Six practitioners give Tracey Yeo an armchair tour of the ever changing face of Intellectual Property practice.
Whither
the IP Lawyer?
Ask
a lawyer what constitutes Intellectual Property (IP) practice and whether it
encompasses Information Technology (IT) practice and you are likely to get a
range of responses.
M
Ravindran, who founded Ravindran Associates, says that whilst there is a
significant overlap between IP and IT work, they are both distinct areas of law,
making it difficult to be an expert in both areas. ‘IP work comprises the
areas of trade marks, patents, designs, confidential information, copyright and
trade secrets,’ said Ravi, ‘whereas IT law refers to law in the virtual
world and includes all the laws relating to the real world flipped inside out in
the virtual world, including IP laws.’
He
explained, ‘Whilst the law of contract applies in the virtual world, there
might be special definitions of offer and acceptance. Domain name disputes are
also often couched in terms of trade mark law.’
To
Tan Tee Jim SC and Tony Yeo, IP and IT mean essentially the same thing. ‘It is
a matter of emphasis; they are both equally concerned with how to protect
intellectual creativity within their existing IP regimes, such as copyright,
designs, patents and trademarks,’ said Tee Jim, who heads Allen &
Gledhill’s Intellectual Property and Technology Department. Tony, who is a
Partner in Drew & Napier and practices intellectual property litigation,
gave an example: ‘IT litigation can be subsumed under IP litigation and would
still involve the protection of general IP rights.’
‘IP
practice in particular is concerned with the protection of all forms of
intellectual creativity whilst IT practice connotes a narrower concern with
technological inventions,’ elaborated Tee Jim. Suresh Sachi, who runs Tan
Rajah & Cheah’s Science Park branch office, added, ‘IP issues may not be
IT related, for instance, an issue involving life sciences.’
However,
Chiam E-Laine of Donaldson & Burkinshaw offered another perspective: ‘I
see an IT lawyer simply as an IP lawyer with a knowledge of current
technologies, who has applied his mind to these issues, taking into
consideration the framework of existing laws and legislation.’
‘The
Things We Do’
Many
of the lawyers agree that IP practitioners are usually involved in only one or
some of the various areas of IP work; and some shared that there are different
demands and challenges arising from the different areas of IP work. ‘Broadly,
IP work can be classified into the following categories: registration,
corporate, litigation and enforcement’, said Suresh, who describes himself as
a corporate IP lawyer, who also performs registration work.
Within
the ambit of registration work, the lawyers explained, were applications for
trade marks, patents and registered designs, and the prosecution of such
applications, for instance, answering the relevant Registry’s objections to a
particular application and sometimes even an element of advocacy.
‘We
attend hearings before the Registrar of Trade Marks in contentious proceedings,
either to oppose the registration of a particular trade mark or to defend its
registration,’ revealed E-Laine.
‘However,
objections or replies to objections in Singapore patent applications are
presented in the form of written submissions,’ informed Kee Leng, who
explained that the substantive aspects of patent examination are performed by
the Australian and Austrian Patent Offices on behalf of the Intellectual
Property Office of Singapore.
E-Laine
and Suresh commented that in registration work, a lawyer has to be very
meticulous and pay attention to detail. ‘Some parts of registration work can
appear mundane, for example, form filling and replies to common objections. Yet
one has to be careful to comply with deadlines as failure to do so can result in
an application being abandoned or additional fees and certain deadlines can’t
be extended,’ cautioned Suresh.
Some
lawyers felt that IP registration work can have very satisfying moments, for
instance, when they succeeded in assisting their clients in getting uncommon
marks registered despite objections from the registry by utilising novel
arguments. ‘I managed to get a distinctive pattern used on leather bags
registered as a trade mark, by arguing that counterfeiters had copied this
pattern,’ recounted one lawyer happily.
Enthused
Kee Leng, who has been involved in IP registration work for 20 years, ‘It is
interesting to deal with a part of the l aw that protects creativity. I get to
know of new developments, products, brands and trade marks all the time.’
Of
the six lawyers, Tee Jim, Ravi and Tony engage in IP litigation and enforcement
work. Explained Tee Jim, ‘I represent my clients in court in enforcing their
IP rights or defending them in resisting allegations of IP infringement.’
IP litigation, the lawyers told the SLG, generally involve the infringement of
trade marks, patents, copyright and passing off issues.
Said
Ravi, who has arranged for raids to assist various companies to enforce their
intellectual property rights, ‘I sometimes work with the police and prosecute
cases on behalf of the Attorney-General in cases of criminal infringement of
copyright and trademarks.’ In the course of litigation work, IP lawyers may
also work with private investigators who specialise in IP work and who perform
raids and surveillance and conduct market surveys for IP owners.
Pointing
out that an IP litigator should have the same qualities as other litigation
lawyers, Tony said, ‘He must like going to court and must be able to stand up
to impromptu questioning from a judge.’
‘I
enjoy researching and arguing a point of law or fact before the court and
feeling the adrenaline flowing,’ replied Tee Jim, when asked what he found
most interesting about his work. Whilst admitting that he enjoyed feeling the
adrenaline rush, Tony warned, ‘it is very important for an IP litigator to
learn new things quickly in each new case and keep a clear open mind. When a
case involves cutting edge technology, it can be both very exciting and
overwhelming.’
The
level of technical knowledge an IP litigator needs to acquire for each case
appears to differ tremendously. ‘In some cases, a lawyer need only understand
the material directly relevant to the case at hand; yet in other instances, he
might need some general knowledge of the field, which can be acquired through
magazines, books and articles,’ said Tony, who has dealt with technical
experts who possess many years of experience, particularly in patent litigation
cases. The challenge for the IP litigator faced with large, even
overwhelming amounts of technical material, revealed Tony, is ‘to make things
as simple as possible so that our arguments come out clearly in court.’
For
Ravi, what is extremely important is that an IP litigator must understand the
theories and ‘primal forces’ in IP, that is, the rights of the creator and
those of the public. ‘A patent holder, for instance, is given rights, then
becomes obliged to make his knowledge public so that all other inventors can see
it. If the rights granted to an IP owner are too large, this can cramp
innovation and is not in the public interest.’
Tee
Jim summed up the difference between a lawyer’s role in IP litigation and
registration work saying, ‘One involves advising clients as to how to avoid
getting into trouble, whilst the other involves fighting for them when they are,
or are about to be in trouble.’
To
do corporate IP work, some of the lawyers assumed a different mantle. ‘We
examine our clients’ IP portfolios and advise them about their IP strategies,
including whether to apply for the registration of particular trade marks or
patents, or whether to grant licences to use their IP,’ revealed Suresh.
E-Laine added that other arrangements that corporate IP lawyers may recommend
for the exploitation and protection of a client’s IP or their technology, for
instance, include entering into joint ventures with relevant agreements and
non-disclosure documents.
Suresh,
who meets many technopreneurs, administrators, accountants and venture
capitalists in the course of his work, says he tries to understand his
clients’ business, technology and business plan and drafts agreements for
them. ‘It is very creative work because it involves building a business and
seeing it grow,’ he said.
In
planning a client’s IP strategy, E-Laine advised, a lawyer has to try to
balance a client’s limited budget and needs, whilst obtaining fullest
protection for the client, sometimes in many jurisdictions. ‘For instance, a
client may possess an invention which has some mechanisms to prevent
reverse-engineering and may wish to use non-disclosure agreements instead of a
patent to protect his invention,’ she explained. ‘Alternatively, for various
reasons, a client may only wish to file for a patent, then sell off the
invention and assign the application to be commercially exploited by another
party, rather than prosecute the application to grant.’
At
times, corporate and litigation lawyers in some firms may team up to provide
even more comprehensive advice to clients. ‘Whilst the corporate lawyer
focuses on making the deal work, the litigation lawyer brings a different
perspective by cautioning clients about possible pitfalls,’ commented Tony.
Practice
in the Present
All
the lawyers agreed that IP practice has indeed changed over the years and that
the pace has certainly increased. ‘With communication by email, clients expect
immediate responses. We can now email messages to several people in various
jurisdictions in one morning and discussions can sometimes be completed very
quickly,’ said E-Laine.
‘Clients
expect and want their lawyers to be partners with them in their business
endeavours …’ contributed Tee Jim, ‘ and expect their lawyers to be
acquainted with their business and to give them practical solutions to their
problems. They can also be more knowledgeable and demanding, less patient and
loyal.’
Suresh
pointed out that costs have decreased and competition is also stiffer,
observing, that ‘whilst the market share has grown with the technology
“push”, more lawyers view IP work as being very lucrative and want to
participate in it.’
In
fact, the lawyers shared that it was very common for IP lawyers to attend
international conferences for various reasons, including networking, learning
and increasing one’s clientele.
‘At
international conferences, we meet not only our new clients, but also our
regular clients to build up and continue rapport with them,’ said Tony. Kee
Leng acknowledged that IP lawyers attend more international conferences compared
to other lawyers dealing with predominantly local work, observing that a large
part of IP work stems from abroad.
However,
increasingly, as more Singapore companies need IP protection abroad, another
benefit of attending international conferences is meeting the members of the IP
profession in other countries. “At conferences, we get to know our
counterparts in various countries so that we know who to instruct for overseas
work,’ she added.
Said
Ravi, who has acquired a wide circle of friends abroad, ‘I now have an
international fraternity to turn to and can look at things in a macro
perspective and enjoy discussions with people of various nationalities.’
The
Future of IP Practice
When
asked what the future holds for IP practice in Singapore, some of the lawyers
acknowledged that globalisation, the presence of foreign lawyers and
Singapore’s accession to more international treaties, for instance the Madrid
Protocol, would bring even further changes to the IP scene in Singapore.
‘With
the Madrid Protocol, European applicants can file their trade mark applications
directly in their home countries, simply designating Singapore as a country
where protection is desired,’ explained Kee Leng. ‘They will not need to use
the services of Singapore practitioners for applications and renewal work and
will only require our assistance if there are objections to their
applications.’
Four
of the lawyers agreed that IP registration work, particularly the filing of
applications and renewals, which currently forms the ‘bread & butter’
work for many IP firms, will generally diminish in importance in the years to
come. ‘With electronic filing, more people will apply for trade marks directly
through the internet and will not seek lawyers until they face an objection or a
problem,’ Kee Leng predicted.
Taking
the cue from more mature economies, Ravi forecast that in the future, Singapore
IP practice may see the emergence of very specialised trade mark, patent and I T
practices, and a breed of specialist IP litigators. ‘Whilst informal
associations already exist with overseas lawyers, we may see more formal
tie-ups; still there will always be room for independent players,’ he said.
Observed
Tony, ‘I have worked with foreigners who are technical specialists in
particular fields and who are also lawyers … in future, there could arise a
demand for dual degree lawyers, particularly in the patent arena, but much will
still depend on whether there is sufficient work relating to that lawyer’s
specialty area in Singapore.’
‘IP
practitioners will have to think of how to add more value to their practices,’
summed up Tee Jim ‘… they will have to be more knowledgeable, especially in
the area of international developments … they cannot simply rely on
registration work.’
Tracey
Yeo
The Law Society of Singapore