If only ...........

Jane Lambert

 

Barristers are called upon to advise or provide representation when something has gone terribly wrong.  Often, we are called in far too late. When that happens, we say to ourselves, "If only the client had taken professional advice sooner."  That is particularly true of intellectual property law where a right of action can be lost because the client did not seek legal protection for his or her invention, brand or product design or he or she stumbles into an infringement claim because he or she did not carry out the necessary patent, trade mark or registered design searches before launching his or her business or product.

There are two reasons for this.  The first is that clients do not always know whom to consult.  There are many different types of professionals in intellectual property, such as patent and trade mark attorneys (formerly known as "patent" and "trade mark agents"), patent searchers and specialist IP counsel and solicitors that the public rarely encounters.    I counted 23 separate professions in How to Get Into IP.  The other reason is that they are worried about intellectual property practitioners' fees which can be pricey.

The initial advice and signposting service that I have offered for many years in London, the North of England and Wales meets both concerns.  In many instances, I can give you the answer to your question immediately for nothing.  In others, I may have to refer you to another professional, such as a patent or trade mark attorney, a specialist IP tax consultant or a product design consultant who will also give you at least 30 minutes of his or her time free.

It is important to note that not everything is free.  We will analyse your needs and explain your options pro bono, but if you ask any of us to advise or act for you further, we will charge for our service, albeit at a competitive rate.

It gives me great satisfaction to report that the Barnsley Business Village, which hosts some great innovative businesses, is promoting my initial advice and signposting service to its tenants.   It is important to stress that anyone can register for the service by completing this form.  This scheme is not restricted to Business Village tenants or even to residents of Yorkshire.   

The Initial Advice and Signposting service is only one of several offered by NIPC Inventors' Club.   We also hold events, give online talks.  The next event will be a conference at the Business Village in February on writing an IP strategy and integrating it into a company's business plan.  Finally, we publish the NIPC Inventors Club blog. 

If you want to learn more about our service, call me on 020 7404 6262 or send me a message through this form.

Immediate IP First Aid Nationwide

Field Hospital in First World War

Author National Museum of Health and Medicine
Source Wikipedia
Creative Commons Licence

Jane Lambert

I have been conducting free monthly consultations on IP law in London and the North for the last 10 years or so. I have seen lots of clients in that time and can count a number of successes as a result.

However, that service does have some five limitations.

1. it requires my presence and I can only be in one place at any one time. 
2. A month can be a very long time to wait when a  matter is urgent or you are impatient for information. 
3. I often need to refer clients to another professional such as a patent or trade mark attorney or a product design consultant which results in further delay. 
4. Many problems can be dealt with by a simple phone or Skype call or email. 
5. Clients who need to see me sometimes have to travel for miles.

I have therefore decided to improve and extend my IP Clinic in the following way.

Anyone who wants a free IP consultation with me or some other IP professional should call

020 7404 5252

during office hours and ask for an appointment to speak to me by telephone. I am not always available because I may be in court or a meeting but someone will take your name and number and arrange for me to call you back. Tell the person who takes your call that you are calling about my IP clinic.

Alternatively, you can send me a message through my contact form.

I should be able to give you some basic advice there and then and there will be no charge for that service. Should it appear to me that you need to see some other professional I will call at least one member of the relevant profession who practises in your area wherever possible and ask whether he or she would be willing to see you for an initial meeting or talk to you by telephone for up to 30 minutes free of charge. If the answer is "yes" I will pass you on to him or her.

Please note that you can only use this service once. If you want to consult me or any of the other professionals to whom I may refer you again you will have to instruct us in the usual way and that will usually require a fee the amount of which will be negotiated at the time.

In the next few days, I shall launch an IP clinic website which will provide further information including a knowledge base of answers to frequently asked questions.

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

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

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

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

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

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

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

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

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

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

Inventor Assistance Programme

The Inventor Assistance Programme (IAP) matches inventors and small businesses in developing countries with patent attorneys who are willing to offer their services to such clients pro bono. This is a joint initiative of the World Intellectual Property Organization and the World Economic Forum. So far, Colombia is the only developing country in the programme but other countries are expected to join shortly.

A brochure explaining the IAP can be downloaded here and frequently asked questions can be found here.

This scheme is likely to benefit both inventors and attorneys. The inventors will have a chance of protecting their inventions in their potential markets with robust patents. Attorneys will get a chance to cultivate some of the multinationals of the future. All we benefit from the growth of the developing country's economy

I already offer up to 4 thirty minute slots for free legal  on all sorts of intellectual property issues to individuals and small businesses in the UK. I am very happy to provide a similar service to inventors, designers, software developers and other creative or innovative individuals from other countries if they care to get in touch. I may not know all the answers but I do know a lot of IP lawyers and patent and trade mark attorneys around the world who can probably help. If you want to discuss any IP issue give me a call on +44 (0) 207 404 5252 between 08:30 and 19:30 London time or send me a message through my contact form.