11 May 2012

Kate Reid: Confidentiality and Licensing

Counsel are probably in the best position to judge whether a solicitor, patent or trade mark agent is any good because we are instructed by members of those professions. Since the 4 July 2004 barristers have been permitted to deal directly with the public. Public access has changed the way we are instructed but it has not changed the work that we do. If a case requires a solicitor we have a professional duty to advise our client to that effect.   As often as not, the first question from the client is "Can you recommend one?"  I usually make a number of suggestions depending on the nature of the work but it it involves litigation or licensing I nearly always include Kate Reid, principal of Pemberton Reid.

According to her web page, Kate qualified as a solicitor in 1995 and worked at both Hammonds and Lupton Fawcett in Leeds before setting up Pemberton Reid.  In addition to her LLB she holds a post-graduate diploma in Intellectual Property Law and Practice.   She has been instructed in some important cases:
"Antec International v AVS (patent infringement), Antec International v SWC (passing off), Scholes Windows v Magnet (design right infringement), Tyco European Metal Framing v Clewer & others (design right infringement ), 1-800 Flowers (objection to a trade mark application), Bentone v EOGB (trade mark invalidity proceedings)."
Her work now includes:
  • advising on the existence and extent of intellectual property
  • advising on infringements of intellectual property rights
  • intellectual property agreements such as licences and assignments and confidentiality agreements
  • intellectual property litigation in the High Court and Court of Appeal
  • proceedings in the patent office regarding ownership and entitlement to patents
  • prooeedings in the trade marks registry regarding opposition and invalidity of trade marks
  • WIPO domain name dispute resolution actions 
  • due diligence for purchasers and sellers of intellectual property
  • distribution, supply and commercial agency agreements
  • terms and conditions of trading
  • advising on the Commercial Agents Regulations 1993
  • litigation in relation to the Commercial Agents Regulations 1993.
Kate was guest speaker to the World Intellectual Property Day meeting of Leeds Inventors Group on 18 April 2012 (see "Kate Reid at the Leeds Inventors Group 18.4.12"  26 April 2012).  The title of her talk was "Confidentiality and Licensing"). On confidentiality she discussed
  • why use a confidentiality agreement
  • what is confidential information
  • when is information not confidential
  • how long will information be confidential, and
  • what can it be used for.
On licensing she talked about the nature of a licence and the rights that can be granted, royalties and the usual terms with a few special words about trade marks.   

Immediately after her talk we had a presentation from FabLab Airedale which is now open for business (see
"FabLab Airedale: Introductory Offer and Visit" 2 May 2012 IP Yorkshire). The next meeting of the Leeds Inventors Group will be a visit to FabLab Airedale in Keighley on 16 May 2012 between 18:00 and 20:00 (see "16th May Leeds Inventors Group -visit to Fablab Airedale" 2 May 2012 Leeds Inventors Group blog).   Inventors from Sheffield are also invited and I am sure that those from elsewhere would be very welcome.   If you want to come please call Ged or Stef on  0113 247 8266.

Finally, a plug for Sheffield Inventors.   If you want investment to develop your invention come to Sheffield Central Library, Surrey Street, S1 1XZ at 18:00 sharp on 14 May 2012 to hear Mr. Russell Copley of Angels Den speak on  "Raising Business Growth Investment - Alternatives to Bank Finance". Angels Den is one of the largest angels networks in the UK.

Further Reading
Jane Lambert Sample Confidentiality Agreement 21 Sep 2010

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