Online Inventors' Club: Patents and Alternatives to Patenting

Patents and alternatives to patenting.pdf from Jane Lambert

Yesterday, I launched the NIPC Inventors' Club Online Inventors' Academy with an introduction to patent law and patenting for independent inventors. The slides appear above.  Those who missed the talk can download the slides here or from Slideshare.  There will also be a link to the presentation from the NIPC Inventors Club group page on Linkedin.

Although not everybody who had registered joined the call, those who did enjoyed a very lively discussion.  The session, which was due to last an hour, finished at 19:58 almost two hours after it began.  It was particularly gratifying to welcome one of the regulars at the Sheffield Inventos' Club which I chaired for many years.  

The objective of the exercise is to reproduce the mutual support for independent inventors that used to subsist at inventors clubs that met in Central Libraries, universities and other venues around the country until a few years ago.  Some of those clubs disbanded after several of the libraries joined the British Library's Business and IP Centre's national network.  Others ceased to meet during the COVID-19 pandemic.  

The next talk will be on the resources that are available to independent inventors.   It will take place on 17 Oct 2024 between 18:00 and 19:00.  As I said in The Online Inventors' Academy on 29 Aug 2024:

"The next talk will be on the services that are available to inventors. I will start with the British Library and its national network of Business and IP Centres. I will mention patent clinics and search services at the Centres and other PatLib libraries. I will talk about the help that is available from local authorities in England, Business Wales in Wales and its counterparts in Scotland and Northern Ireland. Lastly, I will consider the online resources that are available for inventors from the IPO, EPO, WIPO, British Library, UKRI and other agencies."

I shall post the registration invitation later today and look forward to welcoming everybody interested to that event.

Finally, I was asked a couple of questions about IP insurance yesterday.   I have written a lot about the topic as can be seen from the bibliography at the end of my article  IPO Guidance: Intellectual Property Insurance which I, posted on 25 Feb 2020.  The most up-to-date guidance is CIPA's and the Intellectual Property Office's.

Anyone wishing to discuss this article can call me on 020 7404 5252 during UK office hours or send me a message through my contact form at any time.

The Online Inventors' Academy

Jane Lambert

Independent inventors (that is to say, inventors who are not employed in research and development in a company or university) have contributed much to the economies of many countries including our own. Unlike some other countries, we do not do much to encourage them.  The United States Patent and Trade Mark Office lauds American inventors in a National Inventors Hall of Fame. The Korea Invention Promotion Association has a slogan "One Person with One Invention." Our government did fund an Inventor Prize in August 2017 but terminated that initiative the following year.

British inventors might do better if they were better informed of the steps to be taken between having a bright idea and earning money from it.  Until the pandemic, some of that information was provided by inventors' clubs.  The Wessex Round Table of Inventors has maintained a page of links with inventors' clubs for many years.  I tried all those links yesterday and found many of them were broken.  There may well have been some new clubs.   I recently wrote about the launch of an inventors club at the British Library but I have not heard of any more.  

I have long campaigned for an inventors' academy along the lines of the USPTO's Annual Independent Inventors' Conference at its head office in Alexandria.  Many have agreed that such a conference would be a good idea and nobody has rubbished it but everyone has always had more immediate priorities.  It seems to me that nothing will happen unless I make a start.  To that end, I am offering a course of online lectures between 18:00 and 19:00 on the third Thursday of every month between  19 Sept 2024 and 17 July 2025.  As I chaired the Leeds, Liverpool and Sheffield Inventors Clubs for many years I think I have a pretty good idea of what independent inventors need to know and just as valuable what they don't need.

The first talk on 19 Sept will be on the legal protection of new technology,   I will, of course, discuss patents and how to apply for them and how to apply for them but I will also discuss alternatives.  Prosecution and enforcement costs, renewal fees and other expenses will be mentioned as well as the risks of revocation.  Steps to mitigate the risks and expenses such as before-the-event insurance will be addressed.  I shall also deal with inventions that cannot be protected by patents.  Finally, I will talk about patent attorneys, where to find them and how to select and instruct them.

The next talk will be on the services that are available to inventors.  I will start with the British Library and its national network of Business and IP Centres.  I will mention patent clinics and search services at the Centres and other PatLib libraries.   I will talk about the help that is available from local authorities in England, Business Wales in Wales and its counterparts in Scotland and Northern Ireland.  Lastly, I will consider the online resources that are available for inventors from the IPO, EPO, WIPO, British Library, UKRI and other agencies.

Other talks will focus on manufacturing, outsourcing manufacturing and licensing.  I will also discuss enforcement in this country and overseas.   Anybody who attends the full programme will receive a transcript which may assist them in fundraising or employment,

The Online Academy will be just one of many benefits of the NIPC Inventors Club;  Others will be the Initial Advice and Signposting service that can be offered online or in Yorkshire, North Wales or London. There will also be a vast library of articles and precedents (template forms) which can be accessed through this publication.

Anyone wishing to discuss this article may call me on 020 7404 5252 or send me a message through my contact form.   Anyone wishing to register for the first talk on 19 Sept 2024 should click here.

Computer Programs Exception Applies to Artificial Intelligence

Diagram made and uploaded by Jimhutchins Licence CC BY-SA 3.0 Source Wikimedia

Jane Lambert

It is well known that a patent cannot be granted in the United Kingdom for computer programs "as such" but that does not prevent patents from being granted for software-implemented inventions,  The difference between what is patentable and what is not was explained by the Court of Appeal in two cases that were heard together, Aerotel Ltd v Telco Holdings Ltd and Re Macrossan [2006] EWCA Civ 1371, [2006] Info TLR 215, [2007] BusLR 634, [2007] RPC 7, [2007] Bus LR 634, [2007] 1 All ER 225:  Aerotel was successful because the invention was a new system even though the only thing that distinguished it from previous systems was the addition of a component called "a special exchange" that consisted of known hardware.  Macrossan was not because it was essentially a process carried out by a computer that had previously been carried out by hand.

Considerable interest was aroused last year in a judgment by Sir Anthony Mann that a system for analysing a user's tastes in music and selecting and recommending a track from any genre with which he or she might not have been familiar was patentable. There were already systems that divided music tracks into genres such as classical, folk, rock and so on which were capable of recommending a track from the same genre to a music fan based on his or her previous choices,  The clever aspect of the invention in the case before Sir Anthony was that it trained itself to analyse a user's emotional and subjective preferences using artificial intelligence rather than relying on the user's previous record selections.

The invention could perform that task because it ran on an artificial neural network ("ANN"). That was an information processing system that mimicked the processing in the brain rather than the binary switching of transistors in a conventional computer.  In an ANN the system trains itself in the process of analysing a user's preferences by adjusting qualifiers known as "weights" and "biases" to the information processing apparatus of individual artificial neurons.  Once the process is complete the weightings can be transferred to another system.  Sometimes that system is permanently wired (a process known as "hard wiring").  It is also possible to program a conventional computer to function in the same way as an ANN with neurons that have the transferred weightings.

The reason why there was so much interest in Sir Anthony's judgment was that he did not appear to consider that a hardwired ANN was a computer at all and that it certainly did not have a program.  That appeared to be true even of an ANN running on a conventional computer.   That was enough to put such systems outside the computer program exception altogether.

His judgment did not stand.  The Comptroller-General of Patents, Designs and Trade Marks (the official title of the head of the UK Intellectual Property Office) appealed to the Court of Appeal against Sir Anthony's decision.  The appeal was heard by a bench that included Lord Justice Arnold and Lord Justice Birss (two of this country's most distinguished intellectual property judges) as well as Lady Justice Nicola Davies who presided over the proceedings.  The hearing has been filmed and can be viewed on the Court of Appeal's YouTube channel here and here.   

Delivering the judgment of the Court, Lord Justice Birss defined a computer as "a machine which processes information" and a computer program as "a set of instructions for a computer to do something."  An ANN fell within his definition of a computer and it made no difference as to whether it was hardwired or software implemented.  The training process by which a user's preferences were analysed including the adjustment of weightings in individual artificial neurons fell within the definition of computer program even though it was automatic.  He could see no reason why a program had to be written by a human.   That was enough to haul the invention within the statutory exclusion of computer programs "as such."

The only thing that remainder for the Court to decide was whether the invention was a computer program "as such" or something more.   In Aerotel the application got through because it was for something more, namely a new telecommunications system.  Macrossan didn't because it simply automated a manual process.  In other words, it was a computer program "as such."  Lord Justice Birss decided that the same was true of the invention in the case before him.   There was nothing technical about the choice of music tracks.   As he put it:

"What makes the recommended file worth recommending are its semantic qualities. This is a matter of aesthetics or, in the language used by the Hearing Officer, they are subjective and cognitive in nature. They are not technical and do not turn this into a system which produces a technical effect outside the excluded subject matter."

This case note greatly simplifies - many would say oversimplifies - the Court of Appeal's decision.   If you want to read it for yourself, click Comptroller General of Patents, Designs and Trade Marks v Emotional Perception AI Ltd [2024] EWCA Civ 825 (19 July 2024.   I have also written a more detailed note entitled Patents - the Appeal in Comptroller v Emotional Perceptions on 26 Aug 2024 in NIPC Law.  Anyone wishing to discuss this article is welcome to call me on  +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

How to Value a Patent

Crown Copyright  Open Government Licence 3.0

Jane Lambert

On Thursday 9 May 2024 I attended the Finance and Innovation Conference which took place at the Menai Science Park on Anglesey.  I wrote about my visit in M-SParc's Finance and Innovation Conference on 10 May 2024 in NIPC Wales.  Two of the most interesting conversations were Gwenllian Owen's discussion with a group of business angels and Edward Thomas's discussion with Steve Livingston and representatives of several local financial institutions.  All of those angels and institutions offered funding of various kinds to early-stage enterprises whose assets were likely to consist of little more than a patent or patent application or sometimes just an idea for an invention or business,  A question that I was bursting to ask them was how do you value the assets of such a business?

Because of the very full programme, there was not enough time for me to ask that question to either group of speakers so I decided to research it for myself.  This is what I have come up with.   The short answer is that a patent (or any other intellectual property right for that matter) is what a willing and informed assignee would pay a willing and informed assignor bargaining at arms' length.  I reached that conclusion after reading Valuing Your Intellectual Property which was published by the UK Intellectual Property Office on 12 Dec 2014 and last updated on 4 Jan 2022, How do you measure patent value? published by the European Patent Office and Valuing Intellectual Property Assets published by the World Intellectual Property Organization, the United Nations specialist agency for intellectual property.   The IPO's guidance incorporated the above animation.

Each of those publications refers to three methods of valuations:

• the cost method
• the market value method, and
• the income or economic benefit method.

The "cost method" is the owner's expenditure on developing the intellectual asset and is likely to include such costs as labour, cost or hire of premises, plant and equipment, raw materials, consultancy fees, prototyping and testing and patent prosecution.  The attraction of this method is that the purchaser does not have to incur those costs but the drawback is that the assignor may well have gone about his or her research and development work in the most efficient way.  Also, the IP right may not protect the asset as well as it might.   Expect a lot of horse-trading between the owner and his or her buyer, investor or lender. 

The "market value" method is to compare the proposed transaction with similar transactions relating to similar intellectual assets.   That is likely to be more accurate than the cost method where the relevant information is available because it is about transactions that have actually taken place.  One problem is that the parties may not wish to publish information about their deals.  Another is that the times may have been different.  A transaction that makes sense when interest rates or low or market demand is strong may be unviable now.  Yet another problem is that there may be significant differences between the invention in one transaction and the invention in another.   Also, newly formed businesses or businesses operating in a new technology or market may not be able to point to comparable data,

The "income" or "economic benefit" is the deduction of past and anticipated costs of developing the asset from the past and anticipated revenues that it may have and may continue to generate.  The problem with this method is that it requires a lot of crystal ball gazing and is likely to be subject to a lot of wishful thinking. However, if there are some licensing deals producing verifiable royalties or an income-generating invention it may be the most accurate method yet.   According to the WIPO, the income method is the most commonly used method of valuation.

There are businesses like Ocean Tomo that hold IP auctions from time to time.  I have no personal experience of them so I can neither recommend nor not recommend them. Readers contemplating such services should make their own enquiries, take their own advice and form their own views as to whether an auction would benefit them.

There are also businesses like Inngot which offer valuation services.  Inngot was co-founded by a distinguished academic lawyer who has recently retired as Principal of Bangor University.  I have shared a platform with one of its former employees on two occasions very successfully and have high regard for its publications.  However, I have no experience of its valuation services.

A first step for any business which wishes to value its IP would be an IP audit.  Readers may wish to consult How to Use an IP Audit which I wrote in NIPC News on 13 Jan 2022.  They may also wish to use the IPO's handy IPR Valuation Checklist.   While I do not carry out IP audits myself I can certainly address legal issues that may arise in the course of such exercises such as construing patent claims.   Anyone wishing to discuss this article may call me during office hours on 020 7404 5252 or send me a message through my contact form.

The British Library Inventors' Club

British Library
Author Jack1956  Public Domain  Source Wikimedia Commons

 

Jane Lambert

I am delighted to report that the British Library has set up an "Inventors Club". and I wish its organizers and members every success,  The Club meets on the last Monday of every month. The next meeting will take place between 18:00 and 19:30 on 29 April 2024. According to the Eventbrite registration card, there will be talks by innovators who have already brought their products to market or have licensed their intellectual property,   The organizers are Mr Bob Lindsey who set up and chaired an inventors' club in Kingson and Mr Mark Shehan who has been the British Library's "inventor in residence",

I have written a longer article about this initiative in NIPC London.

Anyone wishing to discuss this article may call me on 020 7404 5252 or message me through my contact page.

Invention Con 2023 - Practical Advice for Inventors, Makers and Entrepreneurs from across the Pond

Author US Patent and Trademark Office Licence Standard YouTube Licence Source USPTP

Jane Lambert

An important difference between the United Kingdom and the United States lies in the public's appreciation of independent inventors. The life of an American inventor is not exactly a bed of roses as the story of the film Joy shows, but it is fair to say that independent inventors in the USA are encouraged in a way that British independent inventors are not.  One of the ways in which they are encouraged is an annual online conference called Invention-Con which I discussed in Invention-Con 2022: The US Patent and Trademark Office's Online Conference for Inventors, Makers and Entrepreneurs on 22 July 2022.

It will be obvious from the video clip above that another Invention Con has taken place since I wrote that article.   This time some of the proceedings have been recorded on YouTube.   They include:

• A welcome from Derrick Brent, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office; 
• A welcome from Vaishali Udupa Commissioner for Patents, 
• Licensing your intellectual property;
• Branding and trademark protection;
• Sean Wilkerson, Robyn James and Eric Peterson: Turning passion to profits; and 
• Understanding Manufacturing.

All those clips are well worth watching.  Much of the information and advice would apply here though it has to be remembered that the USA is a different country with different laws, different institutions and a very different business culture.

In my article, I wrote:

"There is no reason why other countries (including ours) should not stage similar conferences. We do stage events like the British Invention Show but there is nothing like Invention-Con. There is a great need for practical advice on patent, design and trade mark prosecution, grant, equity and loan funding, setting up businesses and scaling up which Invention-Con appears to deliver."

For the last 20 years, I have founded and chaired inventors' clubs, given talks, run IP clinics and given practical advice to independent inventors in this and my other publications.  I think the time has come to consolidate these activities in one place.  I am assembling my articles and case notes into a single pdf manual which will be free to download.   I shall continue to canvass support for a British equivalent to Invention-Con.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form,

How to avoid Entitlement Disputes

 

Jane Lambert

In Disputes over Ownership of Inventions 6 Aug 2015 NIPC South East I wrote:

"According to the Intellectual Property Office at least 30 disputes are referred to its tribunals every year over who should own or be entitled to apply for a British or foreign patent or be named as an inventor (see the table on page 50 of the IPO's Facts and figures for 2013 and 2014 calendar years)."

As I said in the next sentence, disputes over ownership of patents or patent applications are known as "entitlement disputes."  Of the 41 inter partes hearings, and reasoned decisions made without a hearing in 2014 mentioned in that table, 31 were entitlement disputes.  The situation had not changed much by 2018 which is the last year for which I have been able to find comparable statistics.  According to the table on page 60 of Facts and Figures 2018, entitlement disputes accounted for 24 of the 38 inter partes hearings, reasoned decisions made without a hearing and reviews of opinions in 2017 and 21 of the 32 in 2018.

Entitlement disputes are often heartbreaking because they arise from a breakdown of hope and trust and sometimes friendship.   The right to a patent or patent application is contested fiercely even when the patent is clearly invalid or of little commercial value.  There are three types of relationships from which entitlement disputes tend to arise:

• The first is between friends or acquaintances where one of them has a bright idea and the others pitch in to help him or her develop it.   
• The second is where the inventor hires a product design consultant, engineer or some other contractor to help with the product's design or development.
• The third is where the inventor or the original collaborators accept investment from an angel, venture capitalist or some other third party.

In the first situation, the friends or acquaintances fall out when they meet the first hurdle.   That can occur in a variety of ways.  One of them may want to apply for a patent or make a prototype and the others do not because they will have to dip into funds that they had earmarked for other purposes.  The second situation may arise because the inventor and third party fail to draw up a proper consultancy agreement or rely on the standard terms of business of the third party which do not reflect the parties' intentions.   The third situation can arise where the investor has paid for everything and the inventor has contributed nothing other than his or her initials idea but still insists on the application proceeding in his or her name alone.

Each of those situations can be avoided if the parties take independent legal advice and negotiate a written agreement that reflects the parties' intentions before any time or money is committed.   By independent, I mean a barrister, solicitor or patent attorney who is unconnected with the patent attorney who prosecutes the patent application.   I say that because in every entitlement dispute in which I have been instructed the attorney has been instructed by one of the parties.   It is next to impossible to act for a client but also safeguard the often conflicting interests of the other parties.

A properly negotiated and drafted agreement will anticipate the possibility of the parties falling out over minor as well as major issues and provide machinery for resolving them such as expert determination in the case of minor issues and mediation or some other form of alternative dispute resolution in the case of major issues.  Taking independent legal advice may be daunting at a time of rising interest rates and flattening demand but it is chickenfeed in comparison to the costs of the sort of entitlement dispute that I describe in my 2015 article.   And in relation to that article, the only thing that has changed since 2015 has been the costs of litigation which have increased along with everything else,  

So if you are thinking of collaborating on the development of an invention or investing in such a collaboration have a word with me or some other specialist lawyer or attorney first.  If you are unfortunate enough to be caught up in an entitlement dispute, I (or someone like me) may be able to advise you on how to resolve it without going before a hearing officer.   If a tribunal hearing cannot be avoided, you will need some skilled and experienced specialist representation before it.  Once again, there are members of the Intellectual Property Bar Association (of which I am one), the Chartered Institute of Patent Attorneys and specialist solicitors who can help you,

Anyone wishing to discuss this article may call me on 020 7404 5252 or send me a message through my contact page,