05 April 2022

What to do if your Patent is Infringed

Patents Court and Intellectual Property Enterprise Court 
Author Judicial Office Licence CC BY-SA 4.0 Source Wikimedia Commons

 








Jane Lambert

1. What do I do if my Patent is infringed?

The first thing to do is to take some specialist legal advice.  Do not take matters into your own hands unless and until you have done so. Intellectual property law differs from other types of law in that sending a letter before claim that would be perfectly acceptable in most circumstances can sometimes be actionable.  That is because s.70A (1) of the Patents Act 1977 provides:

"Subject to subsections (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat."

The law on groundless threats has recently been reformed.  It used to be far more draconian. There are now a number of exceptions and defences that did not exist before. But the provision can still land you in big trouble if you fall foul of it.   And one further point!  Not every solicitor or barrister in general civil or commercial practice has heard of s.70A (1) so make sure that you go to an IP specialist for advice on how to deal with suspected patent infringement.

2.  Where will I find Specialist Advice?

Barristers specializing in intellectual property law are eligible to join the Intellectual Property Bar Association, I am a member of that Association and so are most of my colleagues.  There are a lot of barristers who know about IP law who are not members but it is not always easy to identify them.

Many specialist law firms and law firms with expertise in IP law belong to the Intellectual Property Lawyers Association. There are however many law firms with expertise in IP law that do not.  Firms with such expertise tend to publish a lot of articles and give lots of talks on the topic. 

All Chartered Patent Attorneys will have acquired a thorough knowledge of patent law.  Many but not all will also have qualified as "patent attorney litigators" or "patent attorney advocates."  Some attorneys' firms have litigation departments. Others have arrangements with specialist law firms some of which practise from the same premises and under the same names.  The patent attorneys' professional association is the Chartered Institute of Patent Attorneys ("CIPA").

3.   How do I know if my Patent has Been Infringed?

Patents are granted for inventions that may be products or processes.  

S.60 (1) (a) of the Patents Act 1977 says that where the invention is a product a person infringes the patent if he or she makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise in the UK without the consent of the owner of the patent.

Where the invention is a process, s.60 (1) (b) says that a person infringes the patent if he or she uses the process or offers the process for use in the UK when he or she knows, or it would be obvious to a reasonable person in the circumstances, that its use there without the consent of the owner would be an infringement of the patent.

Where the invention is a process s.60 (1) (c) further provides that a person infringes a patent if he or she disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

4.  Yes but how do I identify that "Product" or"Process"?

When you or your patent attorney applied for a patent for your invention you will have filed a document called a "specification".   The specification will have contained a description of the invention and several numbered paragraphs known as "the claims"

S.125 (1) of the Act provides:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

Your invention is therefore set out in those claims.   

Thus, anyone who disposes of offers to dispose of uses or imports a product that is described in any of those claims infringes the patent for that product.  Similarly, anyone who uses a process that is described in any of those claims infringes the patent for that process.  Anyone who disposes of offers to dispose of uses or imports any product obtained directly by means of that process also infringes the patent for that process. 

5.   So  How does it work exactly?

The court works out what the claim means.  Often it breaks the claim into its "integers" or "features" as in the following example:
“1A An apparatus for automatically controlling a ventilator comprising:
1B first means for processing data indicative of at least a measured oxygen level of a patient, and for providing output data indicative of:
1C required concentration of oxygen in inspiratory gas of the patient (FiO2) and positive end-expiratory pressure (PEEP) for a next breath of the patient;
1D wherein FiO2 is determined to reduce the difference between the measured oxygen level of the patient and a desired value;
1E wherein PEEP is determined to keep a ratio of PEEP/FiO2 within a prescribed range and, while keeping the ratio within the prescribed range, to keep the measured oxygen level of the patient above a predefined value; and
1F second means, operatively coupled to the first means, for providing control signals, based on the output data provided by the first means, to the ventilator;
1G wherein the control signals provided to the ventilator automatically control PEEP, and FiO2, for a next breath of the patient.”

(see para [8] of Tehrani v Hamilton Bonaduz AG and others [2021] EWHC 3457 (IPEC) (22 Dec 2021).

As the exclusive right to exploit an invention for up to 20 years is a reward for teaching the world how to make or use it, the court reads the claim in the way that it would be understood by a "person skilled in the art".   He or she is the person to whom the specification is addressed.  He or she is often referred to as"the skilled addressee". Any special terminology or conventions that might be used by such skilled addressee are applied by the court.  Usually, the court requires experts in the technology to explain the terminology or conventions.

Once the court has decided what the claim means it looks at the defendant's product or process to see whether it has the claimed integers.   If the defendant's product or process does have those integers, then the claim is infringed.

6.    So Everything hangs on the Interpretation of the Claim?

Not quite!   The patent is infringed only if the claim is valid.    The first thing that a defendant does when he or she is accused of patent infringement is to investigate the validity of the claim.   There are all sorts of reasons why a claim might not be valid.   The claim may be for something that has already been invented.   That is called "anticipation". Alternatively, it may claim something that would be obvious to a person skilled in the art.  In that case, it would lack an inventive step. 

7.     Wouldn't that be picked up by the Examiners when an Application is made for a Patent?

Not necessarily!  Examiners do their best but they have only so much time and only so many resources.  They will read the patents, patent applications and technical literature in English.  Possibly they may know some other European language and they will consult patent databases or journals in those languages.  But much of the world's technical literature is now published in Mandarin, Japanese and Korean and not many examiners in this country or even at the European Patent Office in Munich speak those languages.  A prior disclosure may be a previous patent application but it may equally be an article in a scientific or technical journal.  If the information is available to the public then it is already known. 

8.     Phew!  So how often are Patents found to be invalid?

I don't have any statistics but quite often as you can see from looking at previous decisions of the Patents Court or Intellectual Property Enterprise Court.

9,.    Are they the Courts that decide Patent Infringement Cases?

Yes. They are the courts for patent infringement disputes in England and Wales.   

The Intellectual Property Enterprise Court ("IPEC") entertains claims that are worth £500,000 or less that can be tried in no more than 2 days.  Cases are very tightly managed in that court.   The costs that can be recovered by a successful party from the unsuccessful one are limited to £50,000 on the determination of liability and £25,000 for the determination of the damages or other financial remedy that is due to the successful party.

The Patents Court hears all other patent cases.   There are no time limits or limits on recoverable costs in cases before the Patents Court.   The judges of that court do their best to control costs but expert witnesses and specialist counsel and solicitors are expensive.

The Patents Court and IPEC are headquartered in the Rolls Building off Fetter Lane in London.  The judges of both courts have said that they will travel outside London for the convenience of the parties and witnesses or to save costs. To the best of my knowledge and belief, the Patents Court has only once sat in Birmingham.  I think that is also true of IPEC.   

There is a patents court in  Edinburgh which is part of the Outer House of the Court of Session.   The Chancery Division of the High Court of Justice of Northern Ireland hears patent infringement cases in Belfast.

If you have a foreign patent you have to go to the courts of the country for which the patent was granted.  Some countries like Germany, Switzerland and the Netherlands have specialist patent tribunals. Other countries do not.   TahylorWessing has a website called the Patent Map which has lots of useful information about patent litigation throughout Europe.

10.   So how much is that likely to cost me?

A lot of money even in IPEC.   A Patents Court dispute over the use of standard-essential patents can cost many millions of pounds.   That is because there are several technical trials to decide whether each patent is valid, essential to the standard and infringed and then a final trial to decide the terms of licences to use the patents.   If you run a start-up or indeed any other small or medium enterprise I strongly advise you to take out patent litigation insurance. I have written quite a lot about patent insurance in this blog over the years and can commend CIPA's work on the topic.

11.   Further Information

This article barely scratches the surface of a huge topic and I am aware that I have left out lots of crucial information.  If you have a specific enquiry call me on 020 7404 5252 during office hours or send me a message through my contact form. 

02 January 2022

Innovate UK Funding


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The start of a new year is when many new businesses and projects within existing businesses are launched. Such initiatives usually need funding and an important source of funds is Innovate UK.  Innovate UK is part of UK Research and Innovation ("UKRI") which was established by s.91 (1) of the Higher Education and Research Act 2017. Its website states that it "convenes, catalyses and invests in close collaboration with others to build a thriving, inclusive research and innovation system." 

Innovate UK connects businesses to partners, customers and investors that can help them turn ideas into commercially successful products and services and business growth.  Since its establishment, it has invested £2.5 billion in 8,500 organizations which investment is estimated to have created 70,000 jobs and added £18 billion of value to the British economy (see the "About Us" page of the Innovate UK website). A spreadsheet listing all Innovate UK's funded projects and some typical case studies can also be accessed through that site.

A good starting point for anyone seeking funding is Innovate UK's Guidance for Applicants page of UKRI's website.  The General Guidance page contains an overview and provides links to the following information:
The best way to learn about current funding opportunities is to sign up for Innovate UK's newsletter.   This month's edition contains news on the Made smarter innovation: sustainable smart factory, Automotive Transformation Fund expression of interest: round 17Innovate UK smart grants: October 2021NATEP helping SMEs innovate in aerospace and Early ideas to improve the delivery of nucleic acid therapeutics. There is also information on Small Business Research Initiative projects.

Established businesses can access assistance through their trade associations, local chambers of commerce, local enterprise partnerships in England, Business Wales in Wales and similar organizations in Scotland and Northern Ireland.  Individuals who are not yet in business should approach the British Library's Business and Intellectual Property Centre or its national network of local partners.

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

26 September 2021

Essential Reading for Inventors and Entrepreneurs


IP really can make or break a business.  Get it right and you can control entry to your markets or generate substantial amounts of licensing revenue. Get it wrong and you can be ensnared suddenly in complex litigation with draconian remedies and ruinous legal fees. You can try to ignore it but every business in the world has goodwill, some trade secrets, a website with text and photos all of which are likely to be copyright works. 

Problems can be avoided and opportunities seized by spotting them in advance.  By and large, that is what big companies do.  Their executives will have learnt something about IP at business school.   They will have attended conferences or read about IP in business journalists.  They will also be supported by in-house lawyers and patent and trade mark attorneys with ready access to the specialist bar and law firms. But inventors, designers and business owners rarely have the time, expertise or funds for any of that.  

Those who are aware of the problem have often asked me in the past to recommend a manual on IP for startups.  I wrote one on IP enforcement in 2009 but it needs updating and it does not cover non-contentious issues such as patent prosecution, design or trade mark registration or licensing.  But one book that I can recommend is Enterprising Ideas A Guide to Intellectual Property for Startups which was written by Omer Hiziroglu and published this year by the WIPO (World Intellectual Property Organization), the UN agency for intellectual property.

The publication is only 78 pages long and can be downloaded free of charge from the WIPO's website.  It consists of the following chapters:

  • Introduction 
  • Protecting your innovation
  • Distinguishing your product in the market
  • Going international
  • Other strategic ways to exploit IP
  • Managing risks
  • Using IP databases, and
  • IP audit
There are also two annexes.

The Introduction contains an overview of IP.  The IP office for the UK is the Intellectual Property Office in Newport.  We do not have utility models in this country but we do have unregistered design rights which protect the shape or configuration of articles from copying for up to 10 tears from the first marketing of the articles. Our industrial design law is also complicated because we have overlapping protection by copyright and design registration and now a new supplementary unregistered design right. Product designs that are new and have individual character can be registered with the Intellectual Property Office for 5 consecutive terms of 5 years each.   Also in the Introduction is a section on IP generating as opposed to IP consuming startups and a paragraph of technology readiness rating which is "a technique for assessing how close a technology or product is to commercialization".   Scattered throughout the book are case studies, and the one in the Introduction is about the Turkish company. Arçelik A.Ş.

The next chapter discusses patents, trade secrecy and copyright.  The third covers trade mark registration, domain names and design registration.  Going International introduces the Patent Cooperation Agreement, the Madrid Protocol and the Hague Agreement.  There is a discussion about licences and assignments of IP rights and funding, the scientific, technical and marketing information that can be obtained from patent, trade mark and design databases and an overview of IP audits.   The only area that could be improved is on managing risks.   In the UK there are watch services that warn of applications for possibly conflicting IP rights and there is a developing IP insurance market.

Anyone wishing to discuss this article may call me on +44 (0)20 7494 5252 during normal office hours or send me a message through my contact form. 

03 September 2021

The Border Innovation Hub

White Cliffs of Dover
Author Immanuel Giel Licence CC BY-SA 3.0  Source Wikimedia Commons

 











Jane Lambert

In UK Innovation Strategy I discussed ways in which the British government proposed to stimulate innovation so that the UK could join China, the USA, Japan and South Korea as a science and technology superpower by 2039,  Buried away in the text on free ports  on page 78 was this reference to the UK border:

"The innovation activity in Freeports will build on the government’s 2025 UK Border Strategy, published in December 2020, which set out a Technology and Innovation roadmap to drive forward innovation at the UK border."

 The 2025 UK Border Strategy mentioned in that sentence provided for private sector participation "to design, deliver and innovate around the border."

That strategy aims to achieve 6 "transformations:"

  1. "Develop a coordinated user-centric government approach to border design and delivery, which works in partnership with industry and enables border innovation. 
  2. Bring together government’s collection, assurance and use of border data to provide a comprehensive and holistic view of data at the border. 
  3. Establish resilient ‘ports of the future’ at border crossing points to make the experience smoother and more secure for passengers and traders, while better protecting the public and environment. 
  4. Use upstream compliance to move processes away from the actual frontier where appropriate, both for passengers and traders. 
  5. Build the capability of staff and the border industry responsible for delivering border processes, particularly in an environment of greater automation; and simplify communication with border users to improve their experience. 
  6. Shape the future development of borders worldwide, to promote the UK’s interests and facilitate end-to-end trade and travel."

The 4th of those "transformations" is reminiscent of arguments of the Democratic Unionist and the European Research Group politicians against regulatory alignment or the Northern Ireland protocol during the EU withdrawal agreement negotiations on the ground that it ought to be possible to avoid checks and inspections at the geographical frontier between Northern Ireland and the Irish Republic by carrying them out elsewhere with the appropriate technology.

Whether or not the hope of renegotiating the Northern Irish protocol is the motivation for its interest in the topic or merely coincidental, the Cabinet Office published its "Border Innovation Hub" on 31 Aug 2021 together with a Technology and Innovation Roadmap, a list of APIs (Application Programming Interfaces) and guidance on Opportunities and Funding.   The purpose of the Hub is said to bring "together information from across government to help provide industry with the tools needed to innovate at the border."  The overview states that 
"Technology and innovation to unlock new possibilities for smoother and safer border processes is a key element of the new strategy."

Further information about how the government hopes to achieve that objective is set out in the Roadmap.

The Roadmap is taken from the  2025 UK Border Strategy and includes the following:

  • "Create a visible first point of contact in UK Government for border innovation suppliers and users"
  • "Define target use cases with industry.
  • "Set and collate security and interoperability standards," and
  • "Work across government to design the border and support border innovation and its uptake."
The "first point of contact" mentioned above is the "Border Innovation Hub". 

Possible funders for research and development work by industry include the Defence and Security Accelerator, the Connected Places Catapult,  Transport Research and Innovation Grants and Innovate UK.

Any inventions resulting from border innovation would be patentable subject to the provisions of the Defence Contracts Act 1958.  The names of businesses, products and services might be registrable trade marks.  Anything written down would be protected from copying by copyright.  Any commercially sensitive unpublished research could be confidential.   Anyone wishing to discuss those matters should contact me on 020 7404 5252 or send me a message through my contact form.

12 August 2021

UK Innovation Strategy

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In his foreword to Global Britain in a competitive age which I discussed in NIPC Brexit on 19 March 2021, the Prime Minister wrote: "Our aim is to have secured our status as a Science and Tech Superpower by 2030." The Secretary of State for Business referred to that target in his foreword to UK Innovation Strategy Leading the future by creating itIn my article, I wrote:
"As an intellectual property lawyer, I should love to see the UK become a science and technology superpower with vibrant creative industries attracting investment and expertise from around the world.   I just can't see how it is going to happen,"

I read the UK Innovation Strategy very carefully in the hope that it would explain how the UK will become a science and tech superpower in 9 years.

Synopsis

The document is 116 pages long divided as follow:  

  • Secretary of State's Foreword (pages 4-5);
  • "At a glance":  a bulleted list of the steps that the government proposes to take (page 6);
  • "Introduction:  Why do we need an Innovation Strategy?":  a summary of the strategy (pages 7 - 10);
  • Part 1 "Innovation today" covering "What is innovation?", "Why is innovation important?", "The challenge: Innovation created the modern world, but progress is slowing" and "The opportunity: The UK is ideally placed to lead a renewed global spirit of innovation" (pages 11 to 17);
  • Part 2 " Innovation tomorrow" covering "Learning from the pandemic to create the world’s best innovation ecosystem", "Vision 2035: The UK as a global hub for innovation" and "Tracking progress towards our vision" (pages 18 - 21);
  • Part 3: "Achieving Vision 2035" covering "Pillar 1: Unleashing Business – We will fuel businesses who want to innovate", "Pillar 2: People – We will make the UK the most exciting place for innovation talent", "Pillar 3: Institutions & Places – We will ensure our research, development & innovation institutions serve the needs of businesses and places across the UK" and "Pillar 4: Missions & Technologies – We will stimulate innovation to tackle major challenges faced by the UK and the world and drive capability in key technologies! (pages 18 - 100);
  • Part 4: "Achieving our ambitions – implementation and next steps" (pages 101 - 107);
  • Annex A "Innovation institutions" (pages 108 - 113) and
  • Annex B: "List of Stakeholders Consulted" (pages 114 and 115).

Becoming a "Science and Rech Superpower" in Nine Years

The Introduction states on page 8:
"The Prime Minister has announced our intention to be a science superpower by 2030, placing science, innovation and technology at the heart of his vision for the UK. This involves being to science and technology what we are to finance: a central hub of the global economy, and the country that the world’s most innovative people and firms make their home."

Although there are signs that it has lost some business to Amsterdam, Dublin, Frankfurt, Madrid, Milan and Paris as a result of the UK's departure from the European Union, London remains one of the world's leading financial centres rivalled only by New York, Shanghai, Hong Kong and Singapore (see The Global Financial Centres Index 29  Long Finance. March 2021. Retrieved 18 March 2021).

A good measure of scientific and technical activity is the number of patent applications sought in a year.  According to the World Intellectual Property Indicators for 2019 published by the World Intellectual Property Organization, applicants in China applied for more than 1.5 million parents from the world's top 20 patent offices in 2018.  The United States came second with 597,141. Japan followed with 313,567 and South Korea came fourth with 209,992.  Companies from those countries. Huawei, Mitsubishi, Samsung, Qualcomm and Oppo, were among the top 5 applicants.  China, the USA, Japan and South Korea can fairly be regarded as scientific and technical superpowers.   If the UK is to be in science and technology what it is in finance it should aspire to create a similar number of patentable inventions by 2030.

With 29,941 patent applications in the world's top 20 parent offices, the UK lay number 13th.  It was ahead of Mexico but behind Taiwan, Germany, India, Russia, Canada, Australia and Brazil.   If the UK is to leapfrog over all those countries to join the USA, China, Japan and South Korea as a scientific and technical superpower it has a lot of work to do.

The government acknowledges the magnitude of that task on page 18 in the section headed "The opportunity: The UK is ideally placed to lead a renewed global spirit of innovation":

  • "Business investment in R&D has fallen relative to our international peers. 
  • There are low rates of technology adoption by firms that lead to underutilised knowledge. 
  • We are at risk of a ‘brain drain’, the UK being a net exporter of talent. 
  • Our workforce has skills gaps in some key areas which are at risk of growing in the coming years. 
  • Our regulatory system often favours incumbent businesses over innovative new ones. 
  • Growth is increasingly due to consumption, not due to investment. 
  • Data, research and IP must be safeguarded to maintain competitiveness."

 Learning from the Pandemic

Part 2 of the UK Innovation Strategy points to the development of the Oxford/Astra-Zenica vaccine and other medical technologies in response to the pandemic as examples of British scientific and technical prowess and indicators of the way forward to superpower status. The speed with which the Oxford/Astra-Zenica vaccine had been developed and deployed was indeed a substantial achievement despite criticism of its effectiveness and side effects and the delay in obtaining regulatory approval in the USA.   However, similar success has been achieved elsewhere.  China has developed 7 vaccines that have achieved regulatory approval.  Russia has developed another 4.  The USA another 3 although the Pfizer–BioNTech and Janssen or Johnson & Johnson were developed in collaboration with German and Dutch scientists.  Two vaccines have also been developed by Cuba.  Others have been developed by India, Iran, Kazakhstan and Taiwan,

The Four Pillars

On page 21, the UK Industrial Strategy states that the government has four objectives it refers to as ‘Pillars’ in the document:
  • "Pillar 1: Unleashing business – We will fuel businesses who want to innovate. 
  • Pillar 2: People – We will make the UK the most exciting place for innovation talent. 
  • Pillar 3: Institutions & Places – We will ensure our research, development & innovation institutions serve the needs of businesses and places across the UK. 
  • Pillar 4: Missions & Technologies – We will stimulate innovation to tackle major challenges faced by the UK and the world and drive capability in key technologies."

These are amplified in  "At a glance" on page 6:

"Pillar 1: Unleashing Business – We will fuel businesses who want to innovate.

  • Increase annual public investment on R&D to a record £22 billion. 
  • Reduce complexity for innovative companies by developing an online finance and innovation hub between Innovate UK and the British Business Bank. 
  • Invest £200 million through the British Business Bank’s Life Sciences Investment Programme to target the growth-stage funding gap faced by UK life science companies. 
  • Consult on how regulation can ensure that the UK is well-placed to extract the best value from innovation. 
  • Form a new Business Innovation Forum to drive implementation of this Strategy.
  •  Pillar 2: People – We will make the UK the most exciting place for innovation talent. 

  • Introduce new High Potential Individual and Scale-up visa routes, and revitalise the Innovator route to attract and retain high-skilled, globally mobile innovation talent. 
  • Support, through Help to Grow: Management, 30,000 senior managers of small and medium-sized firms to boost their business’ performance, resilience, and growth. 
Pillar 3: Institutions & Places – We will ensure our research, development and innovation institutions serve the needs of businesses and places across the UK.  
  • Undertake an independent review, led by Nobel Laureate Professor Sir Paul Nurse, Director of the Francis Crick Institute, looking across the landscape of UK organisations undertaking all forms of research, development and innovation. 
  • Allocate £127 million through the Strength in Places Fund to develop R&D capacity and support local growth across the UK. 
  • Invest £25 million of funding to the Connecting Capability Fund to help drive economic growth through university-business innovation. 
Pillar 4: Missions & Technologies – We will stimulate innovation to tackle major challenges faced by the UK and the world and drive capability in key technologies.  
  • Establish a new Innovation Missions programme to tackle some of the most significant issues confronting the UK and the world in the coming years. 
  • Identify the key seven technology families that will transform our economy in the future.
  • Launch new Prosperity Partnerships to establish business-led research projects to develop transformational new technologies, with £59 million of industry, university and government investment."

Those  "pillars" are addressed in more detail in Part 3 and repeated for good measure in Part IV. 

Intellectual Property

One of the reasons why there are relatively few patent applications from businesses in the UK is the high cost of prosecution and enforcement.  

In 2004 the European Patent Office commissioned Roland Berger Market Research to compare the cost of patenting an invention in the UK and 5 other countries with the cost of patenting it in the USA and Japan (see my article Cost of Patents: EPO Report tells us what most of us already knew 23 Dec 2005).   In its Study on the Cost of Patenting Roland Berger reported that the cost of patenting an invention consisting of 10 claims on 3 pages, 11 pages of description designating 6 countries including the UK would be €30,530.  The cost of patenting the same invention would be €24,100 in the USA and €5,460 in Japan.  The cost of patenting in Europe may have fallen as a result of the Agreement on the application of Article 65 of the Convention on the Grant of European Patents in London (OJ EPO p 560 12 Feb 2001) but it is still believed to be higher than in the USA and Japan.

According to TaylorWessing's Patent Map. the typical costs of an infringement claim are between £200,000 and £1 million in England, €200,000 - €800,000 in France, €100,000 - €200,000 on infringement and a similar amount on validity in Germany, €75,000 - €200,000 in the Netherlands and  €2,530 - €375,000 in Switzerland.   The costs of litigation in the USA will be at least as much as in England because it is also a common law country but it is unusual for lawyers' fees to be awarded against the unsuccessful party.  It is arguable that England is the most expensive and possibly the riskiest jurisdiction in the world in which to enforce an intellectual property right.

Governments of both parties have been aware of this problem for at least the last 20 years (see DTI Innovation Report Competing in The Global Economy: The Innovation Challenge 1 Dec 2003).  They have also been aware of the solution which was an EU patent to be enforced by an EU patent court.  It is for that reason that the UK ratified the Community Patent Convention in 1975. It supported proposals for a Litigation Protocol to the European Patent Convention, a regulation for an EU patent and later the agreement for a unitary patent.  Even after the 2016 referendum, the government believed it would be possible to remain party to the agreement.  Mr Boris Johnspn in his capacity as Foreign Secretary actually deposited the UK's instrument of ratification on 26 April 2018.   Sadly, Amanda Solway MP gave notice of British withdrawal from the Unified Patent Court Agreement just over a year ago (see UK Withdrawal from the UPCA 20 July 2020).

As I argued in Has the Volte-Face on the Unified Patent Court Agreement been worth it? in NIPC Brexit on 6 April 2021 and in other articles, the sudden reversal by Amanda Solway of a longstanding policy on a unitary patent did British industry and science no favours.  It has perpetuated the disincentive to patent in this country.   Without adequate legal protection for innovation, investment in research and development can be expected to diminish.

The government might have been expected to respond that withdrawal from the Unified Patent Court Agreement was a necessary consequence of Brexit and that losses resulting from withdrawing from Europe will be more than offset by new opportunities elsewhere.  I looked carefully to see whether that was the case but I found nothing in the UK Innovation Strategy to suggest that it was.  Though the Intellectual Property Office published a press release on 29 July 2021 promising that IP was at the heart of the new innovation strategy, there is very mention of IP at all.  The word "patent" occurs twice in the document's 116 pages and there are a few paragraphs under the heading "Safeguarding Intellectual Property" on pages 39 and 40.  There is nothing in those paragraphs on reducing the cost of patenting or the cost of enforcing intellectual property rights.

I am not the only commentator to spot that lacuna.   Graeme Moore wrote in his comment New Innovation Strategy for the UK for The Patent Lawyer Magazine:

"However, there is a major factor that the UK government’s announcement fails to address satisfactorily – how to better protect the innovations developed in the UK from being copied and exploited by other companies who have not invested in the innovations? This should be at the forefront of the UK government’s mind when committing to spend UK taxpayers’ money on R&D – it’s a key part of ensuring a return on investment."

Conclusion

There are announcements to be welcomed in the Strategy such as the spending promises in Piller 1 and the "new High Potential Individual and Scale-up visa routes" in Pillar 2.  But the idea that British companies will be competing with the likes of Huawei, Mitsubishi and Samsung in such fields as artificial intelligence,  mobile telecoms, consumer electronics or any other new technology is as fanciful as the garden bridge, an airport in the Thames estuary and a bridge to Northern Ireland.  

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

16 July 2021

US Patent and Trademark Office Webinar - Invention-Con 2021: Capitalizing on your intellectual property

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One of the few good things to have resulted from this pandemic is the live streaming of events that would previously have been limited to the venue where they took place. One of those events is the United States Patent and Trademark Office's webinar Invention-Con 2021: Capitalizing on your intellectual property which will take place between 18-20 Aug 2021.  It is billed as an event for inventors, makers and entrepreneurs. There is nothing quite like it in this country or as far as I can see anywhere else in the world.

According to the event web page presentations and workshops will cover:
  • "Putting your creativity to work
  • How IP applies in various fields, such as artificial intelligence, robotics, fashion, music, and literature
  • Types of IP protection: patents, trademarks, and copyrights
  • Marketing, manufacturing, and building a competitive advantage around your ideas
  • Fun, free educational resources for kids and teens
  • Innovation and the fight against COVID-19
  • And much more"
There are also special events for children and young people, They will include a session with Gitanjali Rao who was named "Kid of the Year" by Time Magazine and several other promising young inventors. Registration Is through Eventbrite. There does not appear to be a charge and it seems to be open to everyone everywhere in the world.

Although American intellectual property law does differ from our own in a number of important respects the basic principles are the same. The USA is this country's biggest trading partner and its importance is likely to increase if HM Government ever concludes a bilateral trade treaty with it. Businesses that wish to trade or invest in the USA will need to be aware of US intellectual property law and should protect their own intellectual assets by taking out utility, design and plant patents (equivalent to patents, registered designs and plant breeders; rights in the UK) and trade marks in the USA,   

Businesses wishing to apply for patents and trade marks in the USA can ask their British patent or trade mark attorneys to appoint an American agent or they can approach an American one directly.   For those wishing to instruct an American attorney, I can recommend Antoinette M Tease who runs a specialist IP practice in Montana.   I have worked with her on a number of occasions over many years and I have received only good reports of her from my clients.

The USPTO offers a large number of other events some of which would be useful to UK businesses.  Restaurateurs might be interested in Don’t burn your brand: intellectual property for restaurants which takes place this Monday 19 July, Trademark Basics Boot Camp, Module 7: Keeping your registration alive on the following Tuesday, and so on. The USPTO's events page is here.

Anyone wishing to discuss this topic can call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page.

22 June 2021

EPO launches a Competition for Young Inventors

European Patent Office in Munich
Author Karlis Dambrāns Licence CC BY 2.0 Source Wikimedia Commons

 


















Following the success of its European Inventor Award, the European Patent Office has announced a competition for a Young Inventors Prize,  Starting from 2022 the EPO will award cash prizes of €20,000, €10,000 and €5,000 for the top 3 inventions by inventors or teams of inventors aged 30 or less,  Entries are invited from every country or territory in the world.  They may consist of an idea, project or product in any area of technology so long as it is properly documented which addresses a problem within the framework of the United Nations Sustainable Development Goals.

Entries must be submitted on the EPO's application form before 1 Oct 2021.  They will be screened by a multi-disciplinary panel of experts who will send the most promising entries to an international jury chaired by Dr Helen Lee,  According to the EPO website:

"The jury will consider the following hierarchy when evaluating the supportive documentation submitted with the nominated initiatives (listed in order of descending importance) ...."

Hierarchy pyramid

The prizes will be presented at a special award ceremony in June 2022.

The winners of this year's European Inventors Award were Per Gisle Djupesland of Norway for a better nasal drug delivery device, Robert N Grass of Austria and Wendelin Stark of Switzerland for DNA-based data storage, Sunita Mitra of India and the USA for restoring smiles with nanomaterials, Henrik Lindström and Giovanni Fili of Sweden for flexible solar cells for portable devices, Karl Leo of Germany for advances in organic semiconductors and Gordana Vunjak-Novakovic of Serbia and the USA for advances in tissue engineering.  I congratulate each and every one of those inventors and wish them continued success in the future.

Anyone wishing to discuss this article or inventions and patents generally may call me on +44 (0)20 7404 5252 during British office hours or send me a message through my contact form at other times.