From the Patent Examiner's Mouth

At the first meeting of the Leeds Inventors Group many years ago, our first speaker Lawrence Smith-Higgins, Head of Business Outreach & Education at the Intellectual Property Office, promised to send us a patent examiner to address one of our meetings. I reminded Lawrence of that promise every time I visited the Intellectual Property Office for a hearing and at every outreach event at which we were both present. Eventually he relented and arranged for Kalim Yasseen to speak to us earlier this year.  Kalim did in fact address the Sheffield group to a packed house but, sadly, he fell ill and was unable to repeat his talk in Leeds.

Happily, Kalim's colleague, Sarah Whitehead, took his place and she was excellent. Starting from first principles, Sarah explained what a patent was and why an inventor or businessman or woman might want one. She distinguished patents from other intellectual property rights such as copyrights and design rights.  She outlined the inventors' bargain with the public - a monopoly in return for teaching the public how to make or work the invention - and showed how a patent specification reflects that deal. The description and drawings setting out the teaching and the claims the extent of the monopoly.   Patiently she educated the audience as to why the application had to be examined, how it was done and indeed why it seemed to take so long.  It is a very strong thing to grant a 20-year monopoly of the manufacture, importation, distribution and use of a new invention and it is not to be undertaken lightly. The British process may seem long drawn out but our Intellectual Property Office was significantly faster than many other countries'. Finally, Sarah talked about disputes over patents and how they may be resolved mentioning in particular the IPO's opinions service.

After her talk I invited Sarah to supper at "All Bar One". Over a hamburger and chips and vegetarian pad Thai (I had the burger and she the pad Thai) she told me a little more about her work and that of the examiners.  We discussed the practical effects of the Supreme Court's decision in Human Genome Sciences Inc v Eli Lilly and Company [2012] 1 All ER 1154, [2011] UKSC 51, [2012] RPC 6, [2012] Bus LR D37 (a case that I had blogged in "Patents: Human Genome Sciences Inc. v Eli Little and Co" IP/IT Update 9 Nov 2011).  Turning to other matters, she mentioned that she came from Derbyshire, that she was educated at the Universities of Bath and Manchester and that her research had been in life sciences. 

One of the many matters upon which we agreed was that the cost and risk of enforcement had inhibited British businesses from protecting their research and development adequately. We welcomed the new small claims track to the Patents County Court (see "Patents County Court - the New Small Claims Track Rules" IP/IT Update 20 Sept 2012) which will be the topic of my talk to Sheffield Inventors Group tomorrow 1 Oct 2012 at Sheffield Central Library at 18:00 and Liverpool Inventors Club at QualitySolicitors Jackson & Canter at 88 Church Street, Liverpool, L1 3AY on 29 Oct at 18:00.

Kate Reid: Confidentiality and Licensing

Counsel are probably in the best position to judge whether a solicitor, patent or trade mark agent is any good because we are instructed by members of those professions. Since the 4 July 2004 barristers have been permitted to deal directly with the public. Public access has changed the way we are instructed but it has not changed the work that we do. If a case requires a solicitor we have a professional duty to advise our client to that effect.   As often as not, the first question from the client is "Can you recommend one?"  I usually make a number of suggestions depending on the nature of the work but it it involves litigation or licensing I nearly always include Kate Reid, principal of Pemberton Reid.

According to her web page, Kate qualified as a solicitor in 1995 and worked at both Hammonds and Lupton Fawcett in Leeds before setting up Pemberton Reid.  In addition to her LLB she holds a post-graduate diploma in Intellectual Property Law and Practice.   She has been instructed in some important cases:

"Antec International v AVS (patent infringement), Antec International v SWC (passing off), Scholes Windows v Magnet (design right infringement), Tyco European Metal Framing v Clewer & others (design right infringement ), 1-800 Flowers (objection to a trade mark application), Bentone v EOGB (trade mark invalidity proceedings)."

Her work now includes:

• advising on the existence and extent of intellectual property
• advising on infringements of intellectual property rights
• intellectual property agreements such as licences and assignments and confidentiality agreements
• intellectual property litigation in the High Court and Court of Appeal
• proceedings in the patent office regarding ownership and entitlement to patents
• prooeedings in the trade marks registry regarding opposition and invalidity of trade marks
• WIPO domain name dispute resolution actions 
• due diligence for purchasers and sellers of intellectual property
• distribution, supply and commercial agency agreements
• terms and conditions of trading
• advising on the Commercial Agents Regulations 1993
• litigation in relation to the Commercial Agents Regulations 1993.

Kate was guest speaker to the World Intellectual Property Day meeting of Leeds Inventors Group on 18 April 2012 (see "Kate Reid at the Leeds Inventors Group 18.4.12"  26 April 2012).  The title of her talk was "Confidentiality and Licensing"). On confidentiality she discussed

• why use a confidentiality agreement
• what is confidential information
• when is information not confidential
• how long will information be confidential, and
• what can it be used for.

On licensing she talked about the nature of a licence and the rights that can be granted, royalties and the usual terms with a few special words about trade marks.   

Immediately after her talk we had a presentation from FabLab Airedale which is now open for business (see

"FabLab Airedale: Introductory Offer and Visit" 2 May 2012 IP Yorkshire). The next meeting of the Leeds Inventors Group will be a visit to FabLab Airedale in Keighley on 16 May 2012 between 18:00 and 20:00 (see "16th May Leeds Inventors Group -visit to Fablab Airedale" 2 May 2012 Leeds Inventors Group blog).   Inventors from Sheffield are also invited and I am sure that those from elsewhere would be very welcome.   If you want to come please call Ged or Stef on  0113 247 8266.

Finally, a plug for Sheffield Inventors.   If you want investment to develop your invention come to Sheffield Central Library, Surrey Street, S1 1XZ at 18:00 sharp on 14 May 2012 to hear Mr. Russell Copley of Angels Den speak on  "Raising Business Growth Investment - Alternatives to Bank Finance". Angels Den is one of the largest angels networks in the UK.

Further Reading

Jane Lambert "All you need to know about confidentiality" 14 June 2006

Jane Lambert "Enforce a Confidentiality Agreement for as Little as £475" 21 Aug 2010

Jane Lambert Sample Confidentiality Agreement 21 Sep 2010

Straight from the Horse's Mouth:"Filing a UK patent application - process and procedures"

When you apply for a British patent you have to satisfy the Intellectual Property Office  that your invention is new, involves an inventive step, is capable of industrial application, does not fall within any of the statutory exclusions and meets all the other requirements of the Patents Act 1977. The official who considers your application is called an examiner. The photo shows a group of them to the left. Very brainy people as you can imagine. Albert Einstein once did that job for the Swiss federal intellectual property office.

It's not often that you actually get a chance to meet a patent examiner but this opportunity will arise on Monday 6 Feb 2012 in Sheffield and Wednesday 15 Feb 2012 in Leeds.

Sheffield and Leeds inventors groups are delighted to welcome Kalim Yasseen, an examiner of the UK Intellectual Property Office to our February meetings. Kalim will talk about  "Filing a UK patent application - process and procedures".

These talks are important not just for inventors but also for patent agents, entrepreneurs, business advisers, bankers, angels and venture capital investors and just about everyone involved in the patenting process.

The Sheffield talk will take place at Sheffield Central Library, Surrey Street, Sheffield, S1 1XZ on 6 Feb at 18:00.

The Leeds talk will take place at Leeds Central Library, Calverley Street, Leeds, LS1 3AB  on 15 Feb at 18:00.

Both events are free.

Leeds Inventors Club: John Biddleston

Leeds Inventors Group is in for a treat this month. The first speaker of the New Year will be John Biddleston who gave an excellent talk to the Sheffield Inventors Group on 7 Nov 2011.  

The title of John's talk will be "The Importance of Planning". He is well qualified for that topic as he us a product design consultant as well as an inventor.  He is also a qualified teacher and knows how to keep an audience's attention.   I wish he had been one of my masters.

The talk will take place on 18 Jan 2012 at 18:00 at Central Library, Calverley Street, Leeds, LS1 3AB. For further information call Ged Doonan or Stef Stephenson on  0113 247 8266 or  email piu@leeds.gov.uk.

Product Design Consultants in Yorkshire

By coincidence both the Sheffield and Leeds Inventors Groups had excellent presentations from product designers in November 2011.

John Biddleston of The Big Consultant spoke to Sheffield on 7 Nov. He has posted his slides to his blog which you can view and download here.

Alex Smith of TRIG Creative spoke to Leeds on 16 Nov 2011 and you can download his talk "Cost Effective Product Development" here.

John and Alex represent just two of many excellent design consultancies in Yorkshire. Others include Matthew Conley of HJC Design of Barnsley and Richard Hall of Pd-m International of Harrogate.

All of them are friends of the Leeds and Sheffield clubs.

Going for Grants

Going for Grants is a double act between Tom Bathgate and Charles Lucas. Tom's background is in management while Charles is an accountant. They have joined forces to help businesses find grant funding. They operate from Manchester Science Park.

Tom and Charles visited Leeds Inventors Group last month and they are coming to Sheffield Central Library on 5 Dec 2011 at 18:00. Here is a review of their talk when they came to Leeds and here is my photo of Tom in full flow.

The team's central message was that despite austerity there are still plenty of grants and low interest loans but these funds are in no sense free money. The funds have to be identified. Proposals have to be drawn up. Once a grant is awarded or moneys are advanced there are likely to be conditions that have to be complied with. Failure or delay in complying with those conditions can slow the flow of cash or even result in a demand for repayment.

According to its website, Going for Grants assists businesses in five ways:

• First, it looks for grant or soft loan funding that might be available to meet a business objective. Tom and Charles said at Leeds that they are often asked by businessmen what they should do to qualify for a grant. That is like putting a cart before a horse and it very rarely works. It is much better to plan the business and then look for funding whether grants, loans or even equity investment. In the talk I mentioned crowd funding and a new crowd funding venture by Amanda Boyle called Bloom VC. Tom, who is Scottish, had heard of Amanda through her work with Scottish Enterprise. Looking for available funding is not easy for a busy businessman or woman unless you know where to look. Tom and Charles do know where to look and they offer a preliminary search for £85 plus VAT.
• Once it has reported, Going for Grants offers its clients a free consultation to discuss any funding opportunities that may have come to light.
• If a funding opportunity is identified and the client wants to go for it Going for Grants will help him or her prepare a grant or loan application. Applications for the grant itself are usually made on a contingency basis but the company does charge for some services such as drafting a credible business plan.
• If a grant is awarded Going for Grants helps the client meet deadlines and comply with conditions to make sure that the funds keep flowing.
• Finally, they provide ongoing support in all aspects of the programme.

If you were not at Leeds last month it is certainly worthwhile coming to Sheffield on 5 Dec. The Sheffield Inventors Group meets the first Monday of most months and it has a good programme of speakers lined up. If anybody wants to discuss this article or any other topic he or she can call me on 0800 862 0055 or contact me through Facebook, Linkedin, Xing, twitter or through my contact form.

FabLabs - Jane Keats on "Factories of the Future"

On 5 Aug 2011 I wrote about the Manchester FabLab and the global FabLab network in my IP North West blog. On 21 Sept and 3 Oct 2011 the Leeds and Sheffield Inventors Groups heard from a FabLab user.

Jane Keats, a young New Zealand designer who is principal of Studio 52, presented "Factories of the Future", an introduction to the FabLab movement and additive manufacturing. Jane's slides cover the following topics:

1. FabLabs

2. The next industrial revolution

3. Factory of the Future

4. Open Innovation, and

5. Her Personal Experiences.

Here is a review of her talk to the Leeds Group on the 21 Sept 2011 in the LIG blog.

We in the Inventors Club are very supportive of the FabLab movement and I have advised and assisted the Manchester FabLab on a pro bono basis. On 12 Oct 2011 I chaired an Introduction to Intellectual Property and Licensing where patent attorney Tom Hutchinson, intellectual property solicitor Michael Sandys and I gave presentations. I shall upload our slides to Slideshare and make them accessible through this blog in the next few days.

As the Leeds review states, Bradford City Council and others have plans to set up a FabLab in Keighley and I have been in touch with the local authority to offer it our support. I brought the FabLab movement to the attention of Councillor Mehboob Khan, deputy chair of the Leeds City Region Local Enterprise Partnership, at the LEP Summit on 9 Sept 2011 so there is every chance that the project will get the support it needs. I will keep you posted.