Monday, 2 May 2016

CIPA's Scottish Meeting

National Galleries of Scotland
Author Finlay McWalter
Source Wikpedia
Creative Commons Licence























Jane Lambert

On 15 April 2016 I was invited to speak to t he Scottish meeting of the Chartered Institute of Patent Attorneys at the Scottish National Gallery in Edinburgh on Preparing for the Unitary Patent and the UPC. I was one of four speakers. The others were:
  • Catriona M Hammer who spoke on Portfolio Strategy for Start-Ups, Spin-Outs and Other Small Businesses;
  • David Bloom of Safeguard IP who spoke on Intellectual Property Insurance Solutions; and 
  • Eleanor Wade of the Intellectual Property Office whose talk was entitled Updates form IPO.
Over 50 patent attorneys and other IP professionals attended the meeting which was chaired by Andrea Brewster.

I enjoyed all the presentations but I found Catriona's particularly interesting as I specialize in advising and representing start-ups and other SME. She has spent most of her career in industry and describes herself on Linkedin as an "IP Consultant, focusing on IP Strategy, portfolio reviews, IP transactions and contentious matters" rather than as a patent attorney even though she is the immediate past president of the CIPA.

Catriona explained that every strategy had to complement the company's business plan and take account of the needs of investors who look for:
  • a rational strategy for utilizing registered and unregistered intellectual property rights;
  • a clear chain of title to each of those rights; and 
  • freedom to operate.
Every business has to be selective as to what it seeks to protect. Filings that are no longer of interest to the business should be dropped. Protection should be appropriate for the product and market and should cover not just products already on the market but also those being developed. All forms of legal protection should be considered - not just patents - and systems should be devised for identifying potential IP assets and protecting trade secrets. Businesses should be aware of what they own and what is licensed. Contracts with universities and other partners should make clear who would be entitled to patent any inventions that may be developed as should contracts of employment with key staff. Businesses should also look out for potential conflicts with third parties and deal with them before disputes arise.

There was a lot of discussion as to whether patent attorneys were always the right people to carry out those assessments as they will not necessarily be conversant with every aspect of a client's business. I raised the example of a painter/decorator who spent his life savings on patents and design registrations around the world for an invention that was unlikely ever to be worked. Catriona replied that sort of problem was commonplace 10 years ago but most patent attorneys would be more cautious in advising such clients nowadays.

David Bloom introduced himself as a patent solicitor with over 15 years experience of advising clients on registration, exploitation and protection of IP. He had set up Safeguard IP in 2014 as the UK's only dedicated IP insurance broker. He started that business because the volume of IP litigation was increasing, dispute resolution remained hugely expensive even with the Intellectual Property Enterprise Court and IP claims were difficult to fund. The IPO had issued guidance on the benefits of IP insurance in Intellectual Property Insurance on 22 Jan 2016. He also referred to Andrew Reith's post IP insurance: the heavyweight in your corner of 28 Jan 2016 to the IPO blog. David took the audience through the types of policy that are available, the losses that they cover, the cost of such cover which he estimated to be between 1 and 3% of the sum insured not counting excesses and co-insurance, the usual exclusions and benefits. He concluded that the IP insurance market is developing rapidly and availability is improving and that before-the-event cover provides the best method for transferring the significant cost risk.

In the Q and A that followed David's presentation, Andrea mentioned the report on insurance that the CIPA had published and which could be downloaded from its website. I have written a short article about that report in IP Insurance: CIPA's Paper 1 May 2016 NIPC Inventors Club blog.

There was a short tea break after which I was invited to speak. I will upload my slides and notes to Slideshare shortly and I have written extensively on the unitary patent and the Unified Patent Court in Preparing for the Unified Patent Court 23 Jan 2016 NIPC Blog and the articles mentioned in the bibliography at the end of my article. The delegates' packs included a printout of an interview that I gave to the Kluwer Patent Blog entitled ‘A Brexit will not necessarily delay the start of the Unitary Patent system’ 5 April 2016.

Eleanor's presentation covered a lot of topics.  Starting with backlogs she said that the IPO was recruiting and training more examiners who should make a difference. Turning to the IPO's space on the British government's website she mentioned the new Manual of Patent Practice and on-line design registration faciity that are already available and the "View Patent Cases" facility which was being trialled. She then took us on a brief tour of the IPO's space on the government website and showed how it could be searched and integrated conveniently with other services. Finally, she guided us through the new Manual, design registration and View Patent Cases facilities.

Drinks and some exceptionally tasty and interesting nibbles were served outside the auditorium. I met a lot of interesting attorneys and other IP professionals some of whom offered some very interesting services.  One of these was Lean IP operated by Dr Jim Adams of Glasgow. I have been interested in the ideas of Eric Ries and his book The Lean Startup for some time and have blogged about them in Lean Startup 6 May 2012. Jim's firm is a lean start-up and he applies Ries's ideas in the services that he offers to his clients.

Ar various times during the meeting Andrea mentioned the IP Inclusive initiative which aims to improve equality, diversity and inclusivity in IP. It has a simple charter which sets out practices that I am glad to say my chambers have always followed and although I will make it my business to see that those principles are applied in IP I can call on the support of our very able chambers equalities and diversity officer to see that they are applied generally. I have just signed up to the charter and I will encourage the other members of my set who practise IP law to do the same. I am very glad to see that 3 New Square and 11 South Square as well as the CIPA, ITMA and many patent and trade mark attorneys and specialist law firms have already signed.  

At the very end of the meeting Andrea said that she had noticed that I tweet occasionally about ballet and told me that she had trained to a very high level and that she was actually qualified to teach ballet.  I told her that I had started to attend classes at Northern Ballet Academy in September 2013 (see Realizing a Dream 12 Sept 2013 Terpsichore) and that I still do class whenever I can.  I mentioned that I knew of one patent attorney, Debbie Slater, and one IP solicitor, Helen Newman, who share our interest in dance. A few days after the Edinburgh meeting I met Sir Peter Wright in Budapest (see My Trip to Hungary 21 April 2016 Terpsichore). In our conversation I explained how ballet facilitates nimbleness of mind as well as in body which helps me do my job as an IP barrister better. A few days after that it was World Intellectual Property Day which was an opportunity to point out the overlap between IP and dance (see Happy World Intellectual Property Day 26 April 2016).

Sunday, 3 April 2016

Why every business plan should take account of intellectual property

Jane Lambert











In Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later, one of the best video introductions to trade mark law I know in any country, the presenter Mark Trademan (yes that really does appear to be his surname) of the US Patent and Trademark Office Trademark Information Unit asked an audience of entrepreneurs and small business owners how many of them had a business plan. A forest of hands shot up. "How many of you with business plans have a trade mark component?" asked Mr Trademan. Silence. "OK I was afraid of that."

The response would have been no different had Mr Trademan given his presentation here even though our own Intellectual Property Office warn in Before you apply for a patent on the British government website that "it’s pointless patenting an invention unless you have a proper plan for making money from it and can defend it against copying."

Everybody knows that a business plan is
"the vital component for any business, providing potential lenders and investors with a roadmap of how your business will operate and how you will go about achieving your goals" (see What is a business plan? on the British Library's Business and IP Centre website).
So why should IP be integrated into your business plan? The World Intellectual Property Organization which is the United Nations specialist agency for intellectual property provides the answer in Practical IP Issues in Developing a Business Plan. Every business no matter how small nor how simple owns some kind of intellectual asset that is vital to its trade. It may simply be the name or reputation of its owner in the case of a retailer or a tried and trusted recipe for making sponge cake in the case of a tea shop or sandwich bar but if it attracts customers to the business it is an asset which needs protecting, managing and exploiting.

Conversely, a business may need to use the assets of somebody else's assets. A photo on the internet perhaps for the company website or maybe some software for the computer. It needs to plan how it is to acquire the right to use or even buy that asset and how much it is prepared to spend.  All of these matters are at least as important to the start-up as the lease to an office or the purchase of a delivery van.

So why don't more businesses take account of these matters when planning their business. Probably because nobody has told them to do so. Not every accountant or solicitor is IP savvy and certainly not every business adviser.

So what to do?  I'll be giving some talks on the topic on-line and in the regions.  I shall also be publishing information about it here and in my regional blogs. In the meantime you could read the WIPO publication and the Fact Sheet Intellectual Property and Business Plans from the European IPR Help Desk.

If you want to discuss this or any other topic on IP strategy give me a ring during office hours on 020 7404 5252 or send me a message through my contact form.

Friday, 18 March 2016

Animated Advice



Embedded pursuant to the standard YouTube Licence


Jane Lambert

The Intellectual Property Office has recently uploaded a series of videos to its YouTube channel which are very short but also very useful. The primer is IP Basics: What is Intellectual Property and it is followed by films on copyrights. designs, patents and trade marks. Although they have been uploaded for some time they do not seem to have been watched by many people which is a pity because they are a lot better than the advice one can expect from most invention promotion companies or even some lawyers and, of course, they are free. The above video on IP BASICS: Is Intellectual Property important to my business? has received only 970 views since the 27 Nov 2015 and a large number of those will have have been made by me. I hope this article may attract more viewers for these films.

Good though the IPO animations are there are some that have been produced by other organizations that I like even better such as "Patents" by the WIPO and Indecopi (the Peruvian intellectual property office) with funding from South Korea.

There are some animations that could do with improvement.  The video on enforcement IP BASICS: Someone is using my IP is a case in point.  It correctly recommends taking legal advice promptly but goes on to suggest "an IP lawyer or solicitor". It would have been better to have specified "a barrister or solicitor specializing in IP or a patent or trade mark agent or attorney." Not every solicitor is comfortable or competent to advice on IP and patent and trade mark agents do not usually describe themselves as "IP lawyers".

It implies that "litigation", "mediation" or "settlement out of court" as alternatives which they are not. Negotiation and mediation succeed only because of the threat of litigation. It continues that most types of IP cases are suitable for mediation which is only partially true because mediation needs consent and a measure of co-operation from the opposing parties. The film fails to mention that a party that requires an interim injunction has to apply promptly and while it mentions the Intellectual Property Enterprise Court it says nothing about that court's small claims track.

However, there is only so much that can be said in a couple of minutes and it may be that further films on those subjects are planned. I shall certainly be incorporating these materials into my talks and writings and I hope that they will contribute to making IP more accessible to the general public. PS. The CIPA has just tweeted Good point folks!

Friday, 4 March 2016

Dispute Avoidance Planning and Dispute Management

Jane Lambert















Most IP disputes arise out of conflicts between competitors and competition is what businesses do. In fact, businesses are compelled to compete by law. Disputes will therefore happen unless precautions are taken to avoid them. The risk of disputes can never be eliminated entirely because folk miscalculate and act emotionally but if a dispute cannot be avoided it can at least be managed.

How Disputes arise and what can be done to prevent them

Disputes arise because of uncertainty as to the existence, extent or nature of an IPR or because one party believes that the other lacks the means or will to enforce its rights or defend its interests. In order to minimize the first risk businesses should ensure that they have obtained appropriate legal protection for their most revenue generating intellectual assets. To minimize the second risk they should ensure that they had sufficient funding through insurance or otherwise to enforce their rights or defend their interests. Those arrangements should be reviewed periodically (at least once a year in most cases) to ensure that they are adequate.

No Need to patent every Invention

That does not mean patenting everything in sight. It costs a tidy sum simply to acquire and maintain just a UK patent alone and a great deal more to obtain patent protection abroad. Few businesses can afford that measure of protection or even need it. There is a lot of varied data on the Invention Success Rates | Odds of Inventor Success page of the Invention Statistics | Invention Data website on how many patents are actually worked but none of the sources quoted on that page suggest that more than a small proportion of the inventions for which patents have been granted make serious money for their inventors. A more promising approach is to identify the income generating assets for which legal protection is appropriate and ensure that the optimum legal protection is in place in the relevant market.

Appropriate Legal Protection

That may be a patent or even a family of patents in different patent offices for the same invention but in some cases it may be the brand that attracts customers to a business for which case a trade mark is more appropriate. Moreover, even of it is technology that provides a competitive edge it can be protected in different ways. Trade secret protection perhaps or in the case of computer software copyright in the source code.

Identifying Intellectual Assets

The exercise of identifying a business's principal income generating assets and considering how to protect them should involve patent and/or trade mark attorneys but it is much too important to leave to them alone. ideally, it should be carried out by a multidisciplinary team of professionals and company management.

Flagging up other People's IP

If carried out correctly the exercise should flag up possibly areas of conflict over competitors' IP rights giving business owners the chance to plan for dealing with such conflicts as may arise.

Dispute Resolution Provisions

If a dispute does arise there are various ways in which it can be resolved. The default option is the court system but litigation is expensive and takes place in public. There are alternatives such as arbitration, expert determination and of course mediation and direct negotiation. If you want to use any of those alternatives to the court you will need the co-operation  of the other side which is a lot easier to obtain before a dispute arises than afterwards. Review the dispute resolution provisions of your licences and other agreements and insert arbitration or other dispute resolution clauses if appropriate.

Dispute Planning

Litigation can be planned for and managed just like a power outage, IT failure or any other disaster.  Make sure that you have your teams of outside legal advisers in place and that you and your staff know what to do. Information and documents are supposed to be exchanged and parties are expected to attempt to resolve a dispute without recourse to litigation if at all possible. There are also some definite no-noes such as threatening litigation which can result in  you or your company being sued for groundless threats.

Budgeting

IP litigation is expensive anywhere, particularly expensive in common law jurisdictions like England and Wales. Unless a business can fund its own and potentially its adversary's legal fees comfortably out of its earnings it should consider IP insurance or some other form of funding. I have written quite a lot of articles on that topic over the years in this blog and elsewhere.  A good starting point is IP Insurance Five Years On 23 Oct 2010 NIPC Inventors Club.

Periodic Reviews

The nature and frequency of these reviews will depend on the nature and size of your intellectual asset portfolio but for most businesses it should take place at least once a year.

Further Information

If you want to discuss this article or dispute avoidance planning and management in general, call me on 020 7404 5252 during office hours or use my contact form.

Thursday, 3 December 2015

IP Arbitration

Jane Lambert











Earlier this year I discussed mediation as a method of resolving IP disputes (see IP Mediation 22 May 2015). Mediation is a form of alternative dispute resolution ("ADR"), that is to say resolving a disputes without going to court.  ADR offers a number of advantages which the World Intellectual Property Organization ("WIPO") listed in ADR Advantages. As I noted in my previous article "the courts and the Intellectual Property Office ("IPO") hearing officers expect parties to consider mediation or some other form of alternative dispute resolution before issuing proceedings" in every case.

In that article I described mediation as "chaired" or "facilitated" negotiation. Like all forms of negotiation it works through consent. However. there are some disputes that can never be resolved in this way.  They require an adjudication, that is to say a decision based on a finding of fact and law.  Litigation is one form of adjudication and arbitration is another.  An arbitration can resemble a court case with counsel examining witnesses on oath and making detailed submissions on the law but differs from litigation in that the person who decides the dispute ("the arbitrator") and the procedure by which he or she reaches his or her decision are chosen by the parties. Often the arbitration takes place behind closed doors and the decision is made available only to the parties.  Further information on arbitration can be gleaned from the WIPO's arbitration index.

Arbitration can take place only if the parties agree to dispose of their dispute in this way.  Such an agreement can be made either before a dispute arises or afterwards. The WIPO suggests the following dispute resolution clause for a licence or other commercial agreement:
"Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [a sole arbitrator][three arbitrators]. The place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify language]. The dispute, controversy or claim shall be decided in accordance with the law of [specify jurisdiction]."
If the parties wish to refer an existing dispute to arbitration where there is no arbitration clause, the WIPO suggests the following form of words:
"We, the undersigned parties, hereby agree that the following dispute shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules:
[brief description of the dispute]
The arbitral tribunal shall consist of [a sole arbitrator][three arbitrators]. The place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify language]. The dispute shall be decided in accordance with the law of [specify jurisdiction]."
There are, of course, other arbitration rules for parties to choose.

Although most intellectual property disputes could be resolved by arbitration very few actually are in the United Kingdom at any rate. There are a number of reasons for that.  In Why Arbitration in Intellectual Property? the WIPO lists a number of features of litigation such as lack of judicial expertise and long drawn out procedures that simply do not apply to England and Wales. We have specialist Patents and Enterprise Court judges who are equipped with powers to ensure the just and relatively swift disposal of cases. However, even in the UK there are cases such as those where there is an arbitration clause or an international element where arbitration is the only or preferred option. The increasing cost of bringing an action in the civil courts may also make arbitration more attractive (see How to enforce your IP claim after court fees sky rocket 7 March 2015 NIPC Inventors' Club).

Should anyone wish to refer a dispute to arbitration we have a team of arbitrators in 4-5 Gray's Inn Square of which I am a member and I specialize in the resolution of IP and technology disputes. I sit on the WIPO list of neutrals together with my colleague Joseph Dalby SC of the Irish Bar. If anyone wishes to discuss this article or arbitration in general call me on 020 7404 5252 during office hours or contact me through my message form.

Sunday, 25 October 2015

How to challenge a UDRP Decision

WIPO head office, Geneva
Author Melatron
Reproduced under a Creative Commons licence
Source Wikipedia



























Jane Lambert

In my experience as a domain name dispute resolution panellist for the WIPO as well as a member of the Bar who has advised and settled pleadings for both complainants and respondents, most domain name disputes are straightforward. Moreover, most complaints are decided in favour of the complainant.  Of all the cases that have been referred to WIPO since 1999, some 21,399 or nearly 86.0% have resulted in a transfer to the complainant and 407 or 1.6% in a cancellation. A complaint has been denied in only 3,086 cases making 12.4% of the total (see Case Outcome (Consolidated): All Years on the WIPO website).

Those figures are hardly surprising as it is rare for a complaint to be defended and even rarer for a response to disclose any merit. It can therefore be said with some confidence that most panellists' decisions are likely to be right. Consequently, those decisions will not often be challenged but every so often a party is aggrieved at a decision and wants to take it further. There is an appeals procedure in Nominet's Dispute Resolution Service Policy for decisions in respect of ".uk" domains but not in ICANN's Uniform Domain Name Dispute Resolution Policy ("UDRP") for generic top level domain names such as those ending in ".com", ".org" or ".info". What happens if you or your client want to challenge a decision by a panellist appointed by the WIPO, the Czech Arbitration Court or any of ICANN's other domain name dispute resolution service providers?

The first point to remember is that the UDRP is a form of alternative dispute resolution but not full blown arbitration and therefore does not seek to oust the jurisdiction of the courts. My colleague David Bernstein of  Debevoise & Plimpton LLP in New York City once characterized the procedure pithily as an interim custody arrangement for domain names. Paragraph 4 (k) of the UDRP states:
"The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded."
As a condition for filing a complaint, paragraph 3 (b) (xiii) of the UDRP Rules requires complainants to submit with respect to any challenges to the jurisdiction of the courts of the country in which the registrar of the domain name or the respondent is domiciled.

The second point is that challenges have to be made very promptly. Paragraph 4 (k) of the UDRP provides:
"If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision."
"We", in this context, means the registrar.  The registrar is bound to implement a panellist's decision unless it receives from the respondent during those business days official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that the respondent has commenced proceedings against the complainant in a jurisdiction to which the complainant has submitted under paragraph 3 (b) (xiii) of the Rules. If the registrar receives such documentation within those 10 business days it will not implement the panellist's decision. Indeed, it will take no further action, until it receives satisfactory evidence of:
(i)  a resolution between the parties;
(ii) dismissal or withdrawal of the law suit
(iii) an order dismissing the law suit or finding that the respondent does not have the right to continue to use the domain name.
If the complainant agrees to submit to the jurisdiction of the English courts a challenge will usually be brought in the Chancery Division of the High Court of Justice, the Intellectual Property Enterprise Court ("IPEC") or a county court with a Chancery District Registry attached (see CPR 63.13 and paragraph 16 of the Part 63 Practice Direction). As IPEC including its small claims track is part of the Chancery Division there seems to be no reason in principle why a challenge should not be launched out of that court though the claimant might have difficulty in obtaining leave to serve the claim form outside the jurisdiction or in resisting an application to transfer the case to the multitrack.

The grounds upon which a UDRP decision may be challenged will vary. The WIPO lists a Selection of UDRP-related Court Cases on its website.  In Marchex Sales Inc. v. Tecnologia Barcaria S.A. (unreported), the most recent case on the list, the US District Court for the Eastern Division of Virginia, injuncted the registrar from transferring the disputed domain name to the defendant's bank which had been ordered by the majority of a three member panel in Case No. D2014-0834 Tecnologia Bancaria S.A. v. Marchex Sales Inc 24 Sept 2014 in what appears to have been a default judgment. Much the same seems to have happened in Walter v Ville de Paris 14 Sept 2012 (unreported) in respect of Case No. D2009-1278 Ville de Paris v. Jeff Walter 19 Nov 2009. However, challengers are not always successful as Patel v Endo Pharmaceuticals Inc, [2006] EWHC 3461 shows.  Often the case will turn on the construction of the registration agreement and sometimes on the validity of the trade mark.  Those seeking to challenge a domain name decision may also be able to take advantage of s.21 of the Trade Marks Act 1994 as a small English computer company did when threatened by a mighty US multinational in Prince Plc v Prince Sports Group Inc. [1998] FSR 21.

Should anyone wish to discuss this article or domain name disputes generally, he or she should call me on +44 (0)20 7404 5252 during office hours, or send me a message through my contact form.

Saturday, 26 September 2015

Justice in Wales - what about Newport?




Jane Lambert

Instead of reflecting on a brilliant performance of Swan Lake at the Lowry by the Birmingham Royal Ballet, I spent much of Thursday evening reading Justice for Wales. That is the title of a pamphlet written by Sir Roderick Evans QC and others calling for the establishment of a separate judiciary and court system for Wales.  My copy came from my good friend and colleague David Hughes who is a member of my chambers' intellectual property team. I googled "Sir Roderick Evans QC" and "Justice for Wales" but was unable to find the publication on the worldwide web. The nearest I came was Top lawyers campaign for a separate justice system for Wales 23 Sept 2015 Wales on Line.

The pamphlet makes a good case for the reform of the English and Welsh justice system generally. For instance:
"In its report entitled ‘Doing Business 2015’, the World Bank ranked the UK only 36th in the world for ‘Enforcing Contracts – how judicial efficiency supports freedom of contract’. According to the World Bank, enforcing a low-to-mid value contractual claim in the UK typically costs 39.9% of the value of the claim. This compares unfavourably with Germany (14.4%), France (17.4%), Australia (21.8%) and the United States (30.5%)."
I have made similar points in relation to the cost of patent litigation (see Jane Lambert Why IP Yorkshire  10 Sep 2008 IP Yorkshire) although the situation has improved with the reform of the Patents County Court in 2010 (see Jane Lambert New Patents County Court Rules 31 Oct 2010 NIPC Law) and the launch of the small claims track in 2012 (see Jane Lambert Patents County Court - the New Small Claims Track Rules 20 Sept 2012 NIPC Law).

However the main point of the pamphleteers seems to be that
"the shared court system of England and Wales means that cases involving issues solely relating to Wales are routinely decided by courts in England and by judges with little or no connection to, or experience of, Wales or the law created by the National Assembly."
I am not persuaded that that actually happens very much in practice because litigants in Wales will wish to bring their cases in the nearest District Registry or County Court hearing centre but, even if it does, I am even less convinced that litigants in Wales would regard it to be a bad thing, Surely they want the best judicial talent for the resolution of their disputes regardless of the judge's residence or provenance and they are much more likely to find the best in a wide pool than a narrow one.

One lacuna in that pamphlet despite David's contribution is the absence of any reference to intellectual property. That is surprising as the Intellectual Property Office has been based in Newport since 1991. It employs over 1,000 people in that city and contributes considerably to the local economy and community in all sorts of other ways. Were the administration of justice to be devolved to the Welsh government there would be be pressure upon the United Kingdom government to return the IPO to London or at least to the other side of the Severn.

The reason for that pressure is that the needs of multinational companies would not be a priority in a separate Welsh justice system. The pamphlet makes that very clear:
"The existing jurisdiction of England & Wales may be the jurisdiction of choice for many litigants who otherwise have little territorial connection to the UK. The primary beneficiaries of that popularity, however, are London’s major commercial law firms. Indeed, the focus of the jurisdiction is increasingly fixed on London’s status as a centre for international litigation, at the expense of serving the needs of – and encouraging the growth of – homegrown businesses. By controlling our own justice system in Wales, we could make sure that the needs of international litigation did not take priority over the everyday business of the courts."
Yet it is multinational companies such as IBM, Dyson Technology and Broadcom Corporation that were the top three patentees in the UK in 2014 (see page 12 of IPO Facts and Figures 2013 and 2014 Calendar Years).

The Comptroller-General of Parents, Designs and Trade Marks exercises judicial as well as administrative functions which he delegates to a panel of hearing officers. At present appeals from their decisions lie to the Patents Court in patent and registered design matters and to the Chancery Division in trade mark matters. Were the IPO to remain in Newport after the establishment of a separate Welsh legal system the hearing officers would be Welsh tribunals subject to Welsh administrative law. It is unlikely that litigants in other parts of the UK and indeed the rest of the world would be content for their appeals to be determined in Cardiff where David is one of a very small number of lawyers known for their expertise in intellectual property law instead of London where the bulk of the patent bar is located and the needs of multinational companies are met.

I have discussed the position of the Intellectual Property Office at some length because IP is my manor but there well may be other ministries and executive agencies with offices in Wales where the same concerns apply. The IPO, for example, shares an attractive woodland site on the city's outskirts with the ONS. A separate Welsh justice system may well make work for Welsh lawyers but it should not be at the expense of loyal and hard working Welsh civil servants or the businesses that supply them.

There are other concerns. At present Welsh intellectual property owners can bring their claims in the Intellectual Property Enterprise Court with its specialist judge and limits to the length of trials and recoverable costs. There is also a small claims track in IPEC with a simplified procedure and minimal court fees and recoverable costs. There is nothing like IPEC in Scotland or Northern Ireland. In those jurisdictions even relatively small claims have to be brought in the Court of Session or the High Court of Northern Ireland at enormous cost (see Jane Lambert Patent Litigation in Northern Ireland: Siemens AG v Seagate Technology 13 Aug 2011 NIPC Law). Would the Welsh government establish an IPEC for Wales when the Scottish and Northern Irish governments have failed to do so for their IP owners? It is possible but unlikely for who would be appointed to the bench and who other than David could appear before it?

It may be sensible to establish a Welsh justice system were we to adopt full blown federalism for the United Kingdom as in most of the jurisdictions mentioned in the "Can we do it?" section of the polemic, but unless and until we do become a federal state we should be very wary of disturbing an arrangement that has subsisted since 1535.

David's Response

One of the objectives of Justice for Wales is to provoke debate on whether a separate Welsh jurisdiction should be re-established. I am therefore pleased that Jane has joined the debate.

Jane says that the lack of any mention of Intellectual Property is a lacuna in our pamphlet. Indeed it is. Whether it is a lacuna that can sensibly be criticised is something on which she and I will have to differ. The pamphlet doesn't mention public procurement law, personal injury law, family law (other than a use of the word "family" in a section dealing with access to justice). It doesn't deal with housing law, healthcare law or planning law (other than mentioning their existence), even though they are devolved areas. The reason it does not is fairly simple. Justice for Wales is a document dealing with the justice system as a whole. That can only be understood as part of Wales' place within the United Kingdom's constitutional arrangements. As a Unionist (it probably doesn't take much googling to find out that I was one of the authors of the Society of Conservative Lawyers' paper "Our Quasi-Federal Kingdom"), a Conservative activist and a lawyer practising IP law (amongst other areas), I am aware of the importance of Intellectual Property to the prosperity of the UK and Wales. But the IP tail cannot be allowed to wag the constitutional dog. It cannot sensibly be argued that we ought to retain constitutionally flawed arrangements for the sake of IP. And such an argument assumes that a separate Welsh jurisdiction would necessarily be worse than the current joint one.

I doubt that Jane makes that assumption, as she accepts our critique of some of the shortcomings of the current joint Anglo-Welsh jurisdiction. What she does not accept, however, is (a) that the problem we pose of judges with little or no connection to or experience of Wales deciding Welsh cases in fact arises often or, (b) if it does, that it is objectionable.

The fact that cases arising in Wales can be heard by courts sitting in England, the fact that lawyers (whether they happen to have been born in Wales or not is not the point) who have chosen to base their professional and personal lives outside Wales are appointed to sit in this country, shows that it can happen as a matter of course. The judgment of the Supreme Court in the Recovery of Medical Costs for Asbestos DIseases (Wales) Bill [2015] UKSC 3 is a recent example of a highly regrettable approach to construing the Assembly's legislative competence - I critiqued it at a Public Law Project event earlier this year.

The English people - if their press and politicians are anything to go by - seem to have a certain resentment of judges in Strasbourg and Luxembourg making decisions that bind the UK. I don't say that Jane shares their attitude, but let us just accept for the moment that there is a significant body of political opinion that thinks it is a problem. Why? Well, is it not because countries tend to want their judges to be from their country? Apart from small countries in which population numbers cause problems (as someone who used to practice full-time in Gibraltar, and is still a consultant to a Gibraltar law firm, I know one such place well), most countries want their cases to be decided by people who understand the milieu from which they arise. The New South Wales judiciary is well-regarded, but would the people of England be happy if their disputes were regularly decided by judges flown in from Sydney? We don't need to go so far. Ireland is a common-law jurisdiction. Jane and I share chambers with some Irish silks, and excellent lawyers they are too. Would the people of Coventry like their cases decided by judges from Cork? I think the answer is obvious, and it involves no slur on the judiciary of Ireland to acknowledge it.

Jane says that "...Surely they (litigants in Wales) want the best judicial talent for the resolution of their disputes regardless of the judge's residence or provenance and they are much more likely to find the best in a wide pool than a narrow one".

Of course they want the best talent. But what does she mean by "best". Judging is not simply a matter the ability to process facts or memorise law - it involves judgment. Even if it were, an understanding of facts and of the witnesses who relate them to the court is best achieved with knowledge of the milieu from which those facts arise. This is related to the above point - the fact that a (wo)man might be an excellent Irish judge does not make him or her the "best" person to decide an English or Welsh case.

As for the size of the pool, plenty of countries or territories manage to run perfectly good judicial systems with lower populations than that of Wales. Those places include about 20 American states and Australian jurisdictions such as Western Australia, Tasmania or Northern Territory. The current Chief Justice of Australia practised in Western Australia before ascending to the bench, which suggests that Western Australia manages to produce acceptable judges.

Jane says that "Were the administration of justice to be devolved to the Welsh government there would be be pressure upon the United Kingdom government to return the IPO to London or at least to the other side of the Severn. The reason for that pressure is that the needs of multinational companies would not be a priority in a separate Welsh justice system....". She goes on to support that assertion with a quotation from the pamphlet that does not, in fact support it. But let us examine her assertion anyway.

Would there be pressure on the UK govt to take the IPO to "London, or at least the other side of the Severn"? Possibly. But there is no reason to think that the needs of multinational companies would not be important to a devolved Welsh jurisdiction. They would be - or at least I would be arguing that they should be, and I would expect those who joined me in signing the pamphlet to agree. What they ought not to be is subsidised by Welsh SMEs (or indeed English SMEs). The pamphlet criticises the increases in, and the structure of, court fees in our joint jurisdiction. Is it really right that the issue fee for a case worth £200,000 should be 5% of the case value, but only 0.3% for a case worth £3,000,000?

Let's look at another of Jane's arguments: "The Comptroller-General of Parents, Designs and Trade Marks exercises judicial as well as administrative functions which he delegates to a panel of hearing officers. At present appeals from their decisions lie to the Patents Court in patent and registered design matters and to the Chancery Division in trade mark matters. Were the IPO to remain in Newport after the establishment of a separate Welsh legal system the hearing officers would be Welsh tribunals subject to Welsh administrative law. It is unlikely that litigants in other parts of the UK and indeed the rest of the world would be content for their appeals to be determined in Cardiff where David is one of a very small number of lawyers known for their expertise in intellectual property law instead of London where the bulk of the patent bar is located and the needs of multinational companies are met."

This amounts to little more than a contention that "London knows best".

Jane and I share chambers in London. A number of other signatories of the pamphlet also have chambers in London. My colleagues there are excellent lawyers. But so are my colleagues in my Cardiff chambers (and my Gibraltar colleagues whilst we're at it). It would obviously be in the interests of Wales to retain the IPO and therefore to retain court procedures to allow IP disputes to be resolved cost-efficiently (we would not need to introduce anything, because we would start with what was in place the day before separation, to address another of Jane's points). Although a formal separation of the professions would be necessary (as ultimately we would be under the authority of different courts) and desirable (we could regulate our legal professions much less expensively than the joint jurisdiction does), no-one wants needless barriers in the way of cross-border practice. Of the four individuals who did the bulk of the drafting work on the pamphlet, 3 of us also have London chambers and would want to continue our cross-border practices. The likelihood is that one would simply have to take out a Welsh (or English) supplementary practising certificate.

Jane closes by saying "...unless and until we do become a federal state we should be very wary of disturbing an arrangement that has subsisted since 1535". But the point is that the arrangement hasn't subsisted since 1535. Wales had its own courts up until the 1830s. And the days when the law, or primary legislation at least, was the same in England & Wales have gone. The arrangements have changed. It is time that the justice arrangements caught up with them.”