27 June 2019

Intellectual Property Resources for Inventors and Small Businesses in the USA

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Jane Lambert

In a post to the US Patent and Trademark Office ("USPTO") blog entitled Intellectual property resources in your area, which was published on 24 June 2019, Mr Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO wrote:
"Providing entrepreneurs, small businesses, and independent inventors with access to intellectual property (IP) resources is one of the major priorities for the USPTO. These entities are vital to our country’s economy, but they often don’t have the same resources that larger entities can leverage to protect their innovations. Because of that, the USPTO oversees several programs to assist with free or reduced-cost help in applying for patents, including the Patent Pro Bono Program, the Pro Se Assistance Program, the Certified Law School Clinic Program, and Patent and Trademark Resource Centers. That’s all in addition to the reduced filing fees we charge to small and micro entities."
Entrepreneurs, small businesses and independent inventors are as important to the British (and probably every other advanced country's) economy as they are to the American economy.  At the very least, we can learn from Mr Iancu's blog post.  British inventors and entrepreneurs seeking US patents and trade marks may even be able to take advantage of some of the facilities and resources that Mr Iancu mentions.

USPTO
The USPTO is the intellectual property office for the USA.  Because patents can be granted for new plant varieties under 35 USC § 161 and new, original, and ornamental designs for articles of manufacture under 35 USC § 171 which are equivalent to plant breeders; rights and registered designs in the UK as well as for inventions it performs functions that are carried out by the Plant Varieties Rights Office as well as the Intellectual Property Office in this country. Unlike the IPO, the USPTO has no responsibility for copyright.  There is a separate Copyright Office within the Library of Congress for copyright and related rights in the USA.

Patent Pro Bono Program
Inventors and small businesses that meet certain financial thresholds and other criteria may be eligible for free legal assistance in preparing and filing patent applications under the Patent Pro Bono Program.   This is a nationwide network of independently operated regional programmes that match financially under-resourced inventors and small businesses with volunteer patent attorneys and patent agents.

Pro Se Assistance Programme
"Pro se" is Latin for "on his (or her) own behalf" and refers to what we would call "unrepresented parties", that is to say, inventors or other applicants who file patent applications without the assistance of a US qualified patent attorney or patent agent.   The Pro Se Assistance Program offers a number of services to the public prior to filing, including:
  • Dedicated personnel to assist with pre-filing questions including:
    • An explanation of different types of application filings
    • Assistance with forms completions and filings
    • Reviewing application (e.g. Specification, Drawings, and Claims) for compliance with current regulations
  • In-person assistance for the general public at USPTO Headquarters at Alexandria in Virginia regarding pre-filing
  • Targeted support to connect applicants with relevant resources and information
  • Online resources found on pro se assistance programme page
The page also contains some very useful videos. It is the resource that inventors and advisors outside the USA are likely to find most useful.

Law School Clinic Certification Program
Participating universities in this programme offer advice and assistance on US patent and trade mark law from selected law students under the supervision of their teachers or other IP professionals. I am delighted to see that the University of California at Los Angeles (which is my alma mater and also that of Mr Iancu) participates in the programme.  A table of universities indicating the services they offer, the geographical area that they cover and the contact details of the organizer appears on the programme page.

Patent and Trademark Resource Centers
These seem to be like our Business and IP Centres. Many are located in public libraries and provide classes and workshops as well as patent specifications, law reports, textbooks and other specialist publications to subscribers.  Some run or host inventors' clubs.  Los Angeles Public Library, for instance, offers:
"computerized searching of patents, trademarks, and copyrights. Library users perform their own searches. Computers are available on a first-come, first served basis. Ask library staff for instructions on use. Use of intellectual property databases is free, but printing is $.25 per page. We also have collections in print and microfilm. During regular library hours, we provide some assistance by telephone at 213-228-7220."
There is a lot of general information on patents, trade secrets, trade marks and other IP rights on the library's web page.  The USPTO lists patent and trade mark resource centres on its PTRC locations by state web page.

Anybody wishing to discuss this article or the resources available to inventors and SME in this or any other country should call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact form.  

15 May 2019

How to make Money from your Invention - Starting your own Business

Jane Lambert











On 13 Sept 2017, I introduced readers to the Inventors Handbook on the European Patent Office's website which suggests four ways of exploiting an invention in its Exploitation Routes page:
  • "A licensing agreement with a company
  • Business start-up: get your idea to market yourself
  • A joint venture 
  • Outright sale of your idea."
I discussed the first way in How to Make Money from your Invention: Licensing on 14 Sept 2017. This article discusses the second option, namely a business start-up.

Before starting on this route inventors should satisfy themselves that they have the right personal qualities. Wherever they live in the UK, a good place to start is Business Wales's Starting up and Business Planning page.  In particular, they should read Is self-employment for you? and complete the Assess Your Personal Qualities questionnaire. There may be options even for those who score badly on that assessment such as employment or a consultancy with a business to be set up by others who are of the right temperament and possess the right skills and experience.  Considerably caution should be exercised by both sides in those circumstances.  Any agreement should be properly documented with both sides taking legal and accounting advice.

The next question for inventors is whether they have the right skills.   Some of these can be taught.  The Business and IP Centre at the British Library and its national network of city centre libraries host free or inexpensive courses and workshops on all sorts of topics from accounting to writing business plans. Other good places to learn include Tech Nation's Digital Academy and the Google Campus.  Another option is to build a team.  Again, that requires caution. professional advice for all concerned and full documentation.  Ideally, there should be a professionally drafted shareholders' or other agreement between the promoters with robust dispute resolution procedures in case things go wrong.

Such an agreement should incorporate or at least refer to a business plan and it goes without saying that the business plan should take account of intellectual property (see Jane Lambert Why Every Business Plan Should Take Account of Intellectual Property 3 April 2016 NIPC News). The business plan should be more than something to impress the bank manager.  It should be the company's road map.  The business plan should coordinate every aspect of the company's activities and policy including research and development, marketing and of course intellectual property (see An IP Strategy for Private Inventors  13 Jan 2019).

The business plan will be relied upon by the company's investors and lenders.  Long term investment to enable the company to buy or hire premises, equipment, vehicles and the like will be exchanged for shares in the company.  That is called "equity investment" and it is usually provided by inventors' friends and family, business angels and private equity or venture capital investors.  Working capital to cover components or raw materials, professional service and other short term costs may be provided by the company's bankers or, increasingly frequently, peer-to-peer lenders.  This is often referred to as "debt".  Lenders may require security over the company's assets but they are unlikely to wish to interfere in its management. Equity investors 0ften want representation on the board. Again, both sides should take professional advice and document any agreement that they may reach in a shareholders' agreement or some other instrument.

Inventors should be aware that very few fortunes are made from a single invention.  It may give their business an advantage for a time but that advantage will usually be eroded as competitors' launching their own new products or services. Research and development and innovation should continue.  Inventors should always be looking for the next gap in the market or other business opportunity.

Anyone wishing to discuss this article or inventions generally should call me on 020 7404 5252 during office hours or send me a message through my contact page.

05 February 2019

Resources for Inventors and other Startups in Northwest Wales

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Jane Lambert

The area coloured bright green on the map may not be the everybody's first choice for setting up a new business but it has a lot going for it:
  1. It is a very pleasant place in which to live.  I have travelled the world but never have I found a more attractive combination of coastal, mountain and pastoral scenery than in the Lleyn Peninsula. 
  2. It is close to four major conurbations, namely Greater Manchester, Merseyside, South and West  Yorkshire and Dubiln
  3. It is part of the Northern Powerhouse and on the freight routes between Dublin and London and Dublin and the ports on the Humber.
  4. It has a fine research university at Bangor which has developed the Menai Science Park in Anglesey (see M-SParc - Anglesey's Science Park 29 Aug 2018  NIPC News) and the Pontio Centre with its FabLab (see The Pontio Centre: A Resource for Inventors, Designers and Makers in North Wales 14 Dec 2018).
Unlike England, there are no local enterprise partnerships in Wales.  Instead, Business Wales offers the same sort of advice and support that used to be provided in England by Business Link under the strategic oversight of the Welsh government.  There are therefore no Business and IP Libraries though Llandudno junction was once part of the PatLib network (see A New Patlib has opened at Llandudno Junction North Wales 15 April 2011 Patlib UK).  The nearest English Business and IP Centre is at Liverpool Central Library. 

As there are no Business and IP Centres in Wales Liverpool Central Library hosts the nearest CIPA patent clinic. Advice on contracts, copyrights and trade marks is also available through specialist clinics at the library.  The only IP clinic in Wales takes place at the Intellectual Property Office in Newport.  A search of the CIPA and CITMA databases suggests that all the patent and trade mark attorneys in Wales practise in the south and mainly in and around Cardiff.

Business funding in Wales is offered by the National Development Bank of Wales which trades under the Banc trade mark.  The Bank has four offices in Wales the nearest being at St Asaph and Wrexham.  According to the "About Us" page of its website, it offers both loan and equity finance.  A list of the funds it manages also appears on its website,   There is also a business angel network known as Angels Invest Wales 

Anyone wishing to discuss this article or any matter arising from it should call me on 020 7404 5252 during office hours or send me a message through my contact page.

13 January 2019

An IP Strategy for Private Inventors

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Jane Lambert

An intellectual asset ("IA") is something that gives a business an advantage over its competitors. No matter how small it may be or how simple its business model, almost every successful business will have such assets.  An  IA may be the business's reputation, its customer list, a way of making or packaging things, a website or even its standard terms and conditions.

A business that possesses such an asset will want to hold on to it and, if possible, make money from it.  Its best chance of doing so is to devise a plan to
  • identify assets likely to generate revenue or some other benefit for the company, 
  • determine the best legal protection for the IA having regard to its value and available resources, 
  • provide a means of enforcing such protection, and 
  • manufacture, license or otherwise make money from the asset.
Such a plan is often called "an intellectual property" or "IP strategy".

Inventing is a business activity.  If an inventor is employed in a research and development capacity, his or her employer is likely to have an IP strategy.  If the inventor is not so employed, he or she would be well advised to develop such a strategy for him or herself.

The starting point for a private inventor must be his or her invention. Is anyone likely to buy it? If so, who will be its buyers and how many will they buy?  Developing, marketing and patenting an invention, not to say enforcing a patent, is likely to be costly.  Unless those costs are likely to be recouped, there is no sense in incurring them.  For many private inventors, this is a very difficult question. The technical elegance of their brainchild may blind them to commercial realities.  This is where membership of an inventors' club can help.  The members of such clubs are not a bad cross-section of the general public. If fellow inventors are unmoved by the invention or see snags their views should be considered seriously.

The next issue to address is putting the invention on the market.  That usually boils down to a choice between making and marketing the invention or licensing others to make and market it.  Some inventors already have their own manufacturing or retailing businesses but many do not.  If they want to make or market the invention for themselves they have to set themselves up in business. They will need to draw up business plans, find collaborators, raise funds, acquire premises, plant and staff and market their inventions to the public. They may subcontract production to a manufacturer in this country or abroad. If they do that, they must ensure that their invention is patented or otherwise protected in the country where the manufacturing is to take place and they will need a very tight written agreement with the sub-contractor.

Licensing is often regarded as an easy option but it is not.  A licensee will incur costs in tooling and marketing. A business will incur those costs only if persuaded that to do so would be worthwhile. Determining whether a licence is worth taking is a type of business planning that few potential licensees have the time or inclination to carry out.  It is therefore up to the inventor to persuade them that it is worthwhile.  Daunted by such difficulties many inventors resort to invention promotion companies or making unsolicited offers to manufacturers or retailers.  Such approaches rarely work and often lead to expenses for the inventor.

Patenting is expensive but may be necessary.   Ideally, the invention must be protected in the countries where it is to be sold and the countries where it can be made. However, such protection may cost many tens of thousands of pounds in filing, translation and renewal fees.  Another problem with a patent is that the inventor discloses his or her invention to the world in return for a monopoly in a single country.  If a patentee has a patent for his invention in the United Kingdom but not the United States there is nothing to stop an American from making and selling the invention in the USA or anywhere else where the invention is unprotected.  There may be other, cheaper forms of legal protection for the invention that are available to the inventor.  Simply keeping shtum about the invention is one option if the invention is a product that is hard to reverse engineer.  Relying on some other IP right such as unregistered design right in the shape or configuration of the product or copyright in any software that may control the device may be others.

An inventor must be able to resist applications for the revocation of his patent or a declaration of non-infringement as well as pursue infringers.  Even with costs caps and cost management civil litigation can be cripplingly expensive. The only way that most businesses can sustain such expense is by taking out adequate IP insurance and the premiums for such cover are not cheap.

An IP strategy can be drawn up at any time and it will be reviewed and updated continuously but the ideal time to devise one is when drawing up a business plan.  That is because the costs of prosecution, procurement, professional services, premiums and so on can be funded and balanced against other expenses.

Anyone wishing to discuss this article should call me during office hours on 020 7404 5252 during office hours or send me a message through my contact form.  

14 December 2018

The Pontio Centre: A Resource for Inventors, Designers and Makers in North Wales

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Jane Lambert

On 1 Dec 2018, I attended a performance of Dylan Thomas – A Child’s Christmas, Poems and Tiger Eggs by Ballet Cymru in the  Bryn Terfel Theatre at the Pontio Arts and Innovation Centre of Bangor University. If you are interested, you can read my review of the performance in Ballet Cymru's Dylan Thomas Programme: The Company's Best Work Ever which I posted on 13 Dec 2018 to my dance blog Terpsichore.

The Bryn Terfel Theatre is just one of a number of facilities at the Pontio. There is also a cinema, restaurant, students; union, bars and caf├ęs and, most importantly, the Hwb which is the Pontio innovation area.  I was unable to visit it on 1 Dec 2018 but here is the description on the "About" page of the Pontio's website:
"Pontio Innovation is about equipping individuals and businesses with the tools they need to succeed in the modern economy. With a focus on transdisciplinary working and rapid prototyping, the Co-Lab, Media Lab, Hackspace and Fablab areas are equipped with cutting-edge technologies. It will boost the University’s cross-disciplinary teaching programmes and encourage collaborative work between students, staff and local businesses. Check out the Innovation Events page for details about what's going on here and read more about the Pontio Innovation philosophy."
For artists, designers, inventors and other makers it is important to translate an idea in the brain or on a sheet of paper into three-dimensional objects that they can show to collaborators, investors and customers. That is where the three-dimensional printers, laser cutters and other equipment at the centre's FabLab can help.

A FabLab is a fabrication laboratory and I have written quite a lot about them in this and other blogs. Readers can find more information and links to some of those articles in Liverpool Inventors Club Re-launch - Fabulous FabLab 28 Jan 2012.  The Pontio offers training in the use of that equipment and access to the machines which can be booked through the centre's website. Details of those courses can be found on the "Innovation Events" page.

There is also some very good information about innovation generally on the "Pontio Innovation" page.  The only topic that appears to be missing from that page is a mention of intellectual property. For the benefit of users of the Pontio innovation space as well as artists, designers, inventors and makers generally I shall try to fill that gap here.

All the things that can be made in the Pontio FabLab and other parts of the Hwb are intellectual assets.  Expenditure of time and money on making those assets can be protected by a bundle of laws known as intellectual property.  Examples of those laws are patents for new inventions, trade marks and the law of passing off to protect brands, registered designs and unregistered design right to protect aesthetic and technical designs and copyright and related rights to protect creative output.

Users of the Hwb's facilities should be aware that the laws that protect their intellectual assets also protect other peoples'.  They must be careful not to copy beyond what is expressly or impliedly licensed, to check for registered rights such as patents, trade marks and registered designs and, wherever possible, to take out specialist IP insurance to enforce their own rights and to resist infringement claims by others.

Anyone wishing to discuss this article or any topic raised in it is welcome to call me on 020 7404 5252 during office hours or send me a message through my contact form.

21 September 2018

Neurofenix is the first Inventor Prize winner


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Jane Lambert

In "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy, 24 Jan 2017 I noted that part of the government's industrial strategy is
"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."
The competition was launched in August 2017 and received over 180 entries.  A shortlist of 10 finalists was announced in NESTA Inventor Shortlist on 31 Jan 2018.  Each of those finalists received £5,000 and mentoring from Barclay's Eagle Labs to perfect their inventions.

The shortlisted inventions have now been evaluated and Neurofenix Limited' is the winner.   Its invention  is the Neuroball  which encouragea stroke patients to perform hand and arm exercises and thereby recover their manual dexterity.

Anyone wishing to discuss this article or inventions generally should call me on 020 7404 5252 or message me through my contact form.

08 June 2018

Trade Secrecy Law changes Tomorrow - check your NDA, Standard Terms and other Agreements

Jane Lambert











Tomorrow is a big day for inventors. It is significant because it is the day on which Directive 2016/943 ("the Trade Secrets Directive") is due to be implemented. Every country in the EU, including the UK, has to bring its laws on trade secrets into line with the Directive by 9 June 2018.  It concerns inventors because every patented invention is supposed to start out as a trade secret and for many other inventions that's the way they remain.

Why was the Directive adopted?
At paragraph (9) of a set of paragraphs known as "the recitals", the European Council and Parliament explained that they adopted the Directive because there are big differences in the way that different countries protect trade secrets giving rise to uncertainty, causing unnecessary expense and impeding new product development in Europe.

What does the Directive do?
The most important provision is art 6 (1) which requires EU member states to "provide for the measures, procedures and remedies necessary to ensure the availability of civil redress against the unlawful acquisition, use and disclosure of trade secrets."

What is a "Trade Secret"?
For the purpose of the Trade Secrets Directive a ‘trade secret’ means
"information which meets all of the following requirements:
(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
(b) it has commercial value because it is secret;
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."
Basically that has always been the position in the UK but that was not the case in every country.

What is meant by Civil Redress?
Basically injunctions (orders by a judge) not to acquire, use or disclose trade secrets in future or the payment of compensation or other monetary relief for unlawful acquisition, use or disclosure of trade secrets in the past.  In some circumstances, injunctions and other relief such as orders for the preservation of evidence or assets can be granted before the issue of proceedings.

Do we have to comply with the Directive as we have voted to leave the EU? 
Yes as the UK remains a member of the EU until 29 March 2019 at the very earliest and we should have to abide by EU law until 31 Dec 2020 under the draft withdrawal agreement or even longer under the proposed backstop agreement. More importantly this Directive works in favour of British business because entrepreneurs and inventors know that for the first time the trade secrecy laws of the other countries of the EU are more or less in line with those of the UK.

What has HMG done to comply with the Directive?
HM government believes that our law of confidence and contract law plus our Civil Procedure Rules already comply with most of the provisions of the Trade Secrets Directive but it has identified a few issues where they do not.  One concerns definitions and the other the time limits within which an action for unlawful trade secret acquisition, use or disclosure must be launched. Also there is some doubt as to whether the Scottish courts have the powers to make the orders required by the Directives. To address those issues, Mr Sam Gyimah MP, Minister of State at the Department for Business, Energy and Industrial Strategy, has signed The Trade Secrets (Enforcement, etc.) Regulations SI 2018 No 597 which will come into force tomorrow.

So what do Inventors need to know?
Even though reg 3 (1) of the regulations makes clear that the existing law of confidence still applies in relation to trade secrets the Directive may give trade secret holders (that is to say, persons lawfully controlling trade secrets) greater rights and powers. Also, we are used to talking about "confiders", "confidantes" and "breaches of contract" while the Trade Secrets Directive introduces new terms time like "trade secret holders", "infringers" and "infringing goods".  It would probably be a good idea for trade secret holders to ask their lawyers to review their terms and conditions, standard contracts and, in particular, non-disclosure and confidentiality agreements to make sure that they are still effective.

Where to get more information?
I have written more about this topic in Transposing the Trade Secrets Directive into English Law: The Trade Secrets (Enforcement etc) Regulations 6 June 2018 NIPC Law. That article links to some of my other articles on that topic. I am also giving a talk on the topic at Barclays Eagle Labs in The Landing on 26 June 2018.  If you want to discuss this article or trade secrets generally, contact me on 020 7404 5252 during office hours or send me a message through my contact form.