Kate O’Rourke used her inaugural speech as ITMA President to outline her priorities, one of which was to see IP Pro Bono service come to fruition. In an interview with Managing IP she revealed that ITMA’s application to the Privy Council for a Royal Charter included a commitment to pro bono work.
The service has now been launched, and so far over 15 firms including Bird & Bird, Baker & McKenzie, Wood IP and Hogan Lovells have pledged their support. But it didn’t happen overnight, according to O’Rourke. It took a few years of discussions between members of various IP professional associations. “The idea has been around for a long time but the chat was formalised two years ago and a Working Group was set up,” she said.
Why it was set up
Action had to be taken because there wasn’t an appropriate structure which would allow more IP practitioners to do contentious IP work on a pro bono basis. “It was all completely ad hoc. Everyone tried to help. So for example if a call came to ITMA office the president at the time got the call,” O’Rourke explained, adding that the UK IPO, a supporter of the service, do get enquiries too.
She continued: “There is already a scheme for people who need IP advice such as searching and filing, but if it comes down to a battle on the contentious side then a lot of the small businesses or individuals don’t know where to start and can’t necessarily afford a solicitor.”
This situation is unlike other areas such as housing and family law which existing pro bono services tend to prioritise. As we reported last week, the risk is that keen IP practitioners may well be missing out on opportunities to help people who cannot afford IP advice and representation.
“We thought there was a space to do something very similar to LawWorks,” said O’Rourke, who describes IP Pro Bono as a “clearing house”. “We’ve been in touch with them as well as the Bar Pro Bono Unit and everyone is really supportive.”
What volunteers and users should expect
O’Rourke explains that volunteers won’t feel overwhelmed: “This is more structured. It shares the burden because the case officers and advisers will rotate. For example as a case officer you won’t be on call all the time.” Apart from filtering the enquiries, the case officer will also monitor the workload to know how many people can be helped at a given time.
More importantly, the quality of advice will be the same. “The adviser takes on the matter as a normal file in his or her firm. We’re not treating these clients as different. The client care obligations will be the same and they will get the same level of expertise and quality of service as if they were paying clients. Everyone is committed to that,” says O’Rourke.
The service is of course free but clients will be responsible for any disbursements such as court fees. “It’s important to set out to the client what you’re going to provide. We’ve prepared terms of engagement for attorneys who need it.”
During the planning stage, professional insurance was a concern. “We had to make sure their [volunteers] professional liability insurance covered the pro bono work. We’re now happy it’s not an issue,” O’Rourke said. In her view, workload and awareness are the main likely challenges.
She is optimistic but yet cautious about uptake of the service, from a user and volunteer perspective. “What we don’t know is what the demand would be, whether we will be inundated with work or have nothing to do. It’s just impossible to tell even though we know there is a need. We want to get it out and start work,” O’Rourke said, adding: “The right people need to find out about the scheme.” She expects some “targeted promotional work” to be done and hinted that the service may “evolve” depending on findings after about a year or so.
O’Rourke also confirmed that IP Pro Bono will take on the workload of own-it, the IP information project, which has now discontinued its advisory service. When asked about the prospects of getting more volunteers from across country, she said: “IP Pro Bono is a national programme so I don’t think there will be a problem having firms from around the country join the scheme.”
Furthermore, her hope is that there won’t be just one person in a volunteer firm willing to support. “Some of the firms that are involved are large firms so there may be someone else or others at the firm who can help which means the firm can take on another matter.”
At the end of the interview I asked why she is passionate about pro bono. She replied: “The whole basis is about access to justice, which is one of the key cornerstones of British society.”
A judge’s perspective
O’Rourke mentioned that Hacon, who was a member of the Working Group, was worried about justice being done and the rise in litigants-in-person in the IPEC – something that he spoke about during his speech at the launch event. This was why he called on IP practitioners to set up the service as soon as possible. In an interview with Managing IP the judge spoke about his experience and views on the service.
“Most weeks I’m dealing with applications on paper from litigants-in-person and in court I see one every two months or so”, Hacon said. The former is more difficult to deal with. “With written applications sometimes it can take a huge amount of time to work out what they want or what the case is all about.” District Judge Janet Lambert, one of the judges of IPEC’s small claims track, also shared a similar experience during my brief chat with her at the launch event.
Hacon said copyright and designs are the top two areas in which he sees litigants-in-person the most, but there are the occasional trade mark or passing off disputes.
Where a litigant-in-person is on one side and a represented party on the other, it is not uncommon to see a judge stepping in to provide guidance to ensure justice is done. This often takes up the court’s time and resources – an issue the judiciary in England and Wales have flagged up. Mr Justice Colin Birss identified this when he was in charge of the Patents County Court (now IPEC).
Hacon expressed a similar experience: “It’s their right to appear in court unrepresented and part of my job is to deal with that. That said, inevitably, they take up more time than parties with professional representation.” This is why he urged practitioners to assist the court by taking up pro bono in contentious IP matters.
Be ready to explain
Litigants-in-person in the IPEC should not be surprised if the judges ask whether professional advice had been obtained. “It seems to me there really would be no excuse for any litigant to come to court without professional advice, though it’s still their entitlement not to, but I would certainly want to know why they were refusing to take advice when it’s been offered for free,” says Hacon.
“I hope they’ll spontaneously find out about this pro bono scheme or if they don’t know I’ll certainly direct them towards it. I’m hoping that would hardly ever happen,” he added.
Nothing to fear
No doubt there will be some firms or IP practitioners who are in two minds whether or not to volunteer; the IP STARS survey this year revealed a myriad of reasons for this. Nonetheless, the key finding from the survey was that the majority of IP practitioners would do pro bono work if presented with the opportunity.
I asked Hacon whether he had received any concerns from practitioners about the service. “No. The concerns I’ve received were about how things worked until now where the adviser becomes unhappy because they’re doing a lot of unbillable hours work and find it very difficult to move on.”
Hacon said the service is “designed to get around” this concern. He also highlighted the flexibility of the service which could see those clients who have some means to pay directed to an affordable service or only assisted up to a certain stage.
This is perhaps why Hacon does not believe the service would result in loss of work. “I doubt that very much,” he said in an assured manner. “I think the overall effect is that it would not to change the amount of work that professionals will get,” the judge added, and then explained: “For the most part of this kind of work it’s either the litigant-in-person goes ahead and does it themselves or the litigation will fizzle out which means legal professionals won’t be getting that work anyway.”
What advice would you give those firms or individuals thinking of joining? I asked Hacon. He simply said: "Sign up."
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