28 December 2005
27 December 2005
In my article, "Should you apply for a Patent for Your Invention" I suggest some criteria for deciding whether or not to apply for a patent for an invention. If you do decide you need a patent, I have linked to two other articles, "Tips for Inventors" and "Applying for Patents" to guide you further.
25 December 2005
Also, anyone in Yorkshire or Lancashire who wants to attend one of the local inventors clubs', a patent clinic, workshop or seminar now has an "Events" page to consult. We have linked this page to a lot of other local and some national organizations providing events on IP and technology likely to be of interest to inventors.
24 December 2005
It contains two precedents actioned by a mouseover on the green text
- a non-disclosure agreement; and
- a disclosure log.
It also links to articles that I have written on this blog on "confidential information" and elsewhere on protecting trade secrets overseas as well as to a very good short booklet that you can download from the Patent Office on non-disclosure agreements and Trevor Baylis Brands Plc's inventors' packs.
More will follow soon.
23 December 2005
As the cost varies according to the complexity of the technology, the number of designated countries, translations and other factors, the survey took as its paradigm a specification consisting of 11 pages of description with 10 claims spread over 3 pages. The cost of obtaining such a patent was €30,530 in Europe (as of 23 Dec 2005 £20,861.15) compared to €10,250 (£7,004.85 for a comparable US patent granted to a US company - British applicants would have to pay £16,469.94 which is still less than they have to pay for protection in their own market) and €5,460 (£3,731.36) that a Japanese company would have to pay for a patent in Japan.
The costs in Europe are made up as follows:
- pre-filing expenditure excluding R&D (€6,240),
- internal cost of processing (€3,070),
- attorney (patent agents') fees (€4,930),
- translation of application and claims (€3,020),
- official EPO fees (€3,410),
- validation (€9,870).
This does not even begin to take account of enforcement which is the major cost and far higher in the UK and the rest of Europe. As I have previously reported in my other blog, Gordon Brown has commissioned Andrew Gowers to review the UK’s intellectual property framework and to report to the Chancellor, the Secretary of State for Trade and Industry and the Secretary of State for Culture, Media and Sport by Autumn 2006 (see Gordon Bennett (or should that read "Brown"?) - Gowers Review of Intellectual Property). If he or the rest of his government is concerned about why the UK is lagging further and further behind its European and American competitors and even further behind its North Asian ones he should look at this report and think on.
Happy Christmas everyone.
10 December 2005
Almost without exception the replies were advice and guidance and financial and practical support. There were one or two long and sorry tales of frustration and disappointment. All sorts of people were blamed for those failures including professionals, venture capitalists and the government. One person opined that inventors should be free to invent and that others ought to be concerned with commercialization. A few suggested a political approach such as inviting the deputy prime minister to Manchester so that he could learn of their needs first hand.
To the man who said that inventors ought to be left to invent and that others ought to be allowed to commercialize their inventions, I observed that that was the way in which industry works. Most successful inventions are actually made by bright young men and women with advanced degrees who are recruited from the best universities around the world. Others in their companies or universities apply for patents for their inventions and commercialize their work. These young scientists, engineers and technologists are paid reasonably well for their services - though usually not as well as the accountants, marketers and managers who commercialize their work - but that does not matter. They do what they like doing best which is to work on the frontiers of their science. It is possible for an independent inventor like Lemelson or a Dyson to do very well but it is a lot easier for an inventor like Sternbach who developed 241 new inventions for his employer.
The purpose of a patent is to confer a temporary competitive advantage upon a manufacturer as a reward for showing the world have to make how to make a new product or process. It is not intended to be certificate of attainment or honour like a degree or knighthood but a commercial advantage. It is very much a product of the modern capitalist system. Patents and trade marks did not exist for much of the history of the Soviet Union. There was no need for them when everything was made and marketed by the state.
Where there is demand for a patented product or goods produced by a patented process and the supplier of those goods has the means to enforce them, the rights conferred by a patent can be exceedingly valuable. Absent such demand and such means, a patent is otiose.
The lesson for inventors is to think less about the invention and more about the market. Is there an unfulfilled demand? Can I fill it? Can my solution be protected by law and if so how? How can I resource such protection? One of the reasons why I have set up groups like the Huddersfield IP Forum and assist groups like the Manchester and Leeds inventors is to put that message across. It is an important message and if taken to heart it will reduce considerably the bitterness of many talented and otherwise reasonable people.
30 November 2005
According to its chairman, "The Korea Invention Promotion Association is an organization specialized in promoting nation's intellectual property rights and commercialization for patent technology under Article 32 of the Invention Promotion Act, fulfilling its mission of implementing projects in the interest of inventors with efficient system."
The Association appears to provide:
- funding for commercialization;
- support for patent transfer
- support for patented technology valuation
- patent valuation; and
- an e-market place.
It is interesting that Koreans seem to regard globalization as an opportunity for improving living standards and the environment while our business and political leaders dangle globalization as a threat.
It is an excellent introduction to the topic and it makes some excellent points. It starts with the almost Marxian analysis of the transition of the world into a knowledge based economy. The dialogue contains some wonderful catch phrases like "business as usual" is not an option. It stresses the need to identify intellectual assets through an IP audit. Finally, it ends with a short test which I am glad to say I passed.
This is the first of 10 modules. The following are promised for the end of this year: marketing (trade marks and industrial designs), invention and patent, trade secrets. copyright and related rights. Next year, the re should be patent information, licensing, e-commerce, IP and trade and IP audits.
26 November 2005
"UK performance is strong on filings of trade marks, which may be more closely indicative of non-technology based innovation than patent statistics."
In a forward looking arrow graphic, it also suggests that other UK strengths include excellent science base, English language and traditions of openness. Since some of our best universities are closing their physics and chemistry departments I am not persuaded about this strong science base. It appears to be based on another convenient statistic namely the number of scientific papers and citations which comes conveniently from the DTI. However, even this particular piece of propaganda has to admit that the UK business’s record on R&D and patents is comparatively (sic) weak, though it tries to minimize that weakness by suggesting that these are imperfect measures of innovation in an increasingly services focused economy. Not nearly as imperfect as scientific papers and citations, mate!
I am trying very hard to keep this blog politically neutral but guff like that would try the patience of Job.
17 November 2005
I thought of Lemelson yesterday when Terry Singleton and Clayton Roudette (winners of the University of Manchester Incubator Company inventors competition) gave their presentations to the Leeds Inventors Group. This was one of the most stimulating evenings ever and we also had one of our best crowds. They made no bones of the fact that invention and commercializing their inventions had not been easy for them, but what came over from their talks was that invention can be fun. In the questions and answers that followed several members of the audience requested a brainstorming meeting where inventors and others could share their advice and experience. Ideas NW (Blackburn inventors' group) has just had a successful evening on those lines on 20 Oct and the Manchester group is going to try one in the Central Library at 6pm on 6 Dec 2005. Accordingly, we have resolved to run one in Leeds on 18 Jan 2006.
One of the reasons why we were particularly pleased Clayton is that he had come all the way from Poulton-le-Fylde and was due to appear at the Business Enterprise eXchange in Manchester today. The programme looks really interesting and will continue until tomorrow when you can catch Terry.
Finally, if anyone has got any energy for the evening. There is a talk at 18:00 tonight by Ray Clark "From Invention to Commercial Success" at Blackburn Technology Management Centre, Challenge Way, Blackburn BB1 5QB. I heard Ray speak in Manchester on 1 Nov 2005 (see "What Inventors can learn from Marketeers" and found his talk very good indeed.
14 November 2005
We are also slowly uploading the slides and handouts of some of the best of the talks that we have given since we started in 1997. So far we have got the slides and a handout for two seminars from earlier this year.
Watch that space. This is going to be a major resource for inventors and others initially in the North but hopefully later nationwide.
12 November 2005
I've already done quite a bit on confidence on my IP/it Update website and the Patent Office has published an excellent leaflet entitled "Confidentiality and Confidential Disclosure Agreements (CDA)" which actually contains a serviceable confidentiality agreement at the end. The question of where do you get a good confidentiality agreement actually came up in questions. I tried to explain that the obligation of confidence does not necessarily depend on an agreement but this is not an easy area of the law even for lawyers so I have decided to try again here.
What is an Obligation of Confidence and How does it arise?
Most people pick up the basics of the law of confidence at primary school. When one child tells a secret to another, there is an understanding that the child to whom the secret is imparted will keep the secret. If that child fails to do so, he or she will be despised. There are, of course, exceptions even in the playground. For example, a promise to keep a secret may be overridden where disclosure is necessary to prevent bullying or other harm. Essentially the same rule applies to adults. The law will prevent unauthorized disclosure or use of confidential information unless the public interest requires otherwise.
What is “Confidential Information”?
Essentially, any information the use or disclosure of which would harm the person who confides it (“the confider”) or benefit the person who receives it (“the confidante”) is confidential. Most such information falls into two categories.
- Personal information such as discussions between husband and wife, clinician and patient, client and professional advisor; and
- Business secrets such as the formula for a new chemical or the results of a market survey.
Business secrets do not have to be new or inventive like an invention. A collation of matter from publicly accessible sources will do so long as it consumed time and labour. All that is required is that the information should have value and not be widely known.
What do the words “disclosed in confidence” mean in practice?
The confidante must know or have reason to believe that the information was disclosed to him or her in confidence. Often the indication that information is disclosed in confidence is obvious. The words “Secret” or “Confidential” at the top of a page suffice in most circumstances to put anyone of reasonable honesty and intelligence on notice. But those words are not essential. Confidentiality will be assumed where the nature of the information is such that no rational person would willingly disclose it otherwise than in confidence.
Nevertheless, circumstances arise where it is not clear whether a particular item of information is disclosed in confidence. In advanced research and development, it is particularly difficult to separate what is confidential from what is arcane. In those circumstances, the best way to ensure that a confidante knows that the contents of a particular document or matter imparted in an interview is confidential is to say so. The best way to make sure that the confidante understands and accepts that such information is confidential and has been disclosed in confidence is to ask him or her to acknowledge such understanding in writing. Such an acknowledgement is often referred to as a “confidentiality” or “non disclosure agreement”.
Purpose of Confidentiality Agreements
It has to be stressed that an obligation of confidence does not arise from a confidentiality agreement as such. The primary function of the agreement is to put the confidante on notice that the information is confidential and that the disclosure is in confidence. Lest the obligation be broken, the agreement also records the disclosure in confidence and the undertaking of the obligation. Another purpose of a confidentiality or non-disclosure agreement is to impose a positive obligation on a confidante, such as obtaining similar undertakings from employees or taking proceedings to prevent disclosure or use by them.
Need for Positive Steps
However carefully it may be drafted, a confidentiality agreement will not protect unauthorized use or disclosure of information unless the confider takes reasonable steps to keep it secret. Such steps should include restricting access to computer files or documents containing secret information to those who need to know. Confiders should record access to those files and monitor their copying and use. Staff should be trained in security and their co-operation sought at all times.
How long does an Obligation of Confidence last?
The short answer is for so long as the information remains secret. That can be a very long time indeed. The recipe for chartreuse has been secret for 400 years. The Coca Cola Company has kept the recipe for coke secret for well over a century. More typically, the confidentiality of a design or formula of a product that can be reverse engineered lapses when it is put on the market. The rule is that once information becomes generally known otherwise than through the confidante’s misconduct the duty ceases to bind.
In what Circumstances can Confidential Information be disclosed?
An obligation of confidence may be overridden in any circumstances where disclosure is in the public interests. An obvious example is where disclosure would prevent or assist the detection of a crime or enable a patient to receive medical help.
How is the Obligation enforced?
The courts will grant an injunction to prevent unauthorized disclosure or use of confidential information for so long as it remains secret. If necessary, they will consider granting interim or temporary injunctions to prevent use or disclosure until the merits may be adjudicated. Where unauthorized disclosure or use has already taken place, the court may order the confidante or other defendant either to disgorge his or her gain or compensate the person who has been injured for his or her loss with interest. They may also make supplementary orders such as requiring a wrongdoer to hand over documents or supply information about others who may be involved. Above all, wrongdoers can be ordered to pay costs to the injured party which may amount to many thousands of pounds.
Most claims for breach of confidence in England and Wales are brought in the Chancery Division of the High Court of Justice or in county courts whose staff also work in district registries (that is to say offices of the High Court) that do chancery work. That means that claims may proceed in London (the Royal Courts of Justice or the Central London County Court), Manchester, Leeds, Liverpool, Newcastle upon Tyne, Birmingham, Bristol or Cardiff. Claims issued anywhere else are usually transferred to the High Court or county court of one of those cities.
That is the first question to ask. The question may seem impertinent immediately after someone has harmed or appeared to harm you but, that is exactly the right time to ask it. That is because the longer proceedings continue, the harder and more difficult they will be to escape.
There are really only two good reasons to sue.
- to recover reparation that would not otherwise be recoverable; and
- to prevent imminent and irreparable harm.
No other reason is good enough.
Making trouble for its own sake or seeking revenge will be regarded as unnecessary and may well be penalized. Litigation (going to court) is always expensive but if a court believes litigation to have been unnecessary, the costs for the party at fault could be swingeing.
Factors to Consider
Even if you have good reason to sue, you must decide whether the money you are likely to recover, or the harm that you are likely to prevent, is worth the time, risk and cost of litigation.
That is a complex judgment and often depends on uncertainties.
First, you have to estimate your own costs and your chances of getting any of them back.
Next, you have to estimate how much the other side is worth and how easy it will be to recover money from an opponent who can be expected to do all he or she can to avoid paying you. You should ask yourself whether a judgment be any practical use to you at the end of the day. If you get an injunction (an order by the court to do or refrain from doing something on pain of punishment) against the other side, could it find a way around your order? If the other side is ordered to pay you money, what financial state will it be in when the litigation comes to an end in several years time?
Closely connected to that question is what are your prospects of success given your knowledge of the facts and the unknowns? Can you afford, and do you have the will, to litigate over several years? Does your opponent have the will and resources to litigate over that time? Equally important, is it possible that the other side underestimates your determination and resources? Similarly, are you sure that you do not underestimate the other side’s?
What is involved
Litigation can take many years, and cost tens of thousands of pounds (or euro, dollars or yen), to resolve. Parliament, the courts and practitioners are taking steps to reduce costs and delays, but it will always take time and money to read, copy and analyse documents, trace and interview witnesses, prepare court documents, present one’s own evidence, test the other side’s and argue the merits.
A Two-Stage Procedure
IP (intellectual property) cases in which money is claimed generally proceed in two phases in England and Wales. In the first phase, the court considers whether the claimant (the person bringing the claim) has a valid IP right (IPR) that has been infringed. That is sometimes called “the trial on liability”. It can take anything from a few months to 2 years depending on the complexity of the case and the number of other cases waiting to be heard by the same court. The second phase is the “account” or “inquiry” where the court decides how much (if anything) the defendant (the person who is sued) owed the claimant.
The First Phase
If the court does find that the claimant has a good claim, it may order the defendant to stop infringing the claimant’s IPR at once, to surrender any goods that infringe those IPR and any equipment used to make those goods and to pay the claimant’s costs so far. If the court finds that the IPR claimed by the claimant to be invalid or that they have not been infringed it will dismiss the claim and order the claimant to pay the defendant’s costs.
Sometimes, a defendant makes a claim against the claimant known as a “counterclaim”. A counterclaim that occurs frequently in IP cases is revocation of a patent or a declaration that a trade mark or design registration or other IPR is not valid. If the court agrees with the defendant, the claimant may also lose the IPR upon which the action was fought or be required to amend it.
The Second Phase
If, on the other hand, the court finds the IPR to be valid and to have been infringed, the court proceeds to an inquiry as to the damages (compensation) that that the defendant owes to the claimant, or an account of the profits that the defendant has gained from his wrongdoing. The claimant can chose one remedy or the other but not both. Normally, it will chose whichever it believes likely to yield more money. An account or an inquiry can also last up to two years and may be even more expensive than the trial on liability if forensic accountants or other experts are instructed.
If an IPR owner believes that it can’t afford to wait for the court to determine whether its rights are valid and infringed, it can ask the court to grant an interim injunction, that is to say, an order enforceable on pain of punishment to do or refrain from doing something for the interval between the issue of the claim and judgment on the trial on liability.
Many litigants regard an interim injunction application as a short cut to victory and, in many cases it is. That is because an application for such an order can be nearly as expensive and time consuming as preparing for the trial and the losing party either runs out of money or simply loses heart. However, that is not how the remedy is supposed to work. The court is required to consider how much the claimant will lose in the long run from continuing infringement by the defendant if the claimant wins the case, how much the defendant will suffer if the claimant loses but the defendant is prevented from doing for a time something that proves to have been lawful, and then decide which of the alternative courses of action is least likely to do injustice. If it thinks that the claimant is unlikely to win or that it is likely to recover adequate compensation from the defendant in the end of the case, it will refuse an interim injunction. If it believes that the claimant could win and that, if it does, it would be unlikely to recover adequate compensation from the defendant for the losses that it might sustain up to trial it will consider injuncting (restraining) the defendant until trial. However, it will do so only if the claimant promises to compensate the defendant for any loss or damage that it may suffer from the injunction if subsequent facts show that the injunction should never have been granted.
Search Orders and Freezing Injunctions
There are several special types of interim injunctions that are available where there is evidence that a defendant would destroy, remove or hide records damaging to its case that would otherwise be available to the court or remove from the UK or otherwise dispose of money or assets against which would otherwise be available to a successful claimant.
One of those special injunctions is called a “search order” (formerly known in England as, and still called in other places, an “Anton Piller order”). This is an order requiring a person in charge of an office, factory, warehouse, vehicle or other property to admit an independent solicitor appointed by the court (“a supervising solicitor”) plus one or more solicitors instructed by the claimant accompanied perhaps by a computer or other expert to search the premises and computers for files or other evidence that may be relevant to the litigation and to allow that evidence to be copied, photographed or otherwise made available to the court.
The other special order is nowadays called a “freezing injunction” in England and Wales but was previously known as a “Mareva injunction” and is still known by that term in other countries. This is an order not to remove, hide or otherwise dispose of assets that could be used to satisfy a judgment. It is directed not only to the defendant but also to his bankers, stockbrokers or other financial advisors.
It goes without saying that both search orders and freezing injunctions have to be made in the absence of the defendant. Because both remedies are highly intrusive they are subject to many safeguards. Applicants for such relief can be made only to the High Court or to a special judge of the Central London Court. All evidence in support of such application has to be made in a sworn statement known as an “affidavit”. Such affidavit has to disclose not only facts that are helpful to the application but also those known to or reasonably ascertainable by the claimant that are not. The supervising solicitor has to have experience of search orders and be completely independent of the parties. Usually, he or she is an experienced litigation solicitor in a well known and hence expensive law firm. There are extensive restrictions on when, where and how the order can be carried out. The supervising solicitor is required to report to the court and the defendant has to be given an opportunity to challenge the order. All of this greatly adds to the cost of the litigation and should be considered only as a last resort.
Other Interim Orders
Applications for interim injunctions are not the only contested proceedings that could take place in the run up to trial. For instance, if the claimant is a limited company that may not be able to afford to pay the defendant’s costs at the end of a trial on liability, the defendant may ask the court to order the claimant to deposit into an escrow account held by the court a sum of money or give some other security for the defendant’s costs. If it is unable to give such security within the prescribed time, the court may stop the action in its tracks. Parties to an action are required to disclose all documents that are material to the case but sometimes disputes arise as to whether that has been done. Orders an such matters as interim injunctions, security for costs and disclosure of documents are known as “interim” or, occasionally, “interlocutory orders” to distinguish them from “final orders” which are those given after a full trial.
Either side can appeal to the Court of Appeal from any interim or final order and from there to the House of Lords. Should a point of EC law arise there may be a reference to the European Court of Justice in Luxembourg. There is also the possibility of an application to the European Court of Human Rights if either side is denied rights under the European Convention on Human Rights.
These will depend on the length and complexity of the action, the court in which it proceeds and the hourly rates of the lawyers and experts involved. It is rare for an action that is fought all the way to cost less than £100,000 for each side. Often the costs rise to over a million. Even an application for an interim injunction could cost over £10,000 apiece and an application fro a search order or freezing injunction very much more.
Costs will vary greatly depending on location, experience and overheads. An experienced litigator in a City practice could charge many hundreds of pounds an hour while that of an assistant in a suburban or country practice could be a quarter or even a third of that. The same variation applies to counsel. An intellectual property specialist could charge over £350 an hour while an experienced general chancery or commercial practitioner in Leeds or Manchester could be less than a third as much.
It has to be remembered that the country solicitor or provincial counsel will lack the experience of the specialist and that there will be times when he or she will spend several times as long as (and hence charge more than) the specialist and still get it wrong. Conversely, not every IP case is so complicated that it needs a London specialist.
Whatever is spent on lawyers and experts often pales into insignificance compared to the diversion of management time and resources from running a business to conducting litigation. This opportunity cost will vary from case to case and from company to company but a good rule of thumb is that for every penny spent on lawyers another 3p has to be added to a litigant’s costs in terms of disruption, extra expense and lost opportunity.
Alternatives to Litigation in England and Wales
Sometimes there are alternatives. it may be possible to rely on a collecting society or other trade association. Some intellectual property infringements are also criminal offences. Occasionally, disputes can be resolved through arbitration, mediation or other ADR (alternative dispute resolution) procedures. If a corresponding patent or other IPR has been infringed in some other country, it may be cheaper or less risky to sue elsewhere.
11 November 2005
I mention all this because I have just come across an excellent article on the Dyson website entitled "Help for Inventors". It consists of 4 pages:
- Why Patents are Important
- Getting a Patent,
- Costs, and
- Useful Contacts.
Most of the links are the usual, but there are one or two that are not found everywhere, like Inventorlink. Altogether, some very good stuff.
One of the beneficiaries of the foundation is the Smithsonian National Museum of American History in Washington DC. Using funds contributed from the Foundation, the Smithsonian has established the Lemelson Center for the Study of Invention and Innovation. This is a wonderful resource even on the internet. The current centre pieces include "Invention at Play" for children (particularly appropriate to honour the memory of a man who began his career in invention as a small boy), "Inventing Ourselves" (an exhibition on performance enhancement through invention and innovation) and a focus on the Novel Prize. Online resources include thousands of articles on invention.
It is rare to find a serious independent inventor of any kind nowadays, rarer still to find a successful one. Altogether a great inspiration.
06 November 2005
The Invention and Innovation website, which was commissioned by NESTA, sets out to be "a step-by-step guide to the process of invention and innovation" with guidance on the pitfalls to avoid and sources of advice to pursue, tips on developing an idea into a real product, an overview of protecting intellectual property and advice on ways of getting an idea into the commercial world from licensing to making and selling the product oneself. Like their books the website sets out a number of tips in digestible bites. The first of these is
"If you want to succeed, you must first do everything you can to avoid failure. That means you must always control your costs and always limit your risk."
It continues with some other good advice like making patent and market searches, prototyping, applying for a patent, licensing and the like.
Although much of what is on the site is also in their book (and indeed the "About Invention" page of the Design Council site) this website has one big advantage and that is the extensive though slightly out of date "Inventors' Directory" links page. This covers everything from innovation and enterprise agencies to banks though there are lacunae such as the absence of any serious mentin of enforcement, funding, inventors' clubs and professional help other than patent agents. These minor faults apart, it is a good guide and is strongly recommended.
03 November 2005
Ray Clarke's talk last Tuesday was excellent. An engineer himself, Ray contrasted the approach of an inventor keen to commercialize an invention with that of the marketeer looking for a product to fill a gap in the market. The two go together but the market need must come first. Anybody who missed that Ray in Manchester can hear him in Blackburn on 17 Nov 2005.
The Manchester Inventors plan a very special event next meeting for 6 Dec. Members will be invited to showcase their inventions to other members of the club in confidence. We hope to generate a lot of sparks from that event. Nobody will be allowed in without signing a confidentiality undertaking. A draft of this will agreement will be on the blog soon.
Finally, I have to apologize for the lack of activity on this blog over the last few days. The reason is that I have been doing jury service in Bradford and have had to use time that I would otherwise spend on this blog on paperwork. I have another week of this imposition. After 11 Nov, normal service should be resumed.
31 October 2005
Bmedi@ has a very full programme of events and we shall be kicking off the new year with a special evening on 17 Jan 2006. Lucas Bateman, legal adviser to COE Limited and, until recently, IP partner at Cobbetts, Leeds office and I will focus on the IP opportunities and pitfalls facing most of the members of the Bmedi@ network. Issues we shall cover will include such thorny questions as who owns work that is commissioned for clients, whether different rules apply to commissioned software, commissioned artwork and commissioned designs and, if so why, terms and conditions, funding and much, much more. We shall be sponsoring the wine and pizzas at the event, so we hope you will be our guests.
For further details of this and other events, call Stephanie Aldred on 01274 841326 email email@example.com
26 October 2005
The agreement that makes such an application possible is the Patent Cooperation Treaty or PCT. This is a complex multilateral agreement which requires quite a bit of background knowledge to follow properly. Fortunately, the WIPO (the UN agency responsible for international IPR co-ordination) has produced an excellent FAQ to this instrument. Further details are available on our other blog at "Patents: WIPO publishes FAQ on PCT."
25 October 2005
Contact Andrea Petrie
Tel: 0161 244 5825 Fax: 0161 244 5823
E Mail: firstname.lastname@example.org
The next one takes place on Friday, 28 Oct 2005 between 11:00 and 13:00. To book, call Jacquie Asquith on (01484) 483 080 or email her on email@example.com.
22 October 2005
"State of the art" is one expression from patent law that has entered common usage. Advertisers, journalists, sales staff and even non-IP lawyers use it loosely as a synonym for new. In fact the term has a very specialized meaning as I explained yesterday in Long Anticipated: House of Lords restores Trial Judge's Judgment in Synthon which I posted in our other blog nipc IP/it-Update.
The relevance to inventors and those wanting to do business with them is that an invention cannot be patented unless it is new and an invention cannot be new if it is within what is called the "state of the art". You get the point now. Far from necessarily being new, "state of the art" includes everything known to humanity about a particular technology including things discovered by cave dwellers.
Our UK Patents Act 1977 includes within the state of the art:
"all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way".
That is to say things that were on sale, published in patents, patent applications, scientific literature or otherwise lawfully accessible to anyone in the world.
But the Act also includes something else within the meaning of "prior art":
What this means is that matter that was not lawfully accessible at the time of a patent application can still count as prior art if it was comprised in somebody else's patent application and the conditions in paragraphs (a) and (b) are satisfied.
"matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to
(a) that matter was contained in the application for that other patent both as filed and as published; and
(b) the priority date of that matter is earlier than that of the invention."
Cases where this extended meaning of prior art don't happen very often but there has been one recently which was fought all the way to the House of Lords (the highest court of the United Kingdom). The law lords (the judges of that court) delivered their judgments on Thursday in a case called Synthon BV v. Smithkline Beecham plc  UKHL 59 (20 Oct 2005). My case note in the other blog tries to interpret the case and point out the important paragraphs.
As I said above, these cases don't happen very often but the point is important to inventors. For further information, call me on +44 (0)870 990 5081 during business hours or email me on firstname.lastname@example.org.
Central Library, Manchester
Ray Clarke will highlight some of the key issues involved with case studies of successful marketing, a discussion of the options available to inventors, a brief overview of the key stages and securing a contract with a commercial partner. Mr Clarke has over 14 years experience of industry and an impressive track record of helping inventors.
Tea, coffee, soft drinks and biscuits are served immediately before and after the talk
0161 234 1397
There will be a speaker who is an investor with a strong interest in innovation. The talk will cover how distributors work and what investors require.
Admission which includes refreshments and buffet in nearby pub afterwards costs £15 for Ideas21 members and £20 for non-members.
Tel 020 8780 9017
20 October 2005
The debate was sparked by a post in chambers' other blog entitled "Porridge for Patent Inf ringers" on 22 Aug 2005 where I criticized proposals for a directive to criminalize all intellectual property infringements. Yesterday I came across a much more withering criticism by Prof. Ross Anderson of Cambridge University which I summarized in "Porridge for Patent Infringement? No 2". Essentially, the professor, who was speaking not just for himself but also for a think tank consisting of some pretty high-powered IP and constitutional law practitioners and scholars, argued that the proposal would be bad for the economy and bad for civil liberty.
My view is that he is right. Had IPRTalk not been so offensive I would have posted the note on the prof's evidence to the IPRTalk chatroom. Instead, I emailed it to Babic R Branko and John Mitchell who have up to now taken a different view. Branko's reaction was that the patent system as it stands, does not work for the creative, none of those people can make it work and they continue to be abused by infringement and that our society is losing vast sums to theft of IP. He also queried the prof's calculations relating to the Japanese study on UK loses (150 billion odd per annum), as compared to the gains.
My reply was as follows:
"I agree that the present system does not work. The solution is to make it work at least as well as it does in our major competitors, such as the Germany, Switzerland or the Netherlands in the EC where litigation costs are 20% what they are here, or in the USA where such costs are comparable but there is much less risk of paying the other side's costs and lawyers can accept instructions on a contingency fee.
My fear is that the directive - should it ever be adopted - will make matters even worse for British industry as a whole and for the SME and universities that I represent in particular. It would also hinder the development of pharmaceuticals, telecommunications, electronics and aerospace in countries like Brazil and India to the detriment not only of their industries but also of our consumers.
None of our major competitors outside Europe - the USA, Japan, China, Taiwan, South Korea, India or Brazil - have ever contemplated such legislation. Fortunately, if our governments are silly enough to adopt this measure there is always the WTO to put them right."
I think that it is possible to improve enforcement even within the present legal framework but it is essential for inventors, entrepreneurs and professionals to work together.
Starting from the premise that its much easier to pick losers than winners Peter identified the points that most frequently trip up inventors. Failure to search was the most obvious one including failure to specify a market. Peter pointed out that it is not necessarily the first invention in a technology that proves to be most successful but the first to meet a practical need. Taking cats' eyes as an example, it was not the first reflecting surface that was commercially successful, but the first to use rainwater for self-cleaning. In the Q & A session that followed, a member of the audience asked Peter whether he had actually invented anything that had made money. Peter was able to reply proudly that he had - a concrete breaker and a computer guard among other things.
Next meeting on 16 Nov 2006 will star Terry Singleton and Clayton Roudette, winners of the University of Manchester Incubator Company invention competition (see "Examples of what can be done" 6 Sept 2005). We also plan a brainstorming session on 15 Feb 2005 along the lines of the IdeasNW event planned for today in Blackburn. IdeasNW chair, Basil Philipsz, has kindly offered to show us how it is done. Other talks will include Barry Stoddart of Procter & Gamble on 21 Dec 2005 on how to approach a multinational and two of our local patent agents will talk about their services to local inventors and entrepreneurs. Should be good.
13 October 2005
In Ranbaxy UK Ltd v Warner-Lambert Company  EWHC 2142 (Patents) (12 Oct 2005) Mr Justice Pumfrey gave some guidance as to how patent specifications are to be construed. The case is quite a complex one and much of the judgment is relevant only to the particular facts of that case but the judge did say a few things of general interest. One of these concerned the construction of specifications and passage that is most relevant to the public is as follows:
"I conclude that it is now clear that in deciding what the person skilled in the art would have understood the patentee to be using the language of the claim to mean, the court must approach the problem from the standpoint that the language chosen will be usually of critical importance. An over-meticulous analysis is one that is too willing to draw from a detailed analysis of the grammar, the punctuation and the particular words and phrases used inferences as to meaning that the words might support but which the skilled person would not draw, and it is the antithesis of giving to the words chosen in their context the meaning that the skilled person would give them. Carefulness is not to be equated with over-meticulousness."
What I think that means is that a judge or patent examiner has to put him or herself in the position of someone who could make use of the invention ("a skilled addressee") and give words and phrases the meaning that such skilled addressee would give them. It should not usually look for ingenious meanings that can be drawn from the language unless a more straightforward common sense meaning just won't work.
The judge also dealt with two other issues of general interest. The first was whether our patent examiners and courts consider the question whether an invention is obvious differently from the way that the European Patent Office approaches the question. He didn't think they did. The second issue was whether statements made by an applicant or his patent agent to the British or other Patent Office during the application process ought to be considered when construing a specification. The judge said they shouldn't. This last point is quite significant because the American courts do look at what was said to patent examiners during the application process and will not allow a patentee to say something different from what he or she said during the application process.
I have written a short note about the case in our other blog if anyone is interested in reading more.
“I was not the one to put Huddersfield on the IP map.
Carol Cook taught IP law for years at Huddersfield law school before she was recruited to set up the vocational course at BPP Law School in Manchester. In Jan 1998 she hosted a first rate seminar with speakers from Addleshaws, Eversheds, Cobbetts, the University, the Scots Bar and NIPC.
We had a great open day on 18 Feb 2005 with Trevor Baylis (see www.brassfromgumption.org.uk ) and we now have a Huddersfield IP Forum (see www.hip.org.uk ).
There are two firms of patent agents in Huddersfield, Appleyard Lees and David Lister. Harrison Goddard Foote, Bailey Walsh and Janet Bray are also quite near. TM agent Caren Burchill is also keen to lend a hand.
Professor Thompson of the Business School, John Edmonds and Jacquie Asquith of the Business Generator have done much to raise IP awareness.
Please convey the best wishes of everyone at NIPC to Chris and Sybil Goodman and also to Helen Johnstone and Ian Buchan of your firm.”
For some reason or other that I do not understand, this post was refused and the refusal was accompanied by a rather cheeky message. I did ask why but the moderator never bothered to respond. As I could not post this message on IPRTalk I have put it up here. Incidentally, I don't propose to waste any more time in the IPR Talk channel so if anyone wants to debate issues such as the one I mention above with me he or she will have to do it here.
10 October 2005
IP litigation costs an arms and a leg in this country. Far more than anywhere else in Europe. Unless you can afford tens and sometimes hundreds of thousands on solicitors, counsel and expert witnesses you should consider before-the-event insurance. There are at least three companies that specialize in this kind of business in England and Wales and there may well be more.
3 Sep 2005 IP Insurance
Its resources include inventors' guides and start-up kit, patenting software, very cheap confidentiality agreements (surprisingly one for disclosure to patent attorneys), evaluation reports, news, children's' page and lots more.
07 October 2005
Patents are available only for inventions that are new and by definition an invention cannot be new if it is already known to the public.
If you want a patent for an invention be very careful who you tell. An example of what can go wrong is poor old Dr Palmaz who gave
"a short presentation of 5 to 10 minutes, perhaps 8 minutes, to about 40 members of the Radiological Society of North America. He accepted that it was a public disclosure and that at the meeting he showed slides, one of which showed the drawings depicted ...... "
That was enough for a judge to find disclosure of the invention and the Court of Appeal could not reverse it (see Boston Scientific Ltd v Palmaz  EWCA Civ 83 (20 March 2000)). Accordingly, the invention was not patentable.
What do you do about it? The Patent Office has published some useful stuff in its leaflet entitled "Confidentiality and Confidential Disclosure Documents". It has to be stressed that many people don't like signing confidentiality agreements for very good reasons. That is particularly the case with big companies who are offered an unsolicited idea from a member of the public. One reason they may decline to sign such an agreement is that they are already working on similar projects and don't want to be accused of nicking other peoples' ideas. Another is that it is often unnecessary for a decision on whether to accept the unsolicited offer. What they need to know is whether an invention will fit into their business and as often as not they can decide that without knowing how to make the invention.
Remember also that getting the other side to sign a confidentiality agreement is never enough in itself. You need to monitor and enforce disclosures of trade or business secrets. For example, make a note of the date, time, place and persons present at the conversation at which information was disclosed and set out clearly in the record a summary of the subject matter of the disclosure. Similarly, record the date, time and place of delivery of a document and make sure that it is handed back when it is finished with.
Confidential info is a complex area of the law and you may need professional help. For more on the law see "Confidential Information" on our IP/it-Update site. For a case study and more on what can be done visit "Confidential Information" on the nipc site.
06 October 2005
To save themselves the humiliation of being beaten by foreigners, entry to this competition is restricted to US citizens and permanent residents. The contest is to be staged in 8 different cities around the USA. The top prize for the winner is US$1 million.
05 October 2005
IPR are monopolies or other exclusive rights granted by the state to encourage investment in research and development, design, distribution and the arts. They are an alternative to subsidy. They are very much a feature of free enterprise. In eastern Europe during the socialist era where the state owned the means of production, distribution and exchange anywhere inventors got inventors' certificates which entitled them to better housing and other perks instead. Consequently, as a general rule it is up to each IPR owner to make his or her own provision for the enforcement of such rights.
The exceptions to the rule are counterfeiting and piracy in that members of the World Trade Organization have agreed to criminalize manufacture and distribution on an industrial scale of branded goods and films, records, games and similar copyright works.
Enforcement litigation is risky and expensive, particularly in common law countries such as England and the USA. IPR owners can reduce those risks and costs by granting exclusive licences so that infringement becomes their licensees' problem, joining collecting societies in the case of owners of certain types of copyrights, rights in performances and related IPR or taking out insurance. Search this blog and its sister blog IP/it Update and related websites for more info.
Call John Lambert on +44 (0)870 990 5081
Nick and Paddy requested £75k. Only one of the panel, Rachel Elnaugh was prepared to invest in them. Unfortunately, her company Red Letter Days came unstuck not long afterwards and is now under new management. Consequently they never did get their money. Nick and Paddy have not given up. They have a product that I, for one, would like to try. Despite the disappointments they are hanging in there and we all wish them the best of luck.
After the talk, the chair listed some of the sources of help and funding that is available. The evening was over far too quickly.
04 October 2005
Tip No 1 No Property in an Idea
03 October 2005
Dennis writes that he was inspired by this book to become a patent attorney. In his own words:
"It sharpened my already keen interest in the field and gave me an opportunity to learn basics of patent law terminology and practical patent application practice. When I wrote my first patent application, this book was there by my side. I have to say that Patent It Yourself is still the best introductory resource book that I have seen for an inventor or new patent professionals. "
He recommends it not only to inventors but also to professionals. High praise indeed! He does, of course, explain that it is only an introduction and that it is no substitute for professional advice.
For my money, the best introduction to IP in this country is "The Inventors Handbook" written by my neighbours Peter Bissell and Graham Barker on the NESTA website. A good follow up is their book "The Business of Invention" which is available from their website at http://www.abettermousetrap.co.uk/. Peter will be at the Leeds Inventors Group at Central Library on 19 Oct 2005 at 6pm. Don't miss him.
02 October 2005
That discussion broadened out when one of the subscribers to IPR Talk complained of several aspects of our patent law. One of his complaints went as follows:
"I cannot submit my innovations to an international show, exhibition or competition. As I am a UK citizen, it is criminal offence to do so. Punishable by up to two years in jail."
This observation surprised one of the regulars in the forum who asked for clarification. That elicited the following response:
"I've been advised (by a patent lawyer) that even contacting a patent lawyer and discussing my innovations may be against the law! Ergo, submitting them for publication or showing them to the public via an exhibition is well off the righter
The person who asked for clarification suggested asking me for an explanation. Since this is an issue upon which the law has recently changed and since it may well interest people who are not registered in the IPR Talk forum I decided to respond in full here.
In order to prevent technology that could affect the security of the UK leaving the country, the comptroller (that is to say, the head of the Patent Office) has power under s.22 of the Patents Act 1977 as amended to prevent or restrict publication of an application for a patent that contains information that might be prejudicial to the defence of the realm or public safety. These restrictions can include prohibiting an application for a European patent or an application under the Patent Co-operation Treaty.
Since these provisions could be circumvented by applying for a patent outside the UK, s.23 (1) of the 1977 Act precluded applications overseas without the written authority of the comptroller unless an application had been made for a patent in the UK at least 6 weeks before the foreign application and the comptroller had not seen fit to impose any of the restrictions mentioned in the previous paragraph. Non compliance with that section is an offence punishable by fine or up to 2 years imprisonment under s.23 (3).
S.23 (1) as it stood applied to all inventions whether they had any relevance to national security or public safety or not. The section has now been modified with effect from the beginning of this year by s.7 of the Patents Act 2004 which restricts applications for patents outside the UK only where the application
"(a) ......... contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security; or
(b) the application contains information the publication of which might be prejudicial to the safety of the public."
Furthermore, a person can now be convicted under s.23 (3) only if he or she knows that filing the application, or causing it to be filed, would contravene that section or he or she is reckless as to whether filing the application, or causing it to be filed, would contravene this section.
As with anything that appears on this blog, I should be glad to answer any questions that may arise on +44 (0)870 990 5081 or email@example.com.
01 October 2005
- an inventors' workshop on 20 Oct
- a talk on 17 Nov by Ray Clarke entitled "From Invention to Commercial Success", and
- a showcasing event on 20 Dec on local assistance for inventors with pitches from Business Link, local authorities and the universities.
These events will take place on the third Thursday of every month at Blackburn Technology Management Centre, Challenge Way, Blackburn BB1 5QB from 18:00 and not the Saturn Centre as used to be the case.
I try to attend as many of these events as possible and am always glad to talk to anyone who needs advice. If it looks to me that a member could use some advice from some other professional such as a patent agent, solicitor or Business Link advisor I can sometimes arrange for an initial consultation with one of those too. Anyone wanting to talk to me in advance should contact me at firstname.lastname@example.org or call me on 0870 990 5081.
Ideas NW has set up "Chapters" (makes them sound like a community of monks doesn't it - I won't ask their wives what they think of it all) in Lancaster and Liverpool and NIPC will be pleased to help out there too.
Ideas NW has just got a new committee. We wish its chairperson, Basil Phlipsz, every success and will do our best to support him. Further info is available from Mark Grogan on email mailto:email@example.com Jim McGovern email firstname.lastname@example.org tel: +44 (0)1254 581467.