Michael Jewess, CIPA CPD WEBINAR on professional ethics, 2 July 2019:  BIBLIOGRAPHY (compiled 25 June 2019)

(For Michael Jewess’s home page, click HOME.)

I.  GENERAL

     Michael Jewess, Inside intellectual property (CIPA, London 2013), see https://www.researchinip.com/iip.htm.  Chapter 2 sets out the arguments in this webinar at more length.  Chapter 1 deals with "Legal Professional Quality".  Chapter 5 deals with patenting, including ethical challenges on arising from patent novelty searching.  Chapter 8 deals with branding, including the ethical challenges which trade mark cluttering presents to the practitioner.  Chapter 11 at para 11.06 deals with dubious negotiating tactics.  Chapter 15 deals with the practice’s financial model, at page 312 specifically with charging practices that can misalign the interests of the practice with those of the client.

      IPReg, Rules of conduct for patent attorneys, trade mark attorneys and other regulated persons (first issued September 2009, including amendments to December 2018, commencement date 1 January 2015):  https://ipreg.org.uk/wp-content/files/2018/12/Rules-of-Conduct-December-2018.pdf.  Additional Guidance to Rule 11 issued by e-mail (http://ipreg.org.uk/pro/practice-development/client-accounts/) to all private practices and sole practitioners:  http://ipreg.org.uk/wp-content/files/2015/10/Client_Monies_Guidance_10_Sep_15_Final_with_footnotes.pdf.  IPReg’s draft business plan envisages consultation on new Rules in 2020 to become effective in Q4 2021.

     IPReg, Special rules of professional conduct applicable to regulated persons conducting litigation or exercising a right of audience before the courts (commencement date 15 September 2011, updated May 2015).  Amendment of Guidance to Rule 3.4 proposed by IPReg in September 2013 not yet made.  See http://ipreg.org.uk/wp-content/files/2012/08/Litigators_Code_for_website_2015.pdf and http://ipreg.org.uk/pro/rules-and-regulations/litigators-code/.

     IPReg, IPReg Practical training protocol (May 2018), https://ipreg.org.uk/ipreg-practical-training-protocol-template/, linking to “Training protocol” and “Competency framework – patent [sic]” and “Competency framework – trade marks”.  For guidance only, but note emphasis on training in the IPReg Rules of conduct ... in “Training protocol”, paragraph 4(c). 

     IPReg, New IPReg guidance – improving information for consumers and small businesses (May 2019, IPReg hope that relevant practices will adopt by 15 August 2019):  https://ipreg.org.uk/new-ipreg-guidance-improving-information-for-consumers-and-small-businesses/.  Applies specifically only to practices whose client base includes individual consumers and businesses with up to 10 employees (but all practices “are welcome to adopt”).  Key aim is to ensure that such potential clients have more detailed information via practices’ websites, including on charging rates, enabling them to decide which practices to approach.  The guidance results in part from research suggesting that small businesses overestimate how much solicitors cost and do not seek their advice as a result, to the detriment of both sides.  The requirements for solicitors to publish information (see SRA Handbook – SRA transparency rules below) apparently does not include intellectual property work.               

     EUIPO, Communication No 2/2019 of the Executive Director of the Office of 22 February 2019 as amended on 12 April 2019 on the impact of the United Kingdom’s withdrawal from the European Union on certain aspects of the practice of the Office:  https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/Brexit/COM_ED_on_the_withdrawal_of_the_UK_from_the_EU_Brexit_final_19-2-19.pdf.  Many UK practitioners will lose ETMA/EDA status post-Brexit;  care with letterheadings, business cards, etc. is needed.

     Administrative Council of the European Patent Organisation, Regulation on discipline for professional representatives (in force from 21 October 1977, amended to 2018), available under http://patentepi.com/en/the-institute/rules-and-regulations.html.

     European Patent Institute, The code of conduct of the Institute of Professional Representatives before the European Patent Office (decided 13 November 1979, supplemented and amended to 2001), available under http://patentepi.com/en/the-institute/rules-and-regulations.html.

     Solicitors Regulation Authority, SRA Handbook, Version 21 (6 December 2018), available under http://www.sra.org.uk, which includes SRA principles 2011 (as amended to 1 November 2015), Code of conduct 2011 (as amended to 6 December 2018), and SRA Transparency Rules (of 6 December 2018).  For observance and enforcement of the Transparency Rules see SRA Transparency Rules: Web sweep report (6 June 2019):  https://www.sra.org.uk/sra/how-we-work/reports/web-sweep.page.  The Handbook is due to be replaced by the SRA standards and regulations on 25 November 2019;  in this, the Principles are reduced to 7 in number from 10, but a key point made in the webinar is more explicit:  “Should the Principles come into conflict [with each other], those which safeguard the wider public interest ... take precedence over an individual client’s interest.”    

     Solicitors Regulation Authority, Warning notice:  offensive communications (24 August 2017), https://www.sra.org.uk/solicitors/code-of-conduct/guidance/warning-notices/Offensive-communications--Warning-notice.page.  This guidance warns against offensive use of social media and e-mail both inside and outside of professional practice.

    

II.  CONDITIONAL FEES

     The Damages-Based Agreements Regulations, SI 2013 No 609.

 

III.  LIENS

 

     IPReg, Practice note & guidance on liens on client IP and enduring powers of attorney [ie liens intended to compensate the practitioner if bills are not paid] (2013), http://ipreg.org.uk/wp-content/files/2013/04/IPReg_Practice_Guidance_Jan_20132.pdf.

 

IV.  BRIBERY, MONEY-LAUNDERING, ORGANISED CRIME, SANCTIONS-BUSTING, COMPANY CODES OF CONDUCT (very highly selective)

     Bribery Act, 2010.  Section 7(2) refers to "adequate procedures" to protect clients and practices against criminal liability.

     IPReg, Anti-money laundering -  IPReg’s view on the application of the Money Laundering Regulations 2007 (“the Regulations”) (undated, probably 2015), http://ipreg.org.uk/pro/practice-development/anti-money-laundering/.  But note that the 2007 Regulation on which this IPReg guidance is based is no longer in force, having been replaced by the Regulation SI 2017 No. 692, referred to below.

    

     Serious Crime Act, 2015.  Section 45 lowers the threshold for criminal liability of professionals (among others) of knowledge of organised criminal activity.

   

     Policing and Crime Act 2017.  Sections 146 to 149 allow the Treasury to impose civil financial penalties on legal and natural persons in relation to sanctions busting.  Section 145 increases certain criminal penalties under the Anti-Terrorism, Crime and Security Act, 2001.

     Lucy Kellaway, Financial Times, 27 March 2017, “Codes of conduct are in breach of common sense”, a critique of some company codes of conduct but endorsing the “newspaper test” or “Private Eye test”.

     The Money Laundering, Terrorist Financing, and Transfer of Funds (information on the payer) regulation, SI 2017 No. 692.

     SRA, Compliance News, Issue 71 (26 March 2019), “Tackling money laundering – making sure firms are doing their job”, https://www.sra.org.uk/sra/news/compliance-news-issue-71-aml.page.

 

V.  DIVERSITY

     SRA, Ethnic diversity in law firms - understanding the barriers (May 2010), available at http://www.lawsociety.org.uk/policy-campaigns/research-trends/research-publications/documents/ethnic-diversity-in-law-firms---understanding-the-barriers/.

     SRA, Reporting your firm data (2019), https://www.sra.org.uk/solicitors/resources/diversity-toolkit/your-data.page.  This links to a Diversity questionnaire in word format to be submitted by 30 June 2019.  Applies only to private practices, not in-house ones.

     Nicholas Fox, Recruitment and diversity in the patent and trade mark professions (IPReg, 2013), http://ipreg.org.uk/wp-content/files/2013/04/Recruitment_and_Diversity_in_the_Patent_and_Trade_Mark_Professions_Final.pdf 

      Nicholas Fox, Gender and diversity in the patent and trade mark professions (IPReg, 2016), http://ipreg.org.uk/wp-content/files/2013/04/2016-Gender-and-Diversity-in-the-Patent-and-Trade-Mark-Professions.pdf.      

     IPReg, Diversity and inclusion initiatives (undated, apparently 2018 or 2019), https://ipreg.org.uk/public/about-us/diversity-and-inclusion-initiatives/.  This includes a link to a summary of the diversity data collected in 2017 by individual attorney (not by firm).  

    IP Inclusive, A charter for equality, diversity, and inclusion (undated, probably 2015 or 2016, with signing up continuing to be invited), https://ipinclusive.org.uk/about/our-charter/.

     IP Inclusive, Annual report 2018, https://ipinclusive.org.uk/wp-content/uploads/2019/01/190121-ip-inclusive-annual-report-2018.pdf.

     IP Inclusive, The business case for diversity and inclusion (webinar 5 July 2018): https://cipa.webex.com/ec3300/eventcenter/recording/recordAction.do?siteurl=cipa&theAction=poprecord&recordID=92754582&internalRecordTicket=4832534b000000042d81caee97b5b3b8686e3da615078600ed1f6210bd358d968476808b77ac9207.

     Legal Services Board –Encouraging a diverse workforce (guidance effective 15 February 2017), http://www.legalservicesboard.org.uk/what_we_do/consultations/closed/pdf/20170215/2017_Encouraging_A_Diverse_Workforce.pdf  - see  Annex B for the final guidance to regulators following submissions from IPReg and others.

     Legal Services Board, Diversity: summary report on the legal services regulators’ progress against diversity outcomes (January 2019), https://www.legalservicesboard.org.uk/Projects/Diversity_Of_Legal_Profession/pdf/20190122_Diversity_Summary_report_legal_services_regulators_progress.pdf.  This includes IPReg’s promise to extend its monitoring to socio-economic diversity.

 

VI.  RESERVED ACTIVITIES (UK);  RESTRICTIONS ON IN-HOUSE PRACTICES;  UPC REPRESENTATION

 

      Legal Services Act, 2007.  Section 15 relates to in-house practitioners engaging in reserved legal activities as defined in Section 12.  An "overarchinig obligation" in the IPReg Rules of Conduct ..., Rule 2.

 

      IPReg, Rights to conduct litigation and rights of audience and other reserved legal activities certification rules 2012 (commencement date 31 December 2012, as amended to 19 January 2015 according to text but file name inconsistent with this):  https://ipreg.org.uk/wp-content/files/2016/01/IPReg_Regulations_Website_amended_July_20161.pdf. These rules deal mainly with litigation, but under Rule 9 patent and trade mark attorneys are allowed to draft deeds relating to intellectual property rights and to administer oaths.+

 

      IPReg, Registered Bodies Regulations, 2015 (commencement date 1 January 2015): http://ipreg.org.uk/wp-content/files/2014/12/Registered_Bodies_Regulations_2015.pdf.

 

      Legal Services Board, Statement of policy on section 15(4) of the Legal Services Act 2007: regulatory arrangements for in-house lawyers (February 2016) http://www.legalservicesboard.org.uk/Projects/thematic_review/pdf/201602_S15_Statement_Of_Policy.pdf.*  The title is potentially misleading:  the LSB considers that some regulators, including IPReg, impose restrictions beyond the scope of section 15(4), ie on non-reserved legal activities carried out in-house.

 

     IPReg, Unified Patent Court (January 2016), https://ipreg.org.uk/pro/rules-and-regulations/rights-to-conduct-litigation-and-advocacy/upc/.    

 

(For Michael Jewess’s home page, click HOME.)

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+  Administering oaths is the discharge of a public office and cannot be done by an attorney or a solicitor for his own clients, and an activity for which a small fixed fee is prescribed.  See Nicholas Fox, CIPA Journal, June 2013.   

 

*  This statement of policy followed the consultation, Legal Services Board, Are regulatory restrictions in practising rules for in-house lawyers justified? (26 February 2015) http://www.legalservicesboard.org.uk/Projects/thematic_review/pdf/S15_(In_House_Lawyers)_Discussion_Paper_(Feb_2015).pdf.