Michael Jewess, Brunel LECTURE on professional ethics, 12 October 2022:  “handout” for students 

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(I) Abbreviations used

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), RTMA registered trade mark attorney (UK), CTMA chartered trade mark 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 (USA), SPC supplementary protection certificate.

(II)Structure of the lecture

Slide 0:  Opening slide.

Slide 1:  The lists you are aiming for.

Slides 2 to 4:  The benefits to the client of your being on a list.

Slides 5 to 7:  Outline of the rest of talk.

Slides 8 to 12:  Regulatory documents and disciplinary procedures

Slide 13:  The big ethical rules summarised (also reproduced under (III) below for your easy reference).

Slide 14:  Serving the client.

Slides 15 to 20:  Ethical obligations trumping the interests of the client.

Slide 21:  In-house practitioners bound by the main ethical obligations.

Slides 22 to 23:  Conflict.

Slides 24 to 25:  Different practicalities in-house vs private practice.

Slide 26:  General ethical issues with a special flavour for prospective lawyers such as you.

Slide 27:  Closing slide.                                                                                                             

(III) The ethical rules of all regulators, so far as the big issues are concerned, reduced to three (compare Isaac Asimov’s Laws of Robotics): 

“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.”

(IV) Suggested reading  (compiled 4 October 2022) related to things that directly affect practitioners right now  

Michael Jewess, Inside intellectual property (CIPA, London 2013):

Chapter 2 “Ethics and privilege” overlaps with this lecture.

Chapter 1 "Legal Professional Quality" deals in more detail with the ethical obligation to provide a good service to clients.

Chapter 5 “Patenting” describes in more detail the ethical challenge in relation to patent novelty searches.

Chapter 8 “Branding” challenges the value to the client of some trade mark work.

Chapter 11 “Intellectual property agreements” at para 11.06 discusses dubious negotiating tactics.

Chapter 15 “The financial model” at page 312 discusses how charging practices 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 February 2022, commencement date 1 January 2015):  https://ipreg.org.uk/sites/default/files/2022%20February%20Rules%20of%20Conduct.pdf. Additional Guidance to Rule 11 avaliable from https://ipreg.org.uk/sites/default/files/Client_Monies_Guidance_10_Sep_15_Final_with_footnotes.pdf  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.

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/sites/default/files/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.  (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.)   

IPReg, Guidelines on the assessment of character and reliability, https://view.officeapps.live.com/op/view.aspx?src=https%3A%2F%2Fwww.ipreg.org.uk%2Fsites%2Fdefault%2Ffiles%2FGuidance-on-the-assessment-of-character-and-suitability-September-2017.doc&wdOrigin=BROWSELINK

Administrative Council of the European Patent Organisation, Regulation on discipline for professional representatives (in force from 21 October 1977, amended to 2018), republished annually most recently at https://patentepi.org/assets/uploads/documents/institute/4.3.2b%20Regulation%20on%20discipline%20for%20professional%20representatives.pdf.

        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 2022, republished annually most recently at https://patentepi.org/assets/uploads/documents/institute/4.2.1b%20Code%20of%20Conduct%20%20of%20the%20Institute%20of%20Professional%20Representatives%20before%20the%20European%20Patent%20Office.pdf.




(V) Suggested reading  (compiled 4 October 2022) related to things that may affect practitioners within the next year or so

IPReg, [Rights to conduct litigation and advocacy] – Unified patent court (undated) https://www.ipreg.org.uk/pro/regulations/rights-to-conduct-litigation-and-advocacy/unified-patent-court. This indicates the timescale for securing rights to represent clients before the UPC without having to undertake the EPLC course:  within a one-year “transition period”, yet to start to run.  Brunel students may be especially interested in the advice IPReg gives to RPA trainees likely to become EPAs;  see paras beginning “If you are not yet an EPA, ...” to the end of the main text.

IPReg, Review of regulatory arrangements:  proposals for change (16 December 2021) https://ipreg.org.uk/sites/default/files/RAR%20-%20Consultation%20with%20annexes.pdf.  In this 130-page document, IPReg sets out in Annex A (frontispiece, Chapter 1, and Chapter 2, 6 pages) the nearest redrafted counterpart to Rules of conduct for patent attorneys, trade mark attorneys and other regulated persons as referenced above.  IPReg, Review of regulatory arrangements: proposals for change – response to consultation (July 2022) https://ipreg.org.uk/sites/default/files/Response%20to%20consultation%20-%20version%20for%20publication%2020072022.pdf (a) at para 10 (half a page) which summarises the main changes to their original proposals of December 2021 that IPReg are which they are now minded to make, and (b) in Annex A (5 pages) which lists some other “technical”issues.  According to IPReg, “Regulatory arrangements review” (undated) https://www.ipreg.org.uk/pro/regulatory-arrangements-review IPReg “do not envisage implementing any changes before Spring 2023”.  In relation to in-house attorneys, note the second “technical issue” in Annex A, on which IPReg acknowledges the need for further discussion with the IP Federation (which represents many UK companies having in-house attorneys).


Caveat on the above links:  The above links take you directly to the documents current on 4 October 2022, to make it easier for you to access and print out before the lecture.  However, at future times, do not rely on these links, as old versions may get left on the websites with the new version having a different url.  Start from https://ipreg.org.uk/pro/regulations for documents applying to UK attorneys and from https://patentepi.org/en/the-institute/rules-and-regulations.html for documents applying to EPAs.