Applying for Patent Protection through the Patent Co-operation Treaty without a Patent Attorney

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Today the Intellectual Property Office has published a 32-page guide entitled Patent Co-operation Treaty for Private Applicants. A private applicant is someone who wants to apply for a patent without using a patent attorney (also known as "a patent agent").

On the third page of the booklet the following warning appears in capital letters:

"THE PCT SYSTEM IS COMPLEX. YOU ARE STRONGLY ADVISED TO SEEK THE HELP OF A CHARTERED PATENT AGENT."

I endorse that warning. It is not too difficult for a reasonably intelligent and well-educated  business owner to register a design or even a trade mark but obtaining patent prevention is a completely different ball game.

A patent is a monopoly of an invention which is granted only if the invention is new, not obvious, useful and falls outside a number of statutory exceptions and a document known as "the specification" discloses the invention with sufficient clarity and detail for the invention to be made or worked by anyone with the right skills or experience. Drawing up the specification is not easy. If it is too wide it may be invalid and if it is too narrow competitors can often make use of the concept without infringing the patent.  It takes several years of book learning and on the job experience for a graduate in a natural science, engineering or technology to learn how to draft such specifications. If you haven't had that training your chances of getting it right are not good.

Nevertheless, there are folk who have a go at drafting their own patent applications and for them the IPO has published a series of guides starting with Before you apply for a patent and continuing with Patents Step By Step and Patenting your Invention.

Now the IPO can only grant you a patent for the UK which is about as useful as a chocolate fireguard if you want to make or sell your invention anywhere else. There is no such thing as a world patent or even a European Union patent though our government did sign an agreement for a unitary patent which would have covered the territories of most European Union countries including the UK but Brexit has probably put paid to that (see  IP and Brexit: Private Inventors 5 July 2016), If you want patent protection for your invention outside the United Kingdom you have to rely on an international agreement known as the Paris Convention for the Protection of Industrial Property which gives you one year in which to apply for patents everywhere else.

Now it is at this point that I advise you to watch and listen to the above video in which Matthias Reischle outlines your options. Basically, you can apply to the patent office of each country or group of countries in which you require protection or you can apply simultaneously to the patent offices of most countries of the world under another international agreement known as the Patent Cooperation Treaty ("PCT"). It is for applications under the PCT that the IPO has prepared its guide. However, before reading that guide I strongly advise you to work your way through all the videos produced by the World Intellectual Property Organization ("the WIPO"), the UN Agency for Intellectual Property. entitled How to file your International Application.

I would add that it is worth your while to read these materials even if you do intend to instruct a patent attorney because IP is crucial to your business. It is much too important for you to leave to lawyers and patent attorneys. If you want to learn more about this topic or patenting generally, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

What we can learn from Robert Fischell

I came across Robert Fischell for the first time this morning when I read Kate Torgovnick May's article How to solve problems, from an inventor with 200+ patents 1 Sept 2016.

I have embedded the video of Mr Fischell's TED talk so that readers can appreciate his credentials but the purpose of this article is to get inventors to read May's article because it contains the following useful tips:

• Take your know-how into new arenas;
• Listen to people and let your mind go wild;
• When something works, look at how it might apply elsewhere, too; 
• Don’t be afraid to think big. Really big;
• Think about those who come behind you; and
Innovate for people, not profit.

As a lawyer it is Fischell's last point that I find particularly interesting:

“A lot of people think the purpose of a patent is to make the inventor wealthy, but that’s not why the US created the patent system,” he says. “The purpose of the patent system, as I see it, is to reveal trade secrets so that commerce and technology advance."

That is spot on. As I say in Patents FAQ:

"A patent represents a bargain between a state and an inventor. The state grants the monopoly in exchange for the inventor's teaching those with the necessary skills and knowledge ("persons skilled in the art" or "skilled addresses") how to make or use the invention."

The monopoly is the incentive to the inventor to disclose his or her invention to the public but the purpose of the patent system is to disseminate technology.

Patent or No Patent

Jane Lambert

In IP's not just for Big Brands and High Tech Businesses 27 Aug 2016 NIPC News I wrote:

"In my career at the Bar I have known far more businesses that have failed from having too much IP than too little. Some of those failures had been caused by patents that cost many thousands of pounds to obtain but could never be worked. Others by disputes that were abandoned because the rights owner (who in many cases had a strong claim) simply ran out of money."

I appreciate that observation probably goes against everything that you have been told by your accountant, bank manager, business adviser, your patent agent and your peers but that does not make it any less true. You take a risk and commit yourself to considerable expense which you may never recover whenever you apply for a patent. So think long and hard before you take that step.

What are the Risks and Costs of Patenting?

In order to get a patent for an invention 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" (see s.14 (3) of the Patents Act 1977).  If you don;t do that, the Intellectual Property Office or a judge may take that patent away from you under s.72 (1) (c) of that same Act.  So the first risk is that you tell the world, including potential competitors in countries where you do not seek patent protection, how to make or use your invention. If your invention is any good that is precisely what they will do, The only thing stopping them is whatever patent protection you may be granted around the world and your ability to enforce that protection through civil proceedings in the English and other courts.

Before you apply for a patent you can rely on the law of confidence to prevent anyone to whom you may disclose the invention in confidence, such as angels, consultants, contractors, designers, manufacturers and others, from making use of the invention or disclosing it to third parties for so long as the invention is secret (see Trade Secrets FAQ  24 Aug 2016 NIPC News). You lose that protection as soon as your application is published because your invention becomes public knowledge.  Losing the protection of the law of confidence is the second risk that you run. Moreover, it could be argued that you disclaim all other IP rights, such as unregistered design rights,  when you apply for a patent because you dedicate your invention to the public. The would be another risk.

There is no guarantee that you will get a patent and if, you do get one, there is always the risk that it may be taken away if it is found that the invention had already been invented, that it was obvious in the light if previous inventions or some other reason.  If the IPO decides not to grant you a patent or the IPO or a court decides to take it away all the money that you will have spent on searches. professional fees, payments to the IPO or other patent offices and so on goes down the plughole. That is yet another risk.

Now for the costs.

A patent attorney will charge you several thousand pounds for preparing a patent application just for the IPO or European Patent Office ("EPO").  If you want to apply for patent protection in other countries it will cost you many times more.   Although it is not compulsory to instruct a patent attorney you are strongly advised to do so. Attorneys are trained to draft specifications in such a way as to claim a sufficient monopoly to make the invention commercially viable but not so broad as to render it invalid.  That's a great skill to have and that is why attorneys need good natural science, engineering or technology degrees to do their job as well as years of legal training.  It is possible for a reasonably intelligent and well educated lay person to apply for his or her own design registration or even a trade mark successfully but it us very rare indeed for a lay person to draft a satisfactory patent application.

If you are short of money it is very tempting to apply for a patent for the UK alone and ignore the world outside. The problem with ignoring the rest of the world is that your competitors outside the UK will then be free to make and sell your invention everywhere else and you won't get a bean. You may comfort yourself with the thought that the UK is the 5th or 6th largest economy in the world for time being. That may be true but compared to the USA, China, Japan or indeed the rest of the EU number 6 {or even number 5} is not all that big.  If you are going to confine your monopoly to the UK make sure that there is a sufficient market in this country to make money from your invention.

Your expenditure does not stop on obtaining the grant. Every year for the life of the patent you have to pay renewal fees to the IPO and other patent offices just to keep the patent alive.  In many countries those renewal fees increase during the term. You have to watch out for potential infringements and if the patent is infringed you may have to take legal proceedings to prevent the infringement.  That is the biggest cost and risk of them all because it can cost hundreds of thousands if not millions of pounds to pursue an infringer in a common law country like England or the United States and anything up to 50,000 euro even in civil law countries like France or Germany.

You and your backers need to be pretty sure that your invention is a real money spinner before taking those risks and incurring those costs.

What are the Alternatives to Patenting?

Essentially keeping your invention under wraps and relying on the law of confidence to stop unauthorized use or further disclosure (see Understanding Trade Secrecy and Confidentiality 23 July 2016). That can work very well if your product cannot easily be reverse engineered once it is put on the market which is  the case with beverages like Coca Cola or Chatreuse (see Trade Secrets FAQ 24 Aug 2016). The problem is that most technical secrets can be ascertained by buying a product and taking it apart and analysing it or discovered through parallel research.  In the absence of a patent there is nothing to be done to prevent reverse engineering or parallel research. Indeed, the functioning of a free market depends on it.

In the UK a technical design may be protected from copying for up to 10 years by unregistered design right, an almost uniquely British IP right.  That would include the shape of equipment or the arrangement of its electronic or mechanical components but design right would not protect the technology as such. If a competitor makes a similar product without copying the protected design he is quite free to make and market it in the UK. Moreover, anyone in the world including an infringer is entitled to apply for a licence to reproduce a design as of right for the last 5 years of the design right term.

Design right law is used to protect semiconductor topographies in the UK with a number of amendments that permit citizens of countries outside the EU to apply for protection and give a longer term.

Computer programs are protected from copying for the life of the author plus 70 years by literary copyright and the source code of a program can be a trade secret so long as it is not disclosed.

The advantages of confidentiality, copyright and design rights are that they are all free but they provide only limited protection. However, that may be long enough for a business to establish itself in the market and build up a reputation which would give it a competitive advantage. For many businesses that is all that is required. The big disadvantage is that the protection is much less extensive than the monopoly that only a patent can offer.

So how do I choose between a Patent or No Patent?

Here are my tips.

1. Remember that the purpose of IP is to protect income streams and not to protect clever technology just for the sake of it.  
2. Referring to your business plan try to identify the main income streams for your business over the business planning period.
3. Consider all the possible threats to those income streams. I don't mind betting that a large number of those will be commercial rather than legal such as new products based on different technologies or demand for the product drying up because of changing market conditions.
4. Think about possible counter-measures to those threats. In many cases those counter-measures will be commercial too such as reducing your prices or improving your product. Only in a  few cases will you need a legal remedy,
5. Where you do need a legal remedy consider all the alternatives such as design right and confidentiality. Choose the one that gives you the most cost-effective protection over the business planning period. In some cases that may be a patent but in many other cases it will not.
6. Unless you expect your earnings to grow substantially, take out intellectual property insurance or make other arrangements to fund enforcement litigation.

If you want to discuss this article, call me on 020 7404 5252 during office hours or send me a message through my contact form.

Understanding Trade Secrecy and Confidentiality

Jane Lambert

The right to bring an action to restrain, or recover damages for, the unauthorized disclosure or use of a trade secret is probably the most widely held intellectual property right but it is also one of the least understood. This article attempts to shed some light on the issue.

1. What is a trade secret?

As good a definition as any would be technical or commercial information that is secret or not generally known the unauthorized use or disclosure of which would benefit the person who receives it or harm the person who wants to keep it secret. That could include an algorithm, business plan, chemical formula or customer list.

2. How does one acquire a trade secret?

You can create it by data analysis, design, experiment, market research, R & D or other work or you can license it in from a third party. The important thing is that the information has to have some intrinsic technical or commercial value and it is kept secret.

3.  Do I need a confidentiality or non-disclosure agreement?

Not necessarily. The right to sue to restrain, or recover damages for, unauthorized use or disclosure arises from a set of judge made rules that imposes a duty upon a person who receives a trade secret in confidence not to use or disclose the information without the owner's consent or other lawful excuse. Sometimes it is obvious that information has been disclosed in confidence. Other times you have to put the recipient of the information on notice. That is done by getting him or her to sign a confidentiality or non-disclosure agreement.

4.  Give me an example of when a duty of confidence is obvious

When you seek legal advice from a lawyer or a patent agent is one example. Our professional codes of conduct impose an automatic duty of confidence which can be enforced by our regulators as well as the courts. Another example is where you spot on envelope marked "TOP SECRET" or "PRIVATE AND CONFIDENTIAL" on a bus or train. You should contact the owner or authorities and hand it in to them immediately.

5. Where can I find a reliable all purpose confidentiality agreement?

Such an agreement does not really exist because the obligation not to use or disclose varies according to the circumstances. The Intellectual Property Office gives some useful guidance in Non-Disclosure Agreements and it offers examples of a one-way and mutual non-disclosure agreements but these are just examples and cannot be used in every single case.

6.  What do you suggest?

if you ever have to enforce a confidentiality or non-disclosure agreement in court you have to:

• identify the information precisely as well as the date, time, place and circumstances in which it was given;
• prove that it was communicated expressly in confidence or in circumstances giving rise to an obligation of confidence;
• persuade a judge that it has technical or commercial value in that its unauthorized use or disclosure would benefit the person receiving it or harm you;
• satisfy the judge that it has been kept secret at all times; and
• explain the purpose of the disclosure, state who us entitled to see it and for what purpose and when documents containing the information are to be returned.

The best way to do that is to set it out in an acknowledgement and undertaking by the recipient of the information  and I have prepared a form for that purpose (see Confidentiality Agreement 21 Sept 2010 JD Supra). Particulars of the agreement should be entered into a ledger and strictly monitored.

7.  What happens if the recipient breaches his or her promise?

You contact them immediately, remind them courteously of the terms of their undertaking and ask them to comply with their promises immediately.  If they won't do that immediately then you must take legal advce immediately because you may have to apply to a judge of the Chancery Division for an interim injunction to restrain the disclosure. If you are advised to make such an application you must not hesitate. Once information enters the public domain it ceases to be confidential. A delay of a few days - sometimes of a few hours - can be critical.
NB Don't bring an interim injunction application in the IPEC small claims track as the judge has no jurisdiction to give such relief. You can always transfer your case to IPEC or some other court after you have made your your application.

8.   Are there any get-outs to the duty not to use or disclose?

Loads. Let me give you just a few examples.  As I said above, information ceased to be confidential once it reaches the public domain so long as that is not the fault of the recipient of the information. If the trade secret is a formula or mechanism it is quite lawful to buy a product made to the formula or embodying other technical information to find out how it is made or how it works once it has been placed on the market. You may discover the information yourself by independent, parallel research. You can't rely on the obligation of confidence to break the law or do anything that is regarded as improper.

9.   Say Something about the Trade Secrets Directive

The Council and European Parliament adopted Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (OJ 15.6.2016 L 157/1)  on 8 June 2016 which harmonizes the trade secrets laws of the 28 EU member states. Governments have to implement that directive by the 9 June 2018 which is likely to be before we leave the EU. Although we will cease to be bound by the directive when we leave the EU it will probably be in our interests to transpose it into our law because the directive offers an opportunity to codify our law of trade secrets. I discussed this directive in The Trade Secrets Directive 7 July 2016.

10.   Further Information

If you want to discuss any part of this article call me on 020 7404 5252 during office hours or use my contact form.  Meanwhile, here are some other materials that you may like to read.

Jane Lambert    All You Need to Know About Confidentiality   Leeds Inventors Club 14 June 2006

Jane Lambert    Confidential Information  NIPC Inventors Club, 12 Nov 2005

Intellectual Property Office Guidance Non-Disclosure Agreements 12 March 2015

IP and Brexit: Private Inventors

Jane Lambert

There are two schools of thought on Brexit.  The one that the government, most political parties, much of British business, international institutions and our allies supported is that it will be detrimental to British business. The other, which was supported by a few economists, politicians and business leaders, was that membership of the EU was somehow holding us back and that there will be a blossoming of British enterprise, innovation and creativity once we leave. I was and remain profoundly sceptical of the latter view which is one of many reasons why I voted to remain but I acknowledge that the rosy picture painted by the leave campaign is not entirely outside the realms of possibility. Countries like Israel and South Korea show that it is possible for small nations to survive and prosper outside economic blocs by relying on a propensity to create and innovate and there will probably be opportunities in post-Brexit Britain as well as many downsides.

So what advice should I give the bright research student, small businessman or skilled technician labouring in his or her lab or workshop?   The first is that there is likely to be quite considerable change in the legal, social and economic environment - but not just yet.  The UK remains a member of the European Union until Parliament repeals or amends the European Communities Act 1972 and the two-year notice period for withdrawal from the EU under art 50 (3) of the Treaty on European Union expires. The second is that the nature and extent of many of those changes will be determined by negotiations that have yet to start. Those negotiations are likely to be tough as the Commission and remaining member states have no interest in doing this country any favours. Thirdly, some things will not change. We shall continue to be party to the European Patent Convention, the Patent Co-operation Treaty and many other multilateral treaties. Fourthly, though we may lose preferential access to the European single market we need not stop trading with or investing in it. It consists of several hundred million of the world's most affluent consumers. While we remain in the single market and indeed afterwards we should take every opportunity of consolidating and extending our business relationships . Finally, we should develop new business relationships wherever we can particularly in North America, India, West and Southern Africa, Australasia and the Gulf where English is spoken and the common law is used,

Brexit will have two particularly unfortunate consequences for IP. For the whole of our membership of the EC and EU our government has striven for a Community or EU wide patent. We were one of the few countries to ratify the Community Patent Convention and when that failed to get off the ground we supported other initiatives such as an EU patent regulation, European Patent Litigation Agreement within the European Patent Organization and most recently the unitary patent. Had the UK voted to stay in the EU the unitary patent would have come into effect within 12 months. It would have reduced the cost and complexity of patent litigation and restored legal aid for individuals of modest means which would have included many inventors. It may still come into being and a single patent that covers much of Europe including France and Germany will still be attractive to British business but it will not apply to the UK once we leave the EU. The other unfortunate consequence is that the UK will cease to be covered by EU trade marks and Community designs and our English and Welsh, Scottish and Northern Irish courts will cease to have jurisdiction in disputes over EU trade marks and Community designs.

However, although Brexit has already brought uncertainty and could well bring disruption it need not be the end of the world. In the next few months I shall be publishing a lot of articles on the topic and I am available to talk to local inventors' groups and others. Should anyone wish to discuss this article please call me on 020 7404 5252 or message me through my contact form.

IP Insurance: CIPA's Paper

Lloyd's of London

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Jane Lambert

It will cost you several thousand pounds to get a patent for the UK and considerably more if you require patent protection elsewhere in the world especially outside Europe but unless you can enforce your monopoly in the civil courts you may as well spend the money on a new car or exotic holiday or even down the pub.

The cost of patent litigation has come down considerably in England and Wales (though not in Scotland and Northern Ireland) with the changes to CPR Part 63 in 2010 (see New Patents County Court Rules 31 Oct 2010 NIPC Law) but it is still not cheap. The costs that you may recover from the other side are capped at £50,000 for the trial on liability plus another £25,000 for an account or inquiry but you will probably have to pay at least as much out on your own solicitors and counsel and probably a great deal more. As for litigation in the Patent Court there are no limits though the judges will do their best to keep the parties focused on the issues and avoid unnecessary expense.

So what are your options if you are an inventor or small business owner?

• "Legal aid?" Sorry, chum, that was abolished for business disputes by paragraph 1 (h) of Schedule 2 to the Access to Justice Act 1999 although it may become available for litigation in the Unified Patent Court (see Legal Aid for the UPC 23 Jan 2016), 
• "How about no win, no fee?" No mate!  That may be a perfectly sensible way of funding personal injuries claims against insurance companies but intellectual property litigation isn't like that. For a start liability (whether your patent has been infringed) and the account or inquiry (how much money is due to you) are separate proceedings separated by many months and sometimes years. There's a great deal more uncertainty. Several lawyers have got their fingers burnt (see Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd. 4 May 2013 NIPC Law).
• Litigation funding? Possibly but unlikely. Most funds shy away from IP litigation for the same reason lawyers steer clear of no win no fee retainers in this area of law.
• Legal indemnity insurance? You will find that most policies specifically exclude IP litigation.

No your best bet is IP insurance. Two of my most popular posts in this blog have been IP Insurance 3 Sept 2005 and IP Insurance Five Years On 23 Oct 2010.

More than five years have elapsed since my 2010 update but I have decided not to update it because the Chartered Institute of Patent Attorneys have just done that job for me.  They have published a 10 page report entitled IP Insurance and other IP litigation funding arrangements which can be downloaded from the CIPA's website. This report discusses before and after-the-event insurance and various alternative funding arrangements and then lists the brokers, insurers and other associations who offer IP cover. 

Anyone wishing to discuss this article, the CIPA report or IP insurance in general should call me during on 020 7404 5252 during office hours or send me a message through my contact form.

Business Planning and IP: A Practical Example

Jane Lambert

Yesterday I wrote Why every business plan should take account of intellectual property 3 Apr 2016 4-NIPC News.  I explained:

"Every business no matter how small nor how simple owns some kind of intellectual asset that is vital to its trade. It may simply be the name or reputation of its owner in the case of a retailer or a tried and trusted recipe for making sponge cake in the case of a tea shop or sandwich bar but if it attracts customers to the business it is an asset which needs protecting, managing and exploiting."

I added:

"Conversely, a business may need to use the assets of somebody else's assets. A photo on the internet perhaps for the company website or maybe some software for the computer. It needs to plan how it is to acquire the right to use or even buy that asset and how much it is prepared to spend. All of these matters are at least as important to the start-up as the lease to an office or the purchase of a delivery van."

I promised to blog about the topic and this is the first of my promised articles.

What is Intellectual Property?

Intellectual property is simply the collective name for the bundle of laws that protect investment in generating intellectual assets.  They include patents, copyrights, trade marks, registered designs and unregistered design rights as well as judge made rules that prevent one trader from supplying goods or services under a name or trading style that is the same as or similar to someone else's or the unauthorized use or disclosure of secret and sensitive technical commercial information.   Intellectual assets are the brands, designs, technologies and creative output that tend to give one business a competitive advantage over others.

Not all Intellectual Assets are Equal

Not all intellectual assets are of equal value. There are, for example, inventions that no one want such as the three legged tights in the European Patent Office's Seven Deadly Sins of an Inventor.   There is no point in spending thousands of pounds on patenting them.   Similarly, there are distressed brands and designs that are so pedestrian or so ugly that they put consumers off the products rather than attracting them.  It would be a complete waste of money to apply for trade marks or design registrations for them.

Needing a Plan

Intellectual property rights - particularly patents - are expensive to obtain, manage and enforce. Not even the biggest companies try to protect every intellectual asset they possess. Experience teaches them which intellectual assets are worth protecting and which are not.  By definition, those launching new businesses, including many inventors, will lack that experience.  They need a plan to identify the intellectual assets that require legal protection and to tailor such protection to each asset's requirements.

A  Simple Five-Point Plan

Here is a simple five-point strategy for start-ups and other small businesses.

1. Identify the main revenue streams for your business over the business planning period. List the profitable products or services that you supply or for which your receive royalties or licence fees.
2. Consider the likely threats to those income streams. In most cases these are going to be commercial. Competitors will launch new products, reduce their prices or maybe consumer buying behaviour may change. Only in a minority of cases will you have reason to fear copying of your designs or technology or adoption of similar branding.
3. Devise appropriate counter measures.  In many cases these will be commercial too even if you fear copying or passing off. In some circumstances, launching a new model, re-branding, reducing your prices or finding new markets can be as effective and often cheaper and  more certain than litigation. However, a commercial option is not always available or attractive. For those cases where it is not you may need to plan a legal response.
4. Choose the optimum legal protection.  Put yourself in the position of your customer and consider why he or she is likely to find your product attractive. Is it its appearance, the way it works or the reputation of your business? If it is the appearance of your product you should see whether you can register its design either for the UK alone or the whole EU. If its your reputation you should think about registering your business name or logo a trade mark. If it is the way the product works or is made a patent may be the best option. If it cannot easily be reverse engineered you could keep it under wraps as a trade secret. Maybe unregistered design right will be enough. Factors to take into account will include the shelf life of your product, the size and value of the market, whether you want to sell it abroad and all sorts of other matters.
5. Make sure you can enforce your legal protection.  Although bootlegging, counterfeiting and piracy are crimes as well as torts primary responsibility for enforcing your intellectual property rights rests with you. That means bringing infringement proceedings in the civil courts. In England and Wales the costs of a High Court action can exceed £1 million. In simpler cases that can be brought in the Intellectual Property Enterprise Court recoverable costs are capped at £50,000 for determining liability and £25,000 for assessing damages or other profits to be disgorged. There is a small claims track where costs are limited at a few hundred pounds for certain types of IP claims under £10,000. If you cannot afford such costs out of revenues then you should consider intellectual property insurance or other kinds of funding.

All of those matters, particularly funding, should be in your business plan. If you want to discuss this article or intellectual property strategy generally, call me on 020 7404 5252 or contact me through this form. 

Legal Aid for the UPC

Before it was excluded from public funding by s.6 (6) and para 1 (1) (h) of Sched. 2 to the Access to Justice Act 1999, legal aid was available for intellectual property matters. It is my experience as an advisor to start-ups and other small businesses that those provisions have inhibited enterprise and innovation in the United Kingdom. That is because litigation in the adversarial system is considerably more expensive than in the inquisitorial one (see the table on page 50 of "The Enforcement of Patent Rights" by the Intellectual Property Advisory Committee). Moreover in the UK unlike the USA where costs are similar the losing party usually has to bear the winning party's costs.

That may change. Art 71 (1) of the Agreement on a Unified Patent Court of 19 Feb 2013 ("the UPC Agreement") provides:

"A party who is a natural person and who is unable to meet the costs of the proceedings, either wholly or in part, may at any time apply for legal aid. The conditions for granting of legal aid shall be laid down in the Rules of Procedure."

The draft Rules of Procedure that have been prepared by representatives of states that have signed the UPC Agreement amplify and apply that article.

Rule 375 (1) of the draft Rules enables the UPC to grant legal aid in order to achieve effective access to justice. Paragraph (2) adds that such  aid may be granted in respect of any proceedings before the court. Subject to the level set by the Administrative Committee (one of three committees established by art 11 of the UPC Agreement to ensure the effective implementation and operation of that agreement) under art 71 (3), the following costs may be covered by virtue of rule 376 (1):

"(a) court fees;
(b) costs of legal assistance and representation regarding:

(i) pre-litigation advice with a view to reaching a settlement prior to commencing legal proceedings;
(ii) commencing and maintaining proceedings before the Court;
(iii) all costs relating to proceedings including the application for legal aid;
(iv) enforcement of decisions; 

(c) other necessary costs related to the proceedings to be borne by a party, including costs of witnesses, experts, interpreters and translators and necessary travel, accommodation and subsistence costs of the applicant and his representative."

Also, and again that is subject to the level set by the Administrative Committee, rule 376 (2) provides that legal aid may also cover the costs awarded to the successful party if the applicant loses the action. That was never possible under the Legal Aid Act 1988 and it would avoid many of the difficulties that arose under that statute. Rule 376A (1) limits the maximum amount to be paid for representation pursuant to rule 376.1(b) to the maximum amount of recoverable costs under art 69(1) of the UPC Agreement and rule 152.2. The Administrative Council may set a lower level after taking into account necessary costs for legal representation and the need to guarantee adequate access to justice.

Legal aid will be confined by rule 377 (1) to natural persons who are EU citizens or citizens of other states lawfully resident in the EU and who meet the following conditions:

(a)  they are wholly or partly unable to meet the costs referred to above owing to their economic condition; 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 person applying for legal aid is the patentee, an exclusive licensee or otherwise entitled to bring an action under art 47 of the UPC Agreement.

The Administrative Committee may set thresholds under rule 377 (2) above which applicants shall be deemed to be wholly or partly able to pay the costs. That shall not however prevent their proving otherwise by reason of the high cost of living in their member state of domicile or habitual residence. All relevant circumstances are to be taken into account under rule 377 (3) including the importance of the action to the applicant and also the nature of the action when the application concerns a claim arising directly out of the applicant’s trade or self-employed profession.

Rule 378 prescribes the way in which applications for legal aid are to be made and rule 378A the evidence to be adduced in support.  Rule 379 sets out the process by which the application is to be assessed and a decision taken.  Assisted parties are required by rule 379A promptly to report changes of circumstances. Legal aid may be withdrawn under rule 380 subject to a right of appeal which is provided by rule 381.  Costs awarded against an unsuccessful unassisted party can be recovered under rule 382 (1). An assisted party may also be required to pay back any moneys paid to him if his legal aid is withdrawn by virtue of art 382 (2).

I shall mention the availability of legal aid in my talk on the UPC and the unitary patent in chambers on 4 Feb 2016 which I mentioned in Preparing for the Unified Patent Court 23 Jan 2016 NIPC Law. If you would like to attend that talk please call Steve Newbery on 020 7404 5252 or email clerks@4-5.co.uk.

Further Reading

Date	Author	Title	Source
	Preparatory Committee	An Enhanced European Patent System	UPC website
23 Jan 2016	Jane Lambert	Preparing for the Unified Patent Court	NIPC Law
26 Jan 2016	Jane Lambert	Preparing for the Unified Patent Court	IP North West

Joy

(c) 20th Century Fox, All rights reserved, Standard YouTube licence


Yesterday I saw Joy at the National Media Museum. I am not setting myself up as a cinema critic but I thoroughly enjoyed that film.  I would recommend it to anyone but particularly to the inventors who come to my or other peoples' patent clinics or attend meetings of their local inventors' clubs. Loosely based on the life story of Joy Magnano it charts the struggle of a young woman inventor to invent, design, develop and market a highly absorbent self-wringing mop with a detachable head.

The film has some valuable lessons which apply on this side of the Atlantic at least as much as they do on the other:

1. Take specialist professional advice from the very start. The fictional Joy got into trouble because she was advised by a non-specialist lawyer to pay royalties to, and source components from, a company that claimed to be the licensee of a Hong Kong inventor who had anticipated Joy's invention. In fact, the Hong Kong inventor had done nothing of the kind. She found that her supplier had taken money from her under false pretences. Had she consulted a patent attorney or specialist lawyer she would have learned that there was no prior patent. It would probably never have occurred to her to deal with the rogue at all and she would certainly not have paid him any royalties.
2. Get the right management team.  Joy relied on her feckless father and his wealthy girlfriend to assist her in the management of the business. Neither of them knew as much about business as they claimed. Their advice was not just wrong but dangerous at times. Worse, Joy's father sent his daughter from another marriage who had no commitment to the project and resented her half-sister's success to negotiate with the fraudulent supplier. The half sister agreed to pay the supplier more than the product's retail price thereby jeopardizing the whole business. The only members of Joy's family who were of any use to her were her grandmother and ex-husband. The best advice she received was from the boss of the shopping channel that launched her product.
3. Plot a clear route to market before launching into production.  Joy ordered several thousand dollars worth of components and engaged a number of Spanish speaking ladies to assemble her mops before she knew how and where she could sell them. She tried local hardware shops. The shopkeepers were not interested because she could not pay them to display her mops in their shop windows. She approached established mop manufacturers. They were the last people to be interested in a mop that would rarely need to be replaced.  She even tried to flog them in the car park of a local supermarket to the store's customers. Not surprisingly the store management objected and called on the police to move her on.  Joy's break came when her ex-husband introduced her to a friend who ran a shopping channel. Even then there were several false starts. The presenter who tried to sell the product muffed his sales pitch and Joy nearly froze when she made her début in front of the cameras. However, after that the orders started to roll in though Joy's troubles were far from over at that stage.
4. Believe in yourself and rely on your own judgment.  In the film Joy had been a star pupil at secondary school but she never went to university because she had to look after her parents after their divorce.  Neither parent deserved that sacrifice. Her mother spent her day in bed watching television and her father embarrassed her at her wedding reception. That did not stop either parent or indeed the rest of her family and outsiders from putting her down. Only her grandmother believed in her and she died before Joy had established her business.  There were several moments when all seemed to be lost and her family tried to persuade her to give up the enterprise but she held her nerve. Eventually she discovered that she had been cheated.  She travelled to Texas to confront the individual who had defrauded her and forced him to reassign her intellectual property in the invention and pay her compensation.
5. Be ready to take the next step.   The real Joy Magnano has a whole suite of products which are offered for sale on the shopping page of her website.  The mop proved to be spectacularly successful but that was exceptional.  The best that can be expected of most inventions is to provide a temporary competitive advantage.  It rarely takes long for a competitor to catch up with a new product or business idea.  If you are to stay ahead you have to take yet another step.  The last scene of the film showed Joy as a successful business woman mentoring a young female inventor from Arkansas. In real life she runs several businesses including a shopping channel and a body known as the Joy Magnano Foundation.

According to the History vs Hollywood website the film is not an entirely accurate record of Joy Magnano's life.  The real Joy never had a half sister, she graduated from Pace University with a business degree, she had three children and not two. Nevertheless, there is a lot of the film that is true and certainly the lessons that I listed above are founded on fact.

So where do British inventors get help?  

In the UK unlike America there is a separate profession of patent attorneys (also known as patent agents) who are regulated by IPReg (the IP Regulation Board). IPReg keeps searchable registers of patent and trade mark attorneys. Patent attorneys can help you with searches, drafting and filing patent specifications and correspondence with the UK and other intellectual property offices. Some attorneys are qualified to conduct litigation or appear as advocates in the Patents Court or Intellectual Property Enterprise Court.

If a patent attorney needs advice on a difficult point of law, some tricky drafting or representation before a hearing officer or a judge he or she may consult patent counsel (a barrister specializing in intellectual property law).  To find out how our profession can help inventors, read my article IP Services from Barristers 6 April 2013. Most specialist barristers belong to the Intellectual Property Bar Association and many of us accept instructions directly from the public.

If you are in a complex commercial transaction or litigation involving intellectual property you may need to see a solicitor but make sure that he or she is an expert in IP.  Most firms with expertise in IP belong to the IP Lawyers Association.

Before instructing a patent attorney or lawyer you can get up to 30 minutes of an attorney or lawyer's time free of charge at a patent clinic. I run one at Barnsley on the second Tuesday of every month between 10:00 and 12:00. There are others run by the Chartered Institute of Patent Attorneys at Aberdeen, Birmingham, Leeds, Liverpool, London, Manchester, Newcastle, Newport, Peterborough, Plymouth, Portsmouth, Sheffield and Southampton.

There are also lots of talks and workshops on business planning, licensing, marketing, patenting and other topics at the Business and IP Centre of the British Library at St Pancras and the Business and IP Centres of the Birmingham, Leeds, Liverpool, Manchester, Newcastle and Sheffield Central Libraries. They will also put you in touch with reliable experts in the areas in which you need advice.

You will also find a massive accumulation of useful information in this and my other blogs.  If you can't find what you are looking for call me on 020 7404 5252 during office hours or message me through my my contact form. 

Finally, I wish you the best of luck with your venture and a happy New Year.