Misleading invoices - a small win for the UK Intellectual Property Office

The UK Intellectual Property Office was pleased to announce this week, "IP scammers face record financial liability".

Those involved in the business of maintaining intellectual property rights will be familiar with the unsolicited letters that are sent to proprietors with exorbitant fees for maintaining these rights, or for putting these rights into a "directory". Furthermore, many of these requests look like they come from official Intellectual Property Offices, at least to many IP owners who are not familiar with dealing with Intellectual Property Offices on a regular basis.

Various Offices around the world have made it an important task to educate their customers about these organisations, for example, see the warnings from the UK, OHIM, the USA, Norway and New Zealand, and also some examples of the actual letters from WIPO.

The judgement handed down by the Intellectual Property Enterprise Court (and found here) orders the defendant, Intellectual Property Agency Limited and its sole director, Harri Mattias Jonasson, to pay £500,000. This is maximum this court can impose.

Bearing in mind the defendants made a profit of over £1.1 million, this is really only a small win for the Intellectual Property Office, and probably an even smaller one for those that have been duped into paying such inflated fees.

There is a lack of sympathy in some quarters for IP owners who go ahead and pay "silly" money. This is a little unfair in my view. These legal steps, added to continued awareness by Intellectual Property Offices and IP professionals alike, will hopefully go some way to making these businesses less lucrative.

However, it's flabbergasting that a firm can make such significant profits on the basis of UK rights alone, and I dread to think how much money this "industry" makes worldwide.

My own firm is very reasonably priced when it comes to UK and worldwide renewals. Perhaps we are missing trick (I say in jest). Those that have been duped, or could be in the future, will be pleased to know there are many firms out there who will provide a service tantamount to its value and who can also act as a barrier to the scammers.

Trademark Annuities...

In case the title of this blog left you with a quizzical look, no, the title is correct. Those of you that work across intellectual property rights (e.g. in both patents and trademarks) will be familiar with the payment of patent annuities.

However, there's a select group of jurisdictions where annual fees are payable to maintain trademark registrations.

Annual fees make the Cayman Islands one of the most expensive jurisdictions in which to maintain trademark registrations (although recent hikes in the official fees in the UAE and Venezuela means it's not the only place where maintaining a trademark registration can cost a fortune).

The Cayman Islands Registry used to allow representatives from anywhere to attend to matters before them. This changed in 2012 so that a local representative was required. I've previously worked with the local Registry but this change prevented me from doing so directly and therefore being able to maintain trademarks most cost-effectively for clients. Local agents in the Cayman Islands tend to be expensive reflecting the high cost of living there. It is worth considering paying all the annual fees (up to a registration's renewal date) in bulk to reduce the level of professional fees.

It's also worth being 'tactical' and avoiding registering trademarks in December. Annual fees fall due on 1 January each year so if you register in December you'll find yourself with an immediate payment to be made to keep the registration you have only just got in force.

The Cayman Islands are now looking to introduce a fresh trademark law (that removes its dependency on UK or Community registrations). It will be interesting to see how they set their official fees. Annual fees may be abolished but they will need to bring in examiners to handle applications filed under a new substantive trademark law so an increase in initial filing fees and, possibly, renewal fees could be anticipated.

Like the Cayman Islands, the Turks and Caicos Islands are a British Overseas Territory. They also share a need for annual fees to be paid to maintain trademark registrations. With a population roughly half that of the Cayman Islands and an economy that is not as developed, the number of trademarks registered in the Turks and Caicos Islands is a lot less.

Remaining firmly in the Western Hemisphere, Honduras is another country where annual fees are due. Again, I think it's worthwhile considering paying them in bulk up to a registration's renewal date as it can make the management of the registration easier.

Don't confuse these annual fees for Honduras with rehabilitation taxes. These taxes, which are unique to Honduras, are an optional payment. When paid they will protect a registration from being cancelled for non-use. Therefore, you only need to pay them if you're not using a trademark.

Rehabilitation taxes can easily be forgotten about and this is understandable when they are optional and not a mandatory maintenance requirement. They can be paid retrospectively. Therefore, if you have a registration that is vulnerable to cancellation on the grounds of non-use but you wish to file an opposition based on this registration, you would just need to back-pay any rehabilitation taxes prior to filing an opposition to help avoid a counter cancellation action on the grounds of non-use.

So annual maintenance payments to maintain trademark registrations may not be common, but if you help manage trademark renewals or maintenance then be aware that they can crop up from time-to-time. Even if you don't have patents under your responsibilities, you may also come across annual fees/annuities when maintaining design registrations (particularly in countries where the design law is a subset of the patent law) or domain names.

Caribbean IP

Back in September I began a regular feature reviewing Intellectual Property in the Caribbean region.

This journey of island hopping, which also took me to Central America and the top of South America, has now ended.

The full list of the jurisdictions and their reviews is now provided:

Anguilla

Antigua and Barbuda

Aruba

Bahamas

Barbados

Belize

Bermuda

Bonaire, Sint Eustatius and Saba

British Virgin Islands

Cayman Islands

Cuba

Curaçao

Dominica

Dominican Republic

Grenada

Guyana

Haiti

Jamaica

Montserrat

Puerto Rico

St Kitts and Nevis

St Lucia

St Vincent and the Grenadines

Sint Maarten

Suriname

Trinidad and Tobago

Turks and Caicos Islands

US Virgin Islands

Furthermore, Guadeloupe, Martinique, St Martin and French Guiana are covered by French and Community Trade Marks (including International designations) whereas St Barthélemy is covered by French national registrations and International Registrations designating France only.

This is a region that for many years was stagnant on the IP front but there are now changes happening with many of the jurisdictions introducing new legislation over the last decade. With the dissolution of the Netherlands Antilles in 2010 there was also the creation of three new trade mark jurisdictions: Bonaire, Sint Eustatius and Saba (also known as the Caribbean Netherlands or the BES Islands), Curaçao and Sint Maarten.

Things will continue to change with the Bahamas and the British Virgin Islands - both using the very archaic former British classification system for trade marks - expected to introduce new trade mark legislation in the next couple of years.

I did not cover St Helena in my series. This is located in the middle of the Atlantic Ocean but is sometimes erroneously included with the other Saints (Kitts, Lucia, Vincent) and assumed to be in the Caribbean. Given its remoteness it is a very low volume trade mark jurisdiction but if you need any support here then do not hesitate to reach out to me.

I hope this series has been of interest and welcome comments, suggestions or questions.

Caribbean IP Part 24: Suriname

ISO 3166 country code: SR.

Suriname, or Surinam, is the smallest independent nation in South America but with a Dutch-colonial history it is often categorised with the Caribbean (see also neighbouring English-speaking Guyana). It is an ethnically diverse nation yet Dutch remains the official language, although there are dialectal differences from the Dutch dialects spoken in Europe.

Suriname is a member of the Berne Convention, Hague Agreement, Nice Agreement, Paris Convention, Strasbourg Agreement and WIPO Convention. Most of these memberships were continuations of the Netherlands' memberships following Suriname's independence in 1975.

Notably, this includes the Hague Agreement for the International Registration of Industrial Designs. However, this membership only extends to the Hague Act and not the Geneva Act. Applicants from Geneva Act only members will not be able to use the Hague System for protecting designs in Suriname. This would include an EU applicant who can rely only on the EU's Geneva Act membership e.g. the likes of British, Danish, Finnish, Irish, Spanish and Swedish applicants.

It is not apparent that independent industrial design registration is available for Suriname. For trade marks, Suriname does not have membership of the Madrid Protocol but national applications can be filed locally. There are backlogs with applications but it isn't a complete black hole and applications do eventually mature to registration.

Service marks are not yet registrable - the trade mark legislation dates from colonial times - and patent protection is unavailable in Suriname. Little mention appears to being made to updating legislation in relation to intellectual property which leaves an impression that Suriname has little interest in intellectual property rights.

Caribbean IP Part 18: Montserrat

ISO 3166 country code: MS.

I have seen Montserrat by boat and I'm not a fan of boats. However, Montserrat holds a place in my heart as I'm a bit of a geography anorak and it's one of the smallest trade mark jurisdictions (by population) in the world. Roughly 5,000 people live on the island.

This was not the case prior to 1995 when it sat above Tuvalu in the population tables and roughly alongside Anguilla. That year the eruption of the Soufrière Hills volcano led to 8,000 people evacuating the island. Over half of the island is now an exclusion zone and most the evacuees have not returned. The destroyed capital, Plymouth, is within this exclusion zone.

Given all this it can be surprising to note that Montserrat operates an efficient trade mark system from the Supreme Court Registry in the de facto capital of Brades. There is a dual filing regime in place. A substantive application could be filed previously using the old fashioned former British classification system (see The Bahamas), but an amendment of the Trade Marks Rules in October has changed this to the International Classification. Alternatively, a UK registration can be extended to Montserrat. Naturally, this will use the Nice Classification. The UK route was the only way to register service marks but the new Trade Marks Rules have now made these available for local (substantive) applications too.

It is also possible for Community Trade Marks and International Registrations (designating the UK or European Community) to be extended in the same way; the local Trade Marks Act was revised on 1 January 2002 to state:

"United Kingdom trade mark means any trade mark registered under the United Kingdom Trade Marks Act and any trade mark which, by virtue of any law in force in the United Kingdom is deemed to be a trade mark registered in the United Kingdom or which could, though not in fact registered in the United Kingdom, be given effect to in the United Kingdom."

When it comes to designs, I understand that UK designs provide automatic protection in Montserrat. However, I cannot locate the United Kingdom Designs (Protection) Act No. 181 of 1887 legislation on-line but I would anticipate it has not been amended to mean Registered Community Designs also have effect in Montserrat.

Patents are by extension of granted UK rights and must be on file within three years of grant in the UK.

Montserrat's IP Office lacks a web presence. Perhaps this will be developed in the future; the island is heavily subsidised by the UK (it being a British overseas territory) and some of this may be invested in a website. However, the local Government may have more pressing priorities - perhaps including improving the fortunes of the island's football team!

Caribbean IP Part 15: Guyana

ISO 3166 country code: GY.

Guyana is located on the South American continent but is widely considered a part of the Anglophone Caribbean and sometimes referred to as 'Mainland Caribbean'. As a part of the West Indies it has a unique love of cricket in South America (although Argentina has long played the game too) and is a part of the CONCACAF (Central America and Caribbean) football federation. The Guyanese capital, Georgetown, is also the seat of the Secretariat of CARICOM, the Caribbean Community.

The Co-operative Republic of Guyana is a member of the Berne Convention, Paris Convention and WIPO Convention.

The Deeds Registry looks after the administration of patents, trade marks and designs. Their website contains only basic information.

The Trade Mark Register is split into three parts: Part A, Part B and Part C. Part A and Part B are typical in much Commonwealth trade mark legislation; for example, they were parts of the UK Trade Marks Act 1938. For those of you in the US, they have similarities with the Principal and Supplemental Registers.

Part C of the Register is for marks based on UK registrations. This part of the Register is the only way multi-class applications and service marks can be registered in Guyana at the minute. Community Trade Marks cannot be used to form this basis and neither can International Registrations even if they designate the United Kingdom.

Designs are available locally in addition to UK designs automatically covering Guyana although there is a defence for infringers if they could not know of the design in Guyana which suggests if there is no use or disclosure in Guyana after registration (e.g. in the UK only), a registered design owner would be prevented from taking action. A Registered Community Design would not provide the same protection.

Patents are available locally although it is also possible to base an application on a UK patent provided it is filed within three years of grant.

The Deeds Registry suffers from delays in the processing of applications. Having a UK IP registration in place can greatly speed up the processes, although at least there are independent routes to protection available when you do not have - or it is undesirable to seek to obtain - a UK registration.

Madrid Protocol membership seems some way off, although it could form a part of future updating of local IP laws.

Caribbean IP Part 14: Grenada

ISO 3166 country code: GD.

Grenada is a member of the Berne Convention, Paris Convention, Patent Cooperation Treaty and the WIPO Convention.

As previously reported on this blog, Grenada introduced new trade mark legislation on 1 August 2012. The new law replaced a need to have a UK registration before being able to register in Grenada. The law and regulations are not on the internet (WIPO Lex is yet to be updated in this respect) but having seen these I can confirm they are modern and like you would expect in 2012. The prescribed forms are highly similar to those in use in Trinidad and Tobago, to the south of Grenada. However, I would anticipate Grenadian examination being less strict than in Trinidad and Tobago.

The new trade mark law does not extend to joining the Madrid Protocol. At least with the UK dependency dispensed with it makes it easier for many brand owners to register in Grenada.

On the patents side, UK and EP(UK) registrations can be extended to Grenada (in addition to substantive or PCT applications). For designs, the United Kingdom Designs Protection Act (Cap. 331) allows United Kingdom design registration to cover Grenada automatically, and there is no provision for local registration. Such automatic protection is not accorded to Registered Community Designs.

In conclusion, Grenada, the Spice Island, has made welcome steps to modernise its trade mark system.

Caribbean IP Part 10: Cuba

ISO 3166 country code: CU.

The Republic of Cuba is the largest and most populous of all the island nations of the Caribbean. It comprises nearly the whole of the island of Cuba except the Guantanamo Bay Naval Base which is perpetually leased to the United States despite the lack of diplomatic recognition bestowed to Cuba by the US Government.

A single-party communist state that can find itself somewhat isolated, it could be considered surprising that Cuba involves itself in international IP circles being a member of a number of treaties including the Berne Convention, Madrid Agreement and Protocol, Nairobi Treaty, Paris Convention, Patent Cooperation Treaty, and the Lisbon, Locarno and Nice Agreements.

The Cuban Industrial Property Office administers registered IP rights in the country. Their website is only available in Spanish. However, Cuba was one of the first members of the Madrid Protocol in 1996, some time before Spanish was added as an official language in April 2004.

Unfortunately, my Spanish is limited but it is clear the site contains information on the three main IP rights (patents, designs, trade marks). Typical for a communist nation, representatives must be registered with the Office and in Cuba there is a choice of just five firms. To be fair this is an improvement if we go back to the 1980s and compare to former Communist states such as the Soviet Union and the German Democratic Republic where foreigners had a choice of just one and two Government-approved IP agencies respectively.

Cuba allows the registration of trade marks and designs through a national route. For trade marks, as stated above, International applications through both the Madrid Agreement and Protocol are possible. For the Protocol, Cuba has made a declaration under Rule 34(3)(a) that it wishes to receive Individual fees in two parts (you may well be more familiar with this requirement with respect to designations of Japan).

Cuba seems an enthusiastic member of the 'international IP community' and it also provides IP support and guidance to local businesses. Despite this, International applications originating from Cuba total just 37 in the last 8 years. This may be unsurprising given the economic situation in Cuba. The country also has work to do on improving the efficiency and operations of its IP Office with delays being a regular occurrence. These are often not helped by unresponsive agents but as Cuba (very) slowly opens up more to the West, we can hope for improvements.

Caribbean IP Part 9: Cayman Islands

ISO 3166 country code: KY.

I have previously blogged on developments in the Cayman Islands so will avoid repeating the same here.

Quite simply, registering patents and trade marks in the Cayman Islands requires a UK registration to be extended. In the case of trade marks, Community and International Registrations (designating the UK) are also acceptable bases to an application.

It would be preferable to many brand owners to have a more substantive law in the Cayman Islands. The proposed law in the British Virgin Islands would also fit the requirements of the Cayman Islands better; there being a lot of similarities between the high income, financial services and tourism charged island groups. However, with a recent change to the procedures in obtaining IP rights in the Cayman Islands, it is difficult to see that there will be additional amendments (improvements) in the immediate future.

Caribbean IP Part 8: British Virgin Islands

ISO 3166 country code: VG.

The Virgin Islands as they are officially known are usually referred to as the British Virgin Islands ("BVI") to distinguish them from the neighbouring US Virgin Islands. You may even have heard of the Spanish Virgin Islands, which far from belonging to Spain form a part of Puerto Rico, and/or the Danish Virgin Islands (more properly, the Danish West Indies). Denmark sold the latter to the United States in 1916 whence they became the US Virgin Islands.

The British part of the (unofficial) name also correctly alludes to the fact that the islands are a British overseas territory. With the naming issues hopefully addressed, we can now look at IP on the islands.

As a non-sovereign nation it is unable to sign up to International organisations and treaties; that remains the responsibility of the United Kingdom.

The Registry of Corporate Affairs, a part of the British Virgin Islands Financial Services Commission, oversees the administration of IP rights. Unfortunately, there is a real lack of any IP information on their website.

Substantive (independent) trade mark applications are possible. These must be filed using the former British classification system, which you may recall is still used by The Bahamas. It is also possible to register (extend) trade marks based on UK registrations. These will replicate a UK registration's particulars including the specification and classification. Currently, the UK extension route is the only one available in which to register service marks.

The local Government are planning on introducing new trade mark legislation. You will see that this is a modern law meeting international standards (e.g. provisions for well-known marks, priority, multi-class applications, etc.). It does not contain any provision for the Madrid Protocol. The BVI Government are not in a position to accede to the Madrid Protocol, but the United Kingdom could do so on their behalf if they were specifically requested to do so by the BVI Government. I feel this is a disappointing oversight bearing in mind I believe the BVI Registrar has been a member of INTA and should be aware of international agreements in relation to trade marks.

When it comes to designs I believe UK registrations cover the BVI automatically, although if the jurisdiction is of importance it is recommended to have a local 'confirmatory' Cautionary Notice published too. However, Registered Community Designs should not provide protection. UK patents can be extended to the BVI but this must be done within three years of the UK date of issue (this includes European patents valid in the UK).

A new trade mark law will greatly simplify this area and make it easier for North American applicants, in particular, to register their trade marks. Despite being a British overseas territory the BVI's geographical proximity to the likes of the US is obvious. The islands also use the US dollar as their currency.

Caribbean IP Part 1: Anguilla

ISO 3166 country code: AI.

Anguilla is a British overseas territory. With a population of approximately 13,600 it's certainly one of the tinier trade mark jurisdictions in the world.

As a non-sovereign nation it is unable to sign up to International organisations and treaties; that remains the responsibility of the United Kingdom. Despite this, priority is available following amendments to local legislation and protection is accorded to famous marks.

The Registrar of Commercial Activities appears to be responsible for intellectual property on the island. They have a website dedicated to company incorporation; Anguilla being a popular tax haven. This allows for state-of-the-art electronic incorporation of Anguillian companies. Interestingly, this was developed in partnership with Companies House in the UK and the UK Government. This shows a willingness for Anguilla to cooperate although we can maybe conclude that the development of systems relating to IP may not have the same priority level.

Anguilla introduced design legislation in 2002 which provides for independent registration and, contrary to the UK IPO's page, UK registered designs no longer have effect. As for patents, UK and EP (UK) registrations can be extended although independent registration is now also available.

Trade mark registration does not take too long to obtain in Anguilla. In fact, it is particularly rapid if based on a UK registration; Anguilla having a dual system whereby applications can be purely local (substantive applications) or based on a UK registration. The 'based-on' option is also available for Community and International Trade Marks which is useful for global brand owners who prefer not to register in the UK individually.

With little prospect of Madrid Protocol accession, Anguilla should be praised for its efficient trade mark operations, which reflect international aspects as much as it can, to make it straightforward for foreigners yet, through it's substantive applications, remains accessible to locals from the region.

Caribbean IP

I'll now start a regular feature on intellectual property in the Caribbean. I'll use the definition of the Caribbean provided by Wikipedia and supplement it with Belize, Guyana and Suriname. As these three countries are not officially Spanish-speaking they are more often associated with the Caribbean than they are with Central America or South America.

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It is easy to think of the Caribbean as paradise holiday islands in the sun, which can be true, but it is a diverse region containing high income territories such as the Cayman Islands and the British Virgin Islands to Haiti, often considered the "poorest country in the Western Hemisphere", and communist Cuba.

This is a region where lots of IP legislation has been modelled on that of the United Kingdom, and many British firms have good contacts in this part of the world. 12 of the independent Caribbean jurisdictions have a British colonial past, and five remain British overseas territories. However, do not rely solely on the UK Intellectual Property Office's advice contained on their website. I have found that this contains errors, particularly with respect to designs. I brought these to their attention when I wrote that blog post but it seems as though they are not in a rush to amend these pages.

The Caribbean contains three independent nations that can also be put into a Latin America bracket: Cuba, the Dominican Republic and Haiti.

I will not include the French overseas departments of Guadeloupe and Martinique or the overseas collectivities of St Barthélemy and St Martin as these (except St Barthélemy) are covered by French and Community Trade Marks (including International designations). Inhabited Caribbean islands belonging to Colombia, Honduras, Mexico, Nicaragua and Venezuela will also be excluded.

This will leave two insular areas of the United States: Puerto Rico and the US Virgin Islands, and finally the Dutch Verwantschapslanden (kindred countries): Aruba, Bonaire, Sint Eustatius and Saba, Curaçao and Sint Maarten.

To avoid any bias which I could have - and I have been lucky enough to visit three of the region's beautiful islands - I will approach this in alphabetical order:

• Anguilla
• Antigua and Barbuda
• Aruba
• Bahamas
• Barbados
• Belize
• Bonaire, Sint Eustatius and Saba
• British Virgin Islands
• Cayman Islands
• Cuba
• Curaçao
• Dominica
• Dominican Republic
• Grenada
• Guyana
• Haiti
• Jamaica
• Montserrat
• Puerto Rico
• St Kitts and Nevis
• St Lucia
• St Vincent and the Grenadines
• Sint Maarten
• Suriname
• Trinidad and Tobago
• Turks and Caicos Islands
• US Virgin Islands

Bermuda is omitted here as it is not a Caribbean country; it is actually located closer to Canada. However, it is an associated member of the economic group the Caribbean Community (CARICOM). Furthermore, Britain's second oldest remaining colony (after Bemuda), St Helena is often wrongly assumed to be with the other "Saint" islands in the Caribbean. It is very remote being located in the South Atlantic Ocean; Africa is the usual continent it is assigned to.

Nevertheless, if there is time I will also take a look at Bermuda and St Helena. In the meantime, stay tuned for 'Episode 1: Anguilla' next week.

As my practice concentrates on trade marks and designs I will focus on these IP rights in the main, but being able to handle extension of UK patent rights where this is a purely administrative task, I may touch on these too.

IP databases

I sometimes see requests for recommendations on IP software asking, "what is the best IP software available?"

There are no right and wrong answers to this and it depends on your unique circumstances.

Here are a number of considerations you may consider key. This is meant to be direct and concise. It's not meant to be rude - I am fairly stereotypically English!

Your budget

It goes without saying that this is critical. I doubt you have an unlimited budget so set it down. Be realistic, a database should be an important part of your operations and this is not a short term decision you are making. If you want an all singing and dancing database - and by this I do not just mean one which is aesthetically pleasing - you will have to pay for it. Databases are not created by a geeky teenager who couldn't sleep one night. They have taken a long time to develop and continually improve.

If you're a solo practitioner your database needs could be more minimal, but note that you can often pay a license fee per person so if you recruit someone (who needs database access) then you could have immediately doubled your database costs.

Your portfolio size

Know your portfolio size and understand your predicted growth. Some databases will be ideal for smaller portfolios, but check out performance if a portfolio reaches a certain size. Some databases charge as the number of records increase. You might think that's fair enough as if your records are growing then you are generating more work and income, but be wary of the additional overhead you could be creating. Take into account what is regarded as a "record". For example, it may also include name and address records. If you have, say, 100+ client and agent contacts around the world you are already on the way to eating into your basic allocation.

Document management features

Is this important to you? Are you looking to go paperless? If you are, take into account the business operations surrounding this. Is your post room going to be scanning in correspondence? Are you already doing enough work through e-filing and e-mail? Now is an ideal time to think around your business processes and even if you are not proposing to change them to be open to change. Try to think of how you will work before you test out such a feature of a database.

Or have you already gone paperless? Can the new database interact with your existing document management software or will the documents need to move across? Can a separate document management regime exist smoothly alongside the database? Think about avoiding duplication.

Other integration features

Are they important or can they be performed separately? Do you need integrated accounting? For dedicated IP boutiques this could be important, but for law firms with multiple practice areas they may want to use their firm wide accounting software. Are there ways the IP software can "talk" with your other accounting software which could be important for law firms or in-house teams for producing financial reports and avoiding duplication of input.

If you're in-house do you wish to manage licensees and royalties through the IP database? The communication and accessibility of your database with other internal departments, agents and/or clients could be important. Do they need access rights, input rights and/or the ability to upload documents?

Look at B2B concepts that have been developed or that are in development. These could significantly streamline your dealings with your local IPO or OHIM in the future.

Your own in-house capabilities

Determine if you will be hosting the database yourself or externally and evaluate what IT support you have in-house. Upgrades and patches or fixes may need to be installed so establish how much expertise is needed for them and how autonomous you can be or do you need the database supplier to be more hands-on.

Importantly, get someone from your team who is regularly handling docketing and record keeping on board this project from the start. They understand exactly what the current database does and what a new one needs to do. It will also empower them. Database evaluations and decisions are sometimes driven by the partners in a law firm. Generally speaking, I find this perplexing. Fair enough, perhaps they have the record keeping knowledge, but if you're finding yourself constantly logging in to your current database when you need to use it because your previous session has timed out then, with respect, you need to get other people on board to help make the right choice.

IP types

Some databases are more geared towards patents, others towards trade marks. Determine your percentage of work. For example, if you are 90% a patent practice and only 10% trade marks, you may evaluate that a basic trade mark system is OK as long as the patent part of the system is sophisticated.

Consider other IP types. If you file a particular large number of registered deign applications check out the robustness of this side of a system. The Netherlands, for example, is a niche for plant variety applications yet this might not be an IP type available on all databases. 

Big organisations with separate patent and trade mark departments may even explore having separate databases, but consider any synergies and cost sharing that could be lost with this approach.

Language capabilities

Ascertain the language capabilities you need and can be provided. If you have a corporate language you will likely want this to be the default language of the system. If a database is demonstrated to you in English but you will want it in French ask to see the French version and make sure it's up to scratch.

See if records can be kept in more than one language. For example, you're a German law firm and for trade mark records you may wish to maintain the specifications of goods in English for American clients but also in German for communication with the local Trade Marks Office.

Customisation

How much customisation is possible and how much will it cost? Is this important to you? Consider that making a database more unique to your organisation means you may make it less compatible with improvements driven by its general users. It could also leave you alone in your dealings with the software company rather than being part of a collective push for improvements and amendments.

Migrating your current data

This is critical. Can your data be moved across effortlessly or is it going to require any form of manual input? Subject to you providing a suitable file, can the software company do the migration for you? What liability will the software company accept should any data be incorrectly migrated? Or, in other words, how much double-checking is needed from your side?

Training support

Ascertain what training is provided not just at the outset but ongoing too. And find out how this happens - do they come to you, you go to them (and if so where) or is it web based? How easy is it get hold of their helpdesk, particularly during your business hours? If you will have users in other parts of the world consider the accessibility for all users. You don't want your Chinese office twiddling their thumbs all morning because the system is down and they're waiting for 9.00am European time before they can speak to someone.

Networking opportunities

Does the software company organise seminars and networking events with other users? Understand how often these take place and how structured or informal they are. Check their relevance - all day seminars where 80% of the talk is regarding patents might give little value if you're only using the trade mark modules. Do users also meet independently and will benchmarking opportunities exist?

Reputation and references

Research a database's reputation. Talk to peers and get their input. Seek references particularly from users you know have similar case loads and operations to you.

Personal touch

See how intuitive a database is to use. The more sophisticated the database, the more complicated they can be to use, but this can be balanced by your own internal expertise. Get a feel for the software company you are dealing with. If they are hard sell and you don't like this then explore other options, but equally don't be fooled by niceness. Straight talking is useful but make sure they have listened to you and understood your needs. You wouldn't try to sell tight trousers to an elephant so don't stand for someone with this mindset.

In short, the best IP database out there will have the right service and features at the right price for your organisation. There are numerous IP databases our there, possibly more than you think. Computer savvy patent attorneys are also known to develop their own databases and license them out to clients (although they do not tend to actively advertise these). This blog has looked at regular IP database situations and has not even touched on developing your own database in-house or in having a preferred law firm or outsourcing company manage a database and docketing on your behalf. I hope it has been a useful discussion.

As usual, I welcome any comments or queries.

Equality and Diversity in IP

In January, the IPO in the United Kingdom issued its Equality and Diversity report. I am as white and as middle class as could be but as I find myself as a minority in other respects this may explain why I find this subject particularly interesting (notwithstanding that we should all have a commitment towards it).

The IPO here has a staff of 903, comparable to roughly 1000 at OHIM, nothing compared to the thousands employed at the EPO, but 10 times that of the IP Office of Kosovo which has just 9 employees (and 3 of them are part-time!). 

The UK is a diverse country. The years following the Second World War saw an influx of people from the likes of India, Pakistan and the Caribbean and our membership of the European Union has seen many other Europeans enjoy the freedom of movement to reside here. There are also well established Chinese communities.

Ethnicity at the IPO reflects Newport's demographic profile. When it comes to religion, the response rate is too low in number to be truly representative, and this does not match the picture of Newport as a whole. Saying this, scientists are known to be less God-fearing than others so could we come to a fair conclusion that most Patent Examiners are atheists?

A response rate of only 15% makes the voluntary questionnaire sent out fairly worthless but with sexual orientation figures there is nothing to go against as this information is not sought in a census in the UK. Any other data sources are unreliable as sexual orientation is still something many do not wish to disclose.

Maybe my own experiences are not truly representative, although they stretch over 15 years and have taken in three countries, but I have found many women working in the trade marks field. This is not reflected in the IPO's gender statistics. It might be the more "masculine" patents that diverts the data towards a marginal male minority?

It is noticeable that men occupy the senior positions and this reflects my experiences where, for example, the partners in law firms have been in the majority men. Equality is still a "work in progress" when it comes to the sexes so this is not surprising and some women will still be pulled (much more than men) towards a traditional role as a stay-at-home parent or to combining motherhood with a part-time role, which may restrict their career development. However, I think the figure of "over 90% of staff return to work after maternity leave" is commendable.

In general, the IPO provides good career opportunities to the Newport area and continues to improve having not sat on its laurels since being awarded Investors in People status in 1998. The excellent and timely services that the IPO provides gives it an excellent reputation and, in my view, make it one of the best Intellectual Property Offices in the world.