For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Wednesday, 30 January 2013

Feeling insecure? IPReg's first disciplinary action

Ever-vigilant for news scoops, the IPKat spotted the following post on the website of London barristers' chambers 39 Essex Street (with comments and hyperlinks added by the Kats):

"On 21st Jan 2013 James Ramsden represented the Intellectual Property Regulation Board (“IPReg”) before the Joint Disciplinary Panel of the Patent Regulation Board and the Trade Mark Regulation Board in the case of:

The Intellectual Property Regulation Board v David John Rickard

This was the first disciplinary case brought under the new regulatory regime for Patent Attorneys and Registered Trade Mark Attorneys under the regulatory objectives set out in S.1 Legal Services Act 2007.

The proceedings have resulted in new and important guidance to the profession to be published by IPReg within the next few days concerning the circumstances in which Attorneys can issue terms of business which give them rights over their client’s property, including intellectual property, to secure payment of fees [this sounds like an attempt to create an entitlement to a lien over intellectual property -- though it may be more like a contractual requirement that the client assign his rights to the attorney.  Further information would be handy ...].

The decision and guidance to be issued by IPReg has implications for many other professionals who are also required in practice to avoid professional and personal conflicts of interest and conduct likely to undermine public confidence in the profession".
At the time of posting of this item, there was no information concerning this case on the IPReg website and a site search for 'Rickard' scored zero hits.

This Kat is of course curious to know what the facts are -- and to discover why this ruling requires the imposition of "new and important guidance to the profession within the next few days".  Is IPReg v Rickard an attempt to nail a single instance of an objectionable practice before it catches on with everyone else, or is it a test case in which a defendant could have been picked out of a hat?  Is this guidance a matter which is so obvious that no consultation is needed between IPReg and the professions it regulates, or is consultation an irrelevance? It would be good to know.

On a separate note, this Kat wonders whether the entitlement of professional IP advisers to obtain rights in their clients' IP in security for fees is something which is (i) encouraged, (ii) tolerated, (iii) discouraged or (iv) forbidden in other countries. Readers: do let us know!

Who needs a lien if you
can send in the heavies?
Merpel is more concerned with the fact that information concerning this matter, which manifestly concerns the UK patent and trade mark attorneys -- and by implication their professional standing in comparison with their European colleagues and competitors -- should appear first on the website of the barrister involved.  Does IPReg not have sufficient staff and control over its website to be able to post at least a short announcement to be able to warn those whom it regulates that they should expect imminent guidance on one or more important issues?

36 comments:

TJ said...
This comment has been removed by a blog administrator.
TJ said...

I imagine this was the offending clause:

"You agree that if any sum due by you to us is not paid by the due date for payment then
all sums then owing by you and all sums then invoiced to you shall become due and
payable immediately and, without prejudice to any other right or remedy available to us,
we shall be entitled to have a first and paramount lien on all materials, inventions,
trademarks, designs, copyrights, domain names and any applications to register the same,
and any registrations and documents in our possession, power, custody or control,
relating to any work touching or concerning the contract of services."

http://tinyurl.com/a3275qm

McCPA said...

Apparently, a lien not just over files but over the actual IP right was allowed in the US. This link refers:

http://www.lexology.com/library/detail.aspx?g=e63a7441-9f32-4d56-bbc0-d0406ce1b405

Suleman said...

Paragraph 4e of the epi code of conduct for European Patent Attorneys says:

e) A Member must not acquire a financial interest in any industrial right in such circumstances as to give rise to a conflict between professional duty and interest. He must not charge a fee directly related to the outcome of the services he provides.

This could be read as prohibiting taking a client's IP if they could not pay.

Anonymous said...

Statement of Facts

Undertakings by Respondent

Nick Lightbody said...

I speak as a director of the company - Deskspace Limited - whose IP assets David John Rickard sought to annex - without our authority.

IPREG have exercised commendable strength in taking up and pursuing the complaint that I originally made to CIPA in January 2010 - as a result the Joint Disciplinary Panel reached a determination comprising a statement of facts accepted by Mr Rickard and an undertaking given by him which are published by IPREG here

http://www.ipreg.org.uk/document_file/file/Statement%20of%20Facts%20on%20undertakings%20given%20by%20D%20Rickard.pdf

and here

http://www.ipreg.org.uk/document_file/file/Undertakings%20given%20by%20D%20Rickard.pdf

We commend IPREG for having the determination to deal with this issue, despite some opposition, which clearly posed serious issues for the professions which they regulate.

It is my understanding that IPREG will publish guidance to the profession in due course concerning the terms and conditions of business which may or may not be acceptable.

Jeremy said...

Thanks, Nick, for your post.

Your comments, and particularly your praise of IPReg's pursuit of your complaint, are well noted. I think that many of us within IP sometimes forget that IPReg is there to serve and, if necessary, protect the interests of clients.

Anonymous said...

Merpel is of course right that information like this should be coming first from IPReg and not a random blog. Clearly IPReg was always going to publish details of this case and this is reflected by the fact that they have done so. Answering Merpel’s point isn’t the question really to be asked: Should a barrister be blogging information about very recently decided cases without their client’s (in this case IPReg’s) knowledge or consent?

Nick Lightbody said...

Jeremy - thank you for your comment - which is appreciated.

I believe that this was an unusual case since Rickard merely asserted that he owned our rights from March 2009 without ever, despite much questioning correspondence from our solicitor, disclosing any evidence for his claim. This process of assertion without substantiation had a severely detrimental effect on Deskspace Limited.

My witness statement for the Joint Disciplinary Panel of 12 pages includes about 60 exhibits documenting the entire factual course of Mr Rickard's conduct.

When we originally complained to CIPA we fell foul of an unfortunate hole in the transitional regulations since our complaint was dated in December 2009 but received by CIPA in January 2010 and was thus unable to be dealt with by either CIPA or IPREG - amazingly it fell outside both bodies' jurisdictions based on the date of the document and the date of receipt - that was how Anne Wright at IPREG described it to me.

We then complained to the Solicitors' Regulatory Authority - since Rickard is also a solicitor - but the SRA wouldn't deal with it since Rickard advised them that he had not advised us as a solicitor and SRA also doubted the truth of my statement that IPREG was unable to deal because of the hole in their jurisdiction. The SRA not surprisingly felt this fell clearly in IPREGs court.

By March 2012 IPREG's governing regulations had been amended - the lacuna had been fixed - and when I enquired whether IPREG was now able to pursue the complaint Anne Wright was able to confirm that IPREG could and would now consider whether or not there was a case to answer.

They decided that there was indeed a case to answer and hence the process concluded last Monday was commenced. In that process IPREG became the Complainant and I and another complainant, from another of Rickard's clients became witnesses.

It is worth noting that the hearing was scheduled for 3 days but that shortly before the panel commenced the hearing Rickard instigated an agreed deal which avoided him having to either give evidence or to be subject to cross-examination - hence an agreed statement of facts was arrived at together with his undertaking to inter alia transfer our assets back to our company and the hearing was concluded early - on the first day.

The transfer of assets was something that the Panel could not itself order and hence I believe that the Panel felt that this was a good approach since it provided a broader solution than was otherwise available and enables our company to now deal with its assets again with no question as to title.

So the significance of the case - from my perspective as a non-practicing solicitor - is that the imposition of Terms & Conditions which have neither been revealed to nor accepted by a client - which purport to constitute an assignment of the client's IPR to the advisor - is not acceptable conduct - perhaps they will also advise that such terms cannot be imposed even if accepted - but in our case the terms were neither revealed to us nor accepted by us.

The reason for the delayed publication by IPREG was I believe that this decision unfortunately co-incided with a planned IPREG web site re-launch - so they planned to publish on the new site - but was that re-launch ran late they clearly decided today to publish on their old site. I am sure we have all fallen foul of late deliver of a technology update at some time - inconvenient to be sure.

Anonymous said...

I see no problem in a patent attorney taking ownership of property in their possession if a client does not pay fees owed.

I am not sure the epi rule noted above covers the position where they attorney-client relationship ends due to non-payment and then the rights transferred.

A builder has every right to reclaim goods not paid for by removing material from a site, even when that involves a demolition job.

Also, taking a financial interest in a client's business does not, of itself, give rise to a conflict.

Some of these comments are maybe not applicable in the present case.

As Mr Lightbody has volunteered to congratulate IPREG on this blog, maybe he would fill in some missing information, such as were the attorney's fees paid?

Anonymous said...

Slogan from the ipulse website:-

"Your business. Is our business."


Anonymous said...

Regarding the comment of Wednesday, 30 January 2013 21:38:00 - the analogy does not hold. A builder who is not paid does not gain ownership of the land, just the materials which make up the house.

My understanding is that it is not atypical for t-o-b's to indicate an attorney’s right to retain ownership of copyright in a patent application in the event of non payment.

Retained copyright merely helps to prevent a non-paying client from filing an application they have not paid for and does not enable the attorney to file that application, since they are not entitled to a patent for the invention.

This is very different from what I understand the present case to relate to, where IP a client’s IP would be transferred in the case of non-payment.

The conflict of interest arises because there would be a benefit for an attorney to charge unreasonably high fees in order to induce their clients to default and thereby obtain rights either in their business or their IP. If, as a practitioner, one cannot appreciate that this is an unacceptable position to take, a different profession could be more appropriate. Banking perhaps.

Anonymous said...

There may be further problems with the offending ToBs. In case of conflict, the patent attorney rules state:

"a regulated person may act for
two or more clients, or for a client as against a former client, in relation to the same or a
related matter in a situation of conflict, or possible conflict but only is [sic] all of the parties have given their informed consent in writing."

but the ToBs state that in working with this firm, clients give a blanket waiver in advance:

"However, you hereby agree in advance to waive any conflict that might result from our representation of another client, so long as the matter is not substantially related to our
work for you." (see page 3 under Confidentiality and Conflicts)."

Where is the informed consent in that? It will be interesting to see if this clause survives the IPReg approved re-write. As the ToBs are still live on the website, one wonders if he is already in breach of his undertaking of 21 January 2013.

It has been said that there is no such thing as bad publicity but surely this is the exception. Would it not have been cheaper in the long run not to try to enforce those clauses but to chalk it up to experience?

Anonymous said...

As Mr Lightbody has volunteered to congratulate IPREG on this blog, maybe he would fill in some missing information, such as were the attorney's fees paid?

Read IPReg's Statement of Facts: in fact, it was rather Mr. Rickard who owed money to DeskSpace for software licences (DeskSpace wasn't just his client, but also his supplier). After DeskSpace made a claim at the Small Claims Court, Mr. Rickard issued six invoices and then applied his ToB to claim DeskSpace's entire IP! That is, in my opinion, extremely sleazy behaviour.

Anonymous said...

For those of a curious nature the assignment recorded at OHIM can be seen in the documents on the CTM registration located here. You will need to scroll to Recordal - 003934737
to see the Deed purportedly executed by a single witnessed signature on behalf of the Company. Although OHIM have also published the Deskspace Ltd complaint they do not seem to have treated it as a request for revocation of a decision under Article 80 CTMR and the rule 53a procedure does not seem to have been followed.

Mark Summerfield said...

If I am following all this correctly, Mr Rickard allegedly did not wish to pay software licence fees allegedly owing to Deskspace. Since Deskspace was also a client, Mr Rickard allegedly manipulated the situation to employ his Terms of Business to assign the DESKSPACE CTM to himself.

If these allegations are correct, then I respectfully submit that Mr Rickard is - allegedly - a tool! Since I also understand him to be of Australian origin, on behalf of a chastened nation, I apologise.

I am not sure, however, what any of this has to do with attorneys issuing "terms of business which give them rights over their client’s property, including intellectual property, to secure payment of fees". The problem here seems to be the conflict of interest which arose as a result of Deskspace being both client and supplier.

A right of lien should not be especially controversial in itself. Exercising it without legitimate cause, on the other hand, is problematic!

Anonymous said...

Is he still at iPulse I wonder...?

Random Q. Examiner said...

The respondent has quite a reputation amongst patent examiners.

Here is a sample of the boiler plate which is included in many of his milder replies (chosen at random):

ONUS.

I remind the Examiner that he is obliged under the EPC to grant the application unless there is a valid and reasoned basis to refuse. The onus is on the Examiner to establish that the objection is valid and to substantiate all objections. In doing so, he must refrain from using hindsight or innuendo which is not permissible under the EPC.

[...]

I hereby take the precaution of requesting oral proceedings in the event that the Examiner is minded to refuse the application. However, I would prefer to continue prosecution of this application by written correspondence or by telephone interview and request that if further objections remain, a further communication be issued. I note that under the EPC and Guidelines a Summons should not be issued until all outstanding objections have been fully explained in detail with full reasons and the applicant given a complete opportunity to first respond to those objections during written examination. It is only if an impasse is reached that a Summons may be issued.

Anonymous said...

Highly amusing that Anonymous of Thursday, 31 January 2013 09:47:00 should suggest I change profession when the ability to read and understand information is an essential skill of a patent attorney, but is something which said Anon is clearly unable to do. I suggest something less taxing than patents or banking for him/her in return.

Said Anon appears quite happy to retain copyright, which is an essential aspect of the patent files and would also cover the copyright in work already paid for.

As for the builder analogy, it was not meant to be taken as mirroring the situation at hand, but such complex comments clearly go over Anon's head.

If Anon cares to read (big words in their I know) the epi regulation posted above they will see that Mr Rickard's actions are arguably not covered by conflict suggested. He only acquired a financial interest after the client defaulted.

As for charging unreasonably high fees, I would like to see the fess anon charges if he/she is in private practice. Even if competent, I'm sure they would be considered unreasonable by many small businesses. In any case, the client agrees to fees in advance of instructing work, but maybe anon has more of a 'finger in the air' approach to billing?


e) A Member must not acquire a financial interest in any industrial right in such circumstances as to give rise to a conflict between professional duty and interest. He must not charge a fee directly related to the outcome of the services he provides.

Anonymous said...

"sleazy behaviour". Not the issue. the question is whether or not mr lightbody paid the invoices.

Is said anon actually mr lightbody in disguise?

Anonymous said...

Just what exactly is wrong with those responses to examination reports?

Fancy having a reputation for protecting his clients interests.

If people are alleging Mr Rickard manipulated invoices in order to force his client to default, then I hope they are truthful statements as libel can get very expensive. Is the problem with commentators of this blog that Mr Rickard is simply not 'one of us good old school patent chaps'?

Anonymous said...

Oh My Word! I have just discovered a respected building society has a lien over my home. Apparently, if I don't pay my mortgage, they can take my home off me. There is clearly a conflict here as they have the right to increase my mortgage payments without my authority and can force me to default at their will.

ex-examiner said...

I seem to recall from the law module at QMW in the 1990's that a builder would only be able to reclaim goods that had niot been paid for if the property in the goods had not passed to the recipient, and this would generally require a specific term in the contract to the effect that property in the goods does not pass until the goods have actually been paid for. I have certainly seen such terms in contracts. If the property in the goods had passed to the recipient before they had been paid for, then the supplier could not legally recover the goods as they would no longer belong to him: he could only sue for their value.

Anonymous said...

Even if not specifically a term in builders' contracts (what percentage of work is not covered by a written contract? my guess is it is low) I am sure that it is not a prerequisite for reclaiming goods. What right has someone to building material they have not actually paid for?

The point raised supports the doubt cast on the Anon who believes retention of copyright is fine and dandy, whilst taking control of other IP is unacceptable.

Nick Lightbody said...

(1) Mr Lightbody does not make anonymous comments - thus this is my third on this thread.

(2) The IPREG Statement of facts states Mr Rickard " ... executed a deed purporting to assign to himself from his former client, Deskspace Limited, the intellectual property rights of Deskspace Limited, without authority from Deskspace Limited to do so." I would have thought that this was pretty clear?

(3) The statement of facts also records that Mr Rickard was sued by Deskspace Limited for unpaid software licencing fees - Mr Rickard owed money to our company - not the reverse.

Anonymous said...

Would prompt billing (or at least regular WIP reporting) have put a different spin on the same facts?

For what it's worth, I see nothing wrong with the style of response to the EPO above. Not so sure about those Ts&Cs though.

Anonymous said...

I don't think that WIP comes into it if DSL did not owe the attorney any money, as Mr Lightbody contends. He has not said whether his licence fees were paid or whether the CTM was adequate compensation.

I would be interested to know from Mr Lightbody whether he had instructed the attorney to file the CTM.

The combative style of the EPO response might be helpful in the US but the EPO examiners prefer a more collaborative approach and, in my experience, do not like being told what their job is.

Anonymous said...

Repetition repetition repetition.

Dear Mr Lightbody,
I can see your position on the unauthorised transfer and the unpaid software licences. The question posed to you is whether or not your company paid the invoices of ipulse?

If those invoices were unpaid, the next question is why not?

Anonymous said...

EPO examiners have either started to forget what their job is or have chosen not to do it properly. They should be thankful of the free education provided by patent attorneys. They could at least raise a toast to us for helping to support their gravy train.

ex-examiner said...

When I was a UK Patent Examiner, we usually took the view that such rhetoric was for the benefit of the client: certainly it did not affect the way the case was examined.

Of course, it might be instructive to see exactly what was in the examination report that had given rise to the attorney's robust reply. While the vast majority of EPO examination reports I have had to reply to have been relevant and to the point, I have had the occasional oddball letter, such as a first action that indicated that the invention was so obviously without merit that the examiner proposed to refuse it immediately on the expiry of the period to reply. In addition to calmly arguing the merits of the invention, I simply queried the legal basis for immediate refusal in the manner proposed, as if I did not file a timely response, the application would become deemed withdrawn at the end of the period for reply, and I was unclear how a withdrawn application could be refused as a matter of law. In any event, I requested oral proceedings.

The next examination report was much more reasonable: perhaps the examiner had had a bad hair day the first time around.

Anonymous said...

Sorry if this is drifting off topic, but in response to Anonymous of 31 January 21:03:00:

I think that, while part of the idea behind sub-prime mortgages was to charge high interest rates due to the lack of competition, another intentional feature was that they had high penalties so that the lender would make a tidy profit if the loan did go wrong. The lenders thought it was safe (for them) as the loans were for a low percentage of the securing property and so they would get their money one way or another.

This cunning wheeze was responsible for arguably the biggest disaster to hit the world in the last ten years.

Anonymous said...

Rickard's response above might not be particularly diplomatic, but it is absolutely correct. The EPO exists for the benefit of applicants, not the other way round!

Admittedly, it was not common in 2008 (the date of the response reproduced above) but recent EPO practice of issuing only one Art 94(3) communication, and then automatically sending a summons, places unfair cost burden on applicants simply for the EPO's convenience. Applicants have the option of kowtowing to unreasonable objections, or paying the price of sending their attorney to OPs, and then likely subsequent appeals.

Anonymous said...

This is a case between two parties that was rightly heard by IPREG. Mr Lightbody has therefore had his day 'in court'. If he wishes to continue his criticism in public then he must be willing to respond to points raised and not treat a this website as a soapbox, in my opinion.

Mr Lightbody has had several opportunities to answer a question raised, but has chosen not to do so. I shall therefore form my own conclusion on whether Mr Lightbody's company paid the invoices of ipulse. I conclude that said invoices were properly raised, yet were not paid as they should have been.

I have no respect for Lightbody based on his one-sided story on this blog and believe ipulse had every right to act as they did. I have no sympathy for double standards.

Anonymous said...

http://www.ipreg.org.uk/document_file/file/IPReg_Practice_Guidance_Jan_2013(2).pdf

Anonymous said...

http://www.lawgazette.co.uk/news/ip-conflict-interest-warning

Nick Lightbody said...

I would like to express my thanks and appreciation to those who have contacted me - as a result of the matters described in this blog and the subsequent comments - to express their support for the stand that we took over Mr Rickard's unilateral and unauthorised annexation of our IPR four long years ago - which lead to IPREG successfully pursuing a Disciplinary Action against the said practitioner.

I would welcome any further contributions from those with first-hand evidence which may be helpful to us now in seeking due and proper financial compensation and reparation from Mr Rickard for his unauthorised actions and their consequences.

Should Mr Rickard decide to contribute further to these comments I and many others would welcome him doing so openly under his own name.

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