This has not yet extended substantially into the area of intellectual property (IP), but the situation may well change with the emergence of patent and trade mark attorney litigators and advocates. Trade mark and patent attorneys have been able to acquire higher rights of conduct since 2007, but changes in 2013 allowed this to extend to advocacy. Whilst the former did not lead to substantial changes in practice, these newer developments have seen a number of trade mark firms actively engage in litigation work. Does this signal a threat to the IP Bar, or the beginning of a golden period of greater work for those engaged in IP?

Extension of trade mark and patent attorney practice

Trade mark attorneys and patent attorneys are niche practitioners in the area of protection of patents and trade marks. Patent attorneys typically have science degrees (often to doctorate level), whilst the majority of trade mark attorneys hold law degrees. It is possible to be both a solicitor and a trade mark attorney, and many of the major City law firms have employed trade mark attorneys or dual-qualified attorney/solicitors. The number of attorneys is reasonably small, and most firms have a selection of the biggest brands or IP businesses in the world.

The expansion of large solicitor firms into trade mark protection work has produced major competition in the market for trade mark and patent registration services. Trade mark and patent attorneys have been largely constrained from responding in kind to this competition by the fact they were unable to undertake litigation in the courts and could not have multi-disciplinary practices. Whilst some firms opened separate firms of solicitors, this was very much the exception to the rule. Both patent and trade mark attorneys undertake contentious tribunal work, however, so some attorneys will have advocacy experience.

Higher rights of conduct and audience

The legal landscape changed with the potential for patent and trade mark attorneys to obtain higher rights of conduct and audience – as well as the grant of rights to appear in, and changes in the rules pertaining to, the Intellectual Property Enterprise Court (IPEC), previously the Patents County Court. The IPEC can hear cases with a damages cap of less than £500,000, has a costs cap of £50,000 and the judge takes a proactive approach to evidence. Firms of patent and trade mark attorneys, therefore, have a decision to make in terms of strategy, and it appears that many will be involved in the conduct of cases at IPEC. It seems unlikely that many will be involved in either High Court actions or in advocacy at IPEC or beyond, at least in the short term. This is because further qualifications are required, most trade mark attorneys do not conduct their own oral advocacy, and many simply cannot call upon the resources needed to run a case in the High Court (notably disclosure). This presents a possibility for counsel to be instructed more often.

Having undertaken the further training, I am able to say that it is extremely similar to that expected of solicitor advocates. In fact, the current assessment for the higher rights of audience is the SRA Assessment, which presents the attorney with the need to pass in an area of law which is completely outside their regulatory area.

Potential growth in IP litigation

Patent and trade mark attorneys have often been conservative in their approach to disputes. Some of this can be attributed to the cost and inconvenience of litigation, a position ameliorated by IPEC’s changes. IP litigation was historically presented as very costly and with massive risk. There was also the need to involve a firm of solicitors, often chosen as much for reciprocity as ability, and perhaps some reticence may have flowed from the lack of exposure to litigation. Pre-action settlement amongst attorneys tended to be the norm. Whilst pre-action resolution may, and clearly should, remain common, it seems likely that litigation before the IPEC will become a far more regular occurrence. At the very least it will be taken closer to issuance far more often, with the attendant work in drafting particulars.

Given that the trade mark and patent profession generally lacks substantial experience in the field of civil litigation, it seems likely that counsel of all levels of Call will receive more instructions for drafting and assistance. Within the context of the IPEC, junior counsel may be able to find the opportunities to be sole counsel far more often – the evidence being less voluminous – and to obtain valuable advocacy experience.

In the long term, some trade mark and patent practitioners may become regulars, given that they may have sufficiently developed advocacy skills through regular tribunal work. (One patent attorney has already appeared in the Court of Appeal, and a case set to be heard in the Court of Appeal with the author as advocate settled a few days before the hearing.) However, this is likely to be a very small part of the profession and the reserve of the few wishing to develop a niche practice. The changes may herald, therefore, what could be a golden period for the IP Bar.

Contributor Aaron Wood
Associate and trade mark advocate at Swindell & Pearson Ltd