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| Market Day 1910 Author Sydney Curnow Vosper Licence Public Domain Source Wikimedia |
As this year's Wales Enterprise Day coincided with the WIPO's Global Celebration of IP Examiners, M-SParc (the Menai Science Park) decided to celebrate both days with a lunchtime seminar on working with the United Kingdom Intellectual Property Office ("IPO") and the World Intellectual Property Office ("WIPO"). The seminar was chaired by Nia Roberts and organized by Gwenllian Owen. I was one of the speakers. The others were Joe Foote, Sean Thomas and Robin Rhys Jones.
Joe is a partner of HarriFoote IP. He spoke to us about trade marks. He is also a New Zealander and he explained to a predominantly Welsh audience what is meant by word, figurative and text and figurative marks by reference to the registrations held by his nation's rugby team, the "All Blacks". He discussed the trade mark application process from taking a client's instructions, searching for prior registrations and prior rights, drafting a specification and lodging it with the Registry. He outlined some of the possible obstacles, such as objections from examiners under s.3 of the Trade Marks Act 1994 or oppositions by third parties under s.5. Lastly, he explained how he uses the Madrid Protocol to apply for registrations outside the UK. The Madrid Protocol is one of the treaties administered by WIPO.
Sean spoke next about patents. He explained their advantages over other intellectual property rights. He discussed the conditions for the grant of a patent and outlined the application procedure from taking a client's instructions to receiving the certificate of grant. He warned of possible objections to the application from examiners and third parties before grant and revocation proceedings afterwards. Finally, he discussed applications for patents in other countries through the Patent Cooperation Treaty, which is another international agreement administered by the WIPO.
Until recently, Robin Rhys Jones had worked for the IPO as a patent examiner. He mentioned the educational qualifications to become a patent attorney and various highlights from his career as an examiner. He explained how an examiner would analyse an application to understand the invention and described the reporting and searching processes if he believed the invention to be patentable. He delivered a large portion of his contribution in Welsh. After his talk, I asked him whether he had any tips for patent applicants or their agents. He replied that they should avoid filing specifications with a multiplicity of overlapping and unnecessary claims.
I told the audience that as a barrister, I do not prosecute patent, trade mark or registered design applications. I advise patent and trade mark attorneys on difficult points of law, draft complex legal instruments and appear as an advocate in proceedings before hearing officers appointed by the Comptroller-General of Patents, Designs and Trade Marks who is known as "the Comptroller" in patent and unregistered design cases and "the Registrar" in trade mark and registered design cases.
I said that hearing officers hear disputes between examiners and applicants for patents or trade marks known as "ex parte" proceedings and also disputes between businesses and individuals, known as "inter partes" disputes. Some inter partes disputes arise before grant, such as "entitlement disputes" in patents or oppositions in trade marks. Others take place after grant, such as applications for the revocation and declarations of non-infringement for patents, applications for declarations of invalidity and revocation of trade marks, cancellation of design registrations and settlement of the terms of unregistered designs. I pointed out that costs in proceedings before hearing officers are on a fixed scale and much cheaper than litigation in the civil courts.
I also mentioned two other important dispute resolution services that are provided by the IPO. Examiners offer non-binding opinions on whether a patent is valid ot whether it has been infringed for just £200, which is a fraction of the costs of opinions from patent counsel or senior solicitors or patent attorneys on such matters. Examiners usually have the advantage of representations and evidence from both sides, which a lawyer may not. The other useful dispute resolution service offered by the IPO is online or in-person mediation at its offices in Newport or elsewhere by agreement. The service is provided by CEDR trained patent attorneys at a fraction of the cost of many competing services.
I pointed out that the WIPO provides an even wider range of IP dispute resolution services. In addition to mediation, it offers arbitration, expedited arbitration and expert determination on modest fixed fees. It is also the leading domain name dispute resolution service provider for most generic and many country code domain name disputes, including those in the ".cymru" and ".wales" domains (see Jane Lambert Welsh Top Level Domain Names, 12 April 2019). I should add that I am on WIPO's panel of neutrals, which includes arbitrators and mediators as well as domain name dispute resolution panellists.
The discussion on dispute resolution prompted Nia to remark that entrepreneurs often shy away from seeking or enforcing legal protection for their brands, designs, technology or creativity because they believe that the cost of IP advice is prohibitive. She pointed to the information on the IPO website. Emma Richards, who had been in the online audience, suggested the IPO's training courses. Other useful websites include the WIPO, the European Patent Office, Google Patent, the British Library's and many other sites, including this one. I suggested that the links should be consolidated on an M-SParc or other portal.
M-SParc is an important resource in its own right, and its next event that I will attend is Den Y Dreigiau pitching event in conjunction with Global Welsh on 27 Nov 2025 at 18:00. The catering will be provided by the leading chef, Gita Mitry, winner of BBC TV's Eating with the Enemy. guest chex Aux Armes de France and many other great eateries, food blogger and commentator. Yesterday I learned about the meat from a new breed of sheep that has been introduced to the United Kingdom on Anglesey. I also met the manager of the restaurant who will host the event. This promises to be a very popular event.
Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.
