IP Bar Association - www.ipba.co.uk |
The Intellectual Property Bar Association is the specialist bar association
for barristers practising intellectual property law in England and Wales.
Intellectual property is a generic term which includes patents, registered trade marks, passing off, copyright, registered and unregistered design rights, performers' rights, trade secrets and breach of confidence. Members of the IP Bar have also been instructed in recent high-profile privacy and media law cases.
Many members of the IP Bar graduated in sciences before being called to the Bar and some also have PhDs. Consequently members of the IP Bar are also instructed in non-IP cases where complex scientific or technical issues are involved, particuarly computer-related disputes and technical commercial litigation. Members of the IP Bar have particular expertise in the effective cross-examination of scientific expert witnesses in relation to disputed issues of scientific fact of opinion.
Only a small percentage of a IP barrister's time is spent on non-contentious work. The nature of intellectual property is that it generates a large amount of litigation. Much of the junior practitioner's time is taken up with making and preparing for applications for interim injunctions and other interim relief. This involves a great deal of paperwork, as well as appearances in court. As practitioners become more senior, they tend to do less interim work and take on more full actions, which can be extremely complex and lengthy.
Members of the IP Bar appear principally in the High Court and above. At first instance, patent and registered design cases are heard before specialist Patent Judges. Specialist patent judges were first introduced in this country in 1949. They have proved an outstanding success, providing a quicker and cheaper procedure toether with a more reliable and predictable outcome. Other IP cases (e.g. trade marks, passing off and copyright) are brought in the general Chancery Division.
Since September 1990, there has been an alternative specialist forum for lower value patent and design disputes, the Patents County Court. The court's special jurisdication was expanded in 2005 to include registered trade marks, including Community trade marks. The present Judge of the Patents County Court is an IP specialist, His Honour Judge Birss QC, who was appointed in October 2010. Since Judge Birss’ appointment, the Patents County Court has undergone a program of reform intended to reduce the cost of IP litigation and thereby provide a forum particularly suitable for resolution of the IP disputes of individuals and SMEs. The Patents County Court is situated in the newly-built Rolls Building in Fetter Lane, where it sits alongside the High Court Patents Court and the other courts of the Chancery Division.
Members of the IP Bar also appear in the UK Intellectual Property Office (formerly the Patent Office), the European Patent Office in Munich, the UK Trade Marks Registry, and the Community Trade Mark and Design Office (commonly known as “OHIM”) in Alicante, Spain. European Union law has had a significant impact on IP law, and members of the IP Bar also regularly appear in the Court of Justice of the European Union and before the EC Commission.
Members of the IP Bar are also instructed to advise upon and appear in arbitrations, particularly where the dispute concerns an IP licence agreement, the sale and purchase of IP rights, or issues of a complex scientific or technical nature. As with all other arbitrations, the arbitrators may sit in London or in such other location as the parties may decide.
Like all barristers who are in private practice, members of the IP Bar are instructed principally by firms of solicitors. However, there is also a long tradition at the IP Bar of being instructed directly by Patent and Trade Mark Attorneys. Several members of the IP Bar also accept instructions direct from the public ("Direct Professional Access").
Many intellectual property disputes have an international element. In particular, actions are often brought simultaneously on equivalent patents in several jurisdictions or on an IP licence agreement having effect throughout the World may be governed exclusively by English law. It is thus occasionally useful for members to be able to take instructions direct from foreign lawyers. This can be done:
(a) where the work relates to matters or proceedings essentially arising, taking place or contemplated outside England and Wales and is to be substantially performed outside England and Wales; or
(b) where the lay client carries on business or usually resides outside England and Wales, provided that the instructions emanate from outside England and Wales and the work does not involve the barrister providing advocacy services.
Members of the IP Bar in private practice are, of course, in sole practice, but they are grouped in several “Chambers” for administrative purposes. A barrister’s Chambers is not a firm and barristers in a particular Chambers are not in partnership together. Each barrister practises independently of the others and profits are not shared. A list of all members of the Intellectual Property Bar Association in private practice and their respective Chambers and contact details are available on this website.
Naturally, different barristers will have different areas of particular expertise and different levels of experience. The clerk to each set of Chambers will be able to match a barrister of suitable experience and expertise to the problem in hand, and to give an indication of the fees which would be charged.
Membership of the Intellectual Property Bar Association is also open to employed barristers practising intellectual property law. Contact details for all employed barristers who are members of the IP Bar Association are also available on the List of Members on this website.
For someone who has a serious interest in joining the Intellectual Property Bar, it is usually possible to arrange "mini-pupillages" whereby he or she can spend a few days in a set of Chambers, seeing the nature of the work which is done. This course of action is highly recommended for any student thinking of the Bar as a career. Mini-pupillages can be arranged by contacting the clerks in Chambers.
The Intellectual Property Bar Association was originally founded in 1972 under the name the “Patent Bar Association” with the objects of discussing matters of special interest to the Patent Bar of England and Wales, passing resolutions and making recommendations in relation thereto and generally to represent the interests of barristers specialising in the patent and trade mark fields. The name of the Association was changed to the Intellectual Property Bar Association in 1996 to reflect the fact that it represents barristers practising in intellectual property generally. There are currently over 100 members of the Association.
The IPBA holds an Annual General Meeting in the Autumn of each year at which the Chairman and other officers of the Association are elected for the forthcoming year. This is usually the only formal meeting needed in the course of a year. Other matters can generally be dealt with by informal consultation.
The Chairman of the IP Bar Association keeps in reasonably close contact with those concerned with reforming the law of intellectual property, mainly at the UK Intellectual Property Office, the Department of Business, Innovation and Skills (BISS), and the Patents Court Users Committee. Both procedural and substantive law changes are frequent in this area, and the IPBA sees the representation of the views of members of the IP Bar to those responsible for such changes as very important.
Any member of the Bar who practises "primarily and habitually in intellectual property matters including patent, registered trade and service marks, passing off, design and copyright matters" is eligible for membership of the Association. There is an annual subscription fee of £25. The pupils of members are also eligible for membership. Further details may be obtained from the Secretary of the Association whose contact details appear under the “Contacts” tab on this website.