08 June 2018

Trade Secrecy Law changes Tomorrow - check your NDA, Standard Terms and other Agreements

Jane Lambert











Tomorrow is a big day for inventors. It is significant because it is the day on which Directive 2016/943 ("the Trade Secrets Directive") is due to be implemented. Every country in the EU, including the UK, has to bring its laws on trade secrets into line with the Directive by 9 June 2018.  It concerns inventors because every patented invention is supposed to start out as a trade secret and for many other inventions that's the way they remain.

Why was the Directive adopted?
At paragraph (9) of a set of paragraphs known as "the recitals", the European Council and Parliament explained that they adopted the Directive because there are big differences in the way that different countries protect trade secrets giving rise to uncertainty, causing unnecessary expense and impeding new product development in Europe.

What does the Directive do?
The most important provision is art 6 (1) which requires EU member states to "provide for the measures, procedures and remedies necessary to ensure the availability of civil redress against the unlawful acquisition, use and disclosure of trade secrets."

What is a "Trade Secret"?
For the purpose of the Trade Secrets Directive a ‘trade secret’ means
"information which meets all of the following requirements:
(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
(b) it has commercial value because it is secret;
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."
Basically that has always been the position in the UK but that was not the case in every country.

What is meant by Civil Redress?
Basically injunctions (orders by a judge) not to acquire, use or disclose trade secrets in future or the payment of compensation or other monetary relief for unlawful acquisition, use or disclosure of trade secrets in the past.  In some circumstances, injunctions and other relief such as orders for the preservation of evidence or assets can be granted before the issue of proceedings.

Do we have to comply with the Directive as we have voted to leave the EU? 
Yes as the UK remains a member of the EU until 29 March 2019 at the very earliest and we should have to abide by EU law until 31 Dec 2020 under the draft withdrawal agreement or even longer under the proposed backstop agreement. More importantly this Directive works in favour of British business because entrepreneurs and inventors know that for the first time the trade secrecy laws of the other countries of the EU are more or less in line with those of the UK.

What has HMG done to comply with the Directive?
HM government believes that our law of confidence and contract law plus our Civil Procedure Rules already comply with most of the provisions of the Trade Secrets Directive but it has identified a few issues where they do not.  One concerns definitions and the other the time limits within which an action for unlawful trade secret acquisition, use or disclosure must be launched. Also there is some doubt as to whether the Scottish courts have the powers to make the orders required by the Directives. To address those issues, Mr Sam Gyimah MP, Minister of State at the Department for Business, Energy and Industrial Strategy, has signed The Trade Secrets (Enforcement, etc.) Regulations SI 2018 No 597 which will come into force tomorrow.

So what do Inventors need to know?
Even though reg 3 (1) of the regulations makes clear that the existing law of confidence still applies in relation to trade secrets the Directive may give trade secret holders (that is to say, persons lawfully controlling trade secrets) greater rights and powers. Also, we are used to talking about "confiders", "confidantes" and "breaches of contract" while the Trade Secrets Directive introduces new terms time like "trade secret holders", "infringers" and "infringing goods".  It would probably be a good idea for trade secret holders to ask their lawyers to review their terms and conditions, standard contracts and, in particular, non-disclosure and confidentiality agreements to make sure that they are still effective.

Where to get more information?
I have written more about this topic in Transposing the Trade Secrets Directive into English Law: The Trade Secrets (Enforcement etc) Regulations 6 June 2018 NIPC Law. That article links to some of my other articles on that topic. I am also giving a talk on the topic at Barclays Eagle Labs in The Landing on 26 June 2018.  If you want to discuss this article or trade secrets generally, contact me on 020 7404 5252 during office hours or send me a message through my contact form.

06 March 2018

Trevor Baylis

Trevor Baylis CBE
Author: Euchiasmus
Licence: Copyright released by the copyright owner
Source Wikipedia



























Jane Lambert

I am very sorry to learn of the death of the inventor, Trevor Baylis CBE. I met him on two occasions.  The first was the Brass from Gumption  event at the Huddersfield Media Centre and the University of Huddersfield  on 18 Feb 2005 where Mr Baylis ran a brainstorming session (see Bright Ideas Get a Boost 26 Jan 2005 Huddersfield Examiner). The second was at an LES meeting in Leeds hosted by Liz Ward at her previous law firm.

Mr Baylis founded the business Trevor Baylis Bands which has published his biography on its website. It will be seen that he was a remarkable man and although I did not see eye-to-eye with on everything - particularly not criminal liability for patent infringement which I debated with him on at least one occasion - I had a lot of time for him.

I offer his family, friends and connections my sincere condolences.

Free Digital Skills Training and Coaching





Jane Lambert

An issue that I have found with many inventors is that while they may be very good at finding technical solutions to life's problems they are not always very good at making money from their inventions. One of the reasons for that is that they have never had any training in business or digital skills.

One place where they can acquire such skills is a Google Digital Garage of which there are now three in the United Kingdom:
Training is also available online.  Classes range from "First Steps Online" for absolute beginners to coding and there is also one-to-one coaching.   

Yesterday I visited the Manchester Digital Garage where i received some coaching in domain name direction and attended an hour's class in web design where we all made a simple website using Google sites.   You can read about what happened in Visit to Manchester's Google Digital Garage 6 March 2018 IP North West.

There are Google Digital Garages or similar initiatives in many other countries including Africa, Australia, Belgium, Brazil, France. Germany, India, Ireland, Italy and Spain.

Anyone wishing to discuss this article should call me on +44 (0)20 7404 5252 or send me a message through my contact form.

31 January 2018

NESTA Inventor Prize Shortlist












Jane Lambert

In "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy 24 Jan 2017 I blogged about the government's commitment 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."
I reported on progress in The Inventors Prize 2017  29 June 2017.

In Congratulations to the Inventor Prize finalists 26 Jan 2018, NESTA reports that it had received 180 applications from across the UK which were judged by a panel of 8 judges (one of whom was Claire Mitchell of Chillipeeps who had addressed both the Leeds and Sheffield inventors clubs) in accordance with the following criteria: innovation, insight and impact, quality and safety and market potential and feasibility.

A shortlist of 10 finalists have now been selected and Emma Renowden has published their names and particulars of their inventions in Congratulations to the Inventor Prize finalists! 26 Jan 2018 on the Inventor Prize website.

According to Ms Renowden, each of those finalists will receive £5,000 and mentoring from Barclay's Eagle Labs to perfect their inventions. This seems to come close to an accelerator for inventors which I discussed in No Invention should be left behind here - the Case for Inventor Academies 27 Jan 2018. The winner, who will be chosen in September, will receive £50,000 and the runners up prizes of £5,000 and £15,000 towards the development of their inventions.

Anyone wishing to discuss this article or invention  generally should call me on 020 7404 5252 during office hours or message me through my contact form.

30 January 2018

No Invention Left Behind - Making Money from an Invention

Author SimonTrew
Licence CC BY-SA 3.0 
Source Wikimedia Commons

















Jane Lambert

If you are an independent inventor - that is to say, an inventor not employed in a capacity in which you are likely to create an invention - there are two ways by which you can profit from your  invention. One is by manufacturing and marketing the invention yourself as Percy Shaw did with cats' eyes (see Well at least a Yorkshireman invented Cats' Eyes 20 July 2014 IP Yorkshire). The other  is by licensinBIPCCase for Inventor Academies 27 Jan 2018.

As many of the inventors I see in my IP clinics or at local inventors' clubs are of a certain age  it should be noted that a lot of help is available for older people who wish to open businesses. The European Commission recognizes that senior citizens are increasingly interested in becoming entrepreneurs and is exploring how to benefit from the knowledge and skills of seniors, and how to ensure that they are able to go into business for themselves (see the Senior entrepreneurs page on its website). The Commission has published a Senior Entrepreneurship Good Practices Manual which presents 24 good practice examples from around the EU including the UK.  One of the more interesting initiatives mentioned in the manual is the Latvian Inventors Association's mentoring scheme.

Licensing or assigning an invention is often seen as an easier option than going into business but that is not always or perhaps even usually the case.  Someone with an established business has to be persuaded to set up a new production line and distribution channel for a product that he or she did not invent. Such a person will require a lot of persuasion especially if the inventor has no knowledge, experience or status in the industry. The established business owner will require the inventor to show the owner how the business will benefit from the invention which means that the inventor will often have to do much the same business planning and market research for a licensee as he or she would do for him or herself.

This is the third of a series of articles entitled "No Invention Left Behind". The others are The Case for an Inventor Academies and the WIPO's Inventor Assistance Programme. The next will be on the IP law that every inventor should know.  Should anybody wish to discuss this article or invention generally, he or she should call me on 020 7404 5252 or send me a message through my contact form.

27 January 2018

No Invention should be left behind here - the Case for Inventor Academies

Jane Lambert











Last week I featured a scheme by the World Economic Forum and the World Intellectual Property Organization to assist inventors in less developed countries to launch their inventions known as the Inventor Assistance Programme (see Jane Lambert "No Invention left behind" - WIPO's Inventor Assistance Programme gathers Pace 21 Jan 2018).  David Kappos, a former head of the US Patent and Trademark Office, coined the phrase "No invention left  behind" as the watchword for the scheme.

The slogan "no invention left behind" should not be limited to inventions in developing countries. Bringing an invention to market is difficult and risky for an individual or small business even in Mr Kappos's country as 20th Century Fox's film Joy showed a couple of years ago (see Jane Lambert Joy 3 Jan 2016). That is in spite of the resources for inventors and entrepreneurs offered by the USPTO which includes a 2-day annual conference every August at the USPTO's head office in Alexandria and the Inventors' Eye newsletter for individual inventors.  Over the last few years the British Library's Business and IP Centre and its partner libraries outside London have begun to offer similar help in this country but it is still not as extensive as the resources that are offered in the USA,

I have met a lot of individual inventors over the years through my practice at the patent bar, my inventors' clinics in London and the North, the Leeds, Liverpool and Sheffield inventors clubs and running this blog and only a few have ever made any money from their inventions.  Far more lose money than earn it and some lose more than just money.  The reason why so few of those inventors make money from their inventions and so many more lose from them is that they spend money on things they do not need and fail to invest in things that they do. 

Inventions, like brands, designs and works of art or literature, are business assets which earn money only if they are used in business.  Individual investors are representative of the general public and most members of the public go through life without acquiring the skills, knowledge and experience needed to run a business.  It should therefore surprise no one that when a member of the public creates an intellectual asset he or she may have no idea what to do with it  That is why money is wasted not just on invention promotion services but also on legal protection where there will never be sales while services that could be useful, such as IP indemnity insurance, are overlooked.

So how do we equip private inventors with the necessary skills?   Five years ago I thought that inventors clubs were the answer.  That is why I wrote about inventors clubs, why they are useful, where they are and how to establish one if there is none in a particular area (see Inventors' Clubs 25 May 2013). I am not so sure now.  The inventors clubs that I helped to found and chaired for many years disbanded when the Leeds, Liverpool and Sheffield Central Libraries became Business and IP Centres. They provide many of the skills through short courses on such topics as patent searching and business planning but not on a comprehensive basis.

I think something can be learned from business accelerators where fledgling businesses are offered office or lab space, mentored by experts, helped to refine their products or services and eventually introduced to investors.  Accelerator programmes tend to last between 3 and 6 months which is longer than is necessary to decide whether an invention has legs.   Week long or perhaps even weekend academies may be enough.

Anyone wishing to discuss the idea of inventor academies or inventor support generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.