12 January 2015

Alternatives to Invention Promotion Companies















The other day I was asked for my opinion on an invention promotion company. It was not one that I had ever dealt with so I could not answer the enquiry directly but I referred the inventor to the advice that the US Patent and Trademark Office and our own Intellectual Property Office had given on invention promotion companies generally. 

The inventor thanked me for my reply and added:
"My family and friends have given me very positive feedback on my invention but how else do I check if my invention is good ?
What should I do next ?
Where can I find trustworthy contacts ?"
I replied:
"First do some market research. You can get some help with that at the Business and IP Centre of the British Library.
Next you should decide whether to exploit your invention directly by setting up in business to produce and sell it or licensing it out to someone else.
If you decide to license it out you will need to show your licensee how it will make money from the invention which means that you have to do much the same work as you would if you were making and selling it yourself. If you do get it out you will get a licence fee which will typically be a small percentage of the sale price.
I can advise you on the legal issues but not on the financial ones.
I wish you all the best with your invention."
The British Library and its associated libraries in Birmingham, Leeds, Liverpool, Manchester, Newcastle and Sheffield have massive resources on market research, business planning and everything else an inventor would need to know to set up in business. If he or she is not clear how to use those resources there are courses from the library staff and its partners.

I also advise the inventor to join an inventors' club if one is nearby. There he or she will meet product development consultants, patent attorneys, business advisers and other professionals who assist individual inventors and, most importantly, other inventors who can share their experience with him or her. I have listed some of the inventors clubs that I know about in the side panel to this blog. The Wessex Round Table of Inventors has a much longer list. I am sure that there will be lots of trustworthy and knowledgeable contacts at any of those associations.

In my email I made clear that I am a lawyer and not a business adviser. Here are some of the things I can do for inventors.

1. Tailoring a non-disclosure agreement to the inventor's needs or reviewing or advising the inventor on somebody else's.
2. Advising the inventor on the optimum intellectual property protection for his or her invention and if that includes patents helping him or her find and instruct patent attorneys in this country and abroad who can apply for them.  As I do not prosecute patent, design or trade mark applications I have no interest in selling the inventor a service though I must stress that every patent attorney I know would try to advise objectively too.
3. Representing the inventor at a hearing in the Intellectual Property Office if the examiner challenges his or her application.
4, Helping the inventor negotiate and draft agreements with collaborators, investors and consultants.
5. Drawing up terms and conditions, manufacturing and distribution agreements if the inventor wishes to make and sell the invention him or herself or licences if he or she doesn't and just about any other agreement the inventor may need.
6. Helping to keep the inventor out of trouble with third parties and resolving difficulties if any arise.

There was a time when barristers could be approached only through solicitors or patent or trade mark attorneys but that rule changed over 10 years ago, Now we can do more or less anything that a solicitor can do and as we don't have offices to maintain our services are often cheaper. You can find out more about instructing us in IP Services from Barristers 6 Apr 2013.

Should anyone wish to discuss this article, invention promotion companies or help to inventors in general they should contact me through my message form or call me on 020 7404 5252 during office hours.

08 January 2015

Digital Business Academy





The Digital Business Academy is a collaboration between TechCity UK, Cambridge University Business School, Founder Centric and University College London to provide students with the skills they need to start, run, or join a digital business. There are 8 courses which are delivered online and through which students can work at their own pace.

Those courses are as follows:
  • Size up your idea – UCL
  • Turn your idea into a digital business – UCL
  • Develop and manage a digital product – Founder Centric
  • Make a marketing plan – Cambridge University Judge Business School
  • Build the brand – Cambridge University Judge Business School
  • Understand digital marketing channels – Founder Centric
  • Run a digital marketing campaign – Founder Centric
  • Master finance for your business – Cambridge University Judge Business School.
I signed up for the programme and have already completed the first part of the first course. Teaching is delivered by short videos and articles. There is also a networking forum. I shall let you know how I get on.

02 January 2015

Congratulations to Trevor Baylis CBE

Trevor Baylis
Photo Wikipedia



























I should like to congratulate Trevor Baylis on his CBE for intellectual property.

I met Mr Baylis when I chaired the Brass from Gumption open day in Huddersfield on the 18 Feb 2004. This was a full day of seminars, exhibitions, patent searches, patent clinics and a simulated “Baylis Breakout” by the man himself. It was a great success which led to my setting up inventors' clubs at Leeds, Liverpool and Sheffield and regular intellectual property clinics throughout the North,

I have not seen eye to eye with him on every issue but I share his objective of helping individual inventors to realize their ambitions. I wish him every success in those endeavours.

22 November 2014

Top 10 Tips for Resolving IP Disputes

1. Be careful what you say and do.
If you threaten to sue someone for patent infringement you can be sued yourself under s.70 of the Patents Act 1977 unless you can justify those threats. You can be injuncted (ordered to refrain from making those threats on pain of imprisonment or fine for disobedience) and made to pay substantial damages and costs. So leave the accusations to your lawyers or patent attorneys who can take care of themselves.

2. Consider Before-the-Event Insurance
It is not a crime to infringe a patent in this country. You and only you are responsible for enforcing your monopoly. You must do that through the courts which can be expensive. There is no longer legal aid for IP or other business disputes. Because most IP litigation proceeds in 2 phases it is difficult for most lawyers to accept "no win no fee" retainers, especially now that it is no longer possible to recover success fees and after-the-event insurance premiums from the losing party. You must also make provision for the costs of the other side if you are unsuccessful.  Unless you can raise at least £100,000 from your own resources you should consider before-the-event IP insurance before a dispute arises because the premiums for after-the-event insurance are astronomical (see IP Insurance Five Years On  23 Oct 2014).

3. Follow the Practice Direction - Pre-Action  Conduct
This is very important because the court has power under paragraph 4 to penalize parties who fail to comply with the Practice Direction.  Remember that the purpose of the Practice Direction is to enable parties to settle their dispute without the need to start proceedings and that litigation should be the very last resort. Make sure that your letter before claim complies with Annex A of the Practice Direction and that you supply all the information and enclose all the documents that the other side will need to decide whether you have a valid claim. Although it was published some years ago you may also find the Code of Practice for Pre-Action Conduct in Intellectual Property Disputes useful.

4.  Consider ADR (Alternative Methods of Dispute Resolution)
As a general rule the sooner you resolve your dispute the better it will be for all concerned. True, you may be able to force a settlement if the other side runs out of money before you do but then you will also have incurred costs which your opponent may not be able to pay. As I have said above, one of the aims of the Pre-Action Conduct Practice Direction is to help you settle your dispute without recourse to litigation. You can do that through direct negotiations with the other side or you can ask an intermediary known as a "mediator" to help you. He or she will collect information in confidence from each of the parties and look for common ground upon which a settlement can be based. Often the settlement is a solution that would never have occurred to either of the parties (see Mediating Disputes from the Trade Marks Registry 1 Sept 2005 NIPC Law). The Intellectual Property Office runs a good mediation service (see The IPO's New Improved Mediation Service - will it make a difference? 7 April 2013 NIPC Law) as does the World Intellectual Property Office (see ADR of Intellectual Property Disputes 22 Aug 2006 NIPC Law). If there is a bona fide dispute that only a determination by a trusted third party will resolve you may be able to obtain an opinion on the issue from an examiner of the Intellectual Property Office for as little as £200 (see Intellectual Property Act 2014: The New Law on Opinions 29 Oct 2014 NIPC Law).

5.  Budget for Litigation as you would any other Expenditure
Since April 2013 the parties to a dispute have had a duty to help the court to deal with cases justly and at proportionate cost. In order to comply with that obligation most parties that are legally represented have to draw up, file and exchange budgets for conducing the litigation before the first case management conference under CPR 3.13 and the court may impose limits to the parties' expenditure if it thinks fit. There are a number of exceptions to this rule but it is a good discipline to follow even if you are not bound by it. Just as war is conducting policy by other means litigation can be said to be conducting business by other means. Just as you would plan and review any other type of expenditure with defined objectives so you should with dispute resolution. Circumstances can change in litigation just as they can in other transactions and you have to be sufficiently flexible and astute to adjust quickly to changing circumstances which may require settlement, some other form of dispute resolution or even discontinuance in certain circumstances.

6.  Choose the Right Forum for the Resolution of your Dispute
There are many forums for the resolution of IP disputes. There are the courts of England and Wales, those of other parts of the UK and the courts and tribunals of other countries. There are also Intellectual Property Office tribunals for some patent, trade mark and registered and unregistered designs disputes, the Boards of Appeal of OHIM (the EU design and trade mark registry) and the EPO (European Patent Office). There are the domain dispute resolution panels for the determination of generic and national top level domain name disputes. There are the IPO examiners' opinions which I have mentioned above for certain patent disputes and there will soon be an opinions service for registered and unregistered design disputes. There is also old fashioned arbitration and mediation. Each of those forums has its advantages and disadvantages and you should seek specialist advice or at the very least carry out extensive research before launching proceedings.

7.  Choose the Right Legal Adviser
For most cases two sets of skills are needed:
  • advocacy, and
  • the ability to conduct litigation.
Advocacy includes presenting cases to a judge or arbitrator, examining witnesses, drafting statements of case, application notices, witness statements and skeleton arguments. Until the Courts and Legal Services Act 1990 higher court advocacy was the preserve of barristers but now other professionals have rights of audience. Conducting litigation means corresponding with the court and other side, filing and serving statements of case and other documents, interviewing witnesses, drawing up lists of, and exchanging, documents (including emails, texts and other electronic messages) and generally preparing the case for adjudication. Traditionally this work was done by solicitors but now barristers and patent and trade mark attorneys as well as other professionals can apply for the right to conduct litigation. Look beyond law firms' websites and brochures to discover expertise. Try to research their decided cases and publications and choose the advocate and litigator whose expertise most closely matches your needs.

8.  Do not fight Unnecessary Battles
If you are a claimant and you think the other side will not be able to compensate you in damages if you win your case you may get an order from the court known as an "interim injunction" forbidding the defendant from doing something that would infringe your IP rights until trial or further order. These are in the discretion of the court and they don't come cheap. You have to apply quickly and promise to compensate the other side for any loss or damage it may sustain if it transpires that you should never have got the order. Conversely, if you are a defendant and fear the other side can't pay your costs if you win you can get an order for the claimant to pay funds into court as security for a costs order against you. There are many other interim applications that you can make - summary judgment on the basis that the other side is unlikely to prevail at trial, specific disclosure of a document, striking out parts of the other side's statement of case and sanctions for non-compliance with a rule or order. Such applications are very expensive and can delay the progress of a case. Sometimes they are necessary but as often as not they are not and every effort should be made to avoid them. If you are a defendant do not resist reasonable requests just for the sake of it. Work out ways of meeting the other side's legitimate needs while safeguarding your interests.

9.  Comply with the Rules and Directions of the Court
This may sound like stating the obvious but it is amazing how many litigants fail to do this. The courts have extensive powers to penalize some of which are quite drastic. For instance if you fail to file a costs budget in time you will be deemed to have filed a budget requesting reimbursement only of your court fees and you will be precluded from recovering your counsel and solicitors' fees which could amount to tens or even hundreds of thousands of pounds.

10. Keep Talking
Even if settlement negotiations fail you are still likely to have much to discuss with the other side. It is in your interest to agree facts, define and limit issues and other procedural matters because it simplifies the process and reduces the bills you may well have to pay. One of the reasons for instructing solicitors and counsel is to keep open a channel of communication between the parties. As I said above, circumstances can change for both sides and you are more likely to learn of those changes if you keep in touch with your opponents.

If you want to discuss this or any other matter connected with enforcement give me a ring on 020 7404 5252 during office hours or message me through my contact form. You can also contact me through Facebook, G+. Linkedin, twitter or Xing.

17 October 2014

Jackie Hutter's Articles on Strategic Patenting













As readers of this and my other blogs know, I am something of a fan of Jackie Hutter. Jackie is a US intellectual property lawyer with a difference. She describes herself as a “recovering patent attorney”and a member of the pioneering ranks of intellectual property (“IP”) strategists. If your next question is: "What is an IP strategist?" Jackie supplies the answer.

Jackie has just written four articles on strategic patenting which apply at least as much to the UK as they do to the USA.  I can do no better than supply the links:
  1. Why So Few Patents Create Real Value
  2. It’s Not Your Patent Attorney’s Job to Get it Right
  3. Why (Almost) Every Innovator Fails to Maximize Patent Value, and
  4. A Case Study of Success.
When you think of the cost and complexity of patent prosecution and enforcement in this country inventors you can see why her advice applies at least as much here as there.

11 September 2014

Forthcoming Seminars

Date
Title
Venue
26 Sept 2014
14:00 – 17:00
Making Sure you make Money from your Brands and Ideas and not other People
Workshop and clinic with speakers from 4-5 Gray’s Inn Square, Loven IP and the Intellectual Property Office CPD BSB and SRA
Grantham College, Stonebridge Road, Grantham, NG31 9AP

29 Sept 2014
16:00 – 18:00
Intellectual Property Ac 2014 – What it means to you and your clients
In-depth seminar led by Jane Lambert, CPD BSB and SRA
QualitySolicitors Jackson & Canter, 88 Church Street, Liverpool, L1 3AY
15 Oct 2014
18:00 – 19:45
The Intellectual Property Act 2014 - What it means for you and your clients
In-depth seminar led by Jane Lambert, CPD BSB and SRA
Business and IP Centre. Central Library, Calverley Street, LS1 3AB

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.