23 January 2016

Legal Aid for the UPC

Before it was excluded from public funding by s.6 (6) and para 1 (1) (h) of Sched. 2 to the Access to Justice Act 1999, legal aid was available for intellectual property matters. It is my experience as an advisor to start-ups and other small businesses that those provisions have inhibited enterprise and innovation in the United Kingdom. That is because litigation in the adversarial system is considerably more expensive than in the inquisitorial one (see the table on page 50 of "The Enforcement of Patent Rights" by the Intellectual Property Advisory Committee). Moreover in the UK unlike the USA where costs are similar the losing party usually has to bear the winning party's costs.

That may change. Art 71 (1) of the Agreement on a Unified Patent Court of 19 Feb 2013 ("the UPC Agreement") provides:
"A party who is a natural person and who is unable to meet the costs of the proceedings, either wholly or in part, may at any time apply for legal aid. The conditions for granting of legal aid shall be laid down in the Rules of Procedure."
The draft Rules of Procedure that have been prepared by representatives of states that have signed the UPC Agreement amplify and apply that article.

Rule 375 (1) of the draft Rules enables the UPC to grant legal aid in order to achieve effective access to justice. Paragraph (2) adds that such  aid may be granted in respect of any proceedings before the court. Subject to the level set by the Administrative Committee (one of three committees established by art 11 of the UPC Agreement to ensure the effective implementation and operation of that agreement) under art 71 (3), the following costs may be covered by virtue of rule 376 (1):
"(a) court fees;
(b) costs of legal assistance and representation regarding:
(i) pre-litigation advice with a view to reaching a settlement prior to commencing legal proceedings;
(ii) commencing and maintaining proceedings before the Court;
(iii) all costs relating to proceedings including the application for legal aid;
(iv) enforcement of decisions; 
(c) other necessary costs related to the proceedings to be borne by a party, including costs of witnesses, experts, interpreters and translators and necessary travel, accommodation and subsistence costs of the applicant and his representative."
Also, and again that is subject to the level set by the Administrative Committee, rule 376 (2) provides that legal aid may also cover the costs awarded to the successful party if the applicant loses the action. That was never possible under the Legal Aid Act 1988 and it would avoid many of the difficulties that arose under that statute. Rule 376A (1) limits the maximum amount to be paid for representation pursuant to rule 376.1(b) to the maximum amount of recoverable costs under art 69(1) of the UPC Agreement and rule 152.2. The Administrative Council may set a lower level after taking into account necessary costs for legal representation and the need to guarantee adequate access to justice.

Legal aid will be confined by rule 377 (1) to natural persons who are EU citizens or citizens of other states lawfully resident in the EU and who meet the following conditions:
(a)  they are wholly or partly unable to meet the costs referred to above owing to their economic condition; and
(b) the action in respect of which the application for legal aid is made has a reasonable prospect of success, considering the applicant’s procedural position; and
(c) the person applying for legal aid is the patentee, an exclusive licensee or otherwise entitled to bring an action under art 47 of the UPC Agreement.
The Administrative Committee may set thresholds under rule 377 (2) above which applicants shall be deemed to be wholly or partly able to pay the costs. That shall not however prevent their proving otherwise by reason of the high cost of living in their member state of domicile or habitual residence. All relevant circumstances are to be taken into account under rule 377 (3) including the importance of the action to the applicant and also the nature of the action when the application concerns a claim arising directly out of the applicant’s trade or self-employed profession.

Rule 378 prescribes the way in which applications for legal aid are to be made and rule 378A the evidence to be adduced in support.  Rule 379 sets out the process by which the application is to be assessed and a decision taken.  Assisted parties are required by rule 379A promptly to report changes of circumstances. Legal aid may be withdrawn under rule 380 subject to a right of appeal which is provided by rule 381.  Costs awarded against an unsuccessful unassisted party can be recovered under rule 382 (1). An assisted party may also be required to pay back any moneys paid to him if his legal aid is withdrawn by virtue of art 382 (2).

I shall mention the availability of legal aid in my talk on the UPC and the unitary patent in chambers on 4 Feb 2016 which I mentioned in Preparing for the Unified Patent Court 23 Jan 2016 NIPC Law. If you would like to attend that talk please call Steve Newbery on 020 7404 5252 or email clerks@4-5.co.uk.

Further Reading


Preparatory Committee
UPC website
23 Jan 2016
Jane Lambert
26 Jan 2016
Jane Lambert
IP North West

03 January 2016


(c) 20th Century Fox, All rights reserved, Standard YouTube licence

Yesterday I saw Joy at the National Media Museum. I am not setting myself up as a cinema critic but I thoroughly enjoyed that film.  I would recommend it to anyone but particularly to the inventors who come to my or other peoples' patent clinics or attend meetings of their local inventors' clubs. Loosely based on the life story of Joy Magnano it charts the struggle of a young woman inventor to invent, design, develop and market a highly absorbent self-wringing mop with a detachable head.

The film has some valuable lessons which apply on this side of the Atlantic at least as much as they do on the other:
  1. Take specialist professional advice from the very start. The fictional Joy got into trouble because she was advised by a non-specialist lawyer to pay royalties to, and source components from, a company that claimed to be the licensee of a Hong Kong inventor who had anticipated Joy's invention. In fact, the Hong Kong inventor had done nothing of the kind. She found that her supplier had taken money from her under false pretences. Had she consulted a patent attorney or specialist lawyer she would have learned that there was no prior patent. It would probably never have occurred to her to deal with the rogue at all and she would certainly not have paid him any royalties.
  2. Get the right management team.  Joy relied on her feckless father and his wealthy girlfriend to assist her in the management of the business. Neither of them knew as much about business as they claimed. Their advice was not just wrong but dangerous at times. Worse, Joy's father sent his daughter from another marriage who had no commitment to the project and resented her half-sister's success to negotiate with the fraudulent supplier. The half sister agreed to pay the supplier more than the product's retail price thereby jeopardizing the whole business. The only members of Joy's family who were of any use to her were her grandmother and ex-husband. The best advice she received was from the boss of the shopping channel that launched her product.
  3. Plot a clear route to market before launching into production.  Joy ordered several thousand dollars worth of components and engaged a number of Spanish speaking ladies to assemble her mops before she knew how and where she could sell them. She tried local hardware shops. The shopkeepers were not interested because she could not pay them to display her mops in their shop windows. She approached established mop manufacturers. They were the last people to be interested in a mop that would rarely need to be replaced.  She even tried to flog them in the car park of a local supermarket to the store's customers. Not surprisingly the store management objected and called on the police to move her on.  Joy's break came when her ex-husband introduced her to a friend who ran a shopping channel. Even then there were several false starts. The presenter who tried to sell the product muffed his sales pitch and Joy nearly froze when she made her d├ębut in front of the cameras. However, after that the orders started to roll in though Joy's troubles were far from over at that stage.
  4. Believe in yourself and rely on your own judgment.  In the film Joy had been a star pupil at secondary school but she never went to university because she had to look after her parents after their divorce.  Neither parent deserved that sacrifice. Her mother spent her day in bed watching television and her father embarrassed her at her wedding reception. That did not stop either parent or indeed the rest of her family and outsiders from putting her down. Only her grandmother believed in her and she died before Joy had established her business.  There were several moments when all seemed to be lost and her family tried to persuade her to give up the enterprise but she held her nerve. Eventually she discovered that she had been cheated.  She travelled to Texas to confront the individual who had defrauded her and forced him to reassign her intellectual property in the invention and pay her compensation.
  5. Be ready to take the next step.   The real Joy Magnano has a whole suite of products which are offered for sale on the shopping page of her website.  The mop proved to be spectacularly successful but that was exceptional.  The best that can be expected of most inventions is to provide a temporary competitive advantage.  It rarely takes long for a competitor to catch up with a new product or business idea.  If you are to stay ahead you have to take yet another step.  The last scene of the film showed Joy as a successful business woman mentoring a young female inventor from Arkansas. In real life she runs several businesses including a shopping channel and a body known as the Joy Magnano Foundation.
According to the History vs Hollywood website the film is not an entirely accurate record of Joy Magnano's life.  The real Joy never had a half sister, she graduated from Pace University with a business degree, she had three children and not two. Nevertheless, there is a lot of the film that is true and certainly the lessons that I listed above are founded on fact.

So where do British inventors get help?  

In the UK unlike America there is a separate profession of patent attorneys (also known as patent agents) who are regulated by IPReg (the IP Regulation Board). IPReg keeps searchable registers of patent and trade mark attorneys. Patent attorneys can help you with searches, drafting and filing patent specifications and correspondence with the UK and other intellectual property offices. Some attorneys are qualified to conduct litigation or appear as advocates in the Patents Court or Intellectual Property Enterprise Court.

If a patent attorney needs advice on a difficult point of law, some tricky drafting or representation before a hearing officer or a judge he or she may consult patent counsel (a barrister specializing in intellectual property law).  To find out how our profession can help inventors, read my article IP Services from Barristers 6 April 2013. Most specialist barristers belong to the Intellectual Property Bar Association and many of us accept instructions directly from the public.

If you are in a complex commercial transaction or litigation involving intellectual property you may need to see a solicitor but make sure that he or she is an expert in IP.  Most firms with expertise in IP belong to the IP Lawyers Association.

Before instructing a patent attorney or lawyer you can get up to 30 minutes of an attorney or lawyer's time free of charge at a patent clinic. I run one at Barnsley on the second Tuesday of every month between 10:00 and 12:00. There are others run by the Chartered Institute of Patent Attorneys at Aberdeen, Birmingham, Leeds, Liverpool, London, Manchester, Newcastle, Newport, Peterborough, Plymouth, Portsmouth, Sheffield and Southampton.

There are also lots of talks and workshops on business planning, licensing, marketing, patenting and other topics at the Business and IP Centre of the British Library at St Pancras and the Business and IP Centres of the Birmingham, Leeds, Liverpool, Manchester, Newcastle and Sheffield Central Libraries. They will also put you in touch with reliable experts in the areas in which you need advice.

You will also find a massive accumulation of useful information in this and my other blogs.  If you can't find what you are looking for call me on 020 7404 5252 during office hours or message me through my my contact form

Finally, I wish you the best of luck with your venture and a happy New Year.