Michael Jewess, Brunel LECTURE on professional ethics, 25 October 2023: “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, UPC Unified Patent Court, UP unitary patent.
(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 honesty and 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 October 2023) 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 (all new or revised, effective 1 July 2023), “IPReg’s Core Regulatory Framework”, https://ipreg.org.uk/pro/ipregs-regulatory-arrangements/core-regulatory-framework, additional Guidance includes –
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, Glossary. Definitions used in the rest of the IPReg suite of documents, but lacking any definition of “in private practice”, “corporate work”, or “public” (see next item).
IPReg, Compensation Arrangements Rules, https://ipreg.org.uk/pro/ipregs-regulatory-arrangements/compensation-arrangements-rules. Of little direct practical importance but has a definition of “in private practice” and “corporate work” (see previous item), and implicitly “public”.
IPReg webinars (recorded) on post-1 July 2023 arrangements, on CPD, and on transparency and costs linked from https://ipreg.org.uk/pro/ipregs-regulatory-arrangements.
IPReg, Russian and financial sanctions, extending to “legal advisory services” from 30 June 2023, https://ipreg.org.uk/pro/russia-and-financial-sanctions.
IPReg, Anti-money laundering (2019), https://ipreg.org.uk/pro/practice-development/anti-money-laundering.
Administrative Council of the European Patent Organisation, Regulation on discipline for professional representatives (in force from 21 October 1977, amended to 2018), regularly republished, most recently at https://patentepi.org/assets/uploads/documents/rules-regulations/4.3.2-230503.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, regularly republished, most recently at https://patentepi.org/assets/uploads/documents/rules-regulations/4.2.1-230503.pdf
Caveat on the above links: The above links may take you directly to the documents current in October 2023, to make it easier for you to access and read 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 or https://ipreg.org.uk/pro/practice-development for documents applying to UK attorneys and from https://patentepi.org/en/the-institute/rules-and-regulations.html for documents applying to EPAs.