IP Professionals - who does what

Jane Lambert

In his review of IP and growth, Professor Ian Hargreaves noted that there is "a plethora of organisations providing advice and information in relation to IP" and that "the extent of information available on IP can actually act as a significant barrier to SMEs, particularly to start ups." Clearly what is needed is a simple guide as to who does what in the intellectual property jungle.

IP Professionals
In England and Wales there are four established IP professions:

• patent attorneys (or agents);
• trade mark attorneys (or agents);
• specialist solicitors; and 
• specialist counsel.

A fifth profession, that of IP strategists is beginning to emerge here and in the United States.

Patent Applications
If you, your company, university or other organization have invented a new product or process you may want to apply for a patent for your invention.  If you do, you would be wise to consult a patent attorney.

Patent attorneys specialize in drafting applications for patents that are broad enough to provide the necessary protection but not so broad as to be invalid. They are used to dealing with the Intellectual Property Office, European Patent Office and other patent offices around the world and can usually deal with objections by patent examiners and third parties. They will carry out or procure searches of the prior art (previous patent applications and the technical literature) to find out whether your invention is patentable and advise you accordingly.

You cannot however expect patent attorneys to advise you whether it would be wise to apply for a patent because few of them are trained to give business advice. Those that are would probably describe themselves as patent strategists.   It is important to bear that in mind because most patents cost more to obtain than the revenues that they generate. If you want advice on the wisdom of patenting an invention you should consult some other professional such as a management consultant or chartered accountant or, if you can find one, a patent strategist.

Patent attorneys can also draft applications for the registration of new product designs either as registered designs in the UK or as registered Community designs for the whole of the EU.

Most patent attorneys belong to the Chartered Institute of Patent Attorneys ("CIPA") and are regulated by the Intellectual Property Regulation Board ("IPReg").

IPReg keeps a register of patent attorneys which includes those who are employed in-house as well as those in private practice. If you want to find a firm of patent attorneys CIPA has a searchable database on its website.

Many patent attorneys and other intellectual property professionals give up to an hour of their time free of charge to members of the public who consult them at patent clinics.   In London an IP clinic is held every Tuesday at the London branch of the Intellectual Property Office at 4 Abbey Orchard Street, London SW1P 2HT.  Consultations are by appointment only and these can be booked through Sarah Harmsworth on 020 7405 9450.

Until 2006 patent attorneys in the UK were known as patent agents. In that year CIPA changed its name from the Chartered Institute of Patent Agents to the Chartered Institute of Patent Attorneys. In a short article by Ted Blake "Patent agents change name after 124 years" which remains on its website, the President of CIPA explained why:

“This change means that the official name of the Institute is now much more appropriate given the truly international aspects of our profession. Back in 1882 when the Institute was formed, the title patent agent was in use, and it remains a respected title, but with the passage of time members have adopted the term patent attorney which is the title used by patent practitioners throughout the rest of the English-speaking world. The members of the Institute deal every day with the very latest technological ideas which emanate from the four corners of the world, so we must move with the times no matter how proud we are of our history”.

The reference to "international aspects" is surprising because there are two separate professions in the USA:

• patent attorneys who are lawyers specializing in patent practice, and 
• patent agents who are not.

Although English patent attorneys can and increasingly do conduct IP litigation and appear as advocates in the Patents and Patents County Courts they are more like US patent agents than US patent attorneys. The problem lies in the fact that an "attorney" (which means "agent") was a lawyer who practised before the common law courts of England and Wales until the Judicature Act 1873 and the title "attorney at law" is still used by lawyers in the USA, South Africa and many other countries. 

Trade Mark Applications

If you want to register a British or Community trade mark you should consult a registered trade mark attorney.  Trade mark attorneys can also advise and assist you with the registration of designs either for the UK ("registered designs") or the EU ("registered Community designs").  Their professional association is the Institute of Trade Mark Attorneys ("ITMA") and they are also regulated by IPReg.   A list of registered trade mark attorneys is kept by IPReg and the ITMA website has a searchable database of trade mark attorneys in private practice on its website. Those practising in London are here.

Trade mark attorneys used to be known as trade mark agents.   They and their institute have also adopted the description "attorneys".

Many patent attorneys and some solicitors are also trade mark attorneys.   Some law firms prosecute trade mark and design applications even though they may not employ attorneys.

IP Transactions

If you want advice or assistance on a licensing, joint venture or other business transaction where intellectual property is one of several issues you should consult a law firm with expertise in IP.  Most such firms are very large but there are a few such as Filemot Technology Law where the principal Barbara Cookson is qualified as a solicitor, registered patent attorney and trade registered mark attorney.

Many of the larger law firms with specialist practices are members of the Intellectual Property Lawyers' Association ("IPLA"). 

Solicitors are regulated by the Solicitors Regulation Authority ("SRA") though some solicitors (such as Ms. Cookson) who are also patent or trade mark attorneys are regulated by IPReg.

Litigation

If you believe that someone has infringed your patent, copyright, trade mark, registered design or other intellectual property right or your are accused of infringing someone else's you should consult a solicitor or other authorized litigator.   

If you consult a solicitor make sure that he or she or at least one member of his or her team is an IP specialist. All the firms in the IPLA have such expertise.

Some patent and trade mark attorneys have qualified as patent and trade mark attorney litigators.  If the only or principal issue in the litigation is a matter of intellectual property law their knowledge and experience of patent or trade mark prosecution may be advantageous.  Also, some patent and trade mark agencies, such as Marks & Clerk and Harrison Goddard Foot, have associated law firms.

Specialist Counsel

If a new or difficult point of law arises during an application for a patent, registered design or trade mark or a business transaction the patent or trade mark attorney or solicitor may wish to consult a barrister specializing in intellectual property law. Such a barrister can also draft complex legal instruments such as software development contracts, source code deposit deeds and other documents.  

Occasionally, there is a hearing before a hearing officer of the Intellectual Property Office, Appointed Person or other tribunal.   Again, a barrister can help by settling statements of case, witness statements and skeleton arguments and presenting oral arguments to the tribunal.

A barrister can also advise on the strength of a claim for infringement of a patent, copyright, trade mark, design or other intellectual property right, the revocation of a patent, invalidation or revocation of a trade mark or other action in the Patents or Patents County Courts or Intellectual Property list of the Chancery Division or Chancery County Courts.  He or she can settle proceedings and evidence and present cases before those courts. 

The two great strengths of a barrister are that he or she is trained in advocacy and he or she will have been appeared before, or even against, the judges when they were at the Bar. Through such appearance he or she will have learned how the judges think. He or she will thus be in a better position than most to predict how they will determine new issues of law.

Barristers practise as sole practitioners in unincorporated associations known as "chambers" or "sets of chambers".  Well over half are in London and most are established near the Royal Courts of Justice in the historic Inns of Court. A handful of chambers specialize or have expertise in intellectual property and a list of those chambers can be downloaded from the Intellectual Property Bar Association website.

Barristers are regulated by the Bar Standards Board.

For further information see my article "IP Services from Barristers" 6 April 2013 4-5 IP.

IP Strategists
The US IP lawyer and strategist Jackie Hutter described patent strategists as "a new type of Intellectual Property advisor" who "combines business acumen with IP knowledge to provide business-focused advice." She continued:

"An IP Strategist does not advise you to spend your money on obtaining IP because you can, but because you need to. That is, an invention may be legally entitled to a patent, but if that patent does not protect a product or technology that your company is selling currently or planning to sell in the future, obtaining a patent is a waste of your company’s valuable resources. To ensure that you do not waste money on IP rights that do not align with your goals, an IP Strategist works with you to ensure that you only get IP that supports and maximizes your business value. In other words, an IP Strategist first listens to you to determine what your business goals are and how you wish to achieve them and only then will the IP Strategist suggest that you move forward with obtaining cost appropriate IP protection."

In the UK individuals with an interest in IP strategy are appearing in all four professions. Many are members of the IP Strategists Association ("INTIPSA").

Further Information
If you want to discuss this article or intellectual property in general call me on 020 7404 5252 during office hours or fill in my contact form.

How to read a Patent

Intellectual Property Office, Concept House, Newport

Crown copyright
Reproduced with the permission of the IPO

Updated 9 Oct 2015

Jane Lambert

As I have remarked elsewhere, an inventor makes a bargain with the public when he or she applies for a patent for his or her invention. In exchange for a monopoly of the invention the inventor must 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 (s.14 (3) of the Patents Act 1977). If the inventor fails to do that, any patent that may be granted can be revoked under s.72 (1) (c) of the Act.

The document in which the invention is disclosed is known as "the specification". It is one of the documents that must be filed when applying for a patent (see s. 14 (2) (b)).  A specification must contain "a description of the invention, a claim or claims and any drawing referred to in the description or any claim".   According to s.14 (5) (a) the claims "define the matter for which the applicant seeks protection". S.125 (1) of the Act adds:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

Claims are therefore enormously important.   It is the claims that we consult when we consider whether a patent has been infringed or whether it is valid.   Usually there are several claims arranged  in numbered paragraphs. Each claim sets out the "features" (also known as "the integers" or "elements") of the invention.   The first claim expresses the invention in the broadest possible terms, the next slightly more narrowly, the third more narrowly still and so on like a set of Russian dolls.

Until the arrival of the internet patent specifications were available only in print.   The only way to read them was to subscribe to the Patents and Designs Journal and buy any specification that was of interest or to visit a the Patent Office or other library that subscribed to the Patent Office's publications.  Nowadays specifications are published on line and can be searched on Espacenet or a number of other online databases.   Specifications are read for the technical information that they contain, for determining the scope of a patent, for finding matter that invalidates a later patent or patent application and many other reasons.

When reading a specification it is important to remember that it is addressed to the "person skilled in the art" that I mentioned in the first paragraph.  A specification uses that person's terminology and assumes that the reader shares that person's skills and knowledge. Generally words are given their everyday meaning but if a word or phrase has a special meaning in the relevant industry then that meaning will apply.

When interpreting claims s.125 (3) of the Patents Act 1977 provides the following guidance:

"The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article."

In other words, patents granted for the UK by the IPO in Newport have to be interpreted the same way as European patents granted by the European Patent Office ("EPO") in Munich.

The Protocol, which was revised a few years ago, now consists of two articles.  For present purposes, it is enough to concentrate on art 1. When you see the reference to art 69, think of s.125 (1) of the Patents Act 1977 which is quoted above:

"Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties."

There is a massive amount of case law from courts and tribunals across Europe as to how this provision is to to be applied.   For those who are keen to find out what they are, the latest cases are Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others [2005] RPC 9, [2004] UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 and Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, [2010] RPC 8.

For a practical example of how patents are interpreted read my article "Construction of Patents - Lizzanno Partitions (UK) Ltd v Interiors Manufacturing Ltd".  If you are new to patents you may like to download my  "Introduction to Patents" presentation that I gave to Liverpool Inventors Club on the 29 April and pages 3 to 8 if my handout.    You can also register for my Introduction to Technology Law seminar at 4-5 Gray's Inn Square on 27 Nov 2013 where we shall discuss patents as well as other ways of protecting investments in R & D such as trade secrets, design rights, plant varieties and so on.

If you want to discuss this article or indeed patents or intellectual property in general, call me on 020 7404 5252 during office hours or fill in my contact form.

Oh and one final tip.   Patents in this country are pronounced with a short "a" as in black. Never as "pay tents".  I have heard BBC announcers and even solicitors use the long "a" but it is a real newbie giveaway.

Related Articles

6 Sep 2014	Jane Lambert So what’s a patent?	IP East Midlands
19 Mar 2014	Jane Lambert What is a Patent? Why might I want one? How do I get one?	IP South East

London Patent Box Workshop

The patent box is a valuable tax concession to encourage innovation introduced by s,19 and Sched 2 to the Finance Act 2012 which came into effect on 1 April 2013.

Our chambers have been running a roadshow on the patent box in conjunction with our colleagues from Atlas Tax Chambers and our good friends from BDO UK LLP and Broudie Jackson Canter. We had already staged workshops in Leeds and Liverpool.  On 12 July 2013 we brought the roadshow to the Liverpool embassy in London.

I gave a brief introduction to patents along the lines of my talk to the Liverpool Inventors Club on 29 April 2013 which you can download here:

The Patent Box: Introduction to Patents from Jane Lambert

I also distributed the following handout:

Introduction to Patents from Jane Lambert

The main speaker was Howard Veares, tax director - Corporate International Tax Services at BDO LLP. You will find his slides here:

The last presentation was by Michael Sandys of Broudie Jackson Canter. He spoke on commercializing intellectual property:

The seminar went so well that we plan to hold another on IP and taxation at the same venue on 13 September 2013 at which the main speaker will be my colleague Anne Fairpo.   We shall advertise that event shortly but as we shall only have 15 places including the chair and speakers you may wish to reserve your place now. You can do so by calling Steve Broom or John Lister on 020 7404 5252 or filling out our contact form.

We are also building up a collection of resources on the patent box here.  If you would like to contribute an article or link we shall be glad to hear from you.

Choosing the Right Kind of IP - Five Top Tips

Jane Lambert

What is Intellectual Property?
As I said in my presentation, "Introduction to Intellectual Property", which you can download here, intellectual property ("IP") is "the collective term for the bundle of laws that protect investment in intellectual assets. ("IA"). In the same presentation I defined intellectual assets as the brands, designs, technology or works of art and literature that give one business a competitive advantage over all others.

Different Ways of protecting IA
Most of those IA can be protected in a variety of ways. For example, you can apply for a patent for a new product or process but you have to the your invention to the world in sufficient detail for anyone with th right skills and experience to make it. That's fine if you get a patent, if t is valid and if you can afford to enforce it but these are three very big ifs,  Alternatively, you can rely on some other IP right such as the the law of confidence, unregistered design right or in some cases confidence.

Patenting does not come cheap.  According to research that had been commissioned by the European Patent Office in 2004 the cost of a typical European patent over 10 years amounted to €32,000. Since a fair proportion  of the patents on the register are never worked, and of those that are worked only a tiny number make serious money for their proprietors, patenting an invention can often be a complete waste of money.

Of course if you really have invented something like Emerson's better mousetrap and the world really is beating a path to your door, then it would be a shame not to have patented the invention.

Five Top Tips
So how do you find the right king of IP protection for your IA? The answer is that it is very difficult but here are some useful tips:

1. When you write your business plan for your business or project, try to identify the income streams for the planning period. Consider the potential threats to those income streams during that period and then think of some possible countermeasures. In most cases, the threats will be commercial rather than legal and most of the countermeasures will be commercial too. If, however, one of those threats is imitation of your product or process by a competitor then maybe you need some kind of legal protection. The appropriate legal protection will depend on the nature of the threat. If your competitor is likely to copy the shape or configuration of your product then maybe some kind of design protection is required. If it is the mechanism of the product that is likely to be imitated then perhaps you need to consider unregistered design right or even patents.
2. An IP right ("IPR") is essentially a title to bring a lawsuit. Except for a handful of infringements that are also criminal offences it is up to the IPR owner to enforce his rights in the civil courts.  Though the cost of IP enforcement has come down considerably with reforms to the Patents County Court litigation is still expensive.  It is important to ensure that you can enforce your IPR which in most cases means taking out specialist IP insurance (see my articles "Intellectual Property Litigation - the Funding Options"  23 April 2013 NIPC Law and "IP Insurance Five Years on" 23 Oct 2010 Inventors Club).
3. You do not have to protect your IA everywhere. If you have no market in Ruritania and nobody is capable of making the product for export there then you do no need patent protection in that state.
4. Make sure that you get the right kind of professional advice for each type of problem. For instance, if you want to apply for a patent you should consult a patent agent (aka patent attorney).  Although it is easier to apply for a registered design or trade mark and many businessmen and women make successful applications without an agent that I would still advise you to seek professional help. Attorneys are specially trained in IP law and practice. Their professions are regulated by the IP Regulation Board. They carry professional indemnity insurance if things go wrong.  If you do not already have a patent or trade mark attorney then we can introduce you to one with whom we have worked well. Alternatively, the Chartered Institute of Patent Attorneys and the Institute of Trade Mark Attorneys have searchable databases on their websites.
5. Before you spend any money on patenting, trade marking or registering a design it is a good idea to devise an IP strategy and perhaps talking to an IP strategist.  IP strategists are a rapidly developing profession in its own right whose practitioners can be members of any of the IP professions (see "What is IP Strategy" 9 Jan 211).

Further Information

If you want to discuss any of these points in greater detail, give me a ring on 020 7404 5252 or fill out my contact form.

Patent Box Seminar 12 July, 12:00 - 14:30

Liverpool Embassy

Jane Lambert

Our Introduction to IP Seminar for the 26 June 2013 is now fully booked.  If you want to go onto our waiting list call George on 020 6670 1550 and he will let you know if a place becomes vacant.

However, we still have room for our seminar on the patent box and R & D credits which will take place at Liverpool in London, Royal Mint Court on 12 July between 12:00 and 14:30. I will present a short introduction to patent law and I shall be followed by Howard Veares of  BDO and Michael Sandys of Broudie Jackson Canter.

This will be a good networking opportunity.  Refreshments will be served - I am not sure that we can lay our hands on any scouse - but they will be good.   In addition to the speakers, Joseph Howard, one of my colleagues from Atlas Tax Chambers and our joint senior clerk, John Lister, will also be there.

Tickets are free but you must book and they are going fast.  If you want to attend please register through http://london-patent-box.eventbrite.co.uk/  We look forward to meeting you.

Earn some CPD Points - Basic IP for Litigators and Commercial Practitioners

Online event registration for Introduction to Intellectual Property powered by Eventbrite

The Enterprise Centre at the Bernie Grant Arts Centre

Jane Lambert


The late Bernie Grant was MP for Tottenham and leader of Haringay London Borough Council. He is commemorated by the Bernie Grant Arts Centre which celebrates the "creativity of a culturally diverse population locally, nationally and internationally" and is "a catalyst for the regeneration of Tottenham." I visited the Centre last Saturday to see Ballet Black perform there. You will find my review of their performance in "Why Ballet Black are special" in Terpsichore 20 May 2013 if you are interested.

The Centre has a comfortable auditorium, the Blooming Scent Cafe run by the remarkable Gina Moffatt and an enterprise centre. According to its website:

"Enterprise Centre at the Bernie Grant Arts Centre The Bernie Grant Enterprise Centre is home to 19 young Creative Entrepreneurs each uniquely providing goods or services to public and private sector organisations, community and business groups and individual consumers. The Centre is made possible by a unique partnership between Bernie Grant Arts Centre management and The Princes Trust. Collectively, the partnership provides a supportive non-interventionist environment, in which entrepreneurial creativity can flourish. Where necessary practical bespoke business support is provided by the Centre’s Partners to assist the Centre’s residents maximise business ideas, opportunities and growth."

These include audio production and recording engineers, a DJ trainer, dressmaker, fashion designers, film and TV programme makers, greeting card producer, an osteopath and a photographer.  

There is a beautiful old cinema in Bradford which has been empty since 2000. It has been acquired recently by the local authority but it is not clear what the council will do with the building.  As Bradford is also culturally diverse, has no shortage of creative people and is in need of regeneration I suggested that it might take a leaf out of Tottenham's book in "What could be done with the Bradford Odeon" 21 May 2013 IP Yorkshire. To date the reaction has been "Who's going to pay for it?"