03 July 2017

What can a Barrister do for an Inventor that a Patent Attorney or Solicitor can't do just as well?

Jane Lambert

A flippant response to the above question might be: "Why do patent attorneys and solicitors seek counsel's opinion, instruct barristers to draft complex legal instruments or brief them to represent them before the courts or hearing officers on behalf of their clients?"  The obvious answer is that barristers can do some of those things better than other legal professionals can. That is not because barristers are brighter or more knowledgeable than other IP professionals but because we have two important advantages.

The first is that we know the judges who make the law. We know how they think which enables us to guess how they would analyse an issue that has not come in front of the courts before. We gain that knowledge by arguing against them when they are at the bar and before them when they reach the bench. Anybody can look up a statute or the case law which will describe the law as it stands today but only a specialist advocate can forecast accurately how the law will develop tomorrow.

Our other advantage is that we tend to be called in only after things have gone wrong. Through such experience, we learn how disputes or other difficulties arise and what could have been done to avoid them.  That experience also enables us to flag up potential difficulties before they arise and to suggest steps to avoid them.  That is why barristers are instructed to draft contracts and other legal instruments for use in business, particularly in new situations involving new technologies or new business situations.

Until 2004 our expertise could be accessed only if a solicitor, patent attorney or other professional intermediary instructed us.  Since then, it has been possible for businesses or individuals in the UK to instruct us directly. That does not mean that we now do patent attorneys' or solicitors' work. We remain a referral or specialist profession, but there is no longer a need to instruct an intermediary just to instruct us.  Also, if we believe that it is our client's interests to instruct some other legal professional, we are under a professional duty to say so.

That leads to yet another advantage.  We see a lot of patent agents, solicitors and other legal professionals in the course of our work and are thus in a unique position to judge their relative strengths and weaknesses.  We can, therefore, help members of the public who require the services of such an intermediary to identify one who will best suit their needs.

We cab now be a point of entry to the legal services industry. Often the best time to instruct us is early in the life of a new business or the development of a new product because we can help with the formulation of an IP strategy, suggest the optimum legal protection for an intellectual asset and build a team of IP professionals.  I have listed some of the services that I offer on the Services page of this blog and you will find others on the equivalent page of my NIPC Law blog. Details of how to instruct me appear on the Instruct Me page.

If you want to discuss this article with me or you have a specific matter upon which you require some help, call me on +44 (0)20 7404 5252 or send me a message through my contact form.

Further Reading

Jane Lambert

01 July 2017

Animated Advice from across the Pond

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Jane Lambert

In Animated Advice 18 March 2016 NIPC News I introduced readers to some animations published by the Intellectual Property Office, the World Intellectual Property Organization and others. One of the films I mentioned was the IPO's IP BASICS: Should I get a patent?

Today I want to share with you an even more helpful animation published by the US Patent and Trademark Office ("USPTO") so long as you bear in mind that the USA is a different country, with different institutions and different laws. However, the United States like the United Kingdom is party to a number of international agreements such as the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") which requires each country's intellectual property laws to be broadly similar.

Here are also some points to bear in mind for British readers:
  • The USPTO is the place to start for inventors in the USA because it is the intellectual property office for that country but inventors in this country can start either at the Intellectual Property Office in Newport (look you) or the European Patent Office in Munich ("there's lovely for you!" as they say in Wales).
  • Our law does not expressly define an invention though it does list a number of things that can't be patented as such like computer programs or methods of doing business which are not specifically excluded in US law. Also, we cut out some of the verbiage like "machine" or "composition of matter." Basically, an invention can be patented on this side of the Atlantic if it is a product or process.
  • One reason why I really like this animation is that it advises inventors to consider writing a business plan and carry out some market research. I've been ramming that message home in my IP clinics, talks to inventors' clubs and blogs for years. Here is just one of my articles: "Why every business plan should take account of intellectual property" 3 Apr 2016 NIPC News.
  • The places where you can get help with your invention in this country would be the Business and IP Centres at the British Library next to St Pancras Station in London and the central libraries of Birmingham, Exeter, Hull, Leeds, Liverpool, Manchester, Manchester, Newcastle, Northampton, Norwich and Sheffield. Those libraries are also part of a wider network of public libraries that are associated with the EPO called PatLib. If you study the list you will find help available in Aberdeen. Belfast, Glasgow, Plymouth and Portsmouth.  We no longer have anything quite as good as Business USA.gov in this country but we do have the Business and Self-Employed pages of the gov.uk website. Also, you can call me on 020 7404 5252 any time during business hours and I can point you in the right direction.
  • As in the USA, you can apply to the IPO or EPO for a patent without instructing a patent attorney but I would strongly advise you against it.  I know patent attorneys don't come cheap but there are funding schemes here to help you (see How Small Businesses can fund IP Advice and Representation 3 Sept 2016 NIPC News). By the way, the terms "patent agent" and "patent attorney" mean different things in the USA. There, a patent attorney means a lawyer specializing in IP but a patent agent is a non-legally qualified professional who prosecutes patent applications. Here, the terms patent attorneys and patent agents are used interchangeably. Patent attorneys in the UK are members of the Chartered Institute of Patent Attorneys which used to be called the Chartered Institute of Patent Agents until a few years ago. Finally, the expression "pro se" is not used in this country. Those who apply for patents without the help of patent attorneys are usually referred to as "unrepresented applicants". 
  • In this country, we don't have "utility", "design" or "plant patents" as such but we do have registered and registered Community designs (for the time being) and EU and national plant breeders' rights  (see Jane Lambert Protecting Investment in New Plant Varieties 4 May 2016 LinkedIn). What Americans call "utility patents" are simply "patents" here.
  • There is no call centre in Newport or Munich like the Inventors Assistance Center but both the IPO and EPO publish guidance for unrepresented applicants on their websites and the Chartered Institute of Patent Attorneys, Ideas 21 and I hold free consultations with an IP professional at towns and cities around the UK. Check out CIPA's IP Clinics page and Ideas 21's regular advice sessions in London. Mine are held in Barnsley on the second Tuesday of every month and you can book your appointment through the BarnsleyBiz Surgeries page.
Wherever you are in the country, you can call me on 020 7404 5252 during office hours or send me a message through my contact form.

European Inventor Awards 2017

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Jane Lambert

Every year the European Patent Office recognizes outstanding inventors from around the world who have made exceptional contributions to social development, technological progress and economic growth with the European Inventors Awards.

Nominations are sought in the following categories:
  • Industry: for outstanding and successful technologies patented by large European companies
  • Research: for pioneering inventors working at universities or research institutes
  • SMEs: for exceptional inventions at small-to-medium-sized enterprises (SMEs)
  • Non-European countries: for all inventors who are not European nationals but have been granted a European patent
  • Lifetime achievement: honouring the long-term contribution of an individual European inventor.
The most recent award ceremony took place in Venice on 15 June 2017 and this year's winners were 
The above film shows the presentations. The winners were chosen from 15 finalists one of whom was Steve Lindsey from the UK who invented an energy-saving rotary air compressor.

Nominations are open for next year's awards. Anybody can propose any inventor including him or herself (see the Nominations page on the EPO's website).

Anybody who wishes to discuss this article or the legal protection and commercialization of innovation generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

29 June 2017

The Inventor Prize 2017

Jane Lambert

When NESTA announced on 24 Jan 2017 that it "was working with BEIS to pilot an ‘inventor’ prize that will inspire and harness the potential of the UK’s home-grown inventors and stimulate user-led innovation" (see Zofia Jackiewicz Announcing the Inventor Prize on 24 June 2017 Inventor Prize website), I promised to do everything I could to support the initiative (see NESTA's Inventor Prize 26Jan 2017 NIPC Yorkshire).

Today NESTA appeals to the public for help to "refine the prize design through a better understanding of the support inventors need" (see  The Inventor Prize wants to hear from you 19 June 2017).  As I noted in my article "the Inventor Prize, which opens for entries later this summer, is a challenge prize pilot that aims to inspire and harness the potential of the UK’s home-grown inventors." NESTA is now holding a month-long consultation during which it will aim to talk to inventors, experts and the public about how it can shape the prize so as to achieve its aim of helping inventors.

It will do that by conducting a survey which I did this morning, interviewing respondents and holding a workshop at the Museum of London between 09:00 and 12:00 on the 10 July. Regrettably, I can't attend that workshop as I have conflicting professional obligations but I will report regularly on this initiative.

In the meantime, here are three interesting inventions that NESTA has found which have been created by individual inventors:
  • The Comp-A-Tent disposable tent made from non-finite, bio-based materials which are selected for their minimal environmental impact; 
  • Sugru, the first new mouldable glue designed for fixing, making and improving stuff; and 
  • Nimble which looks like a thimble but seems to do a great deal more.
Today I received a call from an inventor in Northampton about the advice and assistance that was available in his area. If you want to find out what services and resources are available in your part of the United Kingdom, call me on 020 7404 5252 or message me through my contact form.

25 April 2017

Barnsley IP Clinic 9 May 2017

Jane Lambert

On the second Tuesday of every month, I give up to four 30 minute consultations on intellectual property and related areas if law free of charge to entrepreneurs, inventors, artists, designers or anyone who can get to my clinic at Barnsley Business and Innovation Centre off Innovation Way at Wilthorpe in Barnsley.

Typical questions are:
  • "I have an idea for a new business. Can you tell me how to protect it?"
  • "How can I find out whether my invention is new?"
  • "Someone wants to invest in my business. What sort of agreement should I make with him?"
  • "How do I 'copyright' a logo?"
  • "Where do I find a patent or trade mark attorney and what should I be looking out for?"
  • "I have just received this threatening letter from a firm of solicitors. What should I do about it?"
I have been practising IP law for many years and I can help you with all those issues. I normally charge for my time so a free consultation is quite a saving.

The next clinic is between 10:00 and 12:00 on Tuesday, 9 May 2017. f you want to book an appointment you can fill in this online booking form or call George Scanlan on 020 7404 5252 during normal office hours and ask him to book you a slot.

After the clinic, I shall give a talk on a topic of interest to entrepreneurs and other business owners between 12:15 and 13:15. The topic for next month's talk will be

How do I protect my business idea?

That is the question I am most frequently asked but it is not straightforward to answer because everybody's business idea is different as are everybody's circumstances and resources. The most extensive form of protection for a new product or process is a patent but it is expensive to get and even more expensive to maintain and enforce and for some businesses it is just not possible. I will take the audience through all the options, the advantages and disadvantages of each type of protection, the likely costs and some tips on finding a patent attorney, IP insurance and watch services. If you want to stay for that, call George on 020 7404 5252 to book your place.

21 April 2017

Talk "How can I protect my Business Idea?"

Jane Lambert

I have been holding patent clinics around the country for many years and the most frequently asked question is "How can I protect my business idea?"

There is no easy answer because it depends on the nature of your business and the type of idea. For instance, a patent may afford the most extensive protection for a new product or process but if the costs of patenting, insuring and policing the are likely to outweigh the income likely to be generated from the invention you would be better off looking at other forms of legal protection.

It is for that reason that I am giving a talk at Barnsley Business and Innovation Centre (BBIC) entitled
How can I protect my Business Idea?
on 9 May 2017 between 12:15 and 13:15.

I will 
  • introduce you to all the tools in the legal toolbox such as patents, trade secrecy, unregistered design rights, trade marks et cetera; 
  • tell you the advantages and disadvantages of each type of protection; 
  •  explain how to get each type of IP and how much it will cost; 
  • give you some useful tips about insurance, watch services and enforcement; 
  • advise you on the different types of IP professional, where to find them, how to instruct them and how much they are likely to cost; and finally,
  • share a methodology for working out an IP strategy.
There is likely to be quite a lot of demand for places so call George or any of his colleagues on 020 7404 5252 to book your place as soon as possible,

25 January 2017

Immediate IP First Aid Nationwide

Field Hospital in First World War
Author National Museum of Health and Medicine
Source Wikipedia
Creative Commons Licence

Jane Lambert

I have been conducting free monthly consultations on IP law in London and the North for the last 10 years or so. I have seen lots of clients in that time and can count a number of successes as a result.

However, that service does have some five limitations.
  1. it requires my presence and I can only be in one place at any one time. 
  2. A month can be a very long time to wait when a  matter is urgent or you are impatient for information. 
  3. I often need to refer clients to another professional such as a patent or trade mark attorney or a product design consultant which results in further delay. 
  4. Many problems can be dealt with by a simple phone or Skype call or email. 
  5. Clients who need to see me sometimes have to travel for miles.

I have therefore decided to improve and extend my IP Clinic in the following way.

Anyone who wants a free IP consultation with me or some other IP professional should call

020 7404 5252

during office hours and ask for an appointment to speak to me by telephone. I am not always available because I may be in court or a meeting but someone will take your name and number and arrange for me to call you back. Tell the person who takes your call that you are calling about my IP clinic.

Alternatively, you can send me a message through my contact form.

I should be able to give you some basic advice there and then and there will be no charge for that service. Should it appear to me that you need to see some other professional I will call at least one member of the relevant profession who practises in your area wherever possible and ask whether he or she would be willing to see you for an initial meeting or talk to you by telephone for up to 30 minutes free of charge. If the answer is "yes" I will pass you on to him or her.

Please note that you can only use this service once. If you want to consult me or any of the other professionals to whom I may refer you again you will have to instruct us in the usual way and that will usually require a fee the amount of which will be negotiated at the time.

In the next few days, I shall launch an IP clinic website which will provide further information including a knowledge base of answers to frequently asked questions.

24 January 2017

"Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy

Jane Lambert

Yesterday the Department for Business, Energy & Industrial Strategy ("DBEIS") published its green paper Building Our Industrial Strategy which might well have led the news had it not been for the controversy over whether the Prime Minister should have disclosed news of the Trident test failure to the House of Commons before the vote on the renewal of the nuclear deterrent. Today it is likely to be overshadowed by the Supreme Court's judgment in the Art 50 Brexit appeal. It is, however, an important document upon which the public is being consulted and there is a video summarizing its proposals for those who do not wish to plough through its 132 pages.

Very briefly the green paper suggests ways in which the UK could improve productivity and spread prosperity more evenly across the country and throughout society. After stating those aims it suggests 10 policies that it calls "pillars" to achieve them. One of those pillars is "Investing in science, research and innovation" to "become a more innovative economy and do more to commercialise our world leading science base to drive growth across the UK." The document mentions some of the steps that the government is already taking and then lists some new commitments on page 34.

One of those new commitments is to:
"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces." 
If this commitment can be taken at face value and followed through it would be a very welcome development indeed. For far too long Britain's inventors have been ignored and in some instances disparaged but they could be an important contributor to industrial regeneration.

Other countries that have to make their way in the world outside large trading blocs such as Korea and Israel encourage their inventors. The Korea Invention Promotion Association ("KIPA"), which shares an office block in Seoul called the Korea Intellectual Property Service Centre with the Korea Intellectual Property Office, the Korea Intellectual Property Institute, The Technology Transfer Centre and related agencies has a slogan: "One Korean, one invention." If we are to emulate Korea which has a slightly smaller population in an even smaller land area than the UK we have to do the same and with all due respect to NESTA and the DBEIS it will take more than the Challenge Prize Centre.

A bit more action is promised in the next commitment though except for the proposal to station IPO representatives in the Midlands and the North it is very vague:
"We are reviewing how to maximise the incentives created by the Intellectual Property system to stimulate collaborative innovation and licensing opportunities – including considering the opening up of registries to facilitate licensing deals and business to business model agreements to support collaboration. We will place Intellectual Property Office representatives in key UK cities - starting with pilots in the Northern Powerhouse and Midlands Engine to build local capability to commercialise intellectual property."
Actual progress will probably have to come from inventors and entrepreneurs aided by their professional advisors, but it the commitments appear to signal a change of mood on the part of the government and that's a start

Should anyone wish to discuss this article with me, please call +44 (0)20 7404 5252 during office hours or send me a message through my contact form.