Hello, IPO!

8th Jun 2020

What did a group of newly qualified attorneys learn from going behind the scenes in Newport?

Last year, the UK IPO, in conjunction with CITMA, offered a marshalling scheme for newly qualified attorneys, which included welcoming a delegation to the Newport office for a day.

The programme included presentations, workshops and insights from Examiners and Hearing Officers, including Head of Tribunals Oliver Morris and Ex Parte Hearing Officer Mark Jefferiss. The hope was that the attorneys would gain practical tips that would support their future prosecutions. The CITMA Review caught up with them to ask why they took part and how the visit has helped them in their practice.

Backstage access

“This was a fantastic opportunity to attend the UK IPO, as it was the first time invitations were open to newly qualified attorneys,” explains Jasmine Sihre, a Trade Mark Attorney at Lewis Silkin. She adds that she was “keen to link my practice directly with the practicalities and processes of the UK IPO”. Jennifer Heath, an Associate at D Young & Co., echoes this thought, having heard from some of her patent colleagues that they had found a similar visit to be very useful.

Laura Tennant, an Associate Trade Mark Attorney at Burges Salmon, “thought that a ‘backstage tour’ of the UK IPO would be a good experience”, giving her a chance to meet and put faces to the names of some of the Examiners and Hearing Officers that she deals
with on a regular basis.

Robecca Davey, a Trade Mark Attorney at Baker McKenzie, and Dan Hardman-Smart, an Intangible Assets Executive at Stobbs IP, were also keen to see behind the scenes. For Hardman-Smart, the visit was “a great opportunity to see not just what they are doing but how”.

Did it deliver?

When asked if they thought that the day would help them move forward in their practice, Tennant says that she took away some useful pointers. Davey agrees and says she has found the tips on preparing opposition submissions and evidence of use helpful, as well as the advice on hearings. As a result, she “feel[s] more confident about the prospect of conducting an ex parte hearing in the future, having now met a Hearing Officer and come to understand the process better”.

It took Heath as little as 24 hours to see the benefit. The day after the visit, she spoke to a Hearing Officer that she had met while in the course of her practice. “It was nice to put a face to a name and remember that the people working at the UK IPO will do what they can to find the best outcome for parties where it is in the public interest,” she says.

Gavin Shaw, an in-house Trade Mark Attorney at JSP Ltd, has found that the people and departments at the IPO “don’t feel so distant now, which will assist me in future interactions with the organisation”.

Both Sihre and Hardman-Smart found the exposure to the Registry system particularly useful. For Hardman-Smart, this was a “a valuable insight into Registry practice that you cannot get from the Manual”, while Sihre says that, in addition to broadening her appreciation for the “various departments and roles,” the experience will “now assist me in best serving my clients when I communicate with the IPO”.

Julia King, an Associate at Taylor Wessing, has been able to capitalise on what she learned about how Hearings Officers like to have evidence presented and what types of evidence they consider useful. She has put this knowledge into practice in a workshop session to cement and share this knowledge.

Most valuable moments

Davey says that she found the day to be well thought-out overall, but particularly enjoyed the “really informative” talk by Mark Jefferiss. She also describes a working lunch with Oliver Morris and other members of the team as “insightful”. “They were there to answer any questions we had,” she explains.

King also welcomed the insight that she picked up about ex parte hearings, noting that they provide newly qualified attorneys with a good forum in which to practice their oral advocacy skills.

Adam Kellett, a Trade Mark Attorney at Dehns, most valued getting “time to talk with the Examiners” and suggested that it could be extended with similar open days in the future. Tennant, Heath and Sihre agree, with Tennant describing the session as “a great glimpse of the ‘other side’ of trade mark examination”. For Heath, being taken through some example cases proved helpful. She notes that, from a practical perspective, “it was a useful reminder that if you disagree with an examiner, they are open to hearing from you!”

For Sihre, the event highlighted the need – and opportunity – for better communication. “As part of our day-to-day role, interaction with examiners is very much reactive, and the experience showed me that lines of communication between the examiners and attorneys should be open and transparent. This type of insight into the role of an examiner
is rare.” Shaw agrees, saying that he “came away with a much better understanding of various aspects of the role”.

For Hardman-Smart, a face-to-face meeting with officers of the Tribunal Section was invaluable. “We may be familiar with Tribunal practice but hearing their personal dos and don’ts was useful,” he says.

Would attendees recommend the day to colleagues? Both Hardman-Smart and Heath say they would, and Davey has already done so. She also believes that a similar day would benefit colleagues in more senior roles. “While the scheme was aimed at junior-level attorneys, I think it would also benefit mid-level attorneys who are more likely to be working on disputes and could use the opportunity to pick Hearing Officers’ brains on issues they face regularly and get an insight into how the Examiners and Hearing Officers make their decisions.”

Both Shaw and Tennant say the day undoubtedly gave them a better understanding of the inner workings of the UK IPO. Shaw believes that this has given attendees “extra confidence and patience with the world-class systems, which are developing and improving all the time, and confirmed that the IPO is open to feedback to help them do that.” 

With thanks to Becky Knott, Chartered Trade Mark Attorney at Barker Brettell, who gathered this feedback for the CITMA Review.

More CITMA Review features:

Return to listing