18 September 2020

European Patent Office's "Inventors against Coronavirus"

Standard YouTube Licence

At the start of the coronavirus crisis, I published  IP Services During the Emergency.   In it, I wrote:
"The suspension of so much business activity to facilitate social distancing does not mean that intellectual property is no longer a priority. On the contrary, it is now more important than ever."

The European Patent Office has magnified that point with a series of videos called Inventors against Coronavirus.   It features inventors whose work has already facilitated the world response to the pandemic.  Each of those inventors is a winner or finalist of the EPO's European Inventor Award.

The inventors include Rino Rappuoli whose reverse vaccinology 2.0 enables pathogens' genomes to be studied by teams working on vaccines instead of samples of the pathogen itself.  Not only is that safer for the researchers but it is faster and more effective.   Dr Rappuoli's work is featured in the above YouTube video which has just appeared in the EPO's YouTube channel.

Other inventors featured include Helen Lee whose point of care diagnostic device which was originally developed for HIV can deliver test results in 20 minutes, Thomas Tuschi who has pioneered treatments for COVID-19 and José Ángel Ávila Rodríguez whose work on communications technology has facilitated contact tracing and infection mapping.

As I said in my article 

"It will not be just inventors, product designers and engineers who will contribute to this effort. Software developers who will track the spread of infection and the deployment of resources. Artists and communicators will be needed to convey public health information to the public."

Over the last few months, I have advised and assisted on many of those issues as I anticipated when I wrote those words.

Anyone wanting to discuss this article can call me on 020 7494 5252 or message me through my contact page. If you want a chat I shall be glad to call you back by phone, Zoom or Skype.

28 August 2020

Bristol Innovators Group

Jane Lambert

I have recently come across the Bristol Innovators Group which joined Twitter in October 2019. It appears to have held its first meeting at the University's Centre for Innovation and Entrepreneurship on 4 Nov 2019:
I have been unable to find a website but its Twitter stream provides a lot of information about its activities:
It has grown rapidly since its formation and now claims over 500 members.   Its "Purpose/Vision" infographic shows exactly how entrepreneurs, inventors, makers and others should collaborate.  I said very much the same thing in An Inventors Group for Northwest Wales on 25 Aug 2020 NIPC Wales.

The Group seems to have managed to continue its activities over lockdown and has planned a full programme of events for autumn:
  • 9 Sep Monthly virtual meetup
  • 25 Sep BIG (Bristol Innovators Group) virtual chat on a topical issue
  • 7 Oct Monthly virtual meetup
  • BIG Pitch
  • 11 Nov Monthly virtual meetup
  • Birthday meetup in the park with marshmallows and hot chocolate
  • 9 Dec Monthly virtual meetup
  • BIG Festivities
The BIG can be contacted at bristolinnovatorsgrouo@gmail.com.   I think the Bristol Innovators Group is a great idea and I wish them every success. Should they ever need a speaker on IP law or any other topic within my expertise that may be of interest to them, I shall be glad to meet them either over the Internet or in person once COVID-19 is eliminated.

Further Information

28 Aug 2020
Jane Lambert
NIPC Severn

12 April 2020

InnovateUK to fund Innovative Responses to the COVID-19 Pandemic

AuthorInnovatedigital Licence CC BY-SA 4.0

Jane Lambert

It is often said that the world will never be the same after the coronavirus pandemic. If that is true,. old ways of doing things may have to be abandoned and new solutions developed   To help businesses to develop such solutions, InnovateUK has announced a £20 million fund to invest in solutions to tackle new or emerging societal or industry needs in the wake of the pandemic.

Projects suggested by InnovateUK include:
  • community support services
  • couriers and delivery (rural and/or city-based)
  • education and culture
  • entertainment (live entertainment, music, etc.)
  • financial services
  • food manufacture and processing
  • healthcare
  • hospitality
  • personal protection equipment
  • remote working
  • retail
  • social care
  • sport and recreation
  • transport
  • wellbeing.
Funding will take the form of a grant of up to 100% of the project costs which should be between £25,000 and £50,000.   Proposals must be submitted online no later than 12:00 on Friday 17 April 2020.

Further details including an application form can be found at Business-led innovation in response to global disruption (de minimise).

If you require any help in relation to intellectual property you can book a slot on my online IP clinic on 14 April between 16:00 and 18:00.  I am also giving a talk on IP for Makers at 17:30 on 15 April to which you would be most welcome.

23 March 2020

IP Services During the Emergency

File:Novel Coronavirus SARS-CoV-2.jpg
Author NIAID  Licence CC BY 2.0

Jane Lambert

The suspension of so much business activity to facilitate social distancing does not mean that intellectual property is no longer a priority. On the contrary, it is now more important than ever.

If we are ever to stop Covid-19 in its tracks it will be through the efforts of universities and biotech and pharmaceutical companies around the world whose research will have to be funded.  Much of that funding will come from the private sector which will require legal protection for the revenue streams from which it will recoup such investment.

The businesses and institutions engaged in research in diagnostics, vaccines and cures will usually understand IP and have access to the best possible advice and representation but that will not necessarily apply to the many businesses, public health authorities and clinicians around the world who distribute those products. They need the best possible advice on patenting, licensing and technology transfer at affordable rates.

Also involved in the effort to stop the spread of the infection will be manufacturers and distributors of personal protective equipment, ventilators, respirators and various medical devices. It is there that there will be scope for small businesses and individuals to invent or design better products or components.  They will need help in putting their ideas and inventions into production.

It will not be just inventors, product designers and engineers who will contribute to this effort. Software developers who will track the spread of infection and the deployment of resources.  Artists and communicators will be needed to convey public health information to the public.

And when this emergency is over businesses will have to innovate and create as never before in order to restore our ravaged economy the planning for which has to start now.

Just at a time when entrepreneurs, inventors and others will require high-quality advice and representation more than ever, social distancing will make it more difficult to obtain.  So this is what I as an experienced IP practitioner will do to help.  Ever since the Public Access Scheme has been in operation I have set up and chaired inventors' clubs, run pro bono clinics in various parts of the UK and given talks at science parks, incubators, FabLabs, Business and IP Centres and other forums throughout the country.  I was due to speak to the inventors, makers and designers of Porthmadog at Ffiws Maker Space on 1 April 2020.  I had an IP clinic at Barnsley Business Village on 14 April 2020.  I was planning a high-level seminar on Green Innovation at the Menai Science Park on 27 April 2020 as Wales's contribution to World IP Day.

Now I can no longer keep these appointments in person but there is nothing to stop me from doing so online and that is precisely what I shall do.  Anybody who needs advice or assistance with an IP issue can contact me through my "Initial Advice and Signposting Form".  I can advise on IP law generally and represent clients in negotiations and disputes but I do not prosecute patent, design or trade mark applications, specialize in tax or company law, develop products or arrange funding.  However, I can probably direct clients to other experts such as patent or trade mark attorneys, commercial law firms, specialist accountants and product design consultants who can help with such issues.

I shall also be offering webinars to business owners, inventors, investors and indeed IP lawyers and attorneys for so long as social distancing has to continue.

Throughout this emergency the British and other intellectual property offices will remain open, most IP professionals will be working from home, the IPO and many courts will conduct hearings by phone or video link.  We may not be so easy to meet but there should be no suspension or diminution in the quality of services.

Anyone wanting to discuss this article can message me through my contact page.  If you want a chat I shall be glad to call you back by phone or Skype.

25 February 2020

IPO Guidance: Intellectual Property Insurance

Lloyd's Coffee House Source Wikipedia Insurance

Jane Lambert

The Intellectual Property Office ("IPO") has recently updated its guidance on IP insurance, It makes the point that such insurance may not be for every business but for some, it brings numerous benefits.  According to the guidance, those benefits are as follows:
  • "It can protect cash-flow: IP insurance can ensure that your dispute and particularly litigation, does not tie up capital which you could use to grow the business
  • it can provide a deterrent: LEI can give you the power to take action to enforce your rights where your financial position might not otherwise allow it. If a potential infringer knows that your insurance will cover making a claim, then it may be less likely to infringe or more likely they will stop when challenged. Some insurers are happy for you to confirm in marketing literature or on websites that your IP is insured, alerting competitors that insurance is in place
  • it can improve your negotiating position: If this deterrent does not work then the knowledge that you can go to court (as a last resort) can encourage the alleged infringer to negotiate or mediate. Insurance can provide you with the means to take vital defensive action meaning there will be no need to settle on poor terms
  • it might allow your IP to be used as collateral and can add value: Insurance can reassure lenders and investors that the value will not be lost because you cannot fight infringers/invalidity challenges. Potential licensees will also know that you can take legal action if necessary and will be indemnified if required."
Cover against the costs of litigation and other expenses is available both before and after an infringement has occurred.   Cover that is obtained before an infringement occurs is known as before-the-event ("BTE") insurance and cover after the infringement is known as after-the-event ("ATE") insurance.  As might be expected BTE insurance is considerably cheaper than ATE.  ATE policies were very popular before the Legal Aid, Sentencing and Punishment of Offenders Act 2012 came into force because a successful party could recover its premiums and its legal representatives' success fee from the losing party. That came to an end on 31 March 2013 (see Jane Lambert Intellectual Property Litigation - the Funding Options 10 April 2013 NIPC Law and Jane Lambert The Effect of the Legal Aid, Sentencing and Punishment of Offenders Bill on Intellectual Property Litigation 14 July 2011 NIPC Law). It is still possible to take out ATE insurance but the premiums must be paid by the insured. For that reason, such policies are much less common and the IPO guidance does not even bother to mention them.

The guidance lists the risks against which it is possible to insure.   These include:
  • opinion only: covers legal costs of obtaining an opinion on the likelihood of successfully enforcing or defending an IP claim;
  • enforcement and defence: covers legal costs of taking action to stop others infringing IP rights and defending allegations of infringement. Can cover enforcement and defence either separately or together
  • damages: covers any damages payable in an infringement action
  • validity: covers legal costs of defending challenges to the validity of the insured's IP rights
  • lost revenue: covers revenue lost as a result of losing IP rights
  • indemnity: covers liabilities arising under guarantees given to third parties, and
  • cyber: covers losses from a variety of cyber incidents, including IPR breaches.
Premiums and excesses are also considered in the guidance.   By way of a rough indication, a typical premium for £100,000 (the cost of patent infringement proceedings in the Intellectual Property Enterprise Court) would be about £1,500.  The guidance adds that many insurers will accept premiums by instalments.

A link to a list of brokers, insurers and other providers is in the guidance. Advice is given on identifying a broker, selecting the optimum cover, making a claim and resolving disputes with insurers through the Financial Ombudsman.  The guidance discusses alternative methods of resolving IP disputes such as examiners' opinions on such matters as whether a patent is valid or whether it is infringed, and the IPO's mediation service.

Readers are referred to the IP insurance pages of the Chartered Institute of Patent Attorneys and the Chartered Institute of Trade Mark Attorneys.  I have also written a number of articles on IP insurance since 2005 which are listed in the table below.  Anyone wishing to discuss this article or IP insurance generally can call me on 020 7404 5252 or send me a message through my contact page. 

21 February 2020

FFIWS - Another Resource for Inventors, Designers and Makers in North Wales

Jane Lambert

In The Pontio Centre: A Resource for Inventors, Designers and Makers in North Wales 14 Dec 2018 I wrote about the FabLab at the Pontio Arts and Innovation Centre in Bangor. I have recently learned of another resource for inventors, designers and markers on the other side of Snowdon at Porthmadog.

The resource is known as Ffiws and is to be found at 125 High Street just a short walk from Cadwalader's ice cream parlour which is not just a Welsh but a UK culinary treasure. FFIWS's website describes it as "a co-operative maker space" containing a variety of different high-tech equipment, as well as electronic equipment and hand tools.

According to the website, the equipment includes:
  • a 3D Printer
  • Laser Cutter
  • CNC Machine
  • Heat Press
  • Mug Press
  • Sublimation Printer
  • Vinyl Cutter
and more,  There are pictures of some of those items on the website.

The website states that this is a pilot project to create a community of makers and to give everyone the chance to access high-tech equipment.  The objective is to encourage creativity and teach new skills. It is hoped that the community will be able to take ownership of the space and to carry it on beyond our pilot project.  This project is one of a growing number of initiatives to encourage inventors and startups in Northwest Wales (see Jane Lambert Resources for Inventors and other Startups in Northwest Wales 5 Feb 2019).

Anyone wishing to discuss this article or business startups generally may call me on 020 7404 5252 during office hours or send me a message through my contact page,

22 November 2019

So You've Got A Patent!

Jane Lambert

Congratulations! It probably took a little longer to get than you expected. It almost certainly cost you more money than you had bargained for.  But so long as you pay the renewal fees you have an asset that is bound to make your fortune. Right?

Well, not exactly. You have a right to stop other people from making, marketing, importing or selling something that you have invented but a patent is not a meal ticket. It exists to give you an opportunity to recoup the time and money you spent in devising the invention and perhaps a little extra on the side either by working the patent yourself or by licensing it to others. Whether you can do that or not will depend on whether anybody wants to buy your invention.

If there is a market for the invention, there is always a possibility that somebody will want to muscle in. Such a person may want to do it fairly by seeking a licence from you or by using a technology that does not infringe your patent, but there are also those who would try to sweep your patent out of the way in revocation or declaration of non-infringement proceedings or simply ignore your patent if they don't think you can afford to enforce it.  Unlike some other intellectual property rights such as copyright, trade marks, rights in performances or, nowadays, registered designs, it is not an offence to infringe a patent in this country even if it is done quite blatantly, cynically and on an industrial scale.

If anyone infringes your patent you have to sue and patent litigation is not cheap. You can't use the small claims track of the Intellectual Property Enterprise Court ("IPEC") because the rules specifically exclude patents, registered and registered Community designs, semiconductor topography and plant variety claims from that tribunal.  You can use the IPEC multitrack but you have to be prepared to pay up to £50,000 if you lose the case and probably a great deal more than that to your own legal team. That is a lot better than the Patents Court where the costs that can be awarded against you are unlimited and can run into millions.

So unless you are a millionaire, your company is really coining it or you have some other source of funding you should consider before-the-event insurance cover against IP disputes before a dispute arises (see my article It is never enough to get a patent, trade mark or registered design 19 Aug 2019 and my links to other articles). It is unrealistic to expect a lawyer specializing in IP to represent you on a no-win no-fee basis because the risks, costs and wait for payment are too great however strong your case. IP insurance is not cheap but it is a lot better than bankruptcy or watching a competitor ride roughshod over your rights.

So, what should you do if you think that someone is infringing your patent? Well, one thing you should not do is take matters in your own hands and write a stroppy letter to the other side. S.70 of the Patents Act 1977 and subsequent sections prohibit threats of patent infringement proceedings that cannot be made out. If you make such a threat (however politely) you risk an action for an injunction, declaration and costs that could cost you plenty. Any lawyer or patent attorney with any experience of patent litigation will be aware of this section but many non-specialist lawyers aren't. If they make a groundless threat on your behalf it is you who will have to carry the can.

Where do you find a specialist lawyer? Any firm that belongs to the Intellectual Property Lawyers Association should be able to help you. There are good solicitors in other firms but you have to be careful because not every solicitor who claims experience of IP has actually done a patent case.  Another possible option is a patent attorney litigator.  Not every patent attorney has expertise in civil litigation but there is a growing number who have. The CIPA and IPReg websites should help you find one. Yet another option is to consult a member of the IP Bar. We are advocates and not litigators but we are probably in a better position than most to recommend a good litigator.

Civil proceedings begin with the service or delivery of a claim form on the alleged wrongdoer.  The claim form is usually accompanied by another document known as particulars of claim. Those particulars must state the facts on which you base your claim and the remedy that you want precisely. In a patent infringement claim, your particulars of claim must state which of the claims of your patent is alleged to have been infringed and give at least one example of at least one alleged infringement.  The "claims" are the numbered paragraphs at the end of your patent specification setting out the features of your invention.  The reason they are set out in numbered paragraphs is that if one of them is too broad you may still be able to rely on one of the others. If your invention is a product the patent is infringed by making, marketing, importing or using a product that has all the features of at least one of the claims.

It is possible that the alleged infringer will accept the strength of your case and seek a settlement or simply throw in the towel but you cannot bank on that. He or she may challenge your interpretation of the claim and argue that his or her product falls outside its wording,  It is likely that he or she will dispute the validity of the patent on one of several grounds.  If your opponent can show that someone else invented exactly the same thing before you applied for your patent can be revoked (taken away) on the grounds that your invention was not new. Another possible ground for revocation is that your invention would have been obvious to anyone with the appropriate skills and knowledge having regard to everything that was known at the time of your application.  You might think that all this would have been considered by the examiner when you applied for your patent but the sad fact is that the time and resources that are available to an examiner are nothing like the time and resources that your opponent will expend in order to knock out your patent.  A surprisingly large number of patents are revoked in whole or in part when patentees bring infringement claims.

If you win your action you will be awarded an injunction and a contribution to your legal fees which will be limited to £50,000 if you brought your claim in IPEC.  You would probably get more if you sue in the Patents Court but even the awards in that court are unlikely to cover everything you spent. An injunction is an order by a judge to do or not to do something. If it is disobeyed the court may punish the defendant with a fine or even imprisonment.  What you will not get at this stage is damages or accountable profits.  That will require another hearing known as an account or inquiry which may take place several months or even a year or so in the future. That will also cost a lot of money,

There is obviously a lot more to patent enforcement than I can mention in a short note.  The important thing is to think about enforcement and arrange to fund it whether by insurance or otherwise well before a dispute arises. If you want to discuss this article or anything relating to it, call me on 020 7404 5252 or send me a message through my contact form.