Intellectual Asset Funding

 

Jane Lambert

Intellectual assets are the creations of the mind that give a business a competitive advantage over all others.  Examples include inventions, computer programs and goodwill.  They are not to be confused with intellectual property such as patents, copyrights and trade marks which protect them.

For many businesses, intellectual assets are their most valuable property.  However, their value has not always been appreciated.  Recently, lenders such as the NatWest Group have begun to accept intellectual assets as security for advances.  For instance, the NatWest Group teamed up with Inngot Limited to launch an IP-based lending proposition for high-growth businesses (see NatWest launches Intellectual Property-based lending to fuel high growth businesses 12 Jan 2024, NatWest website).

Following the former Chancellor's Mansion House speech, the British Business Bank announced a £6.5bn uplift to the Growth Guarantee Scheme to unlock further lending to smaller businesses over the next four years and up to £500m of ENABLE Guarantee capacity ringfenced over the next 12 months to support Intellectual Property-rich smaller businesses (see British Business Bank welcomes Chancellor of the Exchequer’s announcement of package of new measures to support smaller businesses 12 July 2026).

In that press release, the British Business Bank observes that many innovative businesses have significant value in intellectual property but lack the physical collateral that lenders traditionally rely on, which makes it difficult and prohibitively expensive to access debt finance.  Recognising this, the British Business Bank is making up to £500m of existing funding capacity available over an initial 12-month period to support lending to IP-rich smaller businesses. That is expected to help increase the availability of finance for IP-rich businesses, enable more competitive pricing and develop stronger lender capability to assess IP-driven business models.

The value of intellectual property rests ultimately in its ability to prevent unfair competition and resist applications for revocation and invalidation.  These matters are decided ultimately in the courtroom.  The persons best placed to advise on the likely outcome of infringement and invalidity proceedings are the advocates who would have to argue those points before judges and hearing officers.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form at any time.

Sir Adrian Hill wins the European Inventor Award Research Category

Standard YouTube Licence 

Jane Lambert

The European Inventor Award is a biennial "celebration of the inventive spirit, the individual contributions of talented inventors, and the European patent system that protects inventions and encourages innovation" established by the European Patent Office in 2006.  Prizes are awarded for inventions in the following categories:

• industry
• research
• Non-EPO countries
• SMEs
• lifetime achievement, and
• popular prize.

Winners of each category receive a trophy in the form of a sail designed by Miriam Irle.

The research category celebrates inventors working at universities, research institutions or their spin-offs. The winner of this year's research category is Professor Sir Adrian Hill, Founding Director of the Jenner Institute and Chair of the Centre for Clinical Vaccinology and Tropical Medicine at the University of Oxford.  The invention for which this year's research award was granted was the R21/Matrix-M vaccine against malaria, more particularly described in European patent specification EP2945649 B1

According to Wikipedia, Sir Adrian was born in Ireland.   He attended Belvedere College SJ in Dublin, read medicine at Trinity College Dublin and Magdalen College, Oxford and carried out his doctoral research on the molecular genetics of thalassemia at Oxford.   As well as being a leader in malaria vaccine development, Sir Adrian was a co-leader of the research team that produced the Oxford–AstraZeneca COVID-19 vaccine.  He was knighted for his services in 2021.

Anyone wishing to discuss this article or the European Inventor Awards in general may call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.

Knowledge Asset Management Hub

Standard YouTube Licence

Jane Lambert

The Knowledge Asset Management Hub is a resource to help universities and other research institutions identify, protect and commercialise their intellectual assets.  It brings together a comprehensive set of practical resources.  According to the announcement on the Intellectual Property Office website, the Hub consists of the following components:

• "Institutional IP strategy guidance — practical frameworks to help universities and research organisations develop and implement IP strategies and policies at an organisational level
• Project-level IP risk and opportunity tools — resources to help teams identify and manage IP considerations within individual research projects, from early-stage collaboration agreements through to commercialisation
• Patent data analysis and IP due diligence resources — tools to support the assessments that underpin licencing, spin-out formation, and investment decisions
• Knowledge Asset Management Toolkit — guidance recognising that effective knowledge asset management requires strategic and operational management."

The following guides were published with the announcement:

• KAM Guide: Introduction and intellectual property policy:  an excellent introduction to those unfamiliar; 
• KAM Guide: Intellectual property management: a more detailed guide on the different IP rights and how they mayh be acquired; 
• KAM Guide: Further resources and glossary of terms: links to the relevant statutes, guidance on funding and licensing and glossary;
• Knowledge Asset Management Guide:  very handy document, particularly for those with a grounding in IA management; 
• Knowledge Asset Management(KAM) Toolkit: useful charts, checklist and basic infor; and 
• IP due diligence quick guide: introduction to due diligence and an explanation of why it is important.

Useful though these guides are they cannot cover everything.  Anyone wanting to discuss any of these topics is welcome to give me a bell on +44 (0)20 7404 5252 during UK office hours or send me a message at any time.

How will the Emotional Perception Case affect Inventors in the UK?

Supreme Court of the United Kingdom

Author Kelsey Farish Licence CC BY 4,0  Source Wikimedia Commons

 

Jane Lambert

The Supreme Court's judgment in Emotional Perception AI Ltd. v Comptroller General of Patents, Designs and Trade Marks [2026] UKSC 3 which was handed down on 11 Feb 2026, reverses nearly 20 years of case law on the meaning and application of s.1 (2) (c) of the Patents Act 1977:

"It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of—
......
(c) ........ a program for a computer;
......

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such."

Ever since the Court of Appeal delivered its joint decision in  Aerotel Ltd. v Telco Holdings Ltd and others Rev 1 [2006] EWCA Civ 1371 (27 Oct 2006) the courts of England and Wales, Scotland and Northern Ireland and the patent examiners and hearing officers of the Intellectual Property Office ("the IPO") have applied the following test:

"(1) Properly construe the claim.
(2) Identify the actual contribution (although at the application stage this might have to be the alleged contribution).
(3) Ask whether it falls solely within the excluded matter.
(4) If the third step has not covered it, check whether the actual or alleged contribution is actually technical."

In Emotional Perception, the Supreme Court held at para [20] of its judgment that Aerotel should no longer be followed.   I explained why in Emotional Perception AI Ltd v Comptroller in the Supreme Court on 12 Feb 2026 in NIPC Law:

"The Justices noted that the Enlarged Board of Appeal of the Europeam Patent Office had approved in G1/19 Bentley Systems (UK) Ltd/Pedestrian Simulation (Decision G1/19) [2021] EPOR 30) cases that stated that the Aerotel/Macrossan approach was not a good faith implementation of art 52 of the European Patent Convention which s.1 (2) (c) of the Patents Act 1977 is supposed to implement in the United Kingdom. One of those cases held that the Aerotel/Macrossan approach was incompatible with art 52 because that approach had been based on a misunderstanding of the word "invention" as used in the Convention."

As is to be expected, there is a note on the Manual of Patent Practice that the IPO is reviewing the Supreme Court's judgment and that its guidance between para 1.07 and 1.51.7 is subject to change.   

How much difference this new guidance may make in practice is uncertain.   Mr Justice Birss (as he then was) remarked in para [9] of Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat), [2020] RPC 18), that “although in methodological terms the approach in the UK and the approach in the EPO may look different, in practice they reach the same result, at least usually.”Also, most UK patent attorneys with experience of software patent applications will have applied for patents to the European Patent Office as well as the IPO and will be familiar with its practice.   For those who are uncertain, para 3.6 of the April 2025 edition of the Guidelines for Examination in the European Patent Office should provide most of the answers.

Anybody wishing to discuss an issue related to this topic under my Initial Advice and Signposting Scheme should complete the form.  I plan to call an online meeting of the NIPC Inventors Club to explain the Emotional Perception case.   Anyone wishing to talk to me can call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

Further Reading

Jane Lambert Emotional Perception AI Ltd v Comptroller in the Supreme Court 12 Feb 2026 NIPC Law:

If only ...........

Jane Lambert

 

Barristers are called upon to advise or provide representation when something has gone terribly wrong.  Often, we are called in far too late. When that happens, we say to ourselves, "If only the client had taken professional advice sooner."  That is particularly true of intellectual property law where a right of action can be lost because the client did not seek legal protection for his or her invention, brand or product design or he or she stumbles into an infringement claim because he or she did not carry out the necessary patent, trade mark or registered design searches before launching his or her business or product.

There are two reasons for this.  The first is that clients do not always know whom to consult.  There are many different types of professionals in intellectual property, such as patent and trade mark attorneys (formerly known as "patent" and "trade mark agents"), patent searchers and specialist IP counsel and solicitors that the public rarely encounters.    I counted 23 separate professions in How to Get Into IP.  The other reason is that they are worried about intellectual property practitioners' fees which can be pricey.

The initial advice and signposting service that I have offered for many years in London, the North of England and Wales meets both concerns.  In many instances, I can give you the answer to your question immediately for nothing.  In others, I may have to refer you to another professional, such as a patent or trade mark attorney, a specialist IP tax consultant or a product design consultant who will also give you at least 30 minutes of his or her time free.

It is important to note that not everything is free.  We will analyse your needs and explain your options pro bono, but if you ask any of us to advise or act for you further, we will charge for our service, albeit at a competitive rate.

It gives me great satisfaction to report that the Barnsley Business Village, which hosts some great innovative businesses, is promoting my initial advice and signposting service to its tenants.   It is important to stress that anyone can register for the service by completing this form.  This scheme is not restricted to Business Village tenants or even to residents of Yorkshire.   

The Initial Advice and Signposting service is only one of several offered by NIPC Inventors' Club.   We also hold events, give online talks.  The next event will be a conference at the Business Village in February on writing an IP strategy and integrating it into a company's business plan.  Finally, we publish the NIPC Inventors Club blog. 

If you want to learn more about our service, call me on 020 7404 6262 or send me a message through this form.

European Patent Applications from the UK in 2024

European Patent Office, Munich

Author Carsten Steger  Licence  CC BY-SA 4.0   Source  Wikimedia Commons

 

Jane Lambert

The European Patent Office ("EPO") is the fifth-largest patent office in the world.   The other four are the China National Intellectual Property Administration, the United States Patent and Trademark Office, the Japan Patent Office and the Korea Intellectual Property Office.  The EPO grants patents for the territories of its contracting parties on behalf of their governments.  The United Kingdom is one of those parties.  A patent granted by the EPO designating the UK (known as a "European patent (UK)") is treated as equivalent to a patent granted by the Intellectual Property Office in Newport for all practical purposes.

According to EPO figures published earlier this year, there were 6,076 applications from the United Kingdom in 2024.  That was an increase of 3.1% over the previous year, and it placed this country 9th in the list of countries of origin for European patent applications.   The countries ahead of us were the United States with 47,787 European patent applications, Germany with 25,033, Japan with 21,062, China with 20,081, South Korea with 13,107,  France with 10,980, Switzerland with 9,966 and the Netherlands with 7,054.  Immediately behind the UK was Sweden with 4,936 applications.  Italy was 11th with 4,853, and Spain was 15th with 2,192.  In the top 10 countries of origin, only South Korea and Switzerland exceeded the UK's percentage increase in European patent applications, though Hong Kong and Norway, which are further down the list, saw double-digit percentage increases.

Britain's 3.1% uptick is less impressive when the number of European patent applications per country is compared to its population.   Switzerland produced  1,112.8 applications per million inhabitants.   It was followed by Sweden with 467.79, Finland with 428.28 and Denmark with 425.92. With 87,88 applications per million, this country came 18th in the list which is surprising for the country that pioneered the industrial revolution and has some of the finest universities in the world.

The following graphic shows the fields for which applications from the UK were filed in 2024.

Consumer goods came top, followed by computers, med-tech and biotech.   The top 10 applicants were as follows:

British American Tobacco Plc	636
Unilever Plc	613
Rolls-Royce Plc	254
BAE Systems Plc	184
British Telecommunications Plc	175
Linde Plc	173
Imperial Brands Plc	140
AstraZeneca Plc	121
Shell Plc	116
Johnson Matthey Inc.	105

One of the reasons why the UK has underperformed its competitors in patenting was thought to be the risk and costs of IP enforcement.   The Arnold reforms which I discussed in New Patents County Court Rules on 31 Oct 2010 NIPC Law, were intended to be an answer to that problem.  It seems to be taking a long time for news that IP enforcement need not be ruinously risky and expensive to filter down to industry.

Small and medium enterprises can protect themselves against such risk and cost by taking out IP insurance cover.  The Intellectual Property Office has published useful Guidance on Intellectual Property Insurance, and the Chartered Institute of Patent Attorneys maintains a comprehensive list of brokers, underwriters and insurers on its website.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form at any time.

Hydrogen Technology Inventions and the World Hydrogen Summit

Standard YouTube Licence

Jane Lambert

The World Hydrogen Summit will take place at Rotterdam Ahoy between 20 and 22 May 2025.  It will consist of a conference and an exhibition (see the conference programme, the list of speakers and the list of exhibitors).  This event will be of particular interest to the residents of Anglesey (described by their local authority as "Energy Island") because Menter Môn will represent Wales in Rotterdam (see press release 14 May 2025 Ynys Môn to represent Wales at World Hydrogen Summit 2025).

The importance of this source of energy was highlighted in the European Patent Office's press release of 10 Jan 2023 to announce the publication of Hydrogen patents for a clean energy future - A global trend analysis of innovation along hydrogen value chains, a joint report by the European Patent Office and the International Energy Agency.   António Campinos, President of the European Patent Office, said:

"Harnessing the potential of hydrogen is a key part of Europe's strategy to achieve climate neutrality by 2050...."

 Fatih Birol, Executive Director of the International Energy Agency, added:

"Hydrogen from low-emissions sources can play an important role in clean energy transitions with potential to replace fossil fuels in industries where few clean alternatives exist, like long-haul transport and fertilizer production,"

According to the press release, the joint report is the most comprehensive and up-to-date study of global trends in hydrogen technologies for 2011-2020.  Patenting related to hydrogen is led by the EU (28%) and Japan (24%), while the US (20%) is the only major innovation centre to lose ground in the past decade.  Within the EU, Germany (11%), France (6%) and the Netherlands (3%) rank first for patenting hydrogen technologies.  Among end-use applications, automotive continues to be the biggest focus of innovators.  The press release stated that start-ups holding patents attracted more than half of the US$10 billion in venture capital investment into hydrogen-related firms in the last decade.

Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5242 during UK office hours or send me a message through my contact page.