Finding the Right IP Advice

Jane Lambert

In his report Digital Opportunity - A Review of IP and Growth, Professor Hargreaves noted at paragraph 9.6:
"There exists a plethora of organisations providing advice and information in relation to IP. Such services range from Government backed bodies to independent, commercial and noncommercial institutions, as well as those that specialise in particular areas such as valorisation or combating counterfeiting. On the face of it, the marketplace looks diverse, but the survey suggests that, from the point of view of smaller companies, this is not resulting in clear product offers and competitive pricing. Evidence gathered by the Review from a wide range of sources suggests that the extent of information available on IP can actually act as a significant barrier to SMEs, particularly to start ups."
To help creatives, entrepreneurs, inventors and investors in our region, here is an introduction to the IP services that are available in North West England.

IP Professionals
There are basically four IP professions in England and Wales:
  • patent agents (attorneys);
  • trade mark agents (attorneys);
  • solicitors specializing in IP work; and
  • barristers specializing in IP work.
Patent Agents 
Although most patent agents like to call themselves "patent attorneys" nowadays the terms "agent" and "attorney" are actually interchangeable. Because lawyers in the USA are known as attorneys it is popularly supposed that "attorney" means lawyer here.   In fact "attorney" means "agent" and that meaning survives in the expression "power of attorney", an instrument appointing anyone (not necessarily a lawyer) to execute deeds and other transactions on another's behalf. Conversely, solicitors are sometimes referred to as "agents" in Scotland.

In America there are both patent agents and patent attorneys and the distinction between them is important. Both have scientific or technical backgrounds as well as advanced training in IP law. Both can represent clients before the US Patent and Trademark Office. However, a patent attorney is also a lawyer in the sense that he or she can practise in the courts of at least one state, territory or the District of Columbia. Only attorneys can advise on, and represent parties to, patent infringement cases.

No such distinction exists in England.  Patent agents have degrees, and sometimes advanced degrees, in natural sciences, engineering, technology or maths and undergo specialist training in IP law for examinations set by the Joint Examination Board of the Chartered Institute of Patent Attorneys ("CIPA") (formerly "Chartered Institute of Patent Agents") and the Institute of Trade Mark Attorneys ("ITMA") (formerly "Institute of Trade Mark Agents"). They are regulated by IPReg ("Intellectual Property Regulation Board) under the provisions of the Legal Services Act 2007. Though patent agents are now regarded as lawyers for most purposes their profession originated outside the law. Several firms of patent agents were started in the 19th century by instrument makers or other skilled craftsmen who had acquired practical experience of patent law.

Patent agents apply for patents and sometimes registered designs on behalf of inventors or other owners of inventions. They also object to such applications and apply for their revocation on behalf of third parties. They correspond with examiners and sometimes conduct proceedings before hearing officers appointed by the Comptroller General of Patents, Designs and Trade Marks,   They advise on licensing, enforcement and other matters relating to patents and registered designs. Some are authorized by IPReg to conduct litigation and appear as advocates in the Patents County Court and Senior Courts of England and Wales.

There is a separate qualification to practise before the European Patent Office. Such practitioners have always been known as "European patent attorneys". Many English patent agents are also European patent attorneys.

While it is possible for an inventor to apply for his or her own patent it is not recommended.   Patent applications have to be drawn up with great care and skill.  S,14 (3) of the Patents Act 1977 requires the applicant to "disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art." otherwise any patent that may be granted can be revoked later. The claims that set out the monopoly sought by the inventor must be broad enough to prevent circumvention but still be valid.  It takes a lot of book learning and practical experience to get that right and that is what you pay for when you wince at your agent's bill.

CIPA has a searchable database of patent agents on its website.  Several leading patent agencies have offices in Manchester and there are also offices in Altrincham, Blackburn, Burnley, Chester, Cockermouth, Preston and Southport.  When choosing a patent agent it is worth remembering that many specialize in particular types of patent applications such as mechanical, electronic or chemical.   Also, you do not have to go to a local firm and if you think you are likely to find yourself before a hearing officer or you want an agent with a particular background you may want to look outside the region,   I have worked with, or against, most firms of patent agents in the North of England and many from London and other regions over the last 30 years. If you want an introduction call my clerk Stephen on 0161 850 0080 or fill out our contact form for some names. We try to give three with whom we have worked satisfactorily in the past at least one of whom will be in the North West and another from outside the region.

Trade Mark Agents
These are professionals who apply to the Trade Marks Registry for trade marks and sometimes registered designs on behalf of business owners and other clients. They also object to other peoples' trade mark applications and registrations on behalf of third parties.  They advise on licensing and enforcement of trade marks and registered designs. They correspond with examiners and sometimes act in proceedings before the Trade Marks or Designs Registries of the Intellectual Property Office. Like patent agents, they are also regulated by IPReg. Some are authorized by IPReg to conduct litigation and appear as advocates before the Patents County Court and Senior Courts of England and Wales.

Most trade mark agents belong to ITMA which has a searchable database of trade mark agents on the home page of its website. There are several trade mark agents in Manchester and Liverpool and others in Altrincham and Oldham. Many patent agents are also trade mark agents.  Although it is said to be easier to apply for a trade mark or registered design than a trade mark there are still plenty of pitfalls for the unwary. The cost of a proper search, analysis and preparation of an application by a trade mark attorney may seem high for a start-up or other small business but it can often avoid a lawsuit.   If it does it is money well spent.

If you need a trade mark agent Stephen can help you find one. Call him on 0161 850 0080 or fill out his contact form.

Specialist Solicitors
Although patent and trade mark agents can and do advise on licensing and other transactions issues and many can and do conduct litigation or appear as advocates in the Senior Courts there are occasions when it is appropriate to consult a specialist solicitor. Sometimes there are contractual, employment, insolvency, tax or other issues as well as IP.  Similarly if there is likely to be heavy litigation in the High Court or Patents County Court law firms are more likely to have the necessary expertise and resources to conduct it.

When choosing a solicitor it is important to note that although many firms claim to be able to do IP not all of them have the same expertise or experience.  Many but by no means all firms with an established practice in IP belong to the Intellectual Property Lawyers Association. Most of those firms are in London but there are some in Manchester and other cities of the North.  There are also some really good IP solicitors outside the big law firms and boutique IP practices such as Michael Sandys of Broudie Jackson & Canter in Liverpool who instructed me in Excavating & Contracting, Microsoft v Ling and Newzbin1 and Craig Hollingdrake of JWK in Lancaster who briefed me in Needham v Stansfield, Twentieth Century Fox and Others v Harris and many other big cases.

As with patent and trade mark agents, if you want a good IP solicitor anywhere in the country or indeed elsewhere, call Steve on 0161 850 0080 or fill out his contact form.

Specialist Barristers
I set out the services that barristers can offer in "IP Services from Barristers" 6 April 2013 4 to 5 IP. We are specialist advocates who appear in the Patents Court, Patents County Court, Intellectual Property list of the Chancery Division and the Intellectual Property Office tribunals. Most of us have an in-depth understanding of one or more areas of IP law.   Mine are computer law and the needs of startups  and other small and medium enterprises.  

Although patent and trade mark agents and solicitors have rights of audience before those courts and tribunals there are occasions when the services of a specialist advocate or lawyer are desirable and sometimes indispensable.   One of the advantages of the bar is that all the judges of the Patents Court and Patents County Court and most of the judges of the Chancery Division have been recruited from our number. We have appeared in front of them and sometimes against them or with them when they were at the bar. Over the years we have got to know them very well and can predict better than most how they will decide a difficult or obscure point of law that has never arisen before.

Most members of the IP Bar belong to the Intellectual Property Bar Association ("IPBA"). There are a handful of chambers in London and around the country with specialists in IP work. We have particularly strong links with Manchester. Our other strengths are that we work closely with our colleagues in Atlas Tax Chambers and have expertise in the public law aspects of IP.

Other Sources of Information
There are Business and IP Centres at Manchester and Liverpool Central Libraries and also some excellent resources at Blackburn Central Library. Regular patent clinics take place in Manchester and Liverpool libraries and occasionally also elsewhere.  There are three good inventors groups in Liverpool (which I chair), Manchester and Blackburn.

For further information on all those matters call me on 0161 850 0080 or send me a message through my contact form.  You can also follow me on FacebookLinkedin, twitter or Xing..


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