Essential Reading for Inventors and Entrepreneurs

Jane Lambert

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. 

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:"

"Develop a coordinated user-centric government approach to border design and delivery, which works in partnership with industry and enables border innovation. 

Bring together government’s collection, assurance and use of border data to provide a comprehensive and holistic view of data at the border. 

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. 

Use upstream compliance to move processes away from the actual frontier where appropriate, both for passengers and traders. 

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. 

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.

UK Innovation Strategy

Standard YouTube Licence

Jane Lambert

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 it.  In 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,

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

Author ReubenGBrewer Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

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.

EPO launches a Competition for Young Inventors

European Patent Office in Munich

Author Karlis Dambrāns Licence CC BY 2.0 Source Wikimedia Commons

 

Jane Lambert

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) ...."

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.

Taking your Ideas to Market in Wales

The Atrium of the Menai Science Park

© 2019 Jane Lambert: all rights reserved

 

Jane Lambert

Yesterday I chaired a webinar organized by the Menai Science Park entitled IP and SME, Taking your Ideas to Market in Wales (see Menai Science Park's Contribution to World IP Day 2021 25 April 2021 NIPC Wales).  I have been taking part in events like that for some 20 years but yesterday's was the best ever.  The seminar covered a lot of topics in 100 minutes but there are two important takeaways.  One is that Wales provides support to new businesses that is no longer available in England.  The other is that Inngot Limited provides a range of tools for valuing intellectual assets even when those assets are at an early stage of development.

One of the big differences between business support in Wales and England is that the Welsh government continues to support business centrally through an agency called Business Wales.   Business Wales describes itself as

"a free service that provides impartial, independent support and advice to people starting, running and growing a business in Wales. With regional centres across Wales, we offer a mixture of online and face-to-face support, as well as training workshops and individual advice."

To English eyes, that seems to be very much the sort of thing that the regional development agencies and Business Link did before their abolition and replacement by local enterprise partnerships.  

Yesterday we heard a presentation by David Wooldridge who is the Intellectual Property Manager of the Welsh Goverbment['s Innovation Team in Swansea.  According to Business Wales's Funding page, 

"Funding is available for all phases of a research and development, from initial feasibility to market exploitation:

• Technical and Commercial Feasibility - help to assess whether your idea is technically and commercially viable.
• Industrial Research - help for practical research and to develop basic working models.
• Experimental Development - use the results of the industrial research to produce a pre-production prototype.
• Exploitation - help with the costs of launching your new product/process on the market."

These include innovation vouchers to

• "fund capital equipment that supports a technology step-change
• bring in technical consultancy expertise from the private sector
• work with universities and colleges to help solve technical problems
• improve processes in design and manufacturing
• access expertise services for intellectual property (IP) registration."

A service that appears to support new businesses is Expertise Wales which describes itself as 

"The online resource for driving collaboration and innovation in Wales."

One of Expertise Wales's services is SMARTCymru.  Another is the Small Business Research Initiative.  There appear to be many more.   I am indebted to Richard Fraser-Williams, Growth Relationship Manager at Business Wales for putting me in touch with David Wooldridge.

Richard also told me that many entrepreneurs require a guide to navigate the various funding schemes and he referred me to BIC Innovation.   It is a company that I have known for many years and with which I have collaborated.    Mark McGowan of BIC Innovation explained how he and his colleagues assisted businesses to seek funding not only from the Welsh government but also from business angels and venture capitalists.  Businesses that are not already in Wales would be very well advised to consult someone like Mark before opening up there.

Like the Welsh Government's Innovation Team. Inngot is based in Swansea.  One of its founders is Iwan Davies who held the Sir Julian Hodge Chair of Law at Swansea University and is now Vice-Chancellor at Bangor.  He is a distinguished academic lawyer with expertise in both asset finance and intellectual property.  For several years, Swansea law school hosted the IP Wales/ED Cymru website which was an excellent resource on intellectual property law.  Yesterday's presentation on IP valuation was given by Alison Orr who is Inngot's Business Development Manager.   According to Inngot's website

"Alison leads many of Inngot’s IP audits and technology evaluations, and provides her expertise to clients requiring training and coaching on IP, assistance with technology scouting, and help exploiting their IP in international markets. She has also helped shape Inngot’s intangible asset identification tools."

 Alison introduced her audience to Inngot'ss services and focused on the valuation of intellectual assets of startups and other small companies.  Obtaining such a valuation right at the start could avid a lot of the personal tragedies that I have witnessed in my career at the bar.   It could also assist a business to obtain the right sort of funding and thus secure its future.   It goes without saying that Inngot offers its services to entrepreneurs, business owners and investors everywhere and not just in Wales.  

Any business not already in Wales that is contemplating a move or expansion there would do well to consider the Menai Science Park or at least the immediate area because the park already hosts a lot of experts.  BIC Innovation is there as is Andrea Knox of Knox Commercial Solicitors and Steve Livingston of IP Tax Solutions.  Both gave excellent presentations yesterday.   Like Alison and Mark, they can be consulted by anyone anywhere and they are also first-class professional advisors.

Anyone thinking of doing business in Wales should find useful material on my IP Wales website at www.nipcwales.co.uk.  Contact me on +44 (0)20 7404 5252 or through my contact page if you want to discuss this article or any of the matters mentioned in it

http://www.nipcwales.co.uk

One of the Few Silver Linings - Innovation during the Pandemic

Under a cloud (with a silver lining) (1920)

Punch 22 Sept 1920  Wikipedia Silver Lining

 

Jane Lambert

At the start of the lockdown just under a year ago, I wrote in IP Services During the Emergency on 22 March 2020:

"The suspension of so much business activity to facilitate social distancing does not mean that intellectual property is no longer a priority. On the contrary, it is now more important than ever."

And so it transpired.  The total number of international patent applications through the Patent Cooperation Treaty has increased from 265,381 in 2019 to 275,900 in 2020.  In spite of brexit and all the other dampeners on its economy, the UK was no exception to that trend,   Applications from the UK rose from 5,773 in 2019 to 5,912 in 2020 (see Innovation Perseveres: International Patent Filings via WIPO Continued to Grow in 2020 Despite COVID-19 Pandemic 2 March 2021 WIPO press release).   As The Economist noted in its YouTube video How covid-19 is boosting innovation of 10 March 2021, the last 12 months have been a year of innovation.

In my previous article: I wrote that 

"if we are ever to stop Covid-19 in its tracks it will be through the efforts of universities and biotech and pharmaceutical companies around the world whose."

That was not a widely shared view when I write that sentence.   At the start of this pandemic, pundits warned the public not to expect vaccines to come to the rescue any time soon. They said that it takes years to develop vaccines and even longer to obtain regulatory approval and set up distribution networks.  They were wrong.    New technologies enabled pharmaceutical companies in different parts of the world to develop effective vaccines within a few months of each other.  Most achieved regulatory approval within weeks of their clinical trials.  The UK, the USA and several other countries have been able to roll out those vaccines very quickly.

There have also been advances in diagnostics and therapies that have enabled health services throughout the world to treat far more patients in the second wave than at the peak of the first without buckling.  At the same time, there have been inventions to prevent the spread of infection.  Examples include Thrsus's "Bump" which I covered in Rise and Design Online: A Webinar for Designers in Northeast England on Designing our Way out of Lockdown in NIPC Northeast on 15 June 2020 and DABS's gloves which I mentioned in the same publication in Rise & Design: Wearable Tech Webinar yesterday.

Innovation has not been confined to healthcare. There are businesses founded on new products and services that did not exist a year ago in such fields as distribution, education and entertainment.  The Economist mentioned drones to distribute medicines and other essential supplies, video conferencing to facilitate online learning and professional consultations, home delivery services by Michelin starred restaurants and the letting out of ghost kitchens to self-employed chefs. Here are some more examples that have occurred to me. In May 2019 the Chinese internet courts were so unusual that they merited an article in NIPC Law. Less than a year later the UK Supreme Court, the Court of Appeal and much of the High Court in England and Wales were dispensing justice over the internet.  In retailing, contactless payments have driven cash into retreat.   The Economist estimated that the pandemic had accelerated the use of digital technology by about 5 years. The presenter actually welcomed his audience to 2025.

In IP Services During the Emergency, I wrote:

"And when this emergency is over businesses will have to innovate and create as never before in order to restore our ravaged economy the planning for which has to start now."

There will be lots of opportunities for entrepreneurs as the world emerges from lockdown. Anybody lucky enough to have worked from home on full pay will have saved considerable sums by not commuting, maintaining their wardrobes or spending on leisure activities.  They will be looking for such services as extra tutoring for kids who have missed half a year of schooling, broadband upgrades, home extensions and maintenance after a year of restrictions.  There will, of course, be a return to the office for some but many other businesses will have noticed a reduction of costs and improvements in productivity from home working so the demand for home delivery is likely to stay firm.

The businesses that provide those services will need trade marks for their brands and maybe patents and design registered designs for their products. Inevitably disputes will arise with IPO examiners and other intellectual property owners.   Last year I wrote:

"Anybody who needs advice or assistance with an IP issue can contact me through my "Initial Advice and Signposting Form". I can advise on IP law generally and represent clients in negotiations and disputes but I do not prosecute patent, design or trade mark applications, specialize in tax or company law, develop products or arrange funding. However, I can probably direct clients to other experts such as patent or trade mark attorneys, commercial law firms, specialist accountants and product design consultants who can help with such issues."

I have experienced strong demand for those services, especially over the last few weeks.   I will continue those services after lockdown.  Anybody wishing to discuss this article or book an appointment for a free 30-minute advice and initial signposting session can call me during normal UK office hours on 020 7404 5252 or send me a message through my contact form at other times.

Kalifa Review fails to mention Patents for FinTech Inventions

By James Gillray   Public Domain

 

Jane Lambert

This morning the government published the Kalifa Review of UK Fintech.  As I learnt my intellectual property law while working on the legal issues of chip and pin cards and finding ways to protect banking brands before service marks could be registered for VISA International in the 1980s and have followed the sector ever since FinTech is an area of law in which I feel entitled to claim expertise.

The report is 108 pages long in a magazine-style format.  It makes findings that I would expect such as Brexit, covid and competition being threats to the UK's competitive position as well as recommendations that FinTech company founders should be allowed to retain shares with enhanced voting rights after flotation that I found surprising.

One issue that I have found to be problematic in practice but which Kalifa did not mention at all was the exclusion of "a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer" as such from patentability by s.1 (2) (c) of the Patents Act 1977. Because of uncertainty as to whether a patent will be granted and if granted whether revocation proceedings. inventors ten to rely on trade secrecy which discourages collaboration and innovation.

Although the performance of the UK FinTech industry compared favourably to those of other European countries there were no direct comparisons with the performance of the sector in countries outside Europe. There were, however, oblique references such as the greater percentage of initial public offerings on exchanges in the USA which suggested that the US FinTech industry was significantly more successful than the UK's. One anecdotal reason for the greater success of the US industry is the absence of any equivalent to s.1 (2) in the US Patent Act.   Even without that exclusion, the Americans see quite capable of rejecting applications for patents that are not recognizable as inventions (see Bilski v. Kappos, 561 U.S. 593 (2010)).

This is no mere griping.  Many of the most exciting developments in the technology have come from small businesses which are often one-man bands.  In the early days, founders rely heavily on investment from angels or private equity investors and they nearly always insist on some paperwork from the Intellectual Property Office before they open their cheque books. 

Despite these observations and reservations, the Kalifa report is well worth reading.   Anyone wishing to discuss it with me may call me on +44 (0)20 7404 5252 or send me a message through my contact form.