Knowledge Asset Management Hub

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Jane Lambert

The Knowledge Asset Management Hub is a resource to help universities and other research institutions identify, protect and commercialise their intellectual assets.  It brings together a comprehensive set of practical resources.  According to the announcement on the Intellectual Property Office website, the Hub consists of the following components:

• "Institutional IP strategy guidance — practical frameworks to help universities and research organisations develop and implement IP strategies and policies at an organisational level
• Project-level IP risk and opportunity tools — resources to help teams identify and manage IP considerations within individual research projects, from early-stage collaboration agreements through to commercialisation
• Patent data analysis and IP due diligence resources — tools to support the assessments that underpin licencing, spin-out formation, and investment decisions
• Knowledge Asset Management Toolkit — guidance recognising that effective knowledge asset management requires strategic and operational management."

The following guides were published with the announcement:

• KAM Guide: Introduction and intellectual property policy:  an excellent introduction to those unfamiliar; 
• KAM Guide: Intellectual property management: a more detailed guide on the different IP rights and how they mayh be acquired; 
• KAM Guide: Further resources and glossary of terms: links to the relevant statutes, guidance on funding and licensing and glossary;
• Knowledge Asset Management Guide:  very handy document, particularly for those with a grounding in IA management; 
• Knowledge Asset Management(KAM) Toolkit: useful charts, checklist and basic infor; and 
• IP due diligence quick guide: introduction to due diligence and an explanation of why it is important.

Useful though these guides are they cannot cover everything.  Anyone wanting to discuss any of these topics is welcome to give me a bell on +44 (0)20 7404 5252 during UK office hours or send me a message at any time.

Online Inventors' Club: Patents and Alternatives to Patenting

Patents and alternatives to patenting.pdf from Jane Lambert

Yesterday, I launched the NIPC Inventors' Club Online Inventors' Academy with an introduction to patent law and patenting for independent inventors. The slides appear above.  Those who missed the talk can download the slides here or from Slideshare.  There will also be a link to the presentation from the NIPC Inventors Club group page on Linkedin.

Although not everybody who had registered joined the call, those who did enjoyed a very lively discussion.  The session, which was due to last an hour, finished at 19:58 almost two hours after it began.  It was particularly gratifying to welcome one of the regulars at the Sheffield Inventos' Club which I chaired for many years.  

The objective of the exercise is to reproduce the mutual support for independent inventors that used to subsist at inventors clubs that met in Central Libraries, universities and other venues around the country until a few years ago.  Some of those clubs disbanded after several of the libraries joined the British Library's Business and IP Centre's national network.  Others ceased to meet during the COVID-19 pandemic.  

The next talk will be on the resources that are available to independent inventors.   It will take place on 17 Oct 2024 between 18:00 and 19:00.  As I said in The Online Inventors' Academy on 29 Aug 2024:

"The next talk will be on the services that are available to inventors. I will start with the British Library and its national network of Business and IP Centres. I will mention patent clinics and search services at the Centres and other PatLib libraries. I will talk about the help that is available from local authorities in England, Business Wales in Wales and its counterparts in Scotland and Northern Ireland. Lastly, I will consider the online resources that are available for inventors from the IPO, EPO, WIPO, British Library, UKRI and other agencies."

I shall post the registration invitation later today and look forward to welcoming everybody interested to that event.

Finally, I was asked a couple of questions about IP insurance yesterday.   I have written a lot about the topic as can be seen from the bibliography at the end of my article  IPO Guidance: Intellectual Property Insurance which I, posted on 25 Feb 2020.  The most up-to-date guidance is CIPA's and the Intellectual Property Office's.

Anyone wishing to discuss this article can call me on 020 7404 5252 during UK office hours or send me a message through my contact form at any time.

How to Value a Patent

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Jane Lambert

On Thursday 9 May 2024 I attended the Finance and Innovation Conference which took place at the Menai Science Park on Anglesey.  I wrote about my visit in M-SParc's Finance and Innovation Conference on 10 May 2024 in NIPC Wales.  Two of the most interesting conversations were Gwenllian Owen's discussion with a group of business angels and Edward Thomas's discussion with Steve Livingston and representatives of several local financial institutions.  All of those angels and institutions offered funding of various kinds to early-stage enterprises whose assets were likely to consist of little more than a patent or patent application or sometimes just an idea for an invention or business,  A question that I was bursting to ask them was how do you value the assets of such a business?

Because of the very full programme, there was not enough time for me to ask that question to either group of speakers so I decided to research it for myself.  This is what I have come up with.   The short answer is that a patent (or any other intellectual property right for that matter) is what a willing and informed assignee would pay a willing and informed assignor bargaining at arms' length.  I reached that conclusion after reading Valuing Your Intellectual Property which was published by the UK Intellectual Property Office on 12 Dec 2014 and last updated on 4 Jan 2022, How do you measure patent value? published by the European Patent Office and Valuing Intellectual Property Assets published by the World Intellectual Property Organization, the United Nations specialist agency for intellectual property.   The IPO's guidance incorporated the above animation.

Each of those publications refers to three methods of valuations:

• the cost method
• the market value method, and
• the income or economic benefit method.

The "cost method" is the owner's expenditure on developing the intellectual asset and is likely to include such costs as labour, cost or hire of premises, plant and equipment, raw materials, consultancy fees, prototyping and testing and patent prosecution.  The attraction of this method is that the purchaser does not have to incur those costs but the drawback is that the assignor may well have gone about his or her research and development work in the most efficient way.  Also, the IP right may not protect the asset as well as it might.   Expect a lot of horse-trading between the owner and his or her buyer, investor or lender. 

The "market value" method is to compare the proposed transaction with similar transactions relating to similar intellectual assets.   That is likely to be more accurate than the cost method where the relevant information is available because it is about transactions that have actually taken place.  One problem is that the parties may not wish to publish information about their deals.  Another is that the times may have been different.  A transaction that makes sense when interest rates or low or market demand is strong may be unviable now.  Yet another problem is that there may be significant differences between the invention in one transaction and the invention in another.   Also, newly formed businesses or businesses operating in a new technology or market may not be able to point to comparable data,

The "income" or "economic benefit" is the deduction of past and anticipated costs of developing the asset from the past and anticipated revenues that it may have and may continue to generate.  The problem with this method is that it requires a lot of crystal ball gazing and is likely to be subject to a lot of wishful thinking. However, if there are some licensing deals producing verifiable royalties or an income-generating invention it may be the most accurate method yet.   According to the WIPO, the income method is the most commonly used method of valuation.

There are businesses like Ocean Tomo that hold IP auctions from time to time.  I have no personal experience of them so I can neither recommend nor not recommend them. Readers contemplating such services should make their own enquiries, take their own advice and form their own views as to whether an auction would benefit them.

There are also businesses like Inngot which offer valuation services.  Inngot was co-founded by a distinguished academic lawyer who has recently retired as Principal of Bangor University.  I have shared a platform with one of its former employees on two occasions very successfully and have high regard for its publications.  However, I have no experience of its valuation services.

A first step for any business which wishes to value its IP would be an IP audit.  Readers may wish to consult How to Use an IP Audit which I wrote in NIPC News on 13 Jan 2022.  They may also wish to use the IPO's handy IPR Valuation Checklist.   While I do not carry out IP audits myself I can certainly address legal issues that may arise in the course of such exercises such as construing patent claims.   Anyone wishing to discuss this article may call me during office hours on 020 7404 5252 or send me a message through my contact form.

How to avoid Entitlement Disputes

 

Jane Lambert

In Disputes over Ownership of Inventions 6 Aug 2015 NIPC South East I wrote:

"According to the Intellectual Property Office at least 30 disputes are referred to its tribunals every year over who should own or be entitled to apply for a British or foreign patent or be named as an inventor (see the table on page 50 of the IPO's Facts and figures for 2013 and 2014 calendar years)."

As I said in the next sentence, disputes over ownership of patents or patent applications are known as "entitlement disputes."  Of the 41 inter partes hearings, and reasoned decisions made without a hearing in 2014 mentioned in that table, 31 were entitlement disputes.  The situation had not changed much by 2018 which is the last year for which I have been able to find comparable statistics.  According to the table on page 60 of Facts and Figures 2018, entitlement disputes accounted for 24 of the 38 inter partes hearings, reasoned decisions made without a hearing and reviews of opinions in 2017 and 21 of the 32 in 2018.

Entitlement disputes are often heartbreaking because they arise from a breakdown of hope and trust and sometimes friendship.   The right to a patent or patent application is contested fiercely even when the patent is clearly invalid or of little commercial value.  There are three types of relationships from which entitlement disputes tend to arise:

• The first is between friends or acquaintances where one of them has a bright idea and the others pitch in to help him or her develop it.   
• The second is where the inventor hires a product design consultant, engineer or some other contractor to help with the product's design or development.
• The third is where the inventor or the original collaborators accept investment from an angel, venture capitalist or some other third party.

In the first situation, the friends or acquaintances fall out when they meet the first hurdle.   That can occur in a variety of ways.  One of them may want to apply for a patent or make a prototype and the others do not because they will have to dip into funds that they had earmarked for other purposes.  The second situation may arise because the inventor and third party fail to draw up a proper consultancy agreement or rely on the standard terms of business of the third party which do not reflect the parties' intentions.   The third situation can arise where the investor has paid for everything and the inventor has contributed nothing other than his or her initials idea but still insists on the application proceeding in his or her name alone.

Each of those situations can be avoided if the parties take independent legal advice and negotiate a written agreement that reflects the parties' intentions before any time or money is committed.   By independent, I mean a barrister, solicitor or patent attorney who is unconnected with the patent attorney who prosecutes the patent application.   I say that because in every entitlement dispute in which I have been instructed the attorney has been instructed by one of the parties.   It is next to impossible to act for a client but also safeguard the often conflicting interests of the other parties.

A properly negotiated and drafted agreement will anticipate the possibility of the parties falling out over minor as well as major issues and provide machinery for resolving them such as expert determination in the case of minor issues and mediation or some other form of alternative dispute resolution in the case of major issues.  Taking independent legal advice may be daunting at a time of rising interest rates and flattening demand but it is chickenfeed in comparison to the costs of the sort of entitlement dispute that I describe in my 2015 article.   And in relation to that article, the only thing that has changed since 2015 has been the costs of litigation which have increased along with everything else,  

So if you are thinking of collaborating on the development of an invention or investing in such a collaboration have a word with me or some other specialist lawyer or attorney first.  If you are unfortunate enough to be caught up in an entitlement dispute, I (or someone like me) may be able to advise you on how to resolve it without going before a hearing officer.   If a tribunal hearing cannot be avoided, you will need some skilled and experienced specialist representation before it.  Once again, there are members of the Intellectual Property Bar Association (of which I am one), the Chartered Institute of Patent Attorneys and specialist solicitors who can help you,

Anyone wishing to discuss this article may call me on 020 7404 5252 or send me a message through my contact page,

Further Reading

For an example of an entitlement dispute, read Jane Lambert Patents - Bionome Technology Ltd v Clearwater 14 Dec 2024 in NIPC Law.

Saving Money on IP at a Time of Rising Prices

 

Jane Lambert

At a time of rising production costs and weakening demand for their products and services, businesses are tempted to reduce or even curtail their spending on intellectual property services.  That will often prove to be a mistake because brands, designs, technology and creative output are rather like the golden eggs in Aesop's fable and the laws that protect them the goose   The reality is that many businesses will take that risk because savings have to be made somewhere.  There are, however, steps that can be taken that will save money but not increase risk excessively.  Those steps are suggestions and not recommendations. There will be occasions when only the most expensive option will do.  That will depend entirely on the circumstances. 

Ascertaining Intellectual Assets

Before any decision can be taken as to what intellectual assets are to be protected a business needs to know what it holds.  A patent or trade mark attorney or solicitor specializing in IP will carry out an IP audit for a fee and there are some schemes that will pay for such audits (see How to use an IP Audit 13 Jan 2022 NIPC News).  However, for businesses that do not qualify for such funding and do not want to pay such fees, there are two very useful diagnostic tools from the WIPO and the IPO that will do much of the work for nothing.   

The WIPO IP Diagnostics generates a customized report with recommendations.  There is more information in WIPO IP DiagnosticsAn IP self-assessment tool for SMEs and the WIPO IP Diagnostics Frequently Asked Questions.  The only caveat is that the WIPO tool is not designed specifically for British users though most of the information will apply to users in the UK. 

The IPO's IP Health Check is designed for users in this country.   It will also generate a report covering

• "a personalised list of actions to take
• an explanation of why we have made each recommendation
• guidance on how to put each course of action into practice
• links to useful information, websites and other resources."

Both tools have their strengths and as they are both free there is nothing to stop users from trying both.

Not all Intellectual Property Rights Cost Money

Patents provide the most comprehensive protection but they are not cheap.  An applicant can pay up to £5,000 or more for searches, office charges and attorneys fees just for this country.  Afterwards,there are periodic renewal fees which increase over time in some countries.  One of the conditions for the grant of a patent is that 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." As anyone in the world can read a patent specification once it is published it is often necessary to patent the invention in every country where there is a market as well as every country where there could be a competitor.  The Patent Cooperation Treaty has reduced some of those costs but patenting in more than one country can still cost many tens of thousands of pounds.  Also, if a court or the Comptoller-General of Patents, Designs and Trade Marks ("the Comptroller") finds that a patent should never have been granted, the grant can be revoked.

If the invention cannot easily be reverse-engineered the inventor may decide to keep the invention secret and disclose it in confidence only to people who need to know about it.  Some product information such as the way to make Coca-Cola or Chartreuse can be kept secret for centuries.   Even where an invention can be reverse-engineered but its competitive advantage is unlikely to last more than a few years, it may be sufficient to rely on unregistered design rights, copyright in the software that actuates the invention or some other non-registrable IP right.

Supplementary unregistered designs which provide up to 3 years protection from copying for designs that could be registered under the 1949 Act may be all that is required for toys, novelties and fashion goods  Unregistered design rights, which last up to 10 years (though licences of right are available in the last 5 years of a design right term) are another alternative to design registration. 

Passing off is a less obvious substitute for trade mark registration as goodwill by reference to a mark, sign or get-up has to be built up but the cause of action is sometimes available in circumstances where a trade mark would not be registrable.  Having said that, an action  for passing off is usually more expensive than a claim for trade mark infringement,

Before the Event Insurance

For many small and medium enterprises, the costs of litigation are an existential threat.  Such a threat can be mitigated by legal expenses insurance.  Cover against IP claims is available before a claim arises and afterwards.  As is to be expected, the premiums for before-the-event insurance are considerably less expensive than for after-the-event cover,   The IPO has provided some useful guidance on IP insurance.  The Chartered Institute of Patent Attorneys publishes a list of specialist IP insurance brokers as do the Chartered Institute of Trade Mark Attorneys.

Examiners' Opinions

A dispute over whether a patent is valid or whether it has been infringed can often be resolved by referring the dispute to a patent examiner for an opinion pursuant to s.74A of the Patents Act 1977.  The advantage of the opinion is that it will be based on evidence and argument from both sides.  It is also inexpensive.  The IPO charges £200 for the service.  While the opinion of an examiner is non-binding it can often facilitate settlement through mediation or negotiation.

Domain Name Disputes

Although the Court of Appeal held in  British Telecommunications Plc and others v One In A Million Ltd and others [1998] EWCA Civ 1272, [2001] EBLR 2, [1999] WLR 903, [1999] ETMR 61, [1999] 1 WLR 903, [1998] Masons CLR 165, [1999] FSR 1, [1997-98] Info TLR 423, [1998] ITCLR 146, [1999] 1 ETMR 61, [1998] 4 All ER 476 that unauthorized registration of a trade mark as a domain name is actionable, the Internet Corporation for Assigned Names and Numbers ("ICANN") has devised the Uniform Domain Name Dispute Resolution Policy for resolving disputes between trade mark owners and domain name registrants. For US$1,500, a dispute over entitlement to a domain name ending in ".com", ".org", ".net" or other generic top-level domain can be referred to a tribunal of one or three panellists who will deliver a decision within days of the referral.  Registrars are bound by their agreements with ICANN to give effect to such decisions.  That is considerably easier, cheaper and quicker than seeking to enforce the judgment of a UK court abroad.  There are similar schemes in national or regional domain name authorities such as Nominet for the ".uk" domain or EurID for the ".eu" domain,

Proceedings in the Intellectual Property Office

The Comptroller has jurisdiction to decide many kinds of patent, trade mark, registered and unregistered design disputes.  The procedure of his tribunals is simpler and less formal than that of the courts.  It is often possible to dispose of disputes without a hearing.  Unless a party behaves unreasonably the maximum costs that can be awarded against it are limited to a published scale.  In trade mark and design cases, it is possible to appeal to an appointed person who will award costs on the same scale,

The IPEC Small Claims Track

If the owner of an IP right other than a patent, registered design, plant variety or semiconductor topography has a straightforward claim that can be decided in a day and seeks primarily an injunction and damages of £10,000 or less, he or she should consider an action in the small claims track of the Intellectual Property Enterprise Court (see Small IP Claims last updated 19 Jan 2018 in NIPC News).  The procedure is simpler and shorter than claims in the multitrack and recoverable. costs are limited to a few hundred pounds in most cases.

Other Forums

All other IP claims for damages of £500.000 or less that can be tried in 2 days could be brought in the Intellectual Property Enterprise Court where recoverable costs are also limited.    For slightly higher-value and more complex cases, there is the shorter trials scheme (see IPEC and the Shorter Trials Scheme Compared  28 May 2022).

Conclusion

These suggestions are by no means comprehensive.  Other practitioners will suggest other possible cost savings or disagree with mine.   It would nevertheless be useful to start a conversation on the topic.   Anyone wishing to discuss this article can call me on 020 7404 5252 during office hours or send a message through my contact form.

Where to learn about IP for Free

Jane Lambert

 

Every viable business in the world has something that gives it an advantage over its competitors.  It may be its reputation in the marketplace,  the appearance of its products or their packaging or the technology that it uses to deliver its goods or services.   These are its "intellectual assets" and the laws that protect investment in those assets are the business's "intellectual property".

Because intellectual property is not always included in business education syllabuses many business owners and managers have incomplete knowledge of what it is or how it works.  That is dangerous because intellectual property can literally make or break a business.  

So how does such a business owner or manager get up to speed?

Perhaps the best starting place is the Intellectual Property Office's online training tools.  Users have to open an account with the IPO but that is fairly straightforward and costs nothing.  Once they have registered they can log onto a range of online courses which are designed for business owners, schools and universities.    The course that most newbies are likely to need is "IP Equip" where they will learn the basics of copyrights, designs, patents and trade marks.

Once they have completed that course learners can proceed to the IP Health Check which covers the following:

• whether the user has IP to protect.
• Whether he or she owns it and, if not the user, who does
• how to protect the intellectual asset and whether and how it should. be protected, and
• how to exploit IP commercially.

An excellent little manual called the IP Business Lifecycle Framework can be downloaded from the "IP Business Lifecycle Framework" page.   It provides comprehensive information for start-ups, scale-ups and exits.   From now on I shall recommend it not only to paying clients but those attending my pro bono clinics.

Finally, those looking for equity or short-term funding can take the IP for Investment course where they can learn all about angels, private equity and debentures.   For those who want to work with another business, there is the B2B Toolkit.

Supplementing these online courses is the IPO's YouTube channel which hosts many videos covering the basics, case studies, enforcement and more in-depth discussion of various IP rights.  There are more resources on the British Library'sBusiness and IP Centre website as well as courses, one-to-one mentoring sessions and workshops at the British Library in St Pancras and its nationwide network of public libraries .

Many of those public libraries host IP clinics.  These are free consultations with patent and trade mark attorneys or other IP professionals.   I also offer IP clinics in conjunction with Barnsley Business Village and the Menai Science Park.   Anyone who wants to attend my clinic may call me on 020 7404 5252 during office hours or send me a message through my contact form.

Direct Access to Barristers on Intellectual Property Matters

Jane Lambert

I am a member of the Intelectual Property Bar Association to which most barristers specializing in intellectual property and technology law belong.  There are over 100 of us.  Most are in London but there are a few in other parts of the country.  Our job is to advise on difficult points of law, draft complex legal instruments and represent clients in litigation and negotiations.  Most of the judges of the Patents and Intellectual Property Enterprise Courts and many of the other judges of the Chancery Division were recruited from our numbers. 

Barristers are often compared to consultant physicians and surgeons in medicine.  Just as a GP might refer patients to specialists for diagnosis or treatment, patent and trade mark attorneys and solicitors seek our opinions, drafts or representation for their clients. Until 2004  we had to be consulted through those intermediaries. Nowadays, many of us accept instructions directly from members of the public on IP matters under the public access scheme.  Earlier this evening, for example, I was asked how to apply for a patent.  Over the weekend I was asked how to challenge a design registration under s.11ZA of the Registered Designs Act 1949,  Other typical requests would be to review a lengthy business format franchise agreement, draft a complaint in a domain name dispute or appear at an online entitlement hearing in the Intellectual Property Office,

It should not be supposed that we do the work of solicitors, patent or trade mark attorneys or other professionals simply because we can be instructed directly.  Our Public Access Guidance forbids us from conducting litigation unless specifically authorized to do so.  Similarly, we do not prosecute patent, design or trade mark registration applications though we draft statements of case, review witness statements and appear before IPO hearing officers and EPO Boards of Appeal.  Our rules prevent us from acting for a client if we believe it to be in the client's interests or the interests of justice for him or her to instruct a solicitor or other professional intermediary.   Far from competing with other professionals, we are actually a source of work for them. 

Though we do not prosecute patent, design or trade mark applications or conduct litigation we may be the best initial point of contact for clients who may need such services.  There are many ways of protecting the same intellectual asset some of which are free such as unregistered design right or the right to bring an action for passing-off.  The optimum method of protection at a particular time and in certain circumstances is not necessarily the most comprehensive.  Similarly, a request for the transfer of a domain name under the Uniform Domain Name Dispute Resolution Policy can be much faster, cheaper, safer and even more effective than a trade mark infringement or passing-off claim in the courts.  Counsel's advice on those matters is objective and impartial. If an attorney or solicitor is required we can suggest intermediaries with whom we have worked satisfactorily in the past.

If a business owner, manager or individual seeks advice on a point of law we can advise on most matters without the assistance of a professional intermediary.  That would include such questions 

• "Is this computer-implemented invention patentable?",  
• "Do I have an action for copyright infringement?" 
• "I have just received this demand for undertakings and pile of documents from that big firm of solicitors, what are my options?" or
• "Can you help me understand this complex agreement that a potential customer has just sent me?"

There are some issues such as "Is this invention patentable given the prior art?" when we would need a patent search or some other information that a professional intermediary can supply. 

When a business owner or manager understands contracts and has negotiated deals before we can draft just about any kind of agreement or instrument for him or her.  If he or she is feeling his or her way we would advise the owner or manager to introduce a solicitor, accountant or another professional to the team.

Most litigation would need a solicitor, attorney or other professional but sometimes the client can do the necessary work and all that is required is advocacy.   Many hearings in the Intellectual Property Office or small claims track of the Intellectual Property Enterprise Court would fall into that category.  On one occasion I have responded to an appeal in the Court of Appeal and there have been several others when I have appeared in the High Court without a solicitor.

If you want to use our services you will need to supply a passport, driving licence or other photo ID and evidence of residence and if you represent a company your authority to do so.  We will specify what we will do when we shall do it and how much we shall charge in a client care letter.  That is your contract with your barrister.   In the unlikely event that something goes wrong, we are all insured and regulated by the Bar Standards Board or other authorities We have approved complaints handling procedures and the ordinary law of contract and tort applies to us just as much as to any other professional services provider.  You can find more information in the Public Access Guidance from our regulator.

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

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

Patent Cooperation Treaty

Standard YouTube Licence

Jane Lambert

Two of the problems of applying for a patent are:

• Patent protection is territorial: that is to say, a patent enables an owner to prevent others from making, using, offering for sale, selling, or importing his or her invention in the country, group of countries or territory for which the patent is granted and not beyond; and
• In order to get a patent, an applicant has to disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person with the relevant skill and knowledge.

Thus, if an inventor gets a patent for the United Kingdom but nowhere else, there is nothing to stop an entrepreneur in India, China, Continental Europe or even the Republic of Ireland from making and selling your product everywhere in the world except the UK.

The only way to prevent that from happening was to seek patents in all the markets in which the applicant intends to market his or her invention as well as every country in which a competing product can be made.  As a patent will be granted only for an invention that is new, that used to mean simultaneous applications to every patent office from which a patent was required. 

Life became a lot easier for applicants in 1883 when the UK and other leading countries established the 
Paris Convention for the Protection of Industrial Property ("Paris Convention").  Art 4A (1) and art 4C (1) of the Convention gave a person who had duly filed an application for a patent in any of the contracting countries 12 months priority over anyone else who might file a patent for the same invention.  So long as an application was made within a year of the first application in the first country applications in all other countries were backdated to the first filing.

As more and more countries industrialized the task of filing multiple applications even over the period of a year became increasingly burdensome. The solution was the Paris Cooperation Treaty ("PCT") which made it possible to seek patent one' protection for an invention simultaneously in every country that is a party to the PCT by filing an "international" patent application with the applicant's home intellectual property office or, ins some cases, with the World Intellectual Property Organization ("WIPO").

The WIPO made the video that appears at the beginning of this article on 17 Dev 2020.  More useful introductory information is available from PCT FAQ on the WIPO website,   There are now 153 countries that are party to the PCT.  They include China, the USA, Japan, India, Germany and France.   Big countries that are not yet party to the PCT include Argentina, Bangladesh, Pakistan and Venezuela.   The UK Intellectual Property Office has published a useful booklet entitled Patent Cooperation Treaty (PCT) for Private Applicants which was last updated on 1 July 2020.  I reviewed a previous edition of the booklet in 

Applying for Patent Protection through the Patent Co-operation Treaty without a Patent Attorney on 1 Nov 2016.

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

IPO Guidance: Intellectual Property Insurance

Lloyd's Coffee House Source Wikipedia Insurance

Jane Lambert

The Intellectual Property Office ("IPO") has recently updated its guidance on IP insurance, It makes the point that such insurance may not be for every business but for some, it brings numerous benefits.  According to the guidance, those benefits are as follows:

• "It can protect cash-flow: IP insurance can ensure that your dispute and particularly litigation, does not tie up capital which you could use to grow the business

• it can provide a deterrent: LEI can give you the power to take action to enforce your rights where your financial position might not otherwise allow it. If a potential infringer knows that your insurance will cover making a claim, then it may be less likely to infringe or more likely they will stop when challenged. Some insurers are happy for you to confirm in marketing literature or on websites that your IP is insured, alerting competitors that insurance is in place

• it can improve your negotiating position: If this deterrent does not work then the knowledge that you can go to court (as a last resort) can encourage the alleged infringer to negotiate or mediate. Insurance can provide you with the means to take vital defensive action meaning there will be no need to settle on poor terms

• it might allow your IP to be used as collateral and can add value: Insurance can reassure lenders and investors that the value will not be lost because you cannot fight infringers/invalidity challenges. Potential licensees will also know that you can take legal action if necessary and will be indemnified if required."

Cover against the costs of litigation and other expenses is available both before and after an infringement has occurred.   Cover that is obtained before an infringement occurs is known as before-the-event ("BTE") insurance and cover after the infringement is known as after-the-event ("ATE") insurance.  As might be expected BTE insurance is considerably cheaper than ATE.  ATE policies were very popular before the Legal Aid, Sentencing and Punishment of Offenders Act 2012 came into force because a successful party could recover its premiums and its legal representatives' success fee from the losing party. That came to an end on 31 March 2013 (see Jane Lambert Intellectual Property Litigation - the Funding Options 10 April 2013 NIPC Law and Jane Lambert The Effect of the Legal Aid, Sentencing and Punishment of Offenders Bill on Intellectual Property Litigation 14 July 2011 NIPC Law). It is still possible to take out ATE insurance but the premiums must be paid by the insured. For that reason, such policies are much less common and the IPO guidance does not even bother to mention them.

The guidance lists the risks against which it is possible to insure.   These include:

• opinion only: covers legal costs of obtaining an opinion on the likelihood of successfully enforcing or defending an IP claim;
• enforcement and defence: covers legal costs of taking action to stop others infringing IP rights and defending allegations of infringement. Can cover enforcement and defence either separately or together
• damages: covers any damages payable in an infringement action
• validity: covers legal costs of defending challenges to the validity of the insured's IP rights
• lost revenue: covers revenue lost as a result of losing IP rights
• indemnity: covers liabilities arising under guarantees given to third parties, and
• cyber: covers losses from a variety of cyber incidents, including IPR breaches.

Premiums and excesses are also considered in the guidance.   By way of a rough indication, a typical premium for £100,000 (the cost of patent infringement proceedings in the Intellectual Property Enterprise Court) would be about £1,500.  The guidance adds that many insurers will accept premiums by instalments.

A link to a list of brokers, insurers and other providers is in the guidance. Advice is given on identifying a broker, selecting the optimum cover, making a claim and resolving disputes with insurers through the Financial Ombudsman.  The guidance discusses alternative methods of resolving IP disputes such as examiners' opinions on such matters as whether a patent is valid or whether it is infringed, and the IPO's mediation service.

Readers are referred to the IP insurance pages of the Chartered Institute of Patent Attorneys and the Chartered Institute of Trade Mark Attorneys.  I have also written a number of articles on IP insurance since 2005 which are listed in the table below.  Anyone wishing to discuss this article or IP insurance generally can call me on 020 7404 5252 or send me a message through my contact page. 

Further Reading

Date	Author	Title
1 May 2016	Jane Lambert	IP Insurance: CIPA’s Paper
13 Aor 2013	Jane Lambert	Intellectual Property Litigation: The Funding Options
23 Ocr 2010	Jane Lambert	IP Insurance Five Years On
5 Feb 2005	Jane Lambert	IP Insurance: Two More Insurers Identified
3 Sep 2005	Jane Lambert	IP Insurance
3 Seo 2005	Jane Lambert	IP Insurance: Does it work?
2 Seo 2005	Jane Lambert	Q. Why aren't there more British Patents? A. Because Enforcement is too Expensive!
2 Seo 2005	Jane Lambert	Patents: Why are there no British Names in the Patent Office’s Top Ten?

Business and Technical Information from Patent Databases

Jane Lambert

An invention is a solution to a technical problem. When applying for a patent for an invention, the inventor has to file among other things a document known as a "specification".  Such specification must contain a description of the invention and any drawing referred to in the description and 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. In due course, the specification is examined by officials of the intellectual property office known as "examiners" for compliance with the legislation governing patents and published on the office's website for all to see.

As an invention has to be new and involve an inventive step to justify a patent, such publications are important sources of scientific and technical information.  Many of those publications are held on giant databases such as the UK Intellectual Property Office's Ipsum, the European Patent Office's Espacenet and Google Patents.

These are two good reasons for consulting such a database.  The first is that you have an invention for which you seek a patent. You will want to check the prior art to ascertain whether your invention really is new and does involve an inventive step.  In almost every case your patent attorney will do that for you when you first instruct him but, if there is something out there that you can spot for yourself, you can save yourself a lot of time and money and instruct him more effectively by making your own search.  The second good reason is to find out about the latest technology.  In Why researchers should care about patents, the European Patent Office offers three advantages:

• Avoiding duplication of R&D efforts and spending; 
• Finding solutions to technical problems; and
• Gathering business intelligence. 

Henk Heus actually gives 10 Reasons Why Research Scientists Should Patent Search though these seem to be substantially the same as the EPO's (see 29 Oct 2015 GQ Life Sciences). According to Heus, up to 30% of R&D expenditure is wasted on duplicating research that has already been carried out.
Different databases will allow you to search in different ways.  With Ipsum, you need the application or publication number and the first page will look like this:

From the menu in the top right-hand corner, you can select the documents that you need.  Nearly every transaction relating to the invention will be recorded on Ipsum. So if you want to trace the prosecution history this is the place to go.   Espacenet and Google will allow you to search by proprietor, title and other search terms as well as by number.  These are the tools that you will use to make a more general enquiry,

When you find an invention that interests you can choose the full specification or the parts of the specification that interest you most such as the abstract, description, drawings or claims. The abstract will be a summary of the invention.  The description is essentially an instruction manual. It will identify the problem that the invention seeks to solve, discuss previous attempted solutions where they fell short. set out the solution in principle and then give an example.  It may do that by reference to numbered diagrams known as the "drawings".  At the end of the specification, there will be numbered paragraphs known as "the claims". That is the monopoly sought by the applicant.  Usually, the widest is expressed first and all subsequent ones tend to be narrower than the first rather like a matryoshka doll.    You should remember at all times that the specification is addressed to the "person skilled in the art", that is to say, the person or team of persons having the knowledge, skills and experience to make or use the invention.  Some words or terms may have a special meaning which is different from everyday usage.

While not essential, some introductory training in patent searching can help at the start.  Patent search workshops have been offered from time to time by the British Library and some of the other Business and IP Centres around the country. I shall be giving a short one-hour introduction to patent, trade mark and design searches and how to read patent specifications at the Menai Science Park on Angelsey between 13:30 and 14:30 on 29 Nov 2019 (see How to use Patent, Trade Mark and Registered Design Databases 2 Nov 2019 NIPC Wales). If you want to sign up for the class which is free, click here.

Anyone wishing to discuss this article or patents generally should call me on 020 7404 5252 during office hours or send me a message through my contact page.