27 August 2014

Funding your Invention: R & D Tax Credits









I am often asked about where to get funding for one's invention. I mention the usual such as triple F (friends, fools and family), business angels and venture capitalists but often overlook one of the most obvious which is R & D credits. This is a very generous deductible allowance against corporation tax which can actually be a cash rebate for companies that are not liable to pay corporation tax.

There are two schemes: one for small and medium enterprises which has existed since 2000 and the other for larger enterprises which has existed since 2002.  According to HMRC's Research and Development Tax Statistics  which was published on 15 Aug 2014 over 100,000 claims have been made for R & D tax relief since he scheme was launched in 2000 and some £9.5 million has been allowed or paid out in that time.

In R & D Tax Credit Statistics which I published in my Patent Box and R & D Credits blog on 25 Aug 2014 I compared the claims for R & D tax credits and the number of patent applications by region in 2013 and found a remarkable correlation.

R & D Tax Credit Claims and UK Patent Applications 2013


Region
Claims for R & D Credit
Patent Applications
South East
3,030
2,822
London
2,715
2,588
East
1,630
1,802
North West
1,595
1,259
West Midlands
1,280
1,180
South West
1,265
1,368
Yorkshire
1,065
984
East Midlands
1,020
742
Scotland
905
900
North East
545
314
Wales
425
539
Northern Ireland
345
236

Further information on R & D tax credits can be obtained from HMRC's website.  Also, I cover developments in tax law relating to IP in my Patent Box and R & D Tax Credit blog. Our chambers are almost unique in that our intellectual property specialists work under the same roof as Atlas Tax Chambers and share the same clerks. We can thus provide comprehensive IP and corporation tax advice to businesses that invest heavily in high technology. Should anyone wish to discuss this article or any of the topics referred to he or she should call us on 020 74404 5252 during office hours or contact our clerks through this form.

02 August 2014

USPTO Annual Inventors' Conference - something we should do here





Every year at this time of the year the US Patent and Trademark Office opens its doors to private inventors and puts on a conference for them. I have mentioned this several times before (see "US Patent and Trade Mark Office helps Independent Inventors"  11 Sept 2005). Last year it was cancelled owing to wrangling between the President and Congress over the budget (see "Politicians wrangle at Inventors' Expense" 12 Oct 2013). Happily a conference is taking place this year between the 15 and 16 Aug.

There is an impressive agenda with star speakers one of whom is the serial inventor Woody Norris. Here is a link to talk he gave about two of his inventions.  The attendance fee is US$90 which is just £53.50 at the current rate of exchange.  Independent inventors are taken seriously in America - not mocked or patronized as they are so often elsewhere. We really should do something like this here.

The USPTO also provides a comprehensive portal for inventors resources which include information on patents and trade marks, inventors' assistance, pro bono services and an excellent newsletter.

25 July 2014

UK slumps to Ninth Place in European Patent Applications

According to the European Patent Office the UK has slumped from fifth place in the number of applications for European patents in 2004 to ninth in 2013. There were 6,469 European patent filings from the UK in 2013 which was an increase of just 7 from the 6,462 in 2004. By contrast, there 32,022 from Germany compared to 28,221 in 2004 and 12,417 from France in 2013 compared to 9,656 in 2004. But the real growth in applications has come from China (22,292 in 2013 compared to 1,880 in 2004) and South Korea (16,857 in 2013 compared to 5,721 in 2004).

For a more complete picture I have compiled the following table of the top 10 applicant countries based on European Patent Office data:

Country
2012
2013
USA
63,198
64,967
Japan
51,791
52,437
Germany
33,850
32,022
China
19,182
22,292
South Korea
14,791
16,857
France
12,285
12,417
Switzerland
8,129
7,966
Netherlands
6,489
7,606
UK
6,666
6,469
Sweden
4.654
5.094

The UK's performance is even more depressing when the number of applications per million inhabitants are taken into consideration (see the table on page 15 of Facts and Figures for 2014 that can be downloaded from the "Publications" page of the EPO website). The UK comes 16th in that league with 72 European patent applications per million inhabitants.  Top of the list is Switzerland with 832 European patent applications per million inhabitants followed by Sweden (402), Finland (360), Denmark (347), Netherlands (347) and Germany (328). Japan comes 9th with 177 European patent applications per million inhabitants, France 10th with 148, South Korea 12th with 129, the Republic of Ireland 13th with 115 and the USA 15th with 107.

Why does the UK do so badly in the number of applications to its home patent office in comparison with its global competitors? I used to think that it was because of the high cost of enforcement in the UK compared to France, Germany and the Netherlands. The rule changes limiting the costs and duration of proceedings in the Patents County Court (now IPEC) in October 2010 addressed that problem but  the number of European patent filings from the UK has actually fallen from 7,146 in 2010 to 6,469 in 2013.

Paradoxically a report by Silicon Valley Bank on Innovation Economy Outlook 2014 published this week paints a rather rosy picture for the UK. This report may well contain the answer. Much of the UK's growth has been in the service sector, especially financial and professional services and information technology for which patents are not available. Manufacturing in the UK is less important than it is in our continental and East Asian competitors.

If that is the explanation it suggests a failure of Coalition policy since 2010 to rebalance the British economy from one that is heavily dependent on services and the public sector to an economy based on manufacturing and exports.

11 July 2014

If you think someone has infringed your patent talk to a lawyer first

Royal Courts of Justice

























Litigation is supposed to be the last resort for any kind of dispute including those over patents or other types of intellectual property. For most cases the first step towards settlement it a complaint to the person who has harmed you with a request to stop and maybe a request for compensation. However if you do that in certain types of intellectual property disputes that could land you in a whole heap of trouble.

That is because s.70 (1) of the Patents Act 1977 provides:
"Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) below, bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below."
There are similar provisions in other enactments relation to design rights, registered designsCommunity designs and trade marks including Community trade marks.

The relief to which s,70 (3) and the corresponding provisions of the other statutes and statutory instruments refer is:
"(a) a declaration or declarator to the effect that the threats are unjustifiable;
(b) an injunction or interdict against the continuance of the threats; and
(c) damages in respect of any loss which the claimant or pursuer has sustained by the threats."
Those damages can be heavy. In SDL Hair Ltd v Next Row Ltd. and Others [2014] EWHC 2084 (IPEC) Judge Hacon awarded damages of £40,500 against those who had threatened patent infringement proceedings against the distributor of a competing product and a well kn own shopping channel.

The threat need not be formal, explicit or even uncivil but it must be such as to leave a reasonable persob in no doubt as to the consequences of non-compliance.  In Luna Advertising Co Ltd v Burnham & Co. (1928) RPC 258 one of the defendant's reps visited a customer of the claimant and complained that a sign exhibited outside the customer's premises infringed his boss's patent and asked for it be removed. Granting an injunction against the defendant Mr Justice Clauson said
“I think that an interview of this kind … between business men, although nobody speaks of solicitors and writs, has no real meaning except to convey … that the threatener has legal rights and means to enforce them … in the way in which they are naturally enforced, i.e. by legal proceedings.”
Lawyers and patent and trade mark attorneys have to be particularly careful because they have no special protection merely because they are carrying out their clients' instructions.

There are however a number of exceptions and defences in the Act.

First, and most obviously "the person aggrieved" who may be the person to whom the threat is made or his or her supplier will not prevail against the person making the threat if that person can show that the conduct of which he or she complained would infringe a patent. However, a new subsection (2A) inserted by s.12 of the Patents Act 2004 now provides that the person aggrieved will still win if he or she can show that the patent was invalid in a relevant respect unless the person making the threat can show that at the time he she made the threat that person did not know and had no reason to suspect that the patent was invalid. As you might expect a lot of complex and expensive litigation begins with an action  for groundless threats, a counterclaim by the defendant for patent infringement and a counterclaim to the counterclaim for revocation of the patent.

Another exception is provided by s.70 (4):
"Proceedings may not be brought under this section for -
(a) a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process, or
(b) a threat, made to a person who has made or imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or process."
This subsection was also amended by the 2004 Act. Until the subsection was changed threats to bring proceedings in respect of making or importing an allegedly infringing product were excepted but not threats in respect of other acts. Consequently patentees and their lawyers had to be very careful when corresponding with businesses that made or imported and distributed the allegedly infringing product. Needless to say they still have to be careful when dealing with distributors or other intermediaries of an allegedly infringing product.

Yet another amendment brought about by the 2004 Act was made to s.70 (5).  The subsection now reads:
"For the purposes of this section a person does not threaten another person with proceedings for infringement of a patent if he merely -
(a) provides factual information about the patent,
(b) makes enquiries of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed as mentioned in subsection (4)(a) above, or
(c) makes an assertion about the patent for the purpose of any enquiries so made."
Thus, merely sending a specification to an alleged infringer is not a threat but patentees have to be careful how they respond to any reply. If the recipient of the specification asks "Why have you sent me this?" it is important not to reply "Because you have infringed the patent" or words to similar effect.  In settlement negotiations or mediation parties often mention the possibility of litigation when trying to persuade the other side to make concessions. If uttered in any other context such statements would be actionable threats but the Court of Appeal has held in Unilever plc v. The Procter & Gamble Company [2000] F.S.R. 344 that threats made in bona fide settlement negotiations cannot be referred to in subsequent proceedings. However, the negotiations must be genuine. Merely heading a threatening letter "without prejudice" will not do (see Kooltrade Ltd v XTS Ltd [2001] FSR 344, [2001] ADR LR 7/11).

Supplementing the amended s.70 (5) the 2004 Act inserted a new subsection (6) into s.70 of the 1977 Act which provides yet another defence:
"In proceedings under this section for threats made by one person (A) to another (B) in respect of an alleged infringement of a patent for an invention, it shall be a defence for A to prove that he used his best endeavours, without success, to discover -
(a) where the invention is a product, the identity of the person (if any) who made or (in the case of an imported product) imported it for disposal;
(b) where the invention is a process and the alleged infringement consists of offering it for use, the identity of a person who used the process;
(c) where the invention is a process and the alleged infringement is an act falling within section 60(1)(c) above, the identity of the person who used the process to produce the product in question;
and that he notified B accordingly, before or at the time of making the threats, identifying the endeavours used."
S.70 does not apply to threats to sue abroad unless the person making the threat threatens proceedings in this country too.  Other Commonwealth and a few former Commonwealth countries such as the Republic of Ireland have similar provisions in their patent laws but the United States does not. A few countries actually go further than the UK in that they provide an action for groundless threats for copyright infringement.

There have been calls from time to time by various interest groups to abolish this cause of action and this legislation has been considered recently by the Law Commission. In their report Patents Trade Marks and Designs: Groundless Threats the Law Commission recommended that the cause of action be retained but that the law should be reformed to permit some communication with distributors and lawyers and patent and trade mark attorneys should be exempted from liability.

Threats actions in respect of threats of patent, registered design and registered Community design infringement proceedings should be brought in the Patents Court or the Intellectual Property Enterprise Court ("IPEC"). Proceedings in respect of trade marks, unregistered designs or unregistered Community designs can also be brought in IPEC or the Intellectual Property list of the Chancery Division or any country court that is attached to a chancery district registry such as Manchester, Leeds, Liverpool or Newcastle.

Having cut my teeth in intellectual property litigation in the North of England I have probably seen more threats actions than most members of the intellectual property bar. I was counsel in one of the leading cases on this cause of action. This is a complex area of law in which you can easily get into trouble. If anybody wants to discuss this article or any instance where a threat has been made he or she should not hesitate to call me on 020 7404 5252 during normal office hours or complete my contact form. I am also on twitter, Facebook, Linkedin, G+ and Xing.

21 April 2014

How the IP Bill affects Inventors

Source Wikipedia

















The Intellectual Property Bill has completed its passage through Parliament and will shortly become law. Although most attention focused on HM government's proposal to criminalize registered design infringement the Bill makes a number of changes to British patent law which will affect inventors.

Overview 
This is a very short legislative instrument consisting of 24 clauses in 4 Parts and one Schedule.  Part I which consists of 14 clauses relates to registered design, registered Community design and unregistered design right law. Part 2 is concerned with patents, Part 3 with amendments to the Freedom of Information Act 2000 which will prevent premature disclosure of sensitive technical or commercial information relating to research and a new duty upon the Secretary of State for Business Innovation and Skills to deliver an annual report to Parliament on how the Intellectual Property Office and IP legislation generally have facilitated innovation and growth in the UK and Part 4 with the implementation of the Bill once it becomes law. The Schedule contains minor amendments to the Patents Act 1977.

Part 2: Provisions relating to Patents
These are as follows:



Infringement: marking product with internet link
At present s.62 of the Patents Act 1977 protects an infringer from an award of damages or other pecuniary relief if he or she can prove that that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed. The appearance of the word "patent", "patented" or any other word or words expressing or implying that a patent had been obtained shall not suffice unless the number of the patent accompanies the word or words in question.

Clause 15 inserts the words “or a relevant internet link” after "the number of the patent" in s.62. The words "relevant internet link" are defined by a new sub-section (1A) to s.62:
"The reference in subsection (1) to a relevant internet link is a reference to an address of a posting on the internet—
(a) which is accessible to the public free of charge, and
(b) which clearly associates the product with the number of the patent.”
It is still necessary to notify the public of the number of the patent but it is no longer necessary to engrave, emboss or otherwise mark it on the product itself. That concession should make for cost savings and improve the appearance of the product concerned.

Opinions Service
S.13 of the Patents Act 1974 inserted a new s.74A and s,74B into the Patents Act 1977 which enabled the Intellectual Property Office to deliver an opinion as to whether:
(a)   a particular act constitutes, or (if done) would constitute, an infringement of a patent; or
(b)   whether, or to what extent, an invention is not patentable because it was not new or obvious.
This is a very inexpensive form of alternative dispute resolution ("ADR") for disputes over infirngement and validity which has proved to be very popular since it was introduced in 2005 (see the "Requests for Opinions" page of the IPO website).  Clause 16 (1) will give the Secretary of State power to extend this ADR service to other types of patent disputes by substituting the words “an opinion on a prescribed matter in relation to the patent” for the present paragraphs (a) and (b) of s.74 (1). 

Clause 16 (4) will give the Comptroller power to revoke a patent if he finds that it is invalid for want of novelty or obviousness.  Clause 16 (2) will limit the rule making powers of the Secretary of State in relation to reviews of decisions and and clause 16 (3) applies s.74A and s.74B to the legislation relating to supplemental protection certificates.

Unified Patent Court
Probably the most important provision of the Bill so far as inventors are concerned is clause 17 which allows the UK to implement regulations for a European patent for most of the member states of the EU including the UK (the "Unitary Patent") and an agreement for a Unified Patent Court to resolve disputes relating to such patent.  The clause inserts a new s.88A and s.88B into the Patents Act 1977. S.88A will enable the Secretary of State to make regulations relating to the Court and s.88B to designate the Court as an international organization of which the UK is a member. To understand why the Unitary Patent is important see my article "Unitary Patents: Good News from Europe" 27 Dec 2012.

Other Reforms
Clause 18 allows the IPO to share information relating to unpublished patent applications with other patent offices and clause 19 and the Schedule make minor amendments to the Patents Act 1977.  Clause 20 inserts a new research exemption into the Freedom of Information Act 2000 which could assist inventors who have disclosed information about their inventions to public authorities in support of grant applications or for some other purposes. Inventors could also be helped in the long term by the new reporting obligation under clause 21 on the activities of the IPO and the operation of IP legislation in promoting innovation and growth.

Further Information
If you want to learn more about the Bill you can attend our seminar The Intellectual Property Bill at 4-5 Gray's Inn Square between 16:00 and 18:00 on 19 May 2014. Admission is free but you have to book in advance either by calling George Scanlan on 020 7404 5252 or through this website

15 March 2014

British Business Bank

























The most interesting session at this year's Venturefest Yorkshire was From Concept to Commercialization a panel discussion chaired by Nigel Walker of the Technology Strategy Board. One of the members of the panel was Ken Cooper of the British Business Bank ("BBB"). As I had not heard of the BBB before I buttonholed Mr Cooper on his way out and asked him to tell me a little more about his institution which is described as "a state-backed economic development bank" that supports "economic growth by bringing together public and private sector funds to create more effective and efficient finance markets for smaller businesses in the UK."

Surprisingly the BBB is not a throwback to the days of Harold Wilson or even Gordon Brown but a creation of the present government.  Paragraph 2.116 of HM Treasury's Autumn Statement 2012 contained the following statement:
"Business Bank – As announced by the Chancellor and Secretary of State for Business, Innovation and Skills in September 2012, the Government will create a Business Bank. It will deploy £1 billion of additional capital to stimulate the private sector market for long-term capital and address structural gaps in the supply of finance to SMEs. As part of this, the Government will co-invest at least £300 million over the next two years, alongside private investors, in channels that will help diversify the sources of finance available to SMEs. The Business Bank will bring together under a single institution the strategy, management and communication of existing government finance schemes for SMEs. In addition, the Government will also seek to bring government-backed business advice services closer together, harmonise their engagement with customers and coordinate them closely with finance interventions, to improve accessibility for SMEs. A number of the Business Bank’s functions will be operational from spring 2013, with the institution becoming fully operational in autumn 2014. The Secretary of State for Business, Innovation and Skills will set out further details later in December 2012."
Mr. Cooper told me that the BBB is at present merely a programme within the Department for Business, Innovation and Skills ("BIS").  It is not yet authorized or regulated by the Financial Conduct Authority or the Bank of England. However, Her Majesty's government has applied to the European Commission for confirmation that the BBB will fall outside the prohibition of art 107 (1) of the Treaty on the Functioning of the European Union. Should HMG's application be successful the programme will be transferred to a public company by the name of the British Business Bank Plc which will provide various types of financial support for small and medium enterprises ("SME").

BIS expects to unlock up to £10 billion of extra funding for SME over the next 5 years and it has set out how it intends to achieve that objective on the "What we do" page of the BBB website. Rather more detail is given in a presentation dated Fed 2014 entitled "British Business Bank Unlocking Finance for British Business."  The presentation notes that SME in the UK invest far less than their competitors in other EU countries and a number of reasons have been identified as to why that is so. These include
  • High market concentration - It is said that there is a highly concentrated market for smaller business lending in the UK, which leads to lack of diversity of financing choices for smaller businesses
  • Viable smaller businesses are not being served well enough
  • Capital constraints on lenders, and
  • Lack of longer term development capital.
The BBB proposes solutions for all those problems. Thus the problem that smaller businesses are not being served well enough will be met by debt programmes, start-up loansenterprise finance guarantee, equity programmes, enterprise capital funds ("ECF"s)ECF Venture Capital CatalystBusiness Angel CoFundUK Innovation Investment Fund and the Aspire Fund.

In his talk in York on Thursday Mr Cooper spoke a little about the Angel CoFund which was created with a £50 m grant from the Regional Growth Fund in 2011. It is a £100m investment fund for promising UK businesses and it is intended to help develop business angel investment in this country. The Angel CoFund works very closely with other business angel networks which are represented by the UK Business Angels Association ("UKBAA") and indeed Mr Cooper is a member of the board of UKBAA.

One of the topics discussed that was discussed for some time on Thursday was intellectual property. Nicole Ballantyne of the GrowthAccelerator and PERA Consulting who was also on the panel said that many businesses were unaware of the IP that they already owned much of which could be converted into revenue. She mentioned an IP audit scheme and spoke of the need to protect IP. When the discussion was opened to the floor I rose to point out the distinction between intellectual assets and intellectual property and that businesses can actually ruin themselves by spending too much time, effort and money on patents and other registered rights that they do not need.

Anyone wishing to take advantage of those programmes, whether as inventor, entrepreneur or investor, will need first class advice not just onIP but also on tax. Uniquely our chambers can provide both.  My colleagues and I in our IP, Technology and Media Law Group can advise on IP strategy, patenting and the like and our colleagues in Atlas Tax Chambers which includes Anne Fairpo can advise on such matters as the patent box and other incentives. Should anyone wish to discuss this article or out services generally, he or she should call us on 020 7404 5252 during office hours, fill out my contact form, tweet me, write on my wall or get in touch through G+, Linkedin or Xing.

23 February 2014

The Role of the Translator

Pieter Bruegel "Tower of Babel"    Source Wikipedia



















If you want a patent for your invention you have to persuade the Intellectual Property Office  that the invention is new and involves an inventive step {see s.1 (1) (a) (b) Patents Act 1977).  S.2 (1) provides that invention shall be taken to be new if it does not form part of the state of the art.  S.3 also refers to the state of the art when explaining what us meant by an inventive step:
"An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above)."
The term state of the art is one that is used frequently by advertisers and others well outside patent law but what exactly does the phrase mean?

State of the Art
For the purpose of this discussion I shall take the definition provided by s.2 (2) as 
"all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."
It is actually slightly broader than that but we can put that to one side for today. It is everything that has been made available to the public by written or oral description by use or in any other way anywhere in the world. That includes patents and patent applications of course but also academic papers, brochures catalogues, data sheets, web pages - you name it.  And - and this is the crucial bit - the disclosure does not have to be in English. If in some sleepy Swiss canton or the back streets of Algiers someone has anticipated your invention or come so close to your invention that your invention  is obvious you won't get a patent or, if you do get a patent, your grant could be revoked.  As Tommy Cooper used to say: "Just like that."

How to protect yourself
So what do you do about it? Well search! Search as many relevant patents and patent applications as you can. Search also the technical and trade literature. And not just in English. If you happen to know of an academic working in the same field at a Swiss University in some idyllic mountain valley the good professor is likely to publish his results in German.  If your competitor trades in Algiers his first foreign language is likely to be French and that's the language in which he will publish his brochures and data sheets.

But we Brits are very bad linguists. Most of us do French and possibly German up to GCSE and then drop it for A" levels in something else. That is not enough to make sense of a patent specification or article. So what next? Well here's where Alison (or someone like her) comes in.

Alison Penfold
Alison is a freelance technical translator specializing in patents and other intellectual property work. Her languages are French and German and she also knows some Dutch. She is an Associate Member of the Institute of Translation and Interpreting (AITI).  She read French, German and Linguistics at the University of East Anglia and rook a postgraduate diploma in translation and interpreting with distinction from the University of Kent. She worked for Lloyd Wise Tregear as a staff translator between 1987 and 2007 and then for Marks & Clerk between 2007 and 2009. Since then she has practised on her own account.

Revocation Proceedings 
You may also need a translator if you think you are sued or likely to be sued for patent infringement. If possible you will want to claim that the patent is invalid on the ground that the invention was anticipated or obvious having regard to the prior art.  At least some of the materials on which your lawyers or patent attorneys will rely are likely to be in a foreign language for which you will need a translation.

Further Information
If you want to discuss this article or patent law in general, call me on 020 7404 5252 during office hours or send me a message. You can also tweet me, write on my wall or contact me through G+, Linkedin or Xing.