01 August 2023

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

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 showsbut 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:
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,

22 June 2023

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,

09 June 2023

Writing IP into your Business Plan

Author Grenavitar Licence Public Domain Source Wikimedia Commons
Paternoster Square, City of London


Jane Lambert

A business plan plots out the course that a business is to take from its present position to a point in the future.  During that time it is expected to develop new products and/or services that will attract customers.  The design of goods, the technology that the goods or services incorporate or by which they are made or marketed and/or the reputation that the business develops are business assets.  As they are creations of the mind rather than space or machinery they are often referred to as intellectual assets.  The legal protection of those assets is known as intellectual property.

The first step is to identify intellectual assets.  As they are not always obvious, startups and other small businesses should make use of the WIPO's IP Diagnostics and the British Intellectual Property Office's IP Healthcheck tools which I mentioned in Saving Money on IP at a Time of Rising Prices on 19 May 2023.  As a company expands and becomes more diverse its owners should carry out regular intellectual property audits.  In How to Use an IP Audit (13 Jan 2022 NIPC News) I described IP audits as "a tool for identifying 'potential IP assets', that is to say, protectable intellectual assets."  That article discussed the different types of intellectual audits and how they may be used in business planning.

In that article, I warned:

"Like other tools, an IP audit can be misused. The identification of a patentable invention does not mean that a patent must always be sought. Considerable resources may be required to protect the invention in the countries where it may be marketed as well as those in which suppliers of competing products are located. Unless the development, production, marketing and distribution of the invention are already featured in or can be incorporated into the company's business plan. there are likely to be better uses for such resources."

In the next paragraph, I wrote:

"An IP audit can be put to better use when devising and monitoring the implementation of an intellectual property strategy."

I defined an intellectual property strategy as "the systematic application of intellectual property laws to achieve business objectives" in "What is an Intellectual Property Strategy" in NIPC Law on 19 May 2017.  I gave an example of a simple intellectual property strategy in Putting IP at the Heart of Your Business Plan in NIPC News on 2 Jan 2015:

"(1) Identify the likely income streams over the period of your business plan: these may be sales, payments for services, grants, subsidies - any kind of revenue;
(2) Consider the threats to those income streams over that period - most of those threats will be commercial such as competition from other businesses and changing customer behaviour but a few could result from copying your products or riding on your reputation;
(3) Develop responses to those threats - as most of those threats will be commercial so will your responses such as reducing prices and developing new products but such threats as plagiarism and free riding may require a legal response;
(4) Tailor your response to suit the threat and your resources - there is often more than one form of legal protection such as keeping your new product under wraps and relying on the law of confidence to keep it secret rather than seeking patent protection so consider all the options before you actually spend money on searches and applications."

I amplified that last point in Saving Money on IP at a Time of Rising Prices.   Patent prosecution is expensive and comes with the important downside that every invention must be disclosed "in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art," Not every invention needs to be patented.  Much innovation can be protected adequately by trade secrecy or design rights.   

I also emphasised the importance of enforcement in Putting IP at the Heart of Your Business Plan and  Saving Money on IP at a Time of Rising Prices.   Business planners have to beware that a well-funded competitor may attempt to revoke their patent or other intellectual property right or simply infringe it.  While the Small Claims Track of the Intellectual Property Enterprise Court will resolve most types of IP claims for £10,000  or less that can be tried in a single day and there are cost-effective alternatives to litigation such as patent examiners' opinions and the Uniform Domain Nane Dispute Resolution Policy that I mentioned in Saving Money on IP at a Time of Rising Prices, most IP litigation is expensive.  Few startups or other small businesses can afford the cost of litigation in the Patents Court or even the Intellectual Property Enterprise Court multitrack.  The only way many of them can defend themselves is by relying on before-the-event IP insurance. A small number of brokers such as Sybaris Special Risks and Safeguard IP are beginning to write policies for small and medium enterprises.   As I said in Saving Money on IP at a Time of Rising Prices, the IPO has provided some useful guidance on IP insurance and the Chartered Institute of Patent Attorneys and the Chartered Institute of Trade Mark Attorneys. publish a list of specialist IP insurance brokers.

It is now possible to identify the information that can be written into a business plan:

  • the intellectual assets discovered by using the WIPO or IPO diagnostic tools or commissioning an IP audit;
  • professional fees for carrying out such an audit;
  • coasts of prosecuting applications for such patents, registered designs, trade marks or other registrable rights as are found to be necessary for devising an IP strategy;
  • premiums for intellectual property insurance;
  • renewal fees for patents and other registrable rights; and 
  • contingencies and other miscellaneous expenses.
Costs are not the only information to be inserted into a business plan,   Assets have value and for many businesses, the most valuable assets may be their brand, their designs, their technology or their creative works.  Estimates of the expected values of those assets should also be inserted into the plan.   It is those assets that are most likely to persuade investors to invest or lenders to lend to the venture.

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.

06 June 2023

Legal Aid for Proceedings in the Unified Patent Court


Jane Lambert

Art 71 (1) of the Unified Patent Court Agreement enables natural persons who are unable to meet the costs of proceedings in the Unified Patent Court, either wholly or in part, to apply for legal aid at any time. The same paragraph continues that the conditions for granting legal aid are laid down in the Rules of Procedure.

 I first discussed this topic in Legal Aid for the UPC on 25 Jan 2016.  That was long before the adoption of the Rules of Procedure and references to "the Rules" in my article were references to the 18th draft which was published on 19 Oct 2015.  The main difference between the adopted Rules and the 18th draft is that rule 377 (1) of the draft restricted eligibility for legal aid to natural persons who are citizens of the European Union or a third country national residing lawfully in a Member State of the European Union.  I am glad to say that that qualification has been removed.  Rule 377 (1) of the Rules now provides:

"The applicant shall be entitled to apply for legal aid where: 
(a) owing to his economic situation, he is wholly or partly unable to meet the costs referred to in Rule 376; 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 claimant applying for legal aid is entitled to bring actions under Article 47 of the Agreement."

It would appear that nations or residents of any state can apply for legal aid so long as they meet the other requirements of the Rules. 

As legal aid for intellectual property work in England and Wales was abolished by s.6 (6) and para 1 (1) (h) of Sched. 2 to the Access to Justice Act 1999, the availability of legal aid in the Unified Patent Court could attract many academics. research students and other individual inventors in the UK.  As the UPC will interpret and apply the European Patent Convention which is also the basis of English and Welsh, Scottish and Northern Irish patent law it could resolve many disputes that would otherwise have been decided in the Patents Court or Intellectual Property Enterprise Court.

The Rules governing legal aid are Rules 377 to 382 and they are essentially the same as in the 18th draft. Readers can refer to my previous article for the purpose of the Rules, the costs that are covered, the payment of costs to successful unassisted parties, eligibility applications, withdrawal of legal aid and the recovery of legal aid payments.  There is also a holding page on legal aid on the UPC's website.

British inventors cannot be represented before the UPC by British counsel and solicitors because art 48 of the UPC Agreement requires parties to be represented either by lawyers authorized to practise before a court of a contracting member state or European patent attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to art 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate.  Nevertheless, it is worth mentioning that James Bridgeman SC of the Irish bar is an ad eundem member of my chambers' IP team. He has considerable experience in IP law as he practised as a trade mark attorney before he became a barrister.  Although the Irish Republic has not yet ratified the UPC agreement it is a contracting member state.   There is no reason why IP practitioners from these or other chambers could not assist Mr Bridgenman or other advocates in appropriate circumstances.  

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

19 May 2023

Saving Money on IP at a Time of Rising Prices


Jane Lambert

At a time of rising production costs and weakening demand for their products and services, businesses are tempted to reduce or even curtail their spending on intellectual property services.  That will often prove to be a mistake because brands, designs, technology and creative output are rather like the golden eggs in Aesop's fable and the laws that protect them the goose   The reality is that many businesses will take that risk because savings have to be made somewhere.  There are, however, steps that can be taken that will save money but not increase risk excessively.  Those steps are suggestions and not recommendations. There will be occasions when only the most expensive option will do.  That will depend entirely on the circumstances. 

Ascertaining Intellectual Assets

Before any decision can be taken as to what intellectual assets are to be protected a business needs to know what it holds.  A patent or trade mark attorney or solicitor specializing in IP will carry out an IP audit for a fee and there are some schemes that will pay for such audits (see How to use an IP Audit 13 Jan 2022 NIPC News).  However, for businesses that do not qualify for such funding and do not want to pay such fees, there are two very useful diagnostic tools from the WIPO and the IPO that will do much of the work for nothing.   

The WIPO IP Diagnostics generates a customized report with recommendations.  There is more information in WIPO IP DiagnosticsAn IP self-assessment tool for SMEs and the WIPO IP Diagnostics Frequently Asked QuestionsThe only caveat is that the WIPO tool is not designed specifically for British users though most of the information will apply to users in the UK. 

The IPO's IP Health Check is designed for users in this country.   It will also generate a report covering

  • "a personalised list of actions to take
  • an explanation of why we have made each recommendation
  • guidance on how to put each course of action into practice
  • links to useful information, websites and other resources."

Both tools have their strengths and as they are both free there is nothing to stop users from trying both.

Not all Intellectual Property Rights Cost Money

Patents provide the most comprehensive protection but they are not cheap.  An applicant can pay up to £5,000 or more for searches, office charges and attorneys fees just for this country.  Afterwards,there are periodic renewal fees which increase over time in some countries.  One of the conditions for the grant of a patent is that you have to disclose  "the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art." As anyone in the world can read a patent specification once it is published it is often necessary to patent the invention in every country where there is a market as well as every country where there could be a competitor.  The Patent Cooperation Treaty has reduced some of those costs but patenting in more than one country can still cost many tens of thousands of pounds.  Also, if a court or the Comptoller-General of Patents, Designs and Trade Marks ("the Comptroller") finds that a patent should never have been granted, the grant can be revoked.

If the invention cannot easily be reverse-engineered the inventor may decide to keep the invention secret and disclose it in confidence only to people who need to know about it.  Some product information such as the way to make Coca-Cola or Chartreuse can be kept secret for centuries.   Even where an invention can be reverse-engineered but its competitive advantage is unlikely to last more than a few years, it may be sufficient to rely on unregistered design rights, copyright in the software that actuates the invention or some other non-registrable IP right.

Supplementary unregistered designs which provide up to 3 years protection from copying for designs that could be registered under the 1949 Act may be all that is required for toys, novelties and fashion goods  Unregistered design rights, which last up to 10 years (though licences of right are available in the last 5 years of a design right term) are another alternative to design registration. 

Passing off is a less obvious substitute for trade mark registration as goodwill by reference to a mark, sign or get-up has to be built up but the cause of action is sometimes available in circumstances where a trade mark would not be registrable.  Having said that, an action  for passing off is usually more expensive than a claim for trade mark infringement,

Before the Event Insurance

For many small and medium enterprises, the costs of litigation are an existential threat.  Such a threat can be mitigated by legal expenses insurance.  Cover against IP claims is available before a claim arises and afterwards.  As is to be expected, the premiums for before-the-event insurance are considerably less expensive than for after-the-event cover,   The IPO has provided some useful guidance on IP insurance.  The Chartered Institute of Patent Attorneys publishes a list of specialist IP insurance brokers as do the Chartered Institute of Trade Mark Attorneys.

Examiners' Opinions

A dispute over whether a patent is valid or whether it has been infringed can often be resolved by referring the dispute to a patent examiner for an opinion pursuant to s.74A of the Patents Act 1977.  The advantage of the opinion is that it will be based on evidence and argument from both sides.  It is also inexpensive.  The IPO charges £200 for the service.  While the opinion of an examiner is non-binding it can often facilitate settlement through mediation or negotiation.

Domain Name Disputes

Although the Court of Appeal held in  British Telecommunications Plc and others v One In A Million Ltd and others [1998] EWCA Civ 1272, [2001] EBLR 2, [1999] WLR 903, [1999] ETMR 61, [1999] 1 WLR 903, [1998] Masons CLR 165, [1999] FSR 1, [1997-98] Info TLR 423, [1998] ITCLR 146, [1999] 1 ETMR 61, [1998] 4 All ER 476 that unauthorized registration of a trade mark as a domain name is actionable, the Internet Corporation for Assigned Names and Numbers ("ICANN") has devised the Uniform Domain Name Dispute Resolution Policy for resolving disputes between trade mark owners and domain name registrants. For US$1,500, a dispute over entitlement to a domain name ending in ".com", ".org", ".net" or other generic top-level domain can be referred to a tribunal of one or three panellists who will deliver a decision within days of the referral.  Registrars are bound by their agreements with ICANN to give effect to such decisions.  That is considerably easier, cheaper and quicker than seeking to enforce the judgment of a UK court abroad.  There are similar schemes in national or regional domain name authorities such as Nominet for the ".uk" domain or EurID for the ".eu" domain,

Proceedings in the Intellectual Property Office

The Comptroller has jurisdiction to decide many kinds of patent, trade mark, registered and unregistered design disputes.  The procedure of his tribunals is simpler and less formal than that of the courts.  It is often possible to dispose of disputes without a hearing.  Unless a party behaves unreasonably the maximum costs that can be awarded against it are limited to a published scale.  In trade mark and design cases, it is possible to appeal to an appointed person who will award costs on the same scale,

The IPEC Small Claims Track

If the owner of an IP right other than a patent, registered design, plant variety or semiconductor topography has a straightforward claim that can be decided in a day and seeks primarily an injunction and damages of £10,000 or less, he or she should consider an action in the small claims track of the Intellectual Property Enterprise Court (see Small IP Claims last updated 19 Jan 2018 in NIPC News).  The procedure is simpler and shorter than claims in the multitrack and recoverable. costs are limited to a few hundred pounds in most cases.

Other Forums

All other IP claims for damages of £500.000 or less that can be tried in 2 days could be brought in the Intellectual Property Enterprise Court where recoverable costs are also limited.    For slightly higher-value and more complex cases, there is the shorter trials scheme (see IPEC and the Shorter Trials Scheme Compared  28 May 2022).


These suggestions are by no means comprehensive.  Other practitioners will suggest other possible cost savings or disagree with mine.   It would nevertheless be useful to start a conversation on the topic.   Anyone wishing to discuss this article can call me on 020 7404 5252 during office hours or send a message through my contact form.

10 April 2023

Where to learn about IP for Free

Jane Lambert


Every viable business in the world has something that gives it an advantage over its competitors.  It may be its reputation in the marketplace,  the appearance of its products or their packaging or the technology that it uses to deliver its goods or services.   These are its "intellectual assets" and the laws that protect investment in those assets are the business's "intellectual property".

Because intellectual property is not always included in business education syllabuses many business owners and managers have incomplete knowledge of what it is or how it works.  That is dangerous because intellectual property can literally make or break a business.  

So how does such a business owner or manager get up to speed?

Perhaps the best starting place is the Intellectual Property Office's online training tools.  Users have to open an account with the IPO but that is fairly straightforward and costs nothing.  Once they have registered they can log onto a range of online courses which are designed for business owners, schools and universities.    The course that most newbies are likely to need is "IP Equip" where they will learn the basics of copyrights, designs, patents and trade marks.

Once they have completed that course learners can proceed to the IP Health Check which covers the following:

  • whether the user has IP to protect.
  • Whether he or she owns it and, if not the user, who does
  • how to protect the intellectual asset and whether and how it should. be protected, and
  • how to exploit IP commercially.
An excellent little manual called the IP Business Lifecycle Framework can be downloaded from the "IP Business Lifecycle Framework" page.   It provides comprehensive information for start-ups, scale-ups and exits.   From now on I shall recommend it not only to paying clients but those attending my pro bono clinics.

Finally, those looking for equity or short-term funding can take the IP for Investment course where they can learn all about angels, private equity and debentures.   For those who want to work with another business, there is the B2B Toolkit.

Supplementing these online courses is the IPO's YouTube channel which hosts many videos covering the basics, case studies, enforcement and more in-depth discussion of various IP rights.  There are more resources on the British Library'sBusiness and IP Centre website as well as courses, one-to-one mentoring sessions and workshops at the British Library in St Pancras and its nationwide network of public libraries .

Many of those public libraries host IP clinics.  These are free consultations with patent and trade mark attorneys or other IP professionals.   I also offer IP clinics in conjunction with Barnsley Business Village and the Menai Science Park.   Anyone who wants to attend my clinic may call me on 020 7404 5252 during office hours or send me a message through my contact form.

09 March 2023

Selling your Invention


Jane Lambert

The European IP Helpdesk has recently published a fact sheet on intellectual property assignments entitled Commercialising Intellectual Property: Assignment Agreements which can be downloaded from the EU Publication Office.  I mention it because the European Patent Office's Inventors' Handbook suggests an outright sale of a patent, patent application or other intellectual property right as a possible way in which an inventor can exploit his or her invention.

In my experience, it is rare for inventors who are not employed by companies in research and development or universities in academic research to assign their inventions to a business that is established in the industry for which the invention was created.  As I explained in How to Make Money from your Invention: Licensing on 15 Sept 2017, it is hard enough to find a business that is prepared to take a licence.  Most are even more reluctant to carry out due diligence and pay a lump sum to an inventor from outside their industry.

It is much more likely that a business that has developed an article that does not fit in its product range or a process that it is unlikely to use may offer its invention to others.  In the United States, there are established online and physical marketplaces for the sale of intellectual rights.  That is not yet the case here though there are businesses like Inngot Limited which will prepare an intellectual asset for sale.

Both potential purchasers and vendors should take legal and tax advice before embarking on negotiations,  The vendor should satisfy itself that it will never need to use the invention or the work leading up to its creation again.  If that is not the case it will need to negotiate licences.  The purchaser should satisfy itself that the vendor is entitled to sell the invention, that its use will not infringe other parties' patents or other intellectual property rights and that the patent, patent application or other legal protection is sufficient,   A mechanism for valuing the intellectual asset will have to be agreed.   In the UK and most other countries, the assignment must be in writing and signed by all parties.  The assignment should also be recorded at the intellectual property office of every relevant country.

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