02 November 2019

Business and Technical Information from Patent Databases

Jane Lambert

An invention is a solution to a technical problem. When applying for a patent for an invention, the inventor has to file among other things a document known as a "specification".  Such specification must contain a description of the invention and any drawing referred to in the description and disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. In due course, the specification is examined by officials of the intellectual property office known as "examiners" for compliance with the legislation governing patents and published on the office's website for all to see.

As an invention has to be new and involve an inventive step to justify a patent, such publications are important sources of scientific and technical information.  Many of those publications are held on giant databases such as the UK Intellectual Property Office's Ipsum, the European Patent Office's Espacenet and Google Patents.

These are two good reasons for consulting such a database.  The first is that you have an invention for which you seek a patent. You will want to check the prior art to ascertain whether your invention really is new and does involve an inventive step.  In almost every case your patent attorney will do that for you when you first instruct him but, if there is something out there that you can spot for yourself, you can save yourself a lot of time and money and instruct him more effectively by making your own search.  The second good reason is to find out about the latest technology.  In Why researchers should care about patents, the European Patent Office offers three advantages:
  • Avoiding duplication of R&D efforts and spending; 
  • Finding solutions to technical problems; and
  • Gathering business intelligence. 
Henk Heus actually gives 10 Reasons Why Research Scientists Should Patent Search though these seem to be substantially the same as the EPO's (see 29 Oct 2015 GQ Life Sciences). According to Heus, up to 30% of R&D expenditure is wasted on duplicating research that has already been carried out.
Different databases will allow you to search in different ways.  With Ipsum, you need the application or publication number and the first page will look like this:

From the menu in the top right-hand corner, you can select the documents that you need.  Nearly every transaction relating to the invention will be recorded on Ipsum. So if you want to trace the prosecution history this is the place to go.   Espacenet and Google will allow you to search by proprietor, title and other search terms as well as by number.  These are the tools that you will use to make a more general enquiry,

When you find an invention that interests you can choose the full specification or the parts of the specification that interest you most such as the abstract, description, drawings or claims. The abstract will be a summary of the invention.  The description is essentially an instruction manual. It will identify the problem that the invention seeks to solve, discuss previous attempted solutions where they fell short. set out the solution in principle and then give an example.  It may do that by reference to numbered diagrams known as the "drawings".  At the end of the specification, there will be numbered paragraphs known as "the claims". That is the monopoly sought by the applicant.  Usually, the widest is expressed first and all subsequent ones tend to be narrower than the first rather like a matryoshka doll.    You should remember at all times that the specification is addressed to the "person skilled in the art", that is to say, the person or team of persons having the knowledge, skills and experience to make or use the invention.  Some words or terms may have a special meaning which is different from everyday usage.

While not essential, some introductory training in patent searching can help at the start.  Patent search workshops have been offered from time to time by the British Library and some of the other Business and IP Centres around the country. I shall be giving a short one-hour introduction to patent, trade mark and design searches and how to read patent specifications at the Menai Science Park on Angelsey between 13:30 and 14:30 on 29 Nov 2019 (see How to use Patent, Trade Mark and Registered Design Databases 2 Nov 2019 NIPC Wales). If you want to sign up for the class which is free, click here.

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

29 October 2019

An Inventor's Guide to Shanks v Unilever

UK Supreme Court
Author Christine Smith Licence CC BY-SA 4.0

Jane Lambert

On 23 Oct 2019, the Supreme Court of the United Kingdom delivered a judgment that could affect anyone who works in R&D or in some other capacity in which he or she is likely to devise an invention. It could also affect an inventor who assigns his or her rights in an invention to his or her employer.  Five justices of the Supreme Court found that an invention that had generated revenues of £24 million had been of such "outstanding benefit" for the inventor's employer that the inventor deserved a payment of £2 million in addition to the salary and perks that he had received from his employment.

The case is known as Shanks v Unilever Plc and others and you can read all about it on the Supreme Court's website and my case note, Employees' Inventions - Shanks v Unilever of 28 Oct 2019 in NIPC Law.  My note links to a press summary of the judgment and a video in which Lord Kitchin, who delivered that judgment, reads that summary.

The right to an additional payment known as "compensation" arises out of s.40 of the Patents Act 1977. Subsection (1) could affect you if you are employed in a capacity where you are likely to devise an invention. Subsection (2) if you are employed in some other capacity that entitles you to patent your invention but you sell or grant an exclusive licence to your patent or right to apply for a patent to your employer,

However, inventors can't expect compensation in addition to their pay and benefits for any old invention.  It has to be one that generates an "outstanding benefit" for the employer. That is to say, a benefit that is exceptional or stands out.  That is not easy to prove.  Not many employed inventors apply for compensation and most of the applications that are made fail.

The significance of the Supreme Court's decision is that the Court made an award to the inventor even though £24 million is chicken feed to a multinational group of companies like Unilever.  The inventor, who is now a visiting professor of electronics and electrical engineering in the University of Glasgow, had worked in R&D for a subsidiary of Unilever in the 1980s. He applied for compensation as long ago as 2006. He took his case to the Comptroller-General of Patents, Designs and Trade Marks who appointed an official known as a "hearing officer" to hear his plea. 

One of the factors that the hearing officer had to consider under s.40 (1) was "the size and nature" of the employer's undertaking.  As Unilever, which makes everything from ice cream to deodorant is massive, the hearing officer could not say that £24 million was an "outstanding benefit" for that company. He dismissed the application. The inventor appealed to Mr Justice Arnold who agreed with the hearing officer. He then appealed to the Court of Appeal which agreed with the judge below and the hearing officer.

The inventor finally appealed to the Supreme Court which is the highest court of the United Kingdom. There Lord Kitchin, who had distinguished himself as a barrister of the intellectual property bar and later as a judge of the Patents Court and Lord Justice of Appeal, said that the hearing officer and the courts below had been looking at the words "the size and nature of the employer's undertaking" the wrong way.  The inventor had not been employed by the whole Unilever group but by a subsidiary that was responsible for R&D.  The correct way to consider the issue was to compare the benefits that had accrued from the invention in this case with all other inventions in the field that had emanated from the same subsidiary.  If that was done the £24 million benefit really did stand out and the inventor was entitled to a fair share of it.

The hearing officer had decided that 5% of the £24 million, which would have amounted to £1.2 million, was a fair share had he been able to make an award of compensation to the inventor and the Supreme Court agreed.  However, as Unilever had enjoyed the use of that money for many years and as the value of that sum had been eroded by inflation the Supreme Court gave the inventor an uplift to £2 million. Mr Justice Arnold had said that corporation tax should be deducted from the £24 million but the Court of Appeal disagreed with him and so did the Supreme Court.

Lord Kitchin made clear that the methodology of assessing the benefit from the invention having regard to the size and nature of the employer's undertaking did not apply to every case.  Sometimes it is appropriate to consider the benefit in relation to the revenues of the whole company as was the case where an employee's invention transformed the fortunes of the company.  Each case depends on its own facts.

While it is still not easy for an inventor to recover compensation over and above his or her salary and benefits this case has undoubtedly removed some obstacles and clarified the law. Most applications for employee's compensation start in the Intellectual Property Office where the procedure is less formal than a court and the costs that may be awarded against the unsuccessful party are considerably lower.

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

14 October 2019

A Useful Little Video from the EPO

Standard YouTube Licence

There's more to the Law of Confidence than NDAs

Jane Lambert

I am often asked to draft or review non-disclosure agreements or "NDA". I do so with a lot of trepidation because there are many misconceptions about such instruments.  A typical example occurred last week when I was asked to advise how to prevent potential collaborators and investors from making stealing the idea for a new software product.  I had advised that copyright was likely to subsist in anything that had been written down and that the law of confidence could prevent unauthorized use or disclosure.

"Oh!" came the reply. "So long as I have an NDA in place I should be alright?" Where that idea had come from, I just don't know.  I had not even mentioned non-disclosure agreements.  "That's not what I said," I told him.  "There's much more to the law of confidence that NDAs",

If, as sometimes, happens I am instructed to resist an application for an interim injunction where the applicant relies on an NDA I have a field day.  First, I ask whether the information was ever confidential in the first place.  Sometimes it is something that has been common knowledge in the industry since Adam was a boy.  Other times there has been no attempt to keep the information secret. I was once negotiating terms of a licence which negotiations were taking place in services offices when I found the other side's supposedly confidential document in the publicly accessible ladies' loo. There is often room to dispute whether the confidentiality agreement was ever intended to apply to the information in question. One way or another, a halfway competent intellectual property specialist can drive a coach and horses through a bog-standard standalone non-disclosure agreement.

I think confusion arises because folk regard an NDA in the same way as they do commercial agreements.  That is a mistake because any obligation not to disclose or use confidential information arises not from the contract but from the relationship between the parties.  Mr Justice Megarry put it this way in Coco v A.N. Clark (Engineers) Limited  [1968] F.S.R. 415, 419:
"In my judgment, three elements are normally required if, apart from contract, a case of breach of confidence is to succeed. First, the information itself, in the words of Lord Greene, M.R. in the Saltman case on page 215, must “have the necessary quality of confidence about it” . Secondly, that information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorised use of that information to the detriment of the party communicating it. I must briefly examine each of these requirements in turn."
The key phrase is "circumstances imparting an obligation of confidence".  The signing of a confidentiality or non-disclosure agreement can indeed be one of those circumstances but it is not essential.  There are many circumstances in which an obligation of confidence can arise where there is no agreement at all.  Consulting a patent attorney about a patent for an invention is one obvious example.  Finding documents in the street marked "Top Secret" or "Confidential" would be another.

If you want to rely on the law of confidence, print a form in duplicate on no carbon required paper with boxes for:
  • The name and full postal address, job title, email, telephone and other contact details of the confidante and those of his or her employer if they are different.
  • Identify the information to be delivered and the way in which it is to be passed (that is to say, private conversation, whether it is is a document and if so what it contains).
  • An acknowledgement that the information has been disclosed in confidence.
  • A finite period in which the confidante can contend that the information is not confidential at all and a rapid and cost-effective way of resolving such contentions such as expert determination or expedited arbitration.
  • The use to which the information may be put.
  • A deadline for the return of confidential documents and may have been made.
  • Submission to the jurisdiction of the English courts.

Every single confidential conversation and the delivery of every single document should be recorded and logged separately.  If any of the conditions is breached, the confider should call the confidante at once. If it is still not put right the confider should consider legal action including possibly an interim injunction.

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

05 August 2019

It is never enough to get a patent, trade mark or registered design.

Corporation of Lloyds
Author phogel, Licence: Creative Commons Attribution-Share Alike 2.0 GenericSource Wikipedia 

Jane Lambert

As a barrister, I am often shown a blatant act of piracy or a breathtakingly unjustified letter before claim and am asked for my opinion on the strength of the claim. More often than not, that is the last I ever hear of the matter.  Sometimes I run into the patent agent or solicitor who consulted me and ask what happened. "Oh! The client just could not afford to fight" is the usual answer. "So he let it go" or as the case may be, "He just caved in."

Now if you consult TaylorWessing's Patent Map, click the arrow beside "I have a question for all countries" in the left-hand box, click again on "Questions concerning First Instance" and choose the "Typical costs at first instance?" option, you will see why.  The figure for England and Wales is £200,000 to £1 million. Compare that to France (€200,000 to €800,000), Germany (infringement €100,000 to €200,000 and the same for validity), the Netherlands (€75,000 to €200,000_ and Switzerland (court fees: €830 - €125,000 attorney's fees: €1,700 - €250,000). It is not surprising that only 5,736 European patent applications were made from the UK in 2018 compared to 26,734 from Germany, 10,317 from France, 7,927 from Switzerland 7,140 from the Netherlands (source European patent applications by country of origin 2009 to 2018).

Of course, those figures don't tell the whole story. Patents for European countries can be granted by national intellectual property offices such as the IPO in Newport as well as by the European Patent Office. Intellectual property litigation can be conducted far more cheaply in the Intellectual Property Enterprise Court than the Patents Court or the rest of the Chancery Division.  But these figures tend to confirm the widely-held view that IP litigation in England and Wales is prohibitively expensive and that it is just not worth spending many thousands of pounds on a patent or other registered right which costs many thousands of pounds more to enforce. 

Now what, if anything, can be done about that? The Ministry of Justice has probably done as much as it could by streamlining the practice and procedure of the Intellectual Property Enterprise Court, introducing a small claims track for the simpler cases and requiring all courts to manage their cases at proportionate costs. The IPO offers a cost-effective mediation service and examiners' opinions on such issues as whether a patent is valid and whether it has been infringed. The Unified Patents Court would have created a level playing field for all European patent owners but that may well have been scuppered by brexit and litigation in the German Constitutional Court,

Probably the best way forward is for businesses to consider enforcement whenever they apply for a patent, trade mark or registered design or acquire some non-registrable right. In the case of a start-up or other small business that probably means taking out IP insurance.  I have been writing about this topic since 2005 (see IP Insurance: Does it Work? 3 Sept 2005 NIPC Law, IP Insurance 3 Sept 2005 NIPC Inventors' Club, 6 Feb 2006 IP Insurance: Two More Insurers Identified 6 Feb 2006 NIPC Inventors Club, IP Insurance Five Years On 26 Oct 2010 NIPC Inventors Club, Intellectual Property - The Funding Options 10 April 2013 NIPC Law, IP Insurance: CIPA's Paper and 1 May 2916 NIPC Inventors Club).

Back in 2005, there were not many brokers with experience of arranging IP insurance and many patent and trade mark attorneys were sceptical of the value of the policies. Because after-the-event premiums and success fees were then recoverable from unsuccessful paries, many rightsholders thought that it would always be possible to find solicitors and counsel who would accept instructions on a no-win-no-fee retainer should a dispute ever arise.  All that changed with the Legal Aid, Sentencing, Punishment and Management of Offenders Act 2012 and costs capping in the Intellectual Property Enterprise Court (see Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd 14 July 2011 NIPC Law). The Chartered Institute of Patent Attorneys published IP Insurance and other IP litigation funding arrangements in 2016.  The Intellectual Property Office published its guidance on Intellectual Property Insurance on 22 Jan 2016 which it updated earlier this year.

The IPO's guidance covers the types of before-the-event IP insurance policies that are available, the types of litigation, jurisdiction and risks that can be covered, the costs and benefits, the criteria for setting premiums, the claiming process and alternatives to litigation such as IPO examiners' opinions and mediation.  There is also a list of specialist brokers on the CIPA and IPO's websites.  Provision for IP insurance premiums or some other funding should appear in every business plan.  Angels, private equity investors, bankers and other lenders should insist on it.  It is as important as rent, equipment hire and employees' wages.

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

27 June 2019

Intellectual Property Resources for Inventors and Small Businesses in the USA

Author: Addicted)4
Licence: Creative Commons Attribution-Share Alike 3.0 unported
Source Wikipedia

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.

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

Author Morwen
Licence Creative Commons Attribution-Share Alike 3.0 unported
Source Wikipedia 

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.