A cautionary tale
I have, this week (and by no means for the first time), had to explain to a client why their granted UK patent cannot be used against a competitor that has launched a very similar product to theirs, and put a nasty dent in their sales. Why? Because the patent claims are too narrow (and in my view, unnecessarily so). It turns out they used an IP advisor that is not a qualified patent attorney to help them get their patent. And this has prompted me to highlight a few key things to consider when appointing an IP advisor and finding the right IP advice for your business.
UK Intellectual Property Office guidance
The UK Intellectual Property Office website gives clear advice:
“Only regulated representatives are allowed to call themselves a patent attorney, patent agent, registered trade mark attorney or registered trade mark agent. This means anyone who uses these titles must be legally qualified. They can provide all the specialist services necessary to get the best out of your IP. It is possible to handle your IP without any legal representative. However, you would be exposed to many potential pitfalls and complicated difficulties. IP law is complex and requires considerable knowledge and skill to negotiate well. Where your valuable business assets are at stake it is not worth taking such risks.”
Advisors that are not qualified (i.e. not registered and/or Chartered) patent or trade mark attorneys are not regulated representatives. And, again, I refer to the UK Intellectual Property Office guidance, which states:
“Using a regulated representative therefore means there are safeguards in place. It is possible to use an unregulated representative or advisor, but you will not have these safeguards.”
Finding the right IP advisor
Now, I am by no means suggesting that I am the best advisor for your business. For example, there are fields of science that may as well be black magic for all my competency in them. Pharmaceuticals and biochemistry are good examples of this: they are not only specialist scientific fields that I have very little knowledge of, but they also carry with them very specialist legal knowledge around how a patent specification and claims should be drafted. That area of science and the law would be way beyond my paygrade – I am an engineer by background, and I stick to what I know. Also, I am not a qualified trade mark attorney, and as a regulated representative (i.e. a Chartered patent attorney), I have an obligation to either use a Chartered trade mark attorney for my clients’ trade mark work or signpost clients to such a regulated representative. This is not just a natural inclination born out of my professional integrity, but as a Chartered Patent Attorney, I have a mandatory duty not to dabble in things that I am neither qualified nor competent in.
Balancing legal requirements with commercial needs
Going back to this poor client, when I reviewed the file, I formed the opinion that the emphasis seemed to be on getting the patent application through to grant in the quickest/easiest way (which is, of course, one important task), without balancing that with the commercial needs of the client’s business and the ultimate value of the patent claims. Qualified patent attorneys have spent many years learning how to balance these two key aspects of the patent process. Whilst we have (yet another) duty to act with integrity before the IP Office, we are also trained to try and second-guess what potential competitors might do to “get around” a patent claim, drafting the patent specification and claims in a way that tries to capture these “design-arounds” to the greatest possible extent, and then balancing that against the legal requirements for getting a patent. And, albeit in a very different legal arena, the same goes for qualified Chartered trade mark attorneys.
Working in our clients’ best interests
In other words, getting patent applications (or trade mark applications) through the legal process is our job, but our principal duty lies with the client’s best interests and achieving the best possible commercial outcome for their business, and that obligation is not just to the client, but our governing bodies and our profession as a whole. Failure to do so can, in the worst case, result in us no longer being allowed to practice.
That reassurance and security admittedly comes at a price, but it can cost £thousands to develop a product and although I appreciate that funds and cashflow can be an issue, especially when a business is in its early stages, using a non-qualified advisor to help you to secure your IP protection simply because they are cheaper can be a false economy, and could cost you dearly further down the line. The UK IP Office itself makes this very clear.
As I said at the beginning, I am by no means suggesting that Strachan IP is the right IP company for you and your business. But if you consult with us, we will tell you if we’re not, and why, and signpost you to someone who is trusted and qualified to help you. And not just because it is our duty, but it would be our pleasure.
Need Help?
If you have any questions about IP or are looking for the right IP advisor for you, please contact us for a free initial consultation by emailing vicki.strachan@strachanip.co.uk or visiting our website at https://strachanip.co.uk/contact/. Alternatively you can use this link to schedule a mutually convenient time to speak: https://calendly.com/strachan-ip-a-fresh-view-of-intellectual-property/30min
