These points are gleaned from a presentation at CIPA on 5 November 2013. A lot of the points are made in the context of what a barrister might contribute beyond a Patent Attorney that had right of audience in that particular court by virtue of litigation certificates. Other points simply constitute general advice.
1. Barristers will be able to advise on and take advantage of areas of law that can impact a patent trial, but which a Patent Attorney is unlikely to be familiar with, such as estoppel, criminal aspects of IP law, jurisdictional points, human rights issues, EU regulations, negligence and judicial review.
2. A barrister will have more expertise in how to prepare evidence, and in particular is more likely to be able to judge when an expert witness is not suitable.
3. A barrister is more likely to know all the court procedures that need to be followed, such as which costs need to be submitted to the court.
4. Barristers can be used for general patent advice and opinions, for example on infringement, validity, trade mark registrability and prospects for success in opposition.
5. Barristers should be briefed as early as possible in litigation, and can be used for early advice on whether or not you will succeed.
6. It is important to choose a barrister with sufficient technical experience. Barristers will less than 5 years of experience may not be suitable.
7. Barristers are treated as minor deities by Patent Attorneys. However they can be beauty paraded and costs can be negotiated.
8. Barristers have familiarity with how best to conduct a trial. They are able to ‘think trial’ and focus on the important issues which will determine the outcome.
9. As a general piece of advice about involving solicitors, Patent Attorneys are unlikely to have access to the same level of resources for running a case at trial and the hourly rates of solicitors could be less than the Patent Attorneys are charging. Patent Attorneys will find that their day to day prosecution is not possible whilst a trial is happening.
10. However, for relatively simple cases where only patent law issues are involved and costs must be minimised then it might be best for these to be handled by Patent Attorneys, without assistance from barristers or solicitors.