I have invented something - What happens next?

By William Heath Robinson - From the Book: William Heath Robinson Inventions,
Public Domain, https://commons.wikimedia.org/w/index.php?curid=39256622

 

Jane Lambert

If you work for a company, university or some other employer in a capacity in which an invention might reasonably be expected from the performance of your duties or you had a special obligation to further your employer's business, any invention you may create in the course of your duties may be claimed by your employer pursuant to s.39 of the Patents Act 1977.  Your reward will be your salary and any perks or  benefits that go with your appointment unless your invention is of outstanding benefit to your employer in which case you may be entitled to an extra reward under s.40,

The position will be different if you are a student and you invent something in the course of your research or studies.   Your university may be entitled to the invention pursuant to a clause in your contract for the right to research or study at your university but you will normally qualify for a share of any royalties or other payments that your university receives from the commercialization of your invention.   

If you made your invention in any other capacity it would be up to you to exploit it.  You can attempt to market it yourself or you can try to license it to a third party.  Neither is easy.  If you choose to make it yourself you have to acquire expertise and resources that inventors are no more likely to possess than anyone else.   If you try to license it you have to persuade a third party that your invention can earn or save that person's business money.   To get you started, here are two articles:

• How to make Money from your Invention - Starting your own Business 15 May 2019 NIPC Invention; and
• How to make Money from your Invention: Licensing 15  Sept 2017 NIPC Invention

You should try to learn from the experience of others.   A good place to find such experience is an inventors' club.  I was saddened to learn recently that one of the clubs that I founded nearly 20 years ago and chaired for many years suspended its meetings during the pandemic and has never revived them.  I consulted the "Inventor's Club" page of the Wessex Region of Technologists and Inventors (formerly the "Wessex Round Table of Inventors" or "WRTI") to see whether the same had happened to other clubs. There were some broken links but I found up-to-date websites for many of those clubs after consulting Google. I also wrote about the Bristol Innovation Group in Bristol Innovation Group: Street2Boardroom on 27 Aug 2020 in NIPC Severn and gave a webinar to Ffiws on 15 April 2020,  I have therefore been able to find inventors clubs in Anglesey with locations in Gwynedd, Birmingham, Bristol. Cambridge, Dudley, East London, Kent, Malvern, Oxford and Southampton,

If there isn't an inventor's club nearby or if the meetings of your local club do not live up to your expectations or needs I should be glad to help you set up a club.  I could draw up a simple constitution and suggest a few guest speakers free of charge.  Over the years I have met a lot of patent and trade mark attorneys, angel and private equity investors, specialist accountants, insurance brokers, product development consultants in all parts of the country.   I should even be happy to address any group you may set up or run a pro bono IP clinic myself.

Finally, two cardinal bits of advice.   The first is to ignore the small ads and spam emails from invention promoters offering to promote your invention for an eye-watering sum. Few have any connections with industry and most offer services that are already offered by your local Business or IP Centre or local enterprise partnership for free.   The second is to keep your invention under wraps until you have obtained optimum legal protection by applying for a patent or otherwise.

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

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.

Trade Marks for Inventors

Jane Lambert

Inventors are most interested in protecting their inventions for which they require patents but some set up businesses to manufacture or market their inventions. Such businesses need to identify themselves and their products in the market place and for that they need brands. Brands are built up by sales and marketing and the common or judge made law of England and Wales gives a measure of protection for established brands by the law of passing off, But if you are new to the market or are about to launch a new product or service you can't rely on that law. You need to register a trade mark first.

What are trade marks?
S.1 (1) of the Trade Marks Act 1994 defines a trade mark as

"any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

The following paragraph helpfully adds:

"A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."

The Trade Marks Act 1994 applies only to the United Kingdom but our trade marks law has been harmonized for over 20 years with the laws of the rest of the European Union by an EU Directive and a string of decisions of the Court of Justice of the European Union. As all the EU member states are members of the World Trade Organization EU trade mark law and the trade mark laws of each of its member states have to comply with Annex 1C to the World Trade Organization Agreement which is better known as TRIPS (Trade-Related Aspects of Intellectual Property Rights). Art 15 (1) of TRIPS contains a definition that is very similar to s.1 (1) of our Trade Marks Act 1994.

A word on spelling
You will have noted that trade mark is spelt as two words in our statute but as one word in the TRIPs. Both spellings are correct but we tend to use the two word spelling in the UK, the EU and most of the Commonwealth whereas Americans use one word. As I am British I shall stick to spelling it as two words but you may find your spell check prefers the American spelling.

Specified goods
Trade marks are registered for goods or services and when you apply for a trade mark you have to specify the goods or services to which it is to apply.

It is still sometimes possible for two different trade mark owners to register the same sign for different goods. We were once familiar with Mazda card and Mazda light bulbs. But that has become more difficult since s.5 (3) of the Trade Marks Act 1994 now provides that a trade mark shall not be registered if it is

"identical with or similar to an earlier trade mark, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark or international trade mark (EC) in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."

Goods and services are divided into a number of classes by an international agreement called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks or Nice Agreement for short.  Our Intellectual Property Office has very helpfully published Guidance Trade mark classification list of goods and services 2 May 2014 which you can consult on its website.

When you apply to register a trade mark you have to state the class or classes of goods and services for which you wish the mark to be registered. You should bear in mind that one class of goods or services is included in your application fee and that you have to pay extra for each additional class of goods or services.

What is the point of a trade mark?
The rights conferred by the registration of a trade mark are set out most succinctly in art 16 (1) of TRIPS:

"The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed"

That is echoed by s.9 (1) of our Trade Marks Act 1994:

"The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent."

The acts that constitute infringement are set out at some length in the first three sub-sections of s.10 of the 1994 Act.

UK and Community Trade Marks
Applicants for trade marks in the UK has the choice of registering a trade mark for the UK alone or for the whole of the EU. Trade marks for the whole EU are known as "Community trade marks" or "CTM" and I shall refer to them as CTM for the rest of this article.

If you want a trade mark for the UK alone you apply to the Intellectual Property Office or "IPO" in Newport. The department that looks after trade marks is known as the Trade Marks Registry which us usually referred to as "the Registry".  Confusingly the head of the IPO is called "the Comptroller" in relation to patents and unregistered design rights but "the Registrar" in relation to trade marks and registered designs, However, he or she is the same person.

If you want a CTM you have to apply to the curiously named Office for Harmonization in the Internal Market Trade Marks and Designs ("OHIM") in Alicante in Spain. Applications for CTM are governed by the CTM Regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark OJ 24.3.2009 L78/1) but its provisions are very similar to those of the Directive and hence our Trade Marks Act 1994.

Guidance on applying for trade marks
The IPO contains a useful step by step guide to registering a UK trade mark that begins with the section "Trade marks: protect your brand". The next sections are "What you can and can't register", "Apply" and "After you apply". Most of the information in those pages would also be of use if you are applying for a CTM or a trade mark in any other country's trade marks registry.

If you want a CTM, OHIM also gives you some useful information. I recommend starting at the Trade Marks Basics page and working your way from there. There is an amusing little animated video called "It's all about trade marks" which you shouldn't miss.

There is also useful stuff on the British Library's Business and IP and World Intellectual Property Office websites and there is lots more from law firms, patent offices, trade mark and patent agencies and universities around the world but for now I would be content with the publications that the IPO and OHIM put out otherwise you will never get started.

Should you get professional advice?
It is perfectly possible for a reasonably well educated and intelligent individual to apply for a UK trade mark or CTM without the assistance of a trade mark or patent attorney or lawyer and many business owners do just that but unless you have a lot of experience of IP and trade marks you can easily come unstuck if you try to do it yourself. For instance, you may miss something on a search, you may fill out the form incorrectly, you may apply for a mark that can't be registered or a third party may oppose your mark after it has been advertised if he thinks that you are unrepresented in circumstances that he wouldn't try if he knew you were professionally represented. The cheapest you can register a UK mark is £170 if you make the application on-line and there are many attorneys who will do all the searches, draft the application, pay the Registry fees for £500 or less. To me that seems a no-brainer.

If you don't have an attorney and you would like me to suggest one, call me on 020 7404 5252 during normal office hours or message me through my contact form.

On-line or paper
Both the IPO and OHIM encourage on-line applications by offering slight discounts for on-line applications.

Searches
Regardless of whether you apply for a UK mark or a CTM it is imperative that you carry out a thorough search for you will probably not be allowed to register a mark that is the same or similar to an existing one for the same or similar goods or services. Even if your application does somehow slip through the owner of the earlier mark can apply to invalidate it on the grounds that it should never have been registered.

You can search the IPO or OHIM databases yourself (see Search for a Trade Mark on the IPO website and eSearch plus on OHIM's) but you will get a better result if you instruct an attorney for he or she knows what to look for. You can also get a good search from Leeds Business and IP Centre if you call Ged or Steff on 0113 247 8266.

Making the application
As there is excellent information from the IPO and OHIM on trade mark applications I am not going to repeat it here.

If you are doing it yourself and encounter a problem you can contact me on 020 7404 5252 or use my contact form. In most cases my advice will be go find an attorney and I will tell you how to get one but there may be a point of law which requires professional advice in which case I will see you in conference or advise you in writing (see "What happens if the examiner says no?" below).

IP insurance
Another thing you should consider when you apply for a trade mark is enforcement. Although some trade mark infringements are crimes which can be prosecuted by trading standards officers in the magistrates or Crown Court it is generally down to you to enforce your trade mark. You do that by issuing proceedings in the civil courts. Though you can't start proceedings until your mark has been registered your rights and hence your claim to damages can be backdated to the date of application. IP litigation in the UK has always been more expensive than on the Continent and the costs of issuing proceedings for claims over £10,000 have recently sky rocketed (see How to enforce your IP claim after court fees sky rocket 7 March 2015). Unless you have lots of money I would advise your taking out before-the-event IP insurance at the earliest possible opportunity (see Intellectual Property Litigation - the Funding Options 10 April 2013 NIPC Law) which is when in the case of trade marks is when you make your application.

What if the examiner says no?
Here's where I come in. Any decision of the hearing officer can be appealed but appeals are be expensive and you will want to make sure that you are on firm ground. You could ask your trade mark or patent attorney or your solicitor but at the end of the day they may well suggest your taking counsel's opinion. "Counsel" is another word for barrister or someone like me and if you want to know what IP barristers such as I can offer read my article IP Services from Barristers 6 April 2013 4-5 IP). I will advise you on your options and if you decide to appeal I will represent you all for a fixed fee that will be agreed in advance. Again, if you want to consult me call me on 020 7404 5252 during normal office hours or message me through my contact form.

In the IPO appeals from examiners are made to an official known  as a hearing officer who sits on behalf of the Registrar. The IPO has published two useful articles on Options following an objection to a trade mark examination and Trade mark disputes resolution: hearings which I advise you to read.

Appeals in OHIM are made to Boards of Appeal and the procedure is set out in the Appeal page.

What if someone else says no?
if the examiner finds no objection  to your application it will be advertised on the web and elsewhere. If anyone objects to your application he or she may get a trade mark or patent attorney to write to you to explain the objection and ask you to withdraw your application.  Again, this is where I could come in either at your request or the request of your attorneys or lawyers. I can advise you whether the objection is justified and if it is not represent you in opposition proceedings again for an agreed fee.

There are basically two grounds upon which an opponent can object to your application. The first is that he or she has an earlier trade mark with which your mark conflicts. The second is that he or she could bring an action for passing off, copyright infringement or some other cause of action that would prevent your using your mark.

Appeals in the IPO are heard by hearing officers and appeals in OHIM by Boards of Appeal, Much of what I have written under the previous heading applies to opposition proceedings.

Registration
If nobody objects to your application or if all objections are resolved in your favour your application will proceed to grant and you will receive a certificate of registration and your mark will be entered on the register.  However, that is not necessarily the end of the story because it is still open to a third party to apply for invalidation of your mark on the ground that it should never have been granted. You also have to make sure that you use your mark within 5 years of registration otherwise someone may seek its revocation for non-use. Invalidity proceedings can be made in the Trade Marks Registry or as the case may be OHIM or by way of counterclaim in any proceedings you may bring for infringement of its mark.

Watch service
You need to make sure that another business does not apply to register the same or similar mark for the same or similar goods. As it is impractical for most businesses to scour the intellectual property offices or trade mark journals it is a good idea to instruct someone to do that for you. That is known as a "watch service". Your attorney ought to be able to arrange that for you but if not call Ged or Steff at Leeds Business and IP Centre on 0113 247 8266.

If you want to discuss this article or trade marks generally call me on 020 7404 5252 or use my contact form.