The following terms of engagement apply to all work carried out by Stevens Hewlett & Perkins (“SHP”) for our clients, except as otherwise agreed by SHP in writing. The expressions “we”, “us” and “our” shall be deemed to refer to SHP and “you” and “your” shall be deemed to refer to our clients.
Our intention is to provide you with the highest quality of service, handling your instructions with professional skill, care and attention. It is our responsibility to: (a) practice competently, conscientiously and objectively, putting the interests of our clients foremost whilst observing the law and our duty to any Court or Tribunal; and (b) avoid any conflict of interest. We will be liable to you for losses, damages, costs or expenses caused by our negligence or wilful default.
Our Partners and qualified staff are members of appropriate professional bodies and will comply with their codes of conduct.
Certain of the terms may not immediately appear to be relevant to you. Our objective, however, is to build a long-term relationship with you and we take the view that it is appropriate to provide you at the outset with the terms on which we provide all our services.
We shall decide upon and appoint a patent or trade mark attorney who will maintain an overview of your intellectual property (IP) which term, for the avoidance of doubt, shall be deemed to include patent, design and trade mark matters, as appropriate, and who will have overall responsibility for endeavouring to ensure that your requirements are met. We shall notify you of his or her name as soon as practicable after commencing work on your behalf. We will try to avoid changing your Client Manager, but if this cannot be avoided we will notify you as quickly as possible.
We shall report to you all correspondence received, matters arising and deadlines by which action must be taken with regard to your IP and, if requested, agree with you a method of reporting that is specifically suited to your needs. For the avoidance of doubt, you agree that the final decision as to suitability shall be our own.
We shall keep computerised records of all of your IP which is registered and/or applied for, provided that we are aware of that IP. On receiving a reasonable request from you, we shall provide from time to time, as mutually agreed, schedules of such records.
This firm has notified under the Data Protection Act 1998 and will comply with all relevant data protection legislation. By instruction us you are consenting to our use of relevant personal data as appropriate in the course of our professional services, including any transfers of such data outside the European Economic Area and sending you information which we think might be of interest.
Copies of our client and contact lists shall not be supplied to a third party other than for the purposes of record management and maintenance.
Storage of Papers and Documents
After completion of the matter and payment of our costs (including disbursements) in full we will not return to you any documents you provided to us for the purposes of the relevant matter and any other papers to which you are entitled, unless instructed in writing by you to do so. Unless agreed in writing by us we do not agree to deposit any documents in safe custody and normally store all documents and our file of papers for a minimum of 5 years and thereafter we reserve the right to destroy them. We will assume that you are content with this arrangement. We also reserve the right to store files in any way including storage on any electronic medium. If we retrieve papers or documents from storage in relation to continuing or new instructions to act on your behalf we will normally charge for such retrieval. We may also levy a charge based on time spent producing the stored file or documents to you or another person at your request. We may also charge for reading, correspondence or other work to comply with instructions given by you or on your behalf. In the event you instruct the transfer of your work to other professional advisors, we will copy such of the files relating to your work as you request (at your expense) and release the copy file(s) when all our charges have been paid.
Unless otherwise agreed, we will assume that any person within your organisation may instruct us on your behalf, unless they clearly do not have the appropriate authority. Having said that, it is often helpful if you can nominate an individual within your organisation to act as a primary point of contact for us and keep us updated if this changes. 2
We rely on our clients to give us timely, complete and accurate information and instructions. We prefer, where possible, to have oral instructions confirmed in writing in order to avoid any potential misunderstandings. If you cannot avoid providing us with oral rather than written instructions, we will confirm in writing the instructions we have received, as we understand them.
Patent Offices often impose time limits and failure to meet these limits can be fatal to the rights concerned. Whilst it is our responsibility to keep you informed of any relevant time limits, we cannot accept responsibility if you fail to provide us with instructions that are clear, complete and early enough to allow us to act within such official time limits. We will endeavour to inform you of time limits and of actions or instructions that are required, but we do not undertake to give further reminders, incur costs on your behalf, or take other action in the absence of instructions to do so. In this situation, your rights may be lost irrevocably.
If we receive late instructions we may not be able to implement them in time. In which case, again your rights may be lost irrevocably. In the event of late instructions or late payments to us, urgency charges may be incurred which we shall have to pass on to you.
It is important that you inform us promptly of any change in relation to (a) any primary contact; (b) your name, address, telephone/fax numbers and e-mail address; or (c) any change of ownership or your patent, trade mark or other relevant rights. Many such changes have to be officially registered. Please remember that there may be little activity for long periods followed by a situation which requires immediate action. We cannot accept responsibility for any loss or rights as a consequence of your failure to inform us of such changes.
During our work for you we may need to instruct third parties (e.g. attorneys in other jurisdictions) to act on your behalf. We may instruct such third parties directly on your behalf, or alternatively you may need to sign a power of attorney or similar appointment to engage such third parties.
Such third parties are not part of SHP. Whilst we shall endeavour to select third parties we regard as being of good quality, we will not be liable for any default or negligence by such third parties. Given that in many countries professional indemnity insurance or its equivalent does not exist, in the event of any default or negligence by a third party you may not be able to obtain full compensation for any loss sustained. We shall, of course, monitor such third parties on an ongoing basis to ensure that the required service is provided and that the quality of their service is maintained. Where third parties are to be instructed to act on your behalf, it is important that you inform us if the existence or extent of third party compensation is to be a factor in the selection of the third party.
We shall not be responsible for any failure to advise or comment on any matter which falls outside the scope of your written instructions.
Advice rendered by us is provided for the purpose of the instructions to which it relates and for your benefit. It may not be used or relied on for any other purpose or by any person other than yourself without our prior agreement in writing.
If you have the necessary facilities we will be happy to use e-mail for communication with you unless you tell us not to. There are some specific points of which you should be aware:
Where it has been agreed that we are to communicate with you by e-mail, all types of information and documentation may be sent to you by e-mail, unless you identify in writing those types of information that should not be sent over the Internet. Given that communications over the Internet are not completely secure and there are also questions surrounding the confidentiality of e-mail communications, we cannot accept responsibility for any corruption in the information communicated to you or its disclosure to other parties as a result of the interception of such communication.
Viruses or other harmful devices may be spread over the Internet. We take reasonable precautions to prevent these problems by use of virus checking software. As a precondition of our communicating with you by e-mail, we ask you to do likewise.
E-mail is a “reasonable endeavours” communication method. This means that although the message may have been sent, we cannot accept responsibility for non-receipt or late receipt by you of such communications.
Our time and expertise are the core elements of our service. Hence, our charges are normally calculated by reference to the current hourly rates of the staff member concerned applicable at the time the work is done and whether or not the work is completed. However, fixed charges may alternatively or additionally apply in relation to specific tasks. Hourly rates vary according to the level of seniority of each staff member and expertise required and your instructions will be carried out at a level we consider appropriate to providing an efficient and economic service. Hourly charging rates are reviewed periodically and may be increased automatically at that time. In any event, if requested, we will advise you of the current rates applicable to your work.
In appointing us to act on your behalf, you are also authorising us, unless you instruct us to the contrary in writing, to incur such expenses and disbursements as we consider necessary which you will be required to reimburse to us. We will endeavour to consult you before incurring any significant expenses or disbursements. You will be responsible for any expenses and disbursements we incur on your behalf.
Examples of disbursements include, but shall not be limited to, patent office fees and charges from attorneys in other jurisdictions. 3
We reserve the right to charge expenses of travel, accommodation and meals while travelling away from the office and also for postal, fax, telephone and photocopying costs incurred on your behalf.
Whilst our fixed charges and hourly rates are predictable, you should appreciate that other attorneys’ charges and official fees are outside our control since they may be changed without notice and vary with exchange rate fluctuations.
When requested, and wherever possible, we shall provide, in advance, estimates for work to be carried out on your behalf in good faith based on our knowledge at the time. However, as charges may be affected by matters beyond our control and the amount of work involved often cannot be accurately forecast, such estimates will not be binding unless otherwise agreed by us in writing. Only some classes of work are suited to a firm advance quotation. If your instructions change or a matter becomes more complex or time-consuming than envisaged or the circumstances change significantly during the course of the matter, then we will advise you in writing of any revision to our estimate.
We reserve the right to submit invoices to you at stages we consider to be appropriate in the conduct of any matter. Your Client Manager is willing to discuss with you the most appropriate accounting procedures for any particular matter.
We would be happy to render invoices to and accept payment from another person nominated by you (for example, another company in the same group). However, please note that ultimate responsibility for making such payment will remain with you.
We reserve the right to request payments in advance on account of fees and disbursements, particularly in respect of large items such as charges and expenses to be incurred in foreign filings. When we make such a request, we will usually not carry out any instructed work until the requested payment has cleared into our bank account, so advance payments should be made in good time before the due date for the actions required.
We shall maintain a separate client account for any monies paid by you in advance in respect of proposed work and any monies we receive on your behalf in respect of refunds or 3rd party payments. Monies relating to payments in advance will be held in the client account until the proposed work has been completed and will only be transferred from the client account once an invoice for the work has been issued to you, in part or full payment of the invoice. We reserve the right to use monies held in the client account relating to refunds or 3rd party payments we have received on your behalf to pay in part or in full amounts owed to us by you. All interest earned on monies held in the client account remains our property and is not payable to you.
Value Added Tax
(applicable to clients based in the United Kingdom)
Any estimates or quotations given by us are net of VAT, which will be charged as applicable and at the applicable rate when the work is done, on our fees and on those expenses and disbursements that are liable for VAT.
Payment is due within 30 days of the date of our invoice unless we have told you in writing that a different payment date will apply. If an invoice is not paid by the due date, we shall be entitled to charge interest on the amount outstanding (including any expenses and VAT) at 4% over bank rate from 30 days after the date of the relevant invoice. Interest will be charged on a daily basis.
If an account is overdue for payment, we reserve the right to suspend work until all sums outstanding to us are paid in full. You will be responsible for the consequences of the suspension of work, which may include irrevocable loss of, or failure to obtain, rights. Please note that no documentation will be transferred to any other firm nor released to you until payment of our invoices in full.
If you instruct us jointly with someone else you will both be liable for the full amount of our costs.
Any searches you request may be carried out by ourselves, by Patent Offices or by an independent specialist searching firm. Due to the limitations and occasional errors in classifications, indices, computer databases and official records, no search can be guaranteed for comprehensiveness or accuracy. We will endeavour to point out any particular limitations when reporting search results and may recommend extending the search.
Indemnity for Threat of Infringement Proceedings
Before we send any warning in writing on your behalf to a third party, we will ask you to indemnify us against the risks of our being sued for making an unjustified threat of infringement proceedings. The aim of this request is to maintain our objectivity in contentious matters, which would diminish if we were to become a party to any proceedings. We may refuse to act for you if you are not able to provide the requested indemnity.
In general, communications between a UK Patent Attorney and his or her client are privileged under Section 280 of the Copyright, Designs and Patents Act 1998 and communications between a UK registered Trade Mark Agent and his or her client are privileged under Section 284 of the same Act. This means that other people, including the courts, are not entitled to discover the content of such communications where they concern professional advice. However, you should note that there are circumstances in which the privileged status of a letter or other document can be lost. Please let us know if you would like us to give you further information on this area.
All information regarding your business and affairs will be regarded as, and kept, confidential at all times, and will not be disclosed to third parties, unless you instruct us to disclose information or we are compelled to disclose it by law or regulation or in other exceptional circumstances. However, if, on your authority, we are working in conjunction with other professional advisors, we will assume that we are entitled to disclose any aspect of your affairs to them which we deem to be relevant.
In general, we recommend that you restrict the release of, and maintain strict control over, any information not already in the public domain connected with instructions we receive. We would be happy to advise you on the desirability of releasing confidential information to the public in specific cases.
Conflicts of Interest
We cannot act simultaneously for two clients whose interests in the matter on which we are advising conflict, unless (exceptionally) both clients consent to such an arrangement. When potentially taking on a new client, we try to identify conflicts of interest that may preclude us from acting.
Sometimes, conflicts arise later because, for example, our clients acquire new companies or diversify into new areas of business. In such circumstances, we reserve the right to decline to act further, at least in relation to the area of conflict, for one of the clients in question, generally the client with the shorter relationship with us. Because of obligations of confidentiality it is often not possible for us to identify the other client or the subject matter involved when we advise a client that we can no longer act for them.
If a conflict situation arises during our dealings with you, we will discuss the position with you (subject to our obligations of confidentiality) and determine the appropriate course of action. In order to protect your interests, our professional rules may require us to stop acting for you on that matter.
Distance Selling Regulations
Where the Consumer Protection (Distance Selling) Regulations 2000 apply, you will have the right to cancel our engagement or your order for services in accordance with the following provisions.
Where the right of cancellation applies, you may cancel our engagement or your order for services without charge, at any time within 7 working days of receipt of these Terms and Conditions of Service. You must inform us of your decision to cancel in writing (for example by post, fax or email), sent or delivered to SHP. We will refund any amounts you have paid to us on account of fees, expenses, disbursements or otherwise within 30 days of cancellation.
Please note that your right to cancel our engagement will not apply if you agree to us beginning work in relation to your instructions during the relevant cancellation period.
The Proceeds of Crime Act 2002 and the Money Laundering Regulations 2003
We have a statutory obligation under the above legislation to report to the National Criminal Intelligence Service (NCIS) any reasonable knowledge or suspicion of money laundering. Any such report must be made in the strictest confidence. In fulfilment of our obligations neither the firm’s principals nor the staff may enter into any correspondence or discussions with you regarding such matters.
Client Care and Complaints
We value our good relationships with our clients. However, we accept that, from time to time, difficulties and misunderstandings may arise.
If you have any comments or concerns about the services that we provide, or you wish to discuss any aspect of the way in which your instructions are being handled, you should feel free to discuss your concerns with the staff member dealing with your work. If you do not wish to raise your concerns with the staff member involved, please speak to your Client Relationship Partner. If, after such discussions, you feel that the matter has not been adequately dealt with we have a formal written complaints procedure the details of which will be provided, on request.
If you are not satisfied by the outcome of our internal complaints procedures you may have the right to have your complaint reviewed by IPReg (where your complaint relates to a breach of our professional Rules of Conduct within the last 12 months) or by the Legal Ombudsman (where your complaint relates to quality of service within the last 6 months). Information on how to make a complaint to IPReg can be found at: http://ipreg.org.uk/public/what-to-do-when-things-go-wrong/making-a-complaint/ and for the Legal Ombudsman the relevant information can be found at: www.legalombudsman.org.uk
You may withdraw your instructions at any time by written notice to us but we will be entitled to keep your papers and documents whilst there is money owing to us for our costs. We may decline to act further by giving you written notice if we consider it necessary to do so (including, but not limited to, failure by you to settle invoices in full on the due date or to make payments in advance when so requested). We will give you reasonable notice that we are stopping acting for you.
Third Party Rights
It is not intended that any terms of our relationship shall be enforceable by a third party, whether under the Contracts (Right of Third Parties) Act 1999 or otherwise.
Should any of these terms be held invalid the remainder shall continue with full force and effect.
These terms shall be governed by and construed in accordance with the laws of England. The High Court of England and Wales shall have non-exclusive jurisdiction to settle any dispute which may arise between us. To this end, you and we irrevocably agree to submit to the jurisdiction of the High Court of England and Wales and irrevocably waive any objection to any action or proceedings being brought in that Court or any claim that any such action or proceeding has been brought in any inconvenient forum. Judgement in any suit, action or proceedings brought in the High Court of England and Wales shall be conclusive and binding and may be enforced in the courts of any other jurisdiction.