unofficial consolidations of The Patents Act 1977, The Registered Designs Act 1949, The Trade Marks Act 1994 and Parts I and II of the Copyright, Designs and Patents Act 1988 and The Patents Rules 2007 and The Trade Marks Rules 2008 and they all seem to be there. Harder to find are the Tribunal Practice Notices which you need whenever you go before a hearing officer. These have been archived with the old website.  So, too, have the patents, trade marks and some of the designs decisions. The Copyright Tribunal still has its own website though it is said to be moving to .gov.uk eventually.

I am not sure how easy it is for patent and trade mark attorneys who use the site far more than lawyers do. For a time I was detecting signs of frustration from one of them whenever I checked into Facebook. I should imagine it is a lot less user friendly for the businessman or other lay user. There was a lot to be said for keeping separate general and professional portals. No doubt there is a good reason for all this change and commotion which probably has something to do with cost savings.

The IPO are not the only ones to get a new website. Our chambers have launched one which you will find at  http://www.4-5.co.uk/. Our intellectual property team is here and my personal page is here.  If you want to get in touch with us you can still use the clerks contact form or call us on +44 (0)207 404 5252 during normal office hours.

Thursday, 11 September 2014

Forthcoming Presentations

Date
Title
Venue
26 Sept 2014
14:00 – 17:00
Making Sure you make Money from your Brands and Ideas and not other People
Workshop and clinic with speakers from 4-5 Gray’s Inn Square, Loven IP and the Intellectual Property Office CPD BSB and SRA
Grantham College, Stonebridge Road, Grantham, NG31 9AP

29 Sept 2014
16:00 – 18:00
Intellectual Property Ac 2014 – What it means to you and your clients
In-depth seminar led by Jane Lambert, CPD BSB and SRA
QualitySolicitors Jackson & Canter, 88 Church Street, Liverpool, L1 3AY
15 Oct 2014
18:00 – 19:45
The Intellectual Property Act 2014 - What it means for you and your clients
In-depth seminar led by Jane Lambert, CPD BSB and SRA
Business and IP Centre. Central Library, Calverley Street, LS1 3AB

Monday, 1 September 2014

Grantham Science Festival - there is a practical side to science

A putative descendant of Sir Isaac Newton's apple tree



























Jane Lambert

Baroness Thatcher may be Grantham's most famous (or, depending on your politics infamous) daughter but Sir Isaac Newton was indisputably its greatest son. Although Thatcher was by no means in the same league as Newton she was also a scientist. To celebrate its scientific heritage and in particular Newton's theory of gravitation Grantham is holding a science and arts festival known as Gravity Fields between the 24 and 28 Sept 2014.

There will be all everything from rocket science for 2 to 5 year olds to building quantum computers with Professor Danny Segal of Imperial College in the Science Festival and Douglas Hollick's Goldberg Variations to Chasing the Eclipse a new ballet by Chantry Dance Company, the only professional dance company in Lincolnshire.

Now science, the arts and technology are the hallmarks of civilization but people will only invest in them only if their inventions, brands, designs and works of art and literature are safeguarded from the counterfeiters, freeloaders and pirates. That's where intellectual property comes in.  Intellectual property is the collective name for the bundle of laws that protect intellectual assets. That is to say patents for inventions, trade mark registration for brands, copyrights for works of art and literature and so on.

Now this area of this law is not easy but it affects in one way or another just about every business in just about every industrial sector and in ways that may not be expected. For instance, just everything that you write whether a computer program or an appreciation of Shelley is a work of literature in which copyright can subsist.  The loyal customer base that you generate by consistently giving good service is goodwill that attaches to your trade name or logo.

Now as our contribution to Gravity Fields we and our friends in the Intellectual Property Office and Loven IP will present a workshop on those issues at 2 pm on Friday 26 Sept 2014 at Grantham College. This workshop is free but booking is essential as space is limited. After the workshop we shall hold one to one consultations with those with specific issues on any of the topics that we cover. You can book your place by clicking here or the post below.