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.
The Patent Office has published the application form and a whole load of useful information about the service on its website. Full details are available on our other blog "Patent Office Opinions available from Monday". This is intended to make it a lot easier and cheaper for independent inventors and small businessmen and women to enforce their rights.
I for my part will do my best to make sure that it is.
The first of these booklets sets out to provide the sort of information an inventor, investor or other person with an interest in an invention needs to consider before committing him or herself to applying for a patent. It also contains a summary of the patenting process in the UK and abroad as well as information about renewing, enforcing and exploiting patent rights.
The other guide is all about how to apply for a UK patent. Right at the starts it warns of the need to keep your invention secret and the importance of getting professional advice. Other good advice is to be on the look out for invention promotion companies. Sources of disinterested and in some cases free advice are identified.