Michael Jewess, Brunel LECTURE on professional ethics, 4 November 2020:  “handout” 

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Abbreviations

CIPA Chartered Institute of Patent Attorneys, CITMA Chartered Institute of Trade Mark attorneys, IPReg Intellectual Property Regulation Board, EPO European Patent Office, EPI European Patent Institute, RPA registered patent attorney (UK), CPA chartered patent attorney (UK), EPA European patent attorney, CPD continuing professional development, PII professional indemnity insurance, LSA Legal Services Act 2007 as amended, IDS information disclosure statement, SPC supplementary protection certificate.

Structure of the lecture

The two lists you are aiming for.

The benefits to the client of your being on a list.

Ethical constraints imposed on those on the lists: regulatory documents;  serving the client;  obligations trumping the interests of the client;  conflict attorney vs client and client vs client; in-house vs private practices insofar as different; general ethical issues.

The ethical rules of all regulators combined, so far as the big issues are concerned, reduced to three: 

“Rule 1 – The attorney must uphold the rule of law, act in the interests of justice, act with integrity towards all, and preserve his or her independence.

“Rule 2 – The attorney must act in the best interests of the client, offering a good standard of service, within the constraints of Rule 1.”

“Rule 3 – The attorney is entitled to be paid for his services, within the constraints of Rules 1 and 2.”

Suggested reading  (compiled 20 October 2020)

      Michael Jewess, Inside intellectual property (CIPA, London 2013).  The first half of Chapter 2 overlaps with this lecture.  I understand you have already had on your reading assignments Chapter 1 ("Legal Professional Quality" which one has ethical obligations to deliver), Chapter 5 (“Patenting”, including ethical challenges on arising from patent novelty searching), and Chapter 11 (in which 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.  It may be worth your time to give these an extra sweep for ethics-related issues.

      IPReg, Rules of conduct for patent attorneys, trade mark attorneys and other regulated persons (first issued September 2009, including amendments to June 2020, commencement date 1 January 2015):  https://ipreg.org.uk/sites/default/files/Rules%20of%20Conduct%20June%202020%20%282%29.pdf.  Additional Guidance to Rule 11 avaliable from https://ipreg.org.uk/pro/practice-development/client-monies and links therefrom.

      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 https://ipreg.org.uk/pro/regulations/litigators-code and link to Code itself therefrom.

     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.

      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/pro/regulations/rights-to-conduct-litigation-and-advocacy/uk-courts and link therefrom.  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.+

 

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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.