NIPC Clinics go nationwide

Ever since February 2005 Jane Lambert has provided 30 minutes of her time to up to 4 members of the public on the last day of every month absolutely fee of charge. She calls these advice sessions "clinics" and you can get some idea of what goes on at these sessions from the clinics website at www.nipc-clinics.co.uk  or from her post "Tales of the Patent Clinic" on the IP Yorkshire blog.  These clinics have proved very popular and Jane has responded to requests to open others elsewhere.   She now has 8 of them in Barnsley, Bradford, Halifax, Huddersfield, Leeds, Rotherham and York in Yorkshire and another at Bromborough in the Wirral.

That is as much as any one woman can manage and we have reluctantly had to turn down requests to extend that network until now.   However, from 1 October NIPC clinics will go nationwide.   Inventors or business people can fill in a form online or call one number which will enable us to identify the problem and identify who is best suited to help resolve it.   We will then arrange for the client to meet a local professional well suited to assist him who may be a barrister, solicitor, patent attorney, trade mark attorney or a member of some other profession. The professional will give the client up to 30 minutes of his or her time absolutely free.

All the professionals in Yorkshire and the North-West who have participated in our programme have picked up work through the clinic.   We are therefore about to recruit solicitors, patent and trade mark attorneys, accountants, business and other advisors throughout the country to assist us.  

Rocky Mountains Inventors' Association

One of the delights of travelling through the New World is finding little bits of home beyond home. For example, when I was a graduate student at UCLA in the early 1970s there was "Ye Mucky Duck" and "The Brigadoon" whenever I felt homesick. Near Boone, North Carolina there was a village called Tynecastle where they actually held highland games.   In Victoria, British Columbia they play cricket and replicate Anne Hathaway's cottage - complete with her husband's second best bed. In Trelew, Argentina there's a "Canolfan Dewi Sant" right in the town centre.

And if any of our us from the land of Newton, Brunel, Darby, Crick, Stephenson. Farraday, Jenner, Whittle, Babbage, Turing, Berners-Lee, Swan, Watt, Trevithick, Dunlop, Shaw, Logie Baird and Cockerell ever stray into Colorado we'll find like minded souls at the Rocky Mountain Inventors Association.  The mission of the Association is almost identical to that of the clubs in Leeds, Liverpool and Sheffield:

"The mission of The Rocky Mountain Inventors Association (RMIA) is to promote successful product commercialization and protection by offering information, education, and guidance including business contacts and networking opportunities."

Like us it has inventor and service provider members.   I learned about the Association from one of those service providers, Kevin Houchin, since we follow each other on "twitter.".

The activities of the Colorado inventors are remarkably like those of the Northern Clubs.   They have regular talks by folk like Kevin. Yesterday, for example, he was talking about trade marks and domain names which gives me an idea for what to do in Sheffield on Monday.   Maybe we can make use of the Internet to link together with Kevin telling us about protecting and promoting innovation in America and maybe some of us telling our American colleagues about what happens here.

Investing wisely in IP - my 6-Point Plan for any Business

A patent, copyright, trade mark, registered design or other IP right is nothing more than a right to bring a law suit. Its purpose is to protect the income generated by an intellectual asset, that is to say, a brand, design, technology or creative work.   Such protection does not come cheap.   According to research commissioned by the EPO, it costs €32,000 to obtain a typical European patent and maintain it for 10 years.   That is an awful lot of money to spend considering that most patents are never worked.   Enforcement is even more expensive. IPAC (HM government’s high level advisory committee on intellectual property) estimates that a patent infringement action costs £1 million in the High Court.  That explains why I have seen far more businesses fail from having too much IP than from having too little in my 32 years at the English bar.  

Yet there are circumstances in which a business needs to protect its investment in branding, design, technology or creative works. How does a businessman or woman recognize such circumstances and how does he or she choose the optimum legal protection.   Here is a simple 6-point plan that can apply to just about any business.

1.   Choose a period in which you expect your business to develop.   This can be any period of your choosing which will probably depend on the nature of your business and products and services.   For a company in the fashion or novelties business this could be a matter of months or even weeks.   For a pharmaceutical company it could be decades.

2.   Identify the main income streams that you expect to develop in that period.   IP is intended to protect income streams,   If your invention is never going to earn money whether directly or indirectkly through sale or licensing why waste thousands of pounds on patenting it?  Similarly, if you have no sales in country X and are never likely to have any why seek intellectual property proteciton there? You may want tpo protect yourself in country X it it has a sufficient industrial base to allow a competitor to set up there but, if not, why bother?       

3.   Consider potential threats to each of those income streams.   Competition from competing products or services may be one but there may be others such as changing patterns of demand or the general economic situation.

4.   List possible counter-measures to those threats.   Most of these will be commercial rather than legal such as cutting your prices or developing new products or services but for some threats such as plagiarism you may actually need some legal protection such as a patent or design registration.

5.   If any of those counter-measurers is an IP right, choose the most appropriate one for your business.   There is usually a choice. For instance, one way of protecting a new product or process is simply to keep it under wraps and seek to rely on the law of confidence to prevent unauthorized use or disclosure. The other is to proclaim it to the world in exchange for a temporary monopoly of the manufacture, sale and use of the product or use of the process (otherwise known as a “patent”). Where the technology has only a short shelf-life, a 20-year monopoly is otiose.   On the other hand, if you are a drug company which has invested millions in R & D in a new product and waited years for approval from drug licensing authorities you need patent protection in every country of the world of you are to see an adequate return on your investment.

6.   Ensure that there is adequate funding for enforcement proceedings.    Unless you can afford hundreds of thousands of pounds on litigation and can risk at least as much again if you lose your case with equanimity you should think of IP insurance.   Though these articles need to be updated you can start with two articles that I wrote in September 2005: “IP Insurance. Does it Work” (IP/IT Update) and “IP Insurance” (NIPC Inventors Club).

These and other tips are all set out in my presentation to Leeds Inventors Club “So you think you want a Patent?” which I gave on 18 April 2008.   I also discuss them in my book “Enforcing Intellectual property Rights” which appeared earlier this month. 

Sheffield Inventors Club, 2 March 2009, 18:00

Just a reminder of the meeting of the Sheffield Inventors' Club on Monday 2 March at 18:00..   

Prof Ron Jones will give the talk on how to bring your invention to market that he was prevented form giving last month by the  weather.   

The meeting will take place at Central Library, Surrey Street, Sheffield as usual.

IP Strategy: IP Asset Maximizer Blog

Over the 30 plus years that I have been at the English Bar I have seen far more businesses ruined by acquiring too much IP than too little.  That is particularly true of private inventors who apply for the most extensive patent, design and trade mark protection around the world long before they know whether they will ever sell a single product.

I have no reason to believe that patent agents act from anything but the purest motives and professionalism when they advise their clients of the narrow geographical extent of a British patent and "the inconvenient truth" (to quote a former US Veep) that the invention is made available to everyone in the world including persons skilled in the art way beyond the boundaries of the country for which the patent is granted.  When asked what can be done in say France to prevent then infringement of a British patent the answer is of course nothing.   The remedy is to get a grant for France, and then the rest of the industrial world until the client has spent his entire life savings.

And what does the client have to show for all that expense? Unless he has an income stream to protect and the wherewithal to protect it, NOT A LOT.   Inventors have to be reminded that it costs €30,500 to maintain a typical European patent in 5 countries for 10 years and that most inventions are never worked.   For them the Office fees, patent attorneys' charges, their disbursements and other expenses is MONEY DROWN THE DRAIN.

When I tell my inventors that at my IP Clinics or inventors' clubs they refuse to believe it because that is contrary to what they are told by patent agents, Business Link and each other.   Imagine my delight, then, at encountering a blog that is devoted to IP strategy.   Jackie Hutter's blog IP Asset Management  is exactly that.   Packed to gunnels with good articles it is.   Here are some examples:

• A Consumer Product Company's Costly Patent Lesson: It's Not Enough to Protect the Invention, the Innovation Must Also be Patented
  
• Chief IP Counsel: Stop Trying to Change How Your Lawyers Bill You and Focus on the Model They Use to Provide Your Legal Services
  
• What is an IP Strategist? A Lawyer Who is Not Afraid to Say No.
  

Ms Hutter, who lives in Decatur, Georgia in the USA appears to know what she is talking about. She has 13 years experience in advising companies, investors and universities on how to maximize intangible asset value by developing and executing on IP and patent strategy.   

The URL of this lady's blog is at http://www.ipassetmaximizer.com/ and one can follow her on twitter at http://twitter.com/IPStrategist if one does not have anything better to do than look out for banalities (though never from Ms Hutter) in 140 letters or less.   Talking of twitter, my thanks to @jefflindsay for bringing this blog to my attention.

The Downturn may be the Best Time to commercialize your Invention

Since October I have been making the rounds of the Northern inventors' clubs with my presentation, "The Coming Economic Downturn: How it will affect Inventors and what they can do". My message is necessarily gloomy but I try to finish on a high note that an economic downturn is often the best time to start a business. There are a number of reasons for this. Costs are low. Governments tend to prime pumps. At a time when most businesses are shedding labour rather than recruiting most entrepreneurs have much less to lose.

That message is usually received scepticlly so I was heartened considerably by Sanjiv Buttoo's feature on the BBC website "Business brains urged to take the plunge". The article features an interview with Ajaz Ahmed who started Freeserve in 1998. When the service was launched, most homes in the UK connected to the Internet through an 0845 number for which they were charge local calls on top of an annual or monthly subscription to their Internet service provider. The idea behind Freeserve was to take a share of the charge for the telephone call rather than charge a subscription. This simply proposition proved extremely popular with the result that Freeserve became the biggest ISP in Britain. Its growth attracted the attention of the French giant Wanadoo which is a subsidiary of the French national telephone company.   Freeserve merged with Wanadoo giving Ajaz  a very substantial share of the merged company.

The reason I happen to know all this is that Ajaz is a local lad and he is involved with a number of institutions with which I am also interested.   There include the Media Centre where our chambers are based and the University with which we have worked. The article begins with the words:

"Budding entrepreneurs should take advantage of the current economic downturn and take the plunge, a self-made millionaire from West Yorkshire is urging."

"Exactly the message I have been putting about in my presentation," I thought to myself. "If the inventors won't take it from me maybe they will take it from someone who has actually made his fortune and at a fairly young age."  

The articles continues with the following admonition from Ajaz that despite the downturn in the economy, now is the time make money

"You can negotiate a good deal on renting a shop or unit, hiring staff, advertising or even buying cheaper raw materials 

Now is the time to start up with minimal costs, but you need to have that idea or you're wasting your time."

Exactly! The article continued with some examples of people in and around Huddersfield who were actually doing this. Mohammed Ramzan who is also in the Media Centre and even more impressively a couple of schoolboys from Elland who seem to making serious money from publishing their own magazine.

If any reader wants to take not my advice but Amjad's he or she will get a lot of help. Not just from me but from the patent and trade mark agents, solicitors, accountants, marketers, product designers and other experts on my IP Yorkshire panel if they happen to live in Yorkshire.   You can access their expertise in many ways, through the Leeds and Sheffield inventors clubs and the clinics in Barrnsley, Bradford, Halifax, Huddersfield, Leeds and Rotherham. 

If you don't live in Yorkshire, don't worry. I am setting up similar networks in other regions starting with the North West so we shall soon be able to help you wherever you live. Ajaz emailed me yesterday when I said I liked his sentiments: 

"in all this doom and gloom there are opportunities for the brave one, lets hope we see success stories emerging from this sad period."

Let's make sure that happens.

A Very Sad Tale Indeed: Forrester Ketley & Co v Brent

In Forrester Ketley & Co v Brent [2008] EWHC 3150 (Ch) (19 Dec 2008) Mr. Justice Morgan had to deal with no less than 53 applications for permission to litigate in all sorts of matters including petitions for his bankruptcy and charging orders over his home. 

The reason the applicant needed permission to litigate is that he had been subject to a series of civil restraint orders that required him to apply for permission to the court before going to law. Those orders had been imposed because he had attempted in previous proceedings to join the Crown, the Department for Constitutional Affairs (as the Ministry of Justice was then called), the Lord Chancellor, various judges, and the entire partnership of his opponent's solicitors and had embarked on satellite litigation seeking criminal sanctions against the High Court, the Court of Appeal, various members of the Court of Appeal, and the Health and Safety Executive. He had also tried to sue the UK government, the other side's solicitors and PAMIA in the European Court of Human Rights. All this derived from a claim in 1994 for fees of £4,400 by a firm of patent attorneys and a counterclaim of £5,000 for alleged overpayment and negligence which spawned 100 pages of pleadings by the time it was struck out by the Patents Court in 2003.

This exceedingly sad case would seem incredible to most folk but it is sadly believable to anyone who has ever worked with private inventors. The brilliance of the bright idea and the lure of riches beyond the dreams of Croesus beguile to the extent that some become obsessed with their invention and a few even unhinged. Charles Dickens knew of this tendency and wrote about it in his novels and short stories.  The conditions seems to begin with unfounded optimism: "I've checked round B & Q and can find nothing like it on their shelves" or "sales of trundle humpers amounted to umpteen billion pounds last year and I only have to sell 1% to make so many millions."

In the first few pages of "A Better Mousetrap, The Business of Invention"  Peter Bissell and Graham Barker warn that the vast majority of patents are never worked, that most of those that are do little more than cover their costs and only a tiny percentage of the rest ever make serious money.