Patent Box Roadshows

The patent box is a valuable tax concession to encourage invention in the UK. It came into force on 1 April 2013 and we are holding a series of workshops on the new incentive with our good friends at BDO and Jackson & Canter.

The first of those events took place in Liverpool on 29 April 2013 and you can download the presentations that were given at that workshop from "The Patent Box Workshop: Liverpool Inventors Club" 3 Masy 2013 IP Northwest.

The next event will be at Leeds Central Library on 8 May 2013 at 18:00 where the main speaker will be BDO tax partner Dan Brookes (see "Leeds Inventors Group: Patent Box and R & D Credits" 4 May 2013 IP Yorkshire).

Further events are planned for London at the Liverpool Embassy in the Royal Mint on 12 July 2013 and others are planned for Manchester and other parts of the country. If you want to attend any of those events  please call me on +44 020 7404 5252 or send me an an email through my contact page. You can also follow me on Facebook,Linkedin, twitter or Xing,

The New IPO Mediation Service

The Intellectual Property Office has recently re-launched its mediation service with fees related to the value of the dispute and the duration of the mediation.  An hour's mediation before a specialist mediator in Newport for a claim of £10,000 or less is £55.  The IPO also provides telephone mediation and will travel outside London or Newport.

For further information see my article "The IPO's New Improved Mediation Service - will it make a difference?" in my NIPC Law blog,

Sheffield Inventors Group News

As the first Monday of this month fell on Easter Monday the April meeting of the Sheffield Inventors Group will take place on 8 April 2013 at 18:00 in the Jackson Room of Sheffield Central Library. The speaker will be Richard Hall of pd-m International Ltd.

Richard has spoken to the Group before and is well known as a product design and manufacturing consultant.  Samples of his company's work can be seen on the "Our Work" page of its website. Its clients range from private inventors, SMEs, manufacturers, universities and investors and its design portfolio covers medical, healthcare, consumer, industrial, lighting and nursery.equipment.

The title of Richard's talk is 'Production Development to Production - Avoiding the Pitfalls' which he promises to be a networking opportunity.

The other news from Sheffield is that the Group welcomes Susanne Knight as its new organizer. 

If you would like more information about the event or the group call or email Susanne on 0114 273 4727.

Enterprise and Libraries: a New National Network of Business & IP Support

The Business and IP Centre of the British Library has offered advice and information to entrepreneurs and inventors in London and Home Counties since 2006. In addition to the publications and databases that would be expected of a library, the Centre offers business planning, intellectual property, market research and networking services which it delivers through clinics, seminars, workshops and on-line.   On-line services include the Centre's newsletter and the British Library UK Entrepreneur Network on Linkedin. Some of those services are offered by British Library staff and others by the Centre's partners.   

In my article "Local Enterprise Partnerships begin to take Shape" 21 Oct 2010 I wrote:

"One of the first casualties of the abolition of the RDAs are likely to be local and regional Business Link services. In an interview with Jason Hesse on the Real Business website, Mark Prisk, the Business Minister, announced:

'We’re going to wind down the Regional Development Agencies, and as part of those, we’ll be winding down the regional Business Link contracts.'  

These will be replaced by a state funded on-line service - presumably the existing Business Link website possibly under the Solutions for Business brand - and greater use of existing service providers such as chambers of commerce and local authorities. The proposal for a new business information service to be provided by thee British Library, NESTA, Newcastle City Council and Northumbria University is probably something like the model Mr. Prisk had in mind (see "Mark Prisk announces new business advisory service" on theReal Business website)."

The Business and IP Centre for Newcastle was subsequently launched and I blogged about it in "BIPC Newcastle"  on 21 Jan 2012.

In “Digital Opportunity A Review of Intellectual Property and Growth” Prof. Hargreaves recommended:

"9.     Small firm access to IP advice. The IPO should draw up plans to improve accessibility of the IP system to smaller companies who will benefit from it. This should involve access to lower cost providers of integrated IP legal and commercial advice."

The IPO drew up those plans in From ideas to growth: Helping SMEs get value from their intellectual property which I blogged in "IPO's Plan to support SME" on 31 May 2012.   One of the IPO's suggestions was "extending the model used at the Business and IP Centre in London to six regional patent libraries."

By a press release dated 19 Nov 2013 the British Library announced that it had signed an agreement with the Intellectual Property Office and six major UK city libraries  to establish a national network of services for small businesses and entrepreneurs across the country, modelled on the services offered by the British Library’s Business & IP Centre.  The six participating libraries are Birmingham, Leeds, Liverpool, Manchester, Newcastle and Sheffield City Libraries four of which host inventors groups that I have helped to set up.

On 11 Feb 2013 Penny Mordaunt MP sponsored a reception at Portcullis House to launch this network to be known as Enterprise and Libraries: A new national network of business & IP support.  The event included speeches from staff of the British Library, entrepreneurs who had used the Centre and representatives of local libraries. I was unable to attend the meeting but I am glad to say that I was represented by Jason McCartney, my Member of Parliament, and by Ian Wishart a patent agent who is also a director of Cobra Special Risks Ltd.

Over the last few years I have worked very closely with Chris Brown in Manchester, Ged Doonan and Stef Stephenson in Leeds, Ruth Grodner in Liverpool and Nicola Avella of Sheffield to support entrepreneurs and inventors in those cities.   Now that I am practising primarily from 4-5 Gray's Inn Square (see "Moving to London" NIPC website 5 March 2013) I hope to make a similar contribution to the Business and IP Centre in London.   If you want to want to discuss this article, call me on +44 020 7404 5252 or send me an an email through my contact page. You can also follow me on Facebook, Linkedin, twitter or Xing,

UKBI Conference

UK Business Incubation ("UKBI") claims to be "the UK’s and increasingly international principal and successful authority on business incubation, business incubation development and best practice."    Since 1998 it has

"helped governments and development agencies to build a thriving business incubation infrastructure that will make increasingly significant contributions to local, regional, national and international economic growth, as thousands of incubated clients grow and move out of their business incubation environments and achieve sustainable commercial success in their own right."

Further information about the UKBI, its resources and news of its latest activities and of incubation generally can be found on its website.

Every year it holds an annual conference and this year it took place at the University of Lincoln Faculty of Business and Law between the 20 and 22 Nov 2012.  One of the events at the conference was a workshop on Protecting and Exploiting clients IP.   I was invited to speak at that workshop together with Mr. Simon Portman, managing associate of the Cambridge branch of Marks & Clerk solicitors and Mr. Brian More, Director of IP at CUE Ltd.  The session was chaired by Mr. Doug Scott, CEO of TEDCO;

I kicked off the workshop with an introduction to IP which Simon kindly described in an email as  "one of the best introductory summaries of IP" he had seen.  In another email, Doug said:

"As I mentioned at the conference, when I was asked to chair it I thought I was well informed about the topic in hand but partly because the world has moved on rather more than I had thought and partly because there were some interesting details that came up in the presentations and responses, I found it extremely useful."

I was followed by Simon who spoke interestingly and perceptively about licences and assignments and other IP contracts and by Brian whose presentation on IP valuation was concise but authoritative.   My slides together with those of all the other speakers at the conference can be downloaded from the UKBI's page on livedrive,

After the sessions we had a reception and dinner at the chapter house of Lincoln cathedral which can only be described as glorious.   You can get some idea of the setting from the pics on UKBI's Facebook page.   I was lucky enough to sit between two very interesting delegates: Maha Al-Bulushi of the ITA in Oman and Mr. David Gill of St John's Innovation Centre in Cambridge.

I was gratified to meet two old friends, Amanda Lennon whom I have mentioned more than once in this blog and Olivier Tomat of Lyon who used to run the Elsie Whitely Innovation Centre in Halifax.   I also made a lot of new connections from Dome Enterprise Centre of Chichester and Cornwall Innivation, Sangeetha Shinde, managing editor of the Business Incubator magazine and of course Bhavan Desai and Keiron Broadbent if UKBI,

If you want to learn more about incubation or the services we provide to incubators and start-ups, call me on             +44 161 850 0080 or send me an an email through my contact page. You can also follow me on Facebook, Linkedin, twitter or Xing,

Unitary Patents: Good News from Europe

I must apologize for the long silence since my last post. The reason I have not been blogging recently is that I have been busy with litigation which will have important consequences not just for my client but for everybody who is party to an intellectual property infringement action in the UK.  If the case goes a certain way it will break new ground and will almost certainly have an impact outside as well as within this country. The hearing took place on 20 Dec 2012 and judgment has been reserved. I will tell you all about this case just as soon as I can.

Probably the most important news for inventors while I have been offline was the adoption by the European Parliament on 11 Dec 2012 of legislation for a unitary patent.    Readers who want an overview should read the European Parliament's press release and the welcome to the resolution by the European Patent Office.  For those who want more detail there are some good frequently asked questions.   Those who want to read the legislation for themselves will find the resolutions on the creation of the unitary patent, a unified patent court and ancillary legislation through these links.

The reason why this legislation is important is that it will become considerably cheaper and easier for inventors to obtain a single patent for all the member states of the European Union except Spain and Italy and to enforce that patent through a new patent court sitting in London, Paris and Munich which will have jurisdiction in all those countries.  

At present inventors have the choice of applying to the European Patent Office for a European patent designating one or more of those 25 countries or to each national intellectual property office for a national patent either directly or through the Patent Co-operation Treaty. Either way that is expensive costing an average of €36,000 according to the European Commission compared to a fraction of those costs for patent protection in the USA, China, Japan or South Korea.   If a European or national patent is infringed the patentee has to sue in every member state in which the infringement occurs which in common law countries, such as the UK and Ireland, can be very expensive indeed.

The new legislation should reduce the cost of patent prosecution - the application for a patent and its examination by the European or national patent office - from €36,000 to about €4,725 according to the European Commission, and the cost of enforcement from millions of pounds to tens of thousands of euro.   With the development of new IP insurance and litigation funding packages universities, small and medium enterprises and indeed individual inventors will find it easier to hold their own against multinational companies and other competitors.

The landscape has already changed considerably for such IP owners in England since Professor Kingston wrote "Enforcing Small Firms Patent Rights". The cost of enforcement was reduced dramatically by the new Patent County Court Rules and the introduction of a small claims track for intellectual property disputes.   It has also been possible to get authoritative advisory opinions from patent examiners on whether UK and European patents are valid and whether they have been infringed for £200 since 2005.  The unitary patent will begin to level the playing field internationally.

Over the next few weeks I will be writing a lot about the unitary patent and its likely impact for my clients.   If you wan to learn more about this topic give me a ring on +44 161 850 0080 or send me an an email through my contact page. You can also follow me on Facebook, Linkedin, twitter or Xing.

Patent Litigation Funding: HLP3 enters the Market

Although it no longer costs anything like as much as it once did to bring a patent infringement claim it is still too much for many individual inventors and small businesses. The small claims track which I discussed in "Soon there will be a Remedy if Someone steals your Idea" on 19 Sept 2012 does not cover litigation relating to patents, registered or registered Community designs, semiconductor topographies or plant varieties.

Ideally a patentee should take out intellectual property insurance before a dispute arises and I have written lots of articles on IP insurance in this blog and elsewhere (see "IP Insurance Five Years On" 23 Oct 2010).  Unfortunately, IP insurance premiums are not cheap and many patent attorneys are sceptical as to the value of the cover.   Consequently many inventors and small businesses cannot afford to fund challenges to their patents.

Some patentees who choose not to take out patent insurance do so in the hope that some law firm or counsel will take their case on a "no win no fee" retainer.   While there are lots of lawyers who will undertake personal injuries litigation on that basis there are very few who will do intellectual property cases without an assured fee for the reasons I explained in "No Win No Fee" (NIPC website on the 14 July 2011).  There will be even fewer such cases after the Legal Aid, Sentencing and Punishment of Offenders Act 2012 takes effect. For very much the same reasons it is hard to get after-the-event insurance ("ATE") for intellectual property cases.   Premiums are high and will be irrecoverable under the new Act.

For some types of litigation, third party funding may offer a solution.   I discussed that option in "Litigation Funding for IP Claims" on 18 Sept 2012.  The latest refinement is HLP3 which was brought to my attention by Peter Rouse.   Peter, who practised IP law for many years, is now working as a consultant with US firm HLP Integration who have brought together funding from Caprica and the legal expertise of Olswang to prosecute patent infringement claims where there is a good prospect of success.   A press release dated 30 Oct 2012 explains how the scheme works:

"In return for an admission fee of £3500 HLP Integration carry out validity, infringement and financial analysis and provide a detailed report. If the results of that report are promising then the report will be sent to Patent Counsel who will carry out an assessment of the prospects of success in patent proceedings. If those prospects meet the required percentage chance of success then the case will pass to ATE insurers for a further risk assessment. If ATE insurance is approved then the patent owner can exercise an option agreement, entered into at the outset, requiring Caprica to fund the proposed litigation. From beginning to end this process is expected to take no more than 3-4 months. In summary: a modest payment per patent; a robust and thorough process of analysis, expert review and risk assessment; and an option agreement exercisable at the patent owner’s discretion for qualifying patents."

Since it is likely to cost at least as much as £3,500 for patent counsel and specialist solicitors to evaluate a claim the admission fee seems almost a bargain.   .

Should any patentee wish to discuss any of these methods of funding he or she may call me on 0161 850 0080 or send me a message through my contact form. Readers can also follow me on Facebook, Linkedin, twitter or Xing..