Direct Access to Barristers on Intellectual Property Matters

Jane Lambert

I am a member of the Intelectual Property Bar Association to which most barristers specializing in intellectual property and technology law belong.  There are over 100 of us.  Most are in London but there are a few in other parts of the country.  Our job is to advise on difficult points of law, draft complex legal instruments and represent clients in litigation and negotiations.  Most of the judges of the Patents and Intellectual Property Enterprise Courts and many of the other judges of the Chancery Division were recruited from our numbers. 

Barristers are often compared to consultant physicians and surgeons in medicine.  Just as a GP might refer patients to specialists for diagnosis or treatment, patent and trade mark attorneys and solicitors seek our opinions, drafts or representation for their clients. Until 2004  we had to be consulted through those intermediaries. Nowadays, many of us accept instructions directly from members of the public on IP matters under the public access scheme.  Earlier this evening, for example, I was asked how to apply for a patent.  Over the weekend I was asked how to challenge a design registration under s.11ZA of the Registered Designs Act 1949,  Other typical requests would be to review a lengthy business format franchise agreement, draft a complaint in a domain name dispute or appear at an online entitlement hearing in the Intellectual Property Office,

It should not be supposed that we do the work of solicitors, patent or trade mark attorneys or other professionals simply because we can be instructed directly.  Our Public Access Guidance forbids us from conducting litigation unless specifically authorized to do so.  Similarly, we do not prosecute patent, design or trade mark registration applications though we draft statements of case, review witness statements and appear before IPO hearing officers and EPO Boards of Appeal.  Our rules prevent us from acting for a client if we believe it to be in the client's interests or the interests of justice for him or her to instruct a solicitor or other professional intermediary.   Far from competing with other professionals, we are actually a source of work for them. 

Though we do not prosecute patent, design or trade mark applications or conduct litigation we may be the best initial point of contact for clients who may need such services.  There are many ways of protecting the same intellectual asset some of which are free such as unregistered design right or the right to bring an action for passing-off.  The optimum method of protection at a particular time and in certain circumstances is not necessarily the most comprehensive.  Similarly, a request for the transfer of a domain name under the Uniform Domain Name Dispute Resolution Policy can be much faster, cheaper, safer and even more effective than a trade mark infringement or passing-off claim in the courts.  Counsel's advice on those matters is objective and impartial. If an attorney or solicitor is required we can suggest intermediaries with whom we have worked satisfactorily in the past.

If a business owner, manager or individual seeks advice on a point of law we can advise on most matters without the assistance of a professional intermediary.  That would include such questions 

• "Is this computer-implemented invention patentable?",  
• "Do I have an action for copyright infringement?" 
• "I have just received this demand for undertakings and pile of documents from that big firm of solicitors, what are my options?" or
• "Can you help me understand this complex agreement that a potential customer has just sent me?"

There are some issues such as "Is this invention patentable given the prior art?" when we would need a patent search or some other information that a professional intermediary can supply. 

When a business owner or manager understands contracts and has negotiated deals before we can draft just about any kind of agreement or instrument for him or her.  If he or she is feeling his or her way we would advise the owner or manager to introduce a solicitor, accountant or another professional to the team.

Most litigation would need a solicitor, attorney or other professional but sometimes the client can do the necessary work and all that is required is advocacy.   Many hearings in the Intellectual Property Office or small claims track of the Intellectual Property Enterprise Court would fall into that category.  On one occasion I have responded to an appeal in the Court of Appeal and there have been several others when I have appeared in the High Court without a solicitor.

If you want to use our services you will need to supply a passport, driving licence or other photo ID and evidence of residence and if you represent a company your authority to do so.  We will specify what we will do when we shall do it and how much we shall charge in a client care letter.  That is your contract with your barrister.   In the unlikely event that something goes wrong, we are all insured and regulated by the Bar Standards Board or other authorities We have approved complaints handling procedures and the ordinary law of contract and tort applies to us just as much as to any other professional services provider.  You can find more information in the Public Access Guidance from our regulator.

Anyone wishing to discuss this article may call me during office hours or send me a message through my contact form.