Intellectual property law: area of practice (barristers)
Intellectual property (IP) practice broadly falls into two categories: ‘hard’ IP, which mainly involves patents, and ‘soft’ IP, which covers trademarks, passing off, copyright, designs, database rights and breach of confidence. The subject matter can include anything from detailed technology through to protection of brands or artistic works.
Clients range from individuals to huge multinationals. Barristers are typically instructed either because court proceedings are likely, for example a letter for action has been received, or because a client wants advice, such as whether they can launch a new product.
A typical case takes one to two years to get to trial – and longer if it goes to appeal; however, many cases settle before trial. As well as court proceedings, barristers can be involved in the registration of a patent, design or trade mark at either the national or European level. You typically have many cases on the go at the same time.
IP practice involves a lot of advisory work, paperwork and written advocacy although, if a case does not settle, disputes are generally resolved at a hearing, so oral advocacy is involved too. Virtually all of the work is associated with commerce, even if your client is an individual. That is why a lot of cases settle: commercially, it is often better to have certainty rather than the risks of going to court.
Opportunities for advocacy in intellectual property law
A real advantage of an IP practice for junior barristers is that you can appear at hearings in the Intellectual Property Office and the Intellectual Property Enterprise Court (which used to be called the Patents County Court), where smaller IP cases are heard. Costs are capped, which means that junior IP barristers can get into court, including conducting trials, on their own. Larger cases are brought in the Chancery Division of the High Court, and QCs are often instructed, so junior barristers are often led.
The vast majority of IP barristers are members of chambers in London, and there is little travelling as most cases are heard in London. Like everything, IP practice goes up and down but the workload is fairly steady. When you’re busy, you often have to work long hours, especially during a trial, when you have to work at weekends. However, trials are typically quite short: more than one or two weeks would be unusual.
You can sometimes fit in a last-minute holiday if a case settles shortly before trial and you can usually take a decent break when the High Court closes over the long vacation in August/September.
Types of cases in intellectual property
This area of practice is very fast-moving, so there is plenty of intellectual stimulation. A lot of IP law is harmonised by EU law, so you need to keep on top of European judgments as well as English decisions. There are also likely to be substantial changes and developments over the coming years as a result of the UK’s EU referendum.
It’s therefore a very interesting and evolving area of law. Cases are factually interesting – often involving well-known brands or people, or cutting-edge technology. You have to get into the commercial nitty gritty – it’s fulfilling to find out about clients’ businesses and the commercial reality of the law that you practise.
IP cases that students should know about
There is a whole range of recent judgments that aspiring IP barristers can read into and which law students may already have come across. The Supreme Court has ruled on passing off in Starbucks v. Sky (about Sky’s NOW TV service) and registered designs in Magmatic v. PMS (about the Trunki suitcase). The Court of Appeal has addressed trade marks in Comic Enterprises v. Twentieth Century Fox (the Glee TV show and UK comedy clubs) and Maier v. ASOS (about the ASSOS brand for cycling gear).
A challenge to plain packaging of tobacco products has recently been heard (British American Tobacco v. Secretary of State for Health) addressing IP rights affected by the legislation.
What to expect as a pupil in IP law
Pupils work similar hours to their supervisors. A busy five-day week is to be expected but you may need to work some evenings and weekends; and during a trial pupils will often work long hours. Typical pupil tasks include drafting pleadings, attending conferences, researching points of law, attending court with your supervisor and having input into skeleton arguments.
Most work is paper based and many IP sets rotate pupils through different supervisors to ensure that they experience the full range of IP law. There may be opportunities for advocacy in your own right during your second six.
Types of law practised by an IP barrister
- Intellectual property
GUY HOLLINGWORTH is a barrister at ONE ESSEX COURT. He graduated from Brunel University in 1997 with a degree in industrial design and was called to the Bar in 2001.