30 September 2012

From the Patent Examiner's Mouth

At the first meeting of the Leeds Inventors Group many years ago, our first speaker Lawrence Smith-Higgins, Head of Business Outreach & Education at the Intellectual Property Office, promised to send us a patent examiner to address one of our meetings. I reminded Lawrence of that promise every time I visited the Intellectual Property Office for a hearing and at every outreach event at which we were both present. Eventually he relented and arranged for Kalim Yasseen to speak to us earlier this year.  Kalim did in fact address the Sheffield group to a packed house but, sadly, he fell ill and was unable to repeat his talk in Leeds.

Happily, Kalim's colleague, Sarah Whitehead, took his place and she was excellent. Starting from first principles, Sarah explained what a patent was and why an inventor or businessman or woman might want one. She distinguished patents from other intellectual property rights such as copyrights and design rights.  She outlined the inventors' bargain with the public - a monopoly in return for teaching the public how to make or work the invention - and showed how a patent specification reflects that deal. The description and drawings setting out the teaching and the claims the extent of the monopoly.   Patiently she educated the audience as to why the application had to be examined, how it was done and indeed why it seemed to take so long.  It is a very strong thing to grant a 20-year monopoly of the manufacture, importation, distribution and use of a new invention and it is not to be undertaken lightly. The British process may seem long drawn out but our Intellectual Property Office was significantly faster than many other countries'. Finally, Sarah talked about disputes over patents and how they may be resolved mentioning in particular the IPO's opinions service.

After her talk I invited Sarah to supper at "All Bar One". Over a hamburger and chips and vegetarian pad Thai (I had the burger and she the pad Thai) she told me a little more about her work and that of the examiners.  We discussed the practical effects of the Supreme Court's decision in Human Genome Sciences Inc v Eli Lilly and Company [2012] 1 All ER 1154, [2011] UKSC 51, [2012] RPC 6, [2012] Bus LR D37 (a case that I had blogged in "Patents: Human Genome Sciences Inc. v Eli Little and Co" IP/IT Update 9 Nov 2011).  Turning to other matters, she mentioned that she came from Derbyshire, that she was educated at the Universities of Bath and Manchester and that her research had been in life sciences. 

One of the many matters upon which we agreed was that the cost and risk of enforcement had inhibited British businesses from protecting their research and development adequately. We welcomed the new small claims track to the Patents County Court (see "Patents County Court - the New Small Claims Track Rules" IP/IT Update 20 Sept 2012) which will be the topic of my talk to Sheffield Inventors Group tomorrow 1 Oct 2012 at Sheffield Central Library at 18:00 and Liverpool Inventors Club at QualitySolicitors Jackson & Canter at 88 Church Street, Liverpool, L1 3AY on 29 Oct at 18:00.

19 September 2012

Soon there will be a Remedy if Someone steals your Idea

For many years the UK has lagged behind its competitors in the number of European patent applications. With 6,464 applications in 2011 it has actually slipped a place from 7th in 2009 to 8th in 2011 behind the USA (59,688), Japan (47,404), Germany (33,181), China (16,946), South Korea (13,254), France (12,107) and Switzerland (7,786).

I have long argued that there is a correlation between the number of patent applications and the relative cost of intellectual property enforcement (see "New Patents County Court Rules" IP/IT Update 31 Oct 2010 and "Why IP Yorkshire" IP Yorkshire 10 Sept 2008). Until the new Patent County Court Rules were introduced on 1 Oct 2010 England and Wales was arguably the most expensive and difficult country for a small business to enforce its intellectual property rights in the developed world.

Now that situation is about to be reversed.   From 1 Oct 2012 England will actually be one of the least expensive and least risky places in the world to bring small IP infringement claims.   On that day The Civil Procedure (Amendment No.2) Rules 2012 (SI 2012 No 2208) come into force. Rule 10 of those Rules will amend CPR Part 63  to permit small IP claims to be brought in the Patents County Court.  This seemingly insignificant rule change is potentially of enormous importance for our country's economic future as I have stressed in "Small IP Claims" (NIPC website 8 May 2012), "Enforcing Small IP Claims: Sullivan v Bristol Film Studios" IP/IT Update 7 May 2012 and "The New Small IP Claims Jurisdiction" IP/IT Update 5 March 2012.

The new rules will allow claims for infringement of copyright, design right, trade mark and most other intellectual property rights including breach of confidence relating to trade secrets and passing off to be allocated to a new small claims track provided that the value of the claim does not exceed £5,000 and the parties agree.  If the parties do not agree the court will allocate the case to the small claims track or multitrack as it thinks appropriate.  The significance of allocating a case to the small claims track is that a simplified procedure applies and there is a limit to the costs that the successful party can recover from the other side. It is possible - though I would stress not always prudent - for a party to represent him or herself in that tribunal.

It is important to stress that not every intellectual property right can be enforced in the small claims track. In particular, claims for the infringement of a patent, registered design, registered Community design, design right in a semiconductor topography or plant breeder's rights will still have to be allocated to the multitrack. However, there is nothing to stop the court from re-allocating such a case to the small claims track as the Court of Appeal suggested in Sullivan (see my case note "Enforcing Small IP Claims: Sullivan v Bristol Film Studios") or giving directions similar to those that would be made in the small claims track.

I said above that while it is possible for a party to represent himself before the Patents County Court it is not always prudent to do so. That is because rule 10 (c) provides for most of the rules of CPR Part 63 to apply to the small claims track.  Some of these rules are quite technical as is the substantive law.  In my career at the Bar I have seen several cases in which a litigant in person has proceeded to judgment only to have it set aside at great expense because of an avoidable procedural defect.  For those who are prepared to write their own letters to the court and other side and serve their own documents my chambers will provide fixed fee oral and written representation. For those who are not, I have arranged with JWK Solicitors who have lots of experience of small claims litigation as well as expertise in IP to offer fixed fee litigation. Anyone who wants to learn more of those services should call me on 0800 862 0055 or contact me through Facebook, Linkedin, twitter or Xing, or through my contact page.

Finally, I am giving a talk on the new rules and my new fixed fee enforcement services to Sheffield Inventors Club at Sheffield Central Library in Surrey Street on Monday 1 Oct 2012 between 18:00 and 20:00. Anyone wishing to attend should contact Lynne Hinchcliffe on  0114 273 4712. There will be no charge for the talk but space is limited and recent events have been very well attended.