For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 5 January 2010

IP offices, private practitioners and sponsored videos

A highly-respected member of the patent profession within Europe has penned the following missive to the European Patent Office (EPO). The letter, headed "EPO marketing assistance please", reads as follows:

"Dear Sirs,

I write concerning the involvement of the EPO in promoting Murgitroyd and Company indicated in the video addressed by the link below on their website, referred to in the December CIPA Journal at p792. I note that Mr Yates of the EPO (referred to by Murgitroyd as a "Principle Examiner" (sic)) thanks Murgitroyd for "looking after him", and refers to the great time he is having, inter alia at the ice hockey.

http://www.murgitroyd.com/EPOvisit.html

These are tough times in the marketplace, and we all need a competitive edge - official approval and recognition by the EPO would certainly help. I trust such assistance is not limited to Murgitroyd. Could you kindly let me know how the EPO will assist my firm in marketing our own business in these tough times, and how we would be expected to best "look after" the EPO staff concerned?"
The rubric which accompanies the video describes the EPO Examiner as having provided
"an educational seminar to local IP professionals at the North Carolina Biotech Center. This educational seminar is part of an ongoing series about foreign filing sponsored by Murgitroyd & Company, promoting Murgitroyd IP Portal. Join us via webinar or in person during our next seminar in March 2010 with the Japanese and Taiwanese patent offices".
No response has yet been received from the EPO.

The IPKat agrees that these are tough times, and thinks that this email raises serious issues concerning the extent to which public bodies which administer IP rights should be either actively promoting private practice firms or at least appear to do so. Is there a code of conduct -- or should there be one -- concerning such practices and might a client be comforted, when instructing a firm to act on his behalf, that this firm knows how to "look after" the EPO, OHIM, WIPO or any other such institution? Merpel's not so worried: she thinks that it's good for the EPO to be seen to be engaging with the private sector and hopes that it will continue to do so, as long as it spreads its favours. Both Kats wonder what this blog's readers think, and invite their comments. They also wonder what the position of other offices, such as the USPTO, might be. Do tell!

31 comments:

Filemot said...

Is this not a little churlish? The Patent Offices need a platform to speak to and educate their client communities - that is the inventors and entrepreneurs and sometimes he agents. If a firm offers to organise an event that can further that objective then an IPO should accept.

I have organised several events with official speakers from OHIM and the UK-IPO on behalf of various organisations. In all cases I have nothing but praise for the quality of the presentations given. I acknowledge it may have helped the profile of my firm too. It also met the IPO objectives. No bribes were asked or offered.

Peter Groves said...

Indeed officials must go out into the world and educate, but their client communities are generally the professionals not the inventors and so on - an unfashionable view, but I did say "generally". As with any government employee, I hope they would be very careful about giving the impression of endorsing one professional service provider ("there are other patent agents ..."). I recall speaking to a meeting of the Patent and Trademark Association of British Columbia about the then-new Community trade mark system, and hearing that a delegation from OHIM had been round banging the drum some time before, bringing with them a practitioner and thus giving the impression that one agent had privileged access to the institution. I thought that went too far - but that was an official delegation, the practitioner on the institution's coat-tails. Either way, there should be no suspicion of anything irregular.

IP Bob said...

It's more than a little churlish, if you ask me. An IP firm engages with the EPO and provides a talk to US IP professionals and because another firm didn't think of it first they're disadvantaged??

Hardly, it's just sour grapes and the IPKat shouldn't be entertaining such rubbish.

It also seems a little out of place that the author of the letter to the EPO has been left as anonymous. Surely if he/she gets that right then so should the private firm that has been dragged into the debate?

Just to be clear, I do not work for Murgitroyd.

Jeremy said...

IP Bob: you write that it seems "a little out of place that the author of the letter to the EPO has been left as anonymous. Surely if he/she gets that right then so should the private firm that has been dragged into the debate?". Not really, no. The website in question is publicly accessible (Murgitroyd's website scores a very creditable 5 in Google PageRank terms), while the identity of both the sender and the recipient are not a matter of public record.

IP Bob said...

Ok - I'll take that point that it may not have been very hard to work out where the video link was after you had read P792 of the CIPA journal, but it was beyond me.

However, I simply think the debate may have been better phrased without reference to a particular firm.

Once again, I think that engagement with the IPOs is available to all - and those that take advantage of those opportunities just have more get up and go. Obviously, it would be completely incorrect for an IPO to show any sort of favour at all, but that should not stop them from attending invites from private firms.

Anonymous said...

I think it was a throwaway line. I think in the contaxt of the speech it seems to have been intended to be a warm entry into the speech (perhaps to build some rapport).

If I had asked an official to go to a foreign country to speak at a seminar I had organised I would probably offer to take them out, too.

Compare it with a particular IP-based organisation's behaviour a few years ago. Seeing that the membership needed to raise its profile to the wider world it organised a number of seminars and got PR agents in to promote them. Most (if not all) of the seminars were held at the offices of the senior council members of the organisation, so they were the main beneficiaries of the drive.

It may have been better to have taught the other members about marketing.

Eurodog said...

Is there not an issue if national regulatory authorities in different EU countries have different rules relating to how firms can advertise, market and promote their services? Can German firms do this without censure?

Anonymous said...

I don't find it all that churlish, but rather a good point that deserves to be made. Once upon a time I worked at the EPO as an ordinary examiner (by the way, there are neither "Principle" nor "Principal" Examiners at the EPO, which has an admirably flat hierarchy), and I occasionally felt some unease with the lack of clear guidelines concerning conflicts of interest and gifts, dinners and junkets offered by companies and representatives. Don't misunderstand me: anybody who tries to buy off an EPO examiner is very much certain to end up with egg on his face (and probably in jail). But clearer guidelines (even more so for DG3, which shouldn't hide behind its sacrosanct independence) would avoid potentially embarrassing situations such as this one.

Dave said...

I wonder if the EPO were paid for their time? I seem to recall that, in the past, EPO speakers charged for their services (though before the vitriol is thrown in my direction I acknowledge that I don't have the evidence to back up this recollection).

Anonymous said...

I'm just wondering if there aren't some ambush-marketing issues here. Does the EPO allow its name, logo etc to be used by ip practitioners unconditionally?

Catwatcher said...

Surely it's not the IPKat who has got it right, nor indeed Merpel, but a third cat. Was it not Snagglepuss who immortalised the phrase "Heavens to Murgitroyd"?

Above Board said...

I don't see why patent practitoners shouldn't do this. BUT shouldn't there be a sort of EPO equivalent of the register of MPs' interests, so we can see who at the EPO has been fed, dined, or looked after by them?

Anonymous said...

To Catwatcher: right cat, wrong name. Snagglepuss said heavens to "Murgatroyd", not "Murgitroyd" http://www.phrases.org.uk/meanings/heavens-to-murgatroyd.html

Anonymous said...

Sour grapes indeed, and out of touch. There must be thousands of seminars run by firms (including solicitors, for example)here and abroad, in which speakers from govermnent bodies are presenting.

The idea that IPO speakers address only professional audiences has been thrown to the wind by the IPOs themselves. I frequently find clients have been exposed to seminars organised by or for EPO, UKIPO.

Like it or not, the IPOs are determined to reach out to users and will take opportunities that present themselves.

The EPO spontaneously visits companies worldwide and generally excludes the attorneys. I have assisted the EPO in setting up meetings with clients in China, at the EPOs request. Attorneys were then excluded.

For the record, I do work for Murgitroyd but was not directly involved in this event. The above comments are purely personal.

Snagglepuss said...

For the sake of professional probity, I should make it plain that I too do not work for Murgitroyd.

Graham Murnane said...

First I must declare an interest - I work for Murgitroyd & Company, I am a friend of the examiner whose name has been brought (unfairly) into this debate by the writer of the anonymous letter, and I was at the ice hockey game.

We approached the EPO to ask if they could provide a speaker for the seminar we organised in North Carolina. The EPO has an excellent record in sending their examiners out to meet applicants and potential applicants, and to inform them about the EPO. Often such visits are organised with the involvement of European Patent Attorneys, but often they are organised directly by the EPO - I once visited a client in the US and been somewhat surprised to find a party of EPO examiners there on the same day! The EPO indicated that they would be happy to provide an examiner as a speaker, but that they would like the visit to include some visits to applicant companies as well. I was delighted to learn that the examiner who would be coming to North Carolina would be an old friend.

In this particular case we helped the EPO to arrange a programme of visits for the EPO examiner, as well as the seminar at the North Carolina Biotech Center. The EPO indicated that while they would meet the cost of providing the examiner, we would have to meet the travel and hotel costs.

At all times the examiner exercised the utmost professional care to ensure that the EPO was seen as independent. I spoke at the North Carolina seminar, giving an EPA's view of the rule changes. There was no possibility for the audience to confuse the contribution from the EPO and my contribution as a Murgitroyd attorney. The audience was patent-savvy (you would have to be, to want to sit through the detailed presentation on the EPO rule changes!) and would have known that there was no "official approval and recognition" of Murgitroyd by the EPO.

Murgitroyd sponsored and organised the seminar - any other firm of European Patent Attorneys is free to organise a seminar, provide its own speakers and ask the EPO or any other IP Office to provide a speaker. I would urge any other firms interested in doing so to go ahead and take the plunge, albeit with a word of warning - it's a significant organisational undertaking.

I take great offence at the question by the "highly-respected member of the patent profession within Europe" as to "how we would be expected to best "look after" the EPO staff concerned?" The use of the quotes around the term "look after" implies that the anonymous writer believes there was something wrong going on. There is nothing wrong in catching up with a friend over a meal at the end of the day. I would have considered it "wrong" to leave the examiner in his hotel room for the evening and not take him to the ice hockey game with me. For the record the examiner bought the beers and the Carolina Hurricanes lost.

I would ask that the anonymous letter writer reveals himself, at least to me, so that I can set his mind at rest on any other concerns he has.

Anonymous said...

Also, it would appear that UK firms are somewhat reluctant to have themselves included on the EPO list of firms, see:

http://www.epo.org/topics/ip-webguide/lawfirms.html

I have soemtimes wondered what purpose this list at the EPO serves, however.

EdT

Anonymous said...

I'd like to thank Mr. Murnane for coming up to the defence of that examiner (EPO management and their PR people are unlikely to do so). There's a line in his post that I find quite telling:

"The EPO indicated that while they would meet the cost of providing the examiner, we would have to meet the travel and hotel costs."

That is some ridiculously short-sighted penny-pinching from whoever took that decision (certainly not the examiner). Not only do such visits more than pay off for the EPO (both in terms of increased filing figures and reduced administrative aggro from more enlightened applicants), but such a policy was almost certain to spark such a brouhaha sooner or later. The outcome of which will almost certainly be that the number of such highly useful visits and seminars will be curtailed.

Maybe the EPO could save more money if the AC didn't need (at least) three meetings to decide upon a President?

Anonymous said...

The issue here is simple emough: should the EPO support single-company publicity events, first by speaking and second by allowing their copyright content to appear on the company website? Surely any intelligent public servant would want to preserve the appearance of impartiality.

Anonymous said...

The debate seems strange. There is an interest of the public to obtain first hand information from examiners, there is an interest of the examiner to meet the outside world and there is an interest of the IP Office that the public and the examiner are well educated. And all have an interest in independent IP Offices. As long as every request about participation of examiners in seminars etc is satisfied (within the possibilities) and as long as the company does not create a likelihood of assocation, nobody should complain. I am a kind of examiner myself. I avoid to attend as a speaker of a law firm every year (I am not their house lawyer). I give outside presentations in my own name and I do not accept any presents that exceed the value of, lets say, a book (which in any case I would normally not receive or even expect). I would accept a meal offered - the talk over a meal is part of the working time. The specialised public of patent or trade mark events knows about such standards. However, I would not like anybody making publicity with my name (such as: 'Mrs x, our direct contact with the IP Office).

Ian Murgitroyd said...

Many thanks to the "highly-respected" member of our profession for substantially increasing the public profile of Murgitroyd & Company and personal apologies to John Yates who acted totally professionally throughout his visit to the United States and has had his integrity questioned. At no time did John either approve or endorse Murgitroyd & Company.
If anyone has any concerns which they wish to raise or information which they would like with respect to this matter then in the spirit of transparency I will be delighted to assist. Equally I am happy to enter into a public debate with respect to Murgitroyd & Company's business development activities and the EPO's policy of providing speakers for seminars. In the meantime, however, can I request that our "highly-respected" colleague publically apologies to John Yates who was simply doing his job.

John Yates said...

Firstly let it be clear that this is not a response from the EPO, this is a personal response from he who is not-very-implicitly but publicly being accused of accepting bribes. I don't know about the writer of the letter, but personally I really do not find hotel rooms terribly exciting. Being aware of this, whenever I have a guest at work over a longer period I make a point of showing them a bit of Bavarian culture, take them sailing on the local lakes, or whatever seems appropriate at the time. I do this in my own time and at my own expense, but I do it willingly because this is the way I was brought up. My Mum would call this common courtesy or hospitality. Since it does require some effort on my part, however, I would be most upset if the recipient did not then thank me. Mum would call this common politeness. Bearing this in mind, I have no qualms whatsoever, when on a visit half-way round the world, if my host says "me and the lads are off to an ice-hockey match - do you want to come?" I will not stay in my hotel room, I will say yes, and I will thank him for it afterwards. For the record, I will pay my way just as I would allow someone visiting me in Munich to pay (as it turned out, buying a round of drinks in the ice-hockey match was fascinating in itself), and in view of the fact that my host paid the hotel, my daily allowance from the EPO was correspondingly reduced. As profitable ventures go, it was not very profitable, but it was enriching, which is why I am prepared to put in the additional work of preparing such lectures.

Should you be thinking of arranging such a trip, please do not be frightened to "look after" your speakers in the future, be they from the EPO or from anywhere else. I find I get at least as much IP information from such social activities as from the official part of a visit and I very much prefer the idea of examiners and attorneys working together rather than my being an untouchable. Indeed I would go so far as to actively encourage such exchanges as I find there is nothing worse than a "them and us" attitude and whenever I do talk informally to attorneys I find we agree on most points, and for the others at least we understand why we disagree. The information I gather in this manner I then disseminate through the office, and I trust that the improved mutual understanding is beneficial not only to the office, but also to the IP community as a whole.

As far as the lectures are concerned, there is a department for patent information/awareness in the EPO and anyone can write to the office and ask for an examiner to give a lecture. We don't get to go out very often (they like us to grant a few patents as well), so no doubt the office has some form of selection criteria of which I am not aware. The question of who pays what is of no interest to me, that's up to the office to decide. From the point of view of spreading the word, however, I can imagine that the trip to the USA would indeed have given the impression of reaching a reasonable number of interested parties, so that the EPO would be willing to spare me. In fact, with this blog the information in the talk is now presumably being spread even further - I trust once you've heard the scandalous part you all carried on and listened to the rest of the talk and will thus deal with the new rules with no problems once they come into force - which was the real point of the exercise in the first place.

Anonymous said...

According to my opinion, the question is not (only) whether the EPO should speak at educational events, or make individual company visits - they can and they do. However, to my view, impartiality is a key principle of the EPC and it is important that the Office should protect individual Examiners by ensuring that they are speaking at events which are impartial, such as trade groups and conferences. I am not sure why it is right that the EPO should allow their presentation to appear on a company website, which states that "This educational seminar is part of an ongoing series about foreign filing sponsored by Murgitroyd & Company, promoting Murgitroyd IP Portal." It could thereby seem that the EPO is indeed promoting Murgitroyd IP Portal.

Meldrew said...

While we are talking about impartiality, and the perception of impartiality, what would your perception be if, during EPO opposition proceedings, one of the examiners came forward and handed out flyers for a local restaurant to the other party to the proceedings on the excuse that "You have had to come a long way and perhaps would like to see some Bavarian cuisine"?

I was somewhat surprised to see this; my perception was of partiality; and I was not surprised that I lost.

Fortunately, occurrences such as this are rare, but some education within the EPO may be necessary.

Anonymous said...

Sorry, Murgy man & EPO man, but you've missed the point. We'll all be happy for EPO examiners to speak in public, go out for beers with EP attorneys, etc. But what nags us is that the presentation opened with a complete puff-piece for Murg firm and then went sraight into the EPO examiner, with an implicit endoresement of your firm by the EPO. If that puff iece at the start had been absent then probably nobody would have any concern.

Also, EPO man, how do you think a patentee or opponent will feel next time you're chairing oral proceedings with a Murg attorney on the other side? Do you think they'll get an assured feeling of impartiality? Just think about that.

PS - it's "publicly" not "publically", but that's a common error.

Anonymous said...

Did you mean "endorsement"?

John Yates said...

Particularly in opposition proceedings I am very sensitive to the question of bias and I try and make a point of being seen to be absolutely fair. None the less, the question is a valid one. Visits to industry and indeed any form of contact are inevitably going to raise questions, but cutting off all contact seems a trifle excessive in my view. It is, as with many things in our profession, a question of weighing up each side of the arguments.

Many years ago I did a praktika externe with BMW and about a month later I would’ve had oral proceedings in opposition in which BMW would be one of the opponents. Even without any requests having been made I had myself removed from the division since a month with one of the parties just before the proceedings is too close for comfort in my view. I had no qualms, however, about taking on oppositions involving BMW the following year. More recently I was accused of partiality because I as first member wrote a communication stating that multiple auxiliary requests having divergent subject matter would not be taken into account. There I stayed on the division. Any party in opposition is free to request that I be removed from the opposition division because of the Murgitroyd website and the request would be considered by the division as would any other. My personal vote, however, would probably keep me on the division and from the case-law I’ve seen I suspect DG3 would support me in this.

On most websites these days there is some irritating advertising in the corner. I just ignore it and look at the important message, and I suggest if the Murgitroyd talk irritates you, you treat it in the same light.

Can I suggest we stick with the idea of everyone being happy to see EPO examiners speaking in public and having beers with EP attorneys?

Anonymous said...

I'll drink to that.

Anonymous said...

Its also "straight" not "sraight" Mr Anonymous. Better be accurate yourself before coming over all holier than thou.

Ops Manual said...

The fact that the EPO presentation appeared on a company website, that stated that "This educational seminar is part of an ongoing series about foreign filing sponsored by Murgitroyd & Company, promoting Murgitroyd IP Portal." also appeared to me as being an an endorsement by the EPO of the Murgitroyd IP Portal.

However this is not in mind a fault of the EPO but rather merely due to the way it is (cunningly?) presented on the Murgitroyd site.

I can also understand why Murgitroyd would not want to miss the golden opportunity to have the presentation there in the context of promoting it's own enterprise.

PatentBuddy said...

First, my hidden agenda: Late last year we co-sponsored a webinar with the folks at Murgitroyd, presented by Mr. Yates. It was the most highly-attended webinar in our series and the first time that we had received such a large volume of Thank You e-mails from IP practitioner attendees.

There was no endorsement of either Patent Buddy, LLC or Murgitroyd by Mr. Yates or the EPO. It was an above-board and appreciated quid pro quo.

Recently, we made an offer to provide the same service to Under Secretary Kappos and we were quickly put in contact with his staff to make the necessary arrangements.

For those of us who heard the Under Secretary's remarks at the IPO meeting in Chicago, it was very clear that technology partners (who are willing to donate resources) are important and sought after by the USPTO, and probably, other similar organizations.

The IPR field is complex in nature and ongoing education is paramount if we are to fully serve our clientele. Any related education, especially that from authorities such as Mr. Yates or USPTO staff members, is sorely needed.

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