Friday, 4 February 2011

Patent litigators and fuzzy edges: CIPA speaks

The Chartered Institute of Patent Attorneys (CIPA) has just issued a press release concerning the recent dispute between Atrium and DSB, which PatLit noted here last week.  This case is extremely important on account of the manner in which it resolves some questions surrounding patent attorneys’ litigation rights. The press release reads, in relevant part:
"A High Court decision has made it clear that the way is open for patent attorney litigators to conduct cases involving disputes over licence agreements and related intellectual property rights.  This confirms that businesses can be represented by a wider range of professional lawyers, not just solicitors. 
In a High Court case between technology companies Atrium and DSB, the judge has ruled that patent attorney litigators are entitled to act where the case involves the broad area of ‘protecting inventions’ – including royalties payable under agreements relating to the inventions.  They are not limited to a narrow interpretation of ‘protecting inventions’, such as cases involving prosecution and enforcement of patents and related intellectual property. 
Mr Justice Lewison’s ruling in the High Court on January 21 found that the proceedings, to determine whether royalties were due under an agreement, fell within the scope of the Higher Court Regulations of the Chartered Institute of Patent Attorneys (CIPA).  It clears away possible confusion about Patent Attorney Litigators’ rights to conduct litigation in the High Court.  
Commenting on the judgment, CIPA President Alasdair Poore said that the judge had accepted that the scope of Article 3 [of the CIPA Higher Courts (Qualifications) Regulations] was somewhat ‘fuzzy at the edges’ and that it was appropriate for the patent attorney litigator concerned to have brought the matter to court for clarification.  “If you look at the strict wording,” the CIPA President said, “Article 3 is not limited to the protection of patents and confidential information but the broader term ‘protection of inventions’.  Mr Justice Lewison has now confirmed that this covers not only patents but also ‘protection of technical information’ – and that protection of technical information or inventions included handling how they were exploited such as royalty agreements.  This is good news for companies who can now be confident that legal experts who best understand how their technology is protected – patent attorneys – can handle court cases that involve the broad area of protecting inventions. They are clearly not restricted just to the narrower field of patents.”  

1 comment:

Chris Ryan said...

I was recently helping an attorney handle an application to restore a company name to the register (for the purpose of recovering some trade marks that had been overlooked when it was allowed to become dormant). The application was straightforward but the Treasury Solicitor still felt the need to query whether the attorney was permitted to handle it. So I suspect that patent and trade mark attorneys will continue to face challenges on the categories of work they do until the concept of a limited licence to litigate is removed. They will still be bound by the professional rule that says that they should not take on work that they know they do not have the expertise to handle, just as other professionals are. But that would surely be enough to protect the public. Would it not?