Michael Jewess, Brunel LECTURE on professional
ethics, 17 October 2024: “handout” for
students
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(I) Abbreviations used
Bodies: CIPA Chartered Institute of Patent
Attorneys, CITMA Chartered Institute of Trade Mark attorneys, IPReg
Intellectual Property Regulation Board, SRA Solicitors Regulation Authority, EPO
European Patent Office, EPI European Patent Institute, UPC Unified Patent Court.
Attorneys: 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.
Legislative: CDPA Copyright Designs and Patents
Act 1988, TMA Trade Marks Act 1994, LSA Legal Services Act 2007, UKPA Patents
Act 1977, USC United States Code.
Other: CPD continuing professional
development, IDS information disclosure statement (USA), SPC supplementary
protection certificate, JV joint venture, PII professional indemnity insurance.
(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 are bound by the main ethical obligations.
Slides 22 and 23: Conflict of interest.
Slides 24 and 25: Differences 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 2024)
Michael
Jewess, Inside intellectual property
(CIPA, London 2013):
Chapter 2 “Ethics and privilege”, which overlaps
with this lecture;
Chapter 1 "Legal Professional Quality",
which deals in more detail with the ethical obligation to provide a good
service to clients;
Chapter 5 “Patenting”, which describes in more
detail the ethical challenge in relation to patent novelty searches;
Chapter 8 “Branding”, which challenges the value to
the client of some trade mark work;
Chapter 11 “Intellectual property agreements”,
which at para 11.06 discusses dubious negotiating tactics; and
Chapter 15 “The financial model”, which at page 312
discusses how charging practices can misalign the interests of the practice
with those of the client.
IPReg’s
principal documents (all new and effective on 1 July 2023, apparently unchanged
since):
“IPReg’s Core Regulatory Framework”, https://ipreg.org.uk/sites/default/files/Core%20Regulatory%20Framework_0.pdf
(note that the running header on the second to fourth pages is incorrect, and
should read “Chapter 2 – Code of Conduct”);
https://ipreg.org.uk/sites/default/files/Client%20money%20guidance.pdf;
https://ipreg.org.uk/sites/default/files/Continuing%20competence%20guidance.pdf;
https://ipreg.org.uk/sites/default/files/PII%20Sandbox%20guidance.pdf;
https://ipreg.org.uk/sites/default/files/Transparency%20and%20cost%20guidance.pdf;
https://ipreg.org.uk/sites/default/files/Character%20and%20Suitability%20guidance%20.pdf;
and
“IPReg Glossary” defining terms used in the above (but not “public” as
used in the Framework, Ch. 2, para. 3.10), https://ipreg.org.uk/sites/default/files/IPReg%20Glossary.pdf.
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, 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, 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/4.3.2-240427.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 2023),
regularly republished, most recently at https://patentepi.org/assets/uploads/documents/rules-regulations/4.2.1-240427.pdf.
Caveat
on the above links:
Links to .pdfs above take you directly to the documents current in
October 2024, to make it easier for you to access and inspect them 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. For documents applying to UK attorneys, start
from the IPReg home page and then proceed via the tabs. For documents applying to EPAs, proceed from https://patentepi.org/en/the-institute/rules-and-regulations.html.