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Q: Quality of Patent Attorney firms in the UK ( Answered 5 out of 5 stars,   0 Comments )
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Subject: Quality of Patent Attorney firms in the UK
Category: Business and Money > Consulting
Asked by: michael2-ga
List Price: $20.00
Posted: 20 Aug 2002 05:09 PDT
Expires: 19 Sep 2002 05:09 PDT
Question ID: 56485
Please provide as much external evidence as you can find for the
quality of work carried out by the various patent attorney firms
offering patent services in the UK.  I'm interested in details about
named firms, not general information about the profession as a whole.
Obviously, I'm not interested in marketing puffs, either from the
firms' own web site or elsewhere.

Clarification of Question by michael2-ga on 20 Aug 2002 05:12 PDT
Both positive and negative comments are of interest.

Clarification of Question by michael2-ga on 20 Aug 2002 05:52 PDT
A list of UK firms can be found at:

http://www.piperpat.co.nz/europe/gb.html

Request for Question Clarification by knowledge_seeker-ga on 20 Aug 2002 08:32 PDT
There are over 150 firms on that list. Just to review each one's
website to get the names of the attorneys (which would provide a basis
for further searching) would take hours.

Perhaps you'd like to narrow down your question a bit? Maybe provide
us a list of the top 3 or 4 you'd like us to investigate. Or better
yet, define what you will accept as a complete answer in terms such
as: "I would like at least 3 outside source comments on any 4 of these
firms."

Right now I think the wide-open scope of your question combined with
the price offered is preventing you from receiving an answer.

Hope to see you clarify --

--K~

Clarification of Question by michael2-ga on 20 Aug 2002 09:11 PDT
Having re-read my question, I realise it might be understood as a
request for details on _all_ the firms.  Not so, just on those that
happen to come up in a reasonable level of searching.   I quite
understand that there may be no accessible information at all on some
of the firms.

I'd accept as an answer at least two or three external comments on the
quality of the work of any five firms, or at least one comment each on
any ten.

Let me know if you think the work for that would be reasonable.

Request for Question Clarification by knowledge_seeker-ga on 20 Aug 2002 11:15 PDT
Hi again Michael2 -

Thanks for clarifying!

Ok..I'm working on your question. Unfortunately, the link you provided
above, which worked before, is not working now. So, rather than wait,
I'm working from the list here --

The Chartered Institute of Patent Agents 
http://www.cipa.org.uk/who_are_we/patentsearch.cfm

--K~
Answer  
Subject: Re: Quality of Patent Attorney firms in the UK
Answered By: knowledge_seeker-ga on 20 Aug 2002 14:01 PDT
Rated:5 out of 5 stars
 
Hi Michael 2 --

Well, this search turned out to be less straightforward than I had
anticipated!  It appears that there isn't much in the way of "reviews"
when it comes to patent attorneys. No Top-10 list or objective rating
system that I could find.  There also isn't anything in the way of
"dirt" on any of these companies. They don't seem to be the kinds of
companies that make headlines (good or bad) or cause scandal. Aside
from their own press releases, they really don't make the news.

So, what I did instead was compile as much as I could about the ones
that seem to lead the industry no matter where I could find it ---
Patent office, newsgroups, small mentions in articles -- anything
except news resulting from their own press releases.

I've divided my answer into sections based on the type of information
found. At the end I've listed a summary for you of all the firms I
mentioned. I've also given you leads on where you can dig deeper for
more information.



-PATENT LAW CASES ARGUED BY PATENT ATTORNEYS REPRESENTING THE
APPLICANT AGAINST PATENT OFFICE ------


This might be a good place for you to start your own in-depth review
of the legal performance of patent attorneys in the UK.  One value of
a good patent attorney is in how he/she handles disputes with the
patent office.  And, although court wins are important, it may behove
you to read through some of the court summaries just to see how the
attorney argued the case, whether or not the final ruling went in the
applicant's favour.  The link to the full list of legal decisions
involving disputes with the UK patent office is here.

http://www.patent.gov.uk/patent/legal/decisions/index.htm

I've gone through some of the recent one and provide 3 examples
summaries below. I've lead each description with the name of the
attorney arguing the case for the applicant. I end each with the
Judge's summary ---


MR. M DOWNING -  Fry Heath & Spence
Ruling: Against the applicant

In a response dated 24 February 1998, Mr Abbott's representatives, Fry
Heath & Spence, refuted the objection, accepting that there was claim
broadening, but arguing that there was no extension of disclosure.  ..
Mr Downing felt that the issue was clear cut against the applicant in
each of these cases, in that the amendment sought was not contemplated
in the application as filed.

I find therefore that the new application discloses matter extending
beyond that
disclosed in the earlier application, thus contravening the
requirements of section 76(1), and That in consequence the new
application cannot proceed as a filing under section 15(4).

http://www.patent.gov.uk/patent/legal/decisions/1998/o_222_98.pdf



GILES FERNANDO & MARTIN HEDGE  - A. A. Thornton & Co.
Ruling: Against the applicant

The renewal fees in respect of the eleventh year for each of the
patents fell due on 25 May 2000. The fees were not paid by that date
or during the six months allowed under section 25(4) upon payment of
the prescribed additional fees. The patents therefore lapsed on 25 May
2000.

Taking all these factors into account, I am not persuaded that the
proprietor took reasonable care to see that the eleventh year renewal
fees on each of the three patents were paid.

http://www.patent.gov.uk/patent/legal/decisions/2002/o32902.pdf


STUART GEARY - Venner, Shipley & Co
Ruling: Against the applicant, but open to appeal

The applicant amended his claims to avoid the prior art, but while the
examiner was updating the search in respect of the amended claims, a
further two examples of relevant prior art were found. However, none
of the cited prior art disclosed one particular feature of the
invention as claimed in the amended claims, but the examiner
considered that the ‘missing’ feature was common general knowledge

Having applied the Windsurfer test to the facts of this application, I
reach the conclusion that claims 1 and 2, in their current form, do
not involve an inventive step.  However ..In the circumstances of this
particular application, I am content to allow the applicant an
opportunity to amend the claims further.
http://www.patent.gov.uk/patent/legal/decisions/2002/o07202.pdf



--------PATENT LAW ARGUMENTS BETWEEN PATENT HOLDERS --------------- 



Attorneys also argue disputes between patent holders -- 

This list provides a directory of arguments over domain names in the
UK. Again you could go here and assess the arguments made by various
firms ---
http://www.nic.uk/drs/decisions.html


BOULT WADE TENNANT
http://www.nic.uk/drs/decisions/pickfords-v-anglo.html

BECK GREENER
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0465.html
http://www.austlii.edu.au/au/cases/cth/AIPO/1993_22.html




--------------- COMMENTS ON SPECIFIC FIRMS ---------

BARKER BRETTELL
HASELTINE LAKE


"Only too aware of their potential to expand, forward-thinking
trademark firms such as Barker Brettell and Haseltine Lake are keen to
attract a younger generation of recruits. Marketing themselves as
'modern', commercial firms, they reel in graduates with talk of
glamorous international brands and projects."
http://www.lexonthenet.com/trademark.php



----------------- NEWSGROUP COMMENTS  -------------- 



DUMMETT COPP
http://www.dummett.com/

The matter came to light in India recently when Dummett Copp, on
behalf of the affected firm, approached Hastings Jute Mill after
locating its name on website to get inputs to establish that the idea
of using hessian for landfill sites was not inventive and therefore
was not patentable.
http://groups.google.com/groups?q=dummett+copp&hl=en&lr=&ie=UTF-8&selm=7u0drn%24hp5%241%40nnrp1.deja.com&rnum=1



BECK GREENER
http://www.beckgreener.com/html/beck_greener.html

I know there are no "worldwide" patents. But overall to get "cover" in
Europe, the U.S.A  and China and surrounding territories will cost
about £13,000. This figure has been quoted by my patent agent Beck
Greener, perhaps the best known in England.
http://groups.google.com/groups?q=%22beck+greener%22&hl=en&lr=&ie=UTF-8&selm=3b56fd3c%40news-uk.onetel.net.uk&rnum=3



--------------- NEWSGROUP POSTINGS BY UK PATENT ATTORNEYS
-------------



I think these are useful just to get a feel for the attitudes of the
attorneys behind the firms

Paul Wolff - Urquhart-Dykes & Lord
http://groups.google.com/groups?q=%22urquhart+dykes+%26+lord%22&hl=en&lr=&ie=UTF-8&selm=dNdQ5DAX2iM0Ewri%40wolff.co.uk&rnum=1

http://groups.google.com/groups?q=%22urquhart+dykes+%26+lord%22&hl=en&lr=&ie=UTF-8&selm=sZireAA6CRV5Ewh%2B%40wolff.co.uk&rnum=7

http://groups.google.com/groups?q=%22urquhart+dykes+%26+lord%22&hl=en&lr=&ie=UTF-8&selm=Ts71cCATEEI3EAVK%40wolff.co.uk&rnum=8


Tim Jackson - Patent Attorney
http://groups.google.com/groups?q=PATENT+ATTORNEY+UK++recommend&start=30&hl=en&lr=&ie=UTF-8&selm=MPG.1720304ee6b07a4a989908%40news.freeserve.net&rnum=31


Dave Kiewit, Patent Agent
http://groups.google.com/groups?q=PATENT+ATTORNEY+UK++recommend&start=40&hl=en&lr=&ie=UTF-8&selm=36F84875.3D86837F%40patent-faq.com&rnum=46


Richard D. Goldstein , Schiller & Kusmer
http://groups.google.com/groups?q=%22patent+attorney%22+recommendation+UK&hl=en&lr=&ie=UTF-8&selm=BKCBFL.21E%40world.std.com&rnum=1




---------------PARTNER ARRANGEMENTS WITH OTHER COMPANIES -----------


BECK GREENER

BriSense believes in building long-term relationships with our key
business partners. BriSense depends on close contact and exchange of
knowledge with these key partners.
 
Beck Greener (UK) is BriSense’s patent agency. BriSense works with
Peter Smart who is partner at Beck Greener and has significant
experience within patenting of sensors. Beck Greener is among the top
agencies in Europe and has been affiliated with BriSense since early
2001.
http://www.brisense.com/indhold_html/corporate_partners.html




-------------------COMPANIES QUOTED IN THE NEWS -------------------



Cost of protection: Expensive if no strategy is in place
Financial Times - June 21 2001

(several companies)
http://www.whitepage.co.uk/journalism/articles/cost.html

Multinationals lose out to cybersquatters
Marks & Clerk
http://www.businessmag.co.uk/news/2001oct/n1001006.html




------------------PUBLICATIONS -------------------------- 


APPLEYARD LEES
Patenting - Pitfalls and Prizes 
Robert Pidgeon navigates the safest routes through the legal minefield
of patenting and provides a beginner's guide to reaping the rewards of
novel inventions
http://www.chemsoc.org/chembytes/ezine/1999/toolkit_sep99.htm



-------ONLINE RECOMMENDATIONS OF PATENT ATTORNEYS IN THE UK ---------



"We have worked with Graham Jones in London for our clients' EPO and
UK
filings for many years, and can recommend his work very highly."
http://groups.google.com/groups?q=PATENT+ATTORNEY+UK++recommend&start=10&hl=en&lr=&ie=UTF-8&selm=38B1632E.3FA6BC65%40bpmlegal.com&rnum=19


"I can recommend Urquhart, Dykes & Lord in London…"
http://groups.google.com/groups?q=%22urquhart+dykes+%26+lord%22&hl=en&lr=&ie=UTF-8&selm=CPmPCDAlvOfyEwJd%40phoenixcomms.demon.co.uk&rnum=6



---------------------------


So, to sum up … just so we know if I've satisfied what you've asked
for ---

UK firms or attorneys mentioned specifically - each one with one or
more references:

Fry Heath & Spence
Boult Wade Tennant
A. A. Thornton & Co.
Drummett Copp
Barker Brettell
Haseltine Lake
Appleyard Lees
Urquhart, Dykes & Lord
Graham Jones
Marks & Clerk
Beck Greener
Paul Wolff
Dave Kiewit
Tim Jackson
Schiller & Kusmer


Although kind of "roundabout" :-)  this should satisfy your request
for " at least two or three external comments on the quality of the
work of any five firms, or at least one comment each on any ten."

If anything I've said isn't clear, please feel free to ask for
clarification.

-K~

Search terms:

To do this search I primarily used the names of the firms and did
exhaustive searches using Google and Google Groups.

I also searched Google Groups for: "patent attorney" recommendation UK
michael2-ga rated this answer:5 out of 5 stars
Very thorough answer.  Thank you very much!

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