Intellectual Property Resources for Inventors and Small Businesses in the USA

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Jane Lambert

In a post to the US Patent and Trademark Office ("USPTO") blog entitled Intellectual property resources in your area, which was published on 24 June 2019, Mr Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO wrote:

"Providing entrepreneurs, small businesses, and independent inventors with access to intellectual property (IP) resources is one of the major priorities for the USPTO. These entities are vital to our country’s economy, but they often don’t have the same resources that larger entities can leverage to protect their innovations. Because of that, the USPTO oversees several programs to assist with free or reduced-cost help in applying for patents, including the Patent Pro Bono Program, the Pro Se Assistance Program, the Certified Law School Clinic Program, and Patent and Trademark Resource Centers. That’s all in addition to the reduced filing fees we charge to small and micro entities."

Entrepreneurs, small businesses and independent inventors are as important to the British (and probably every other advanced country's) economy as they are to the American economy.  At the very least, we can learn from Mr Iancu's blog post.  British inventors and entrepreneurs seeking US patents and trade marks may even be able to take advantage of some of the facilities and resources that Mr Iancu mentions.

USPTO
The USPTO is the intellectual property office for the USA.  Because patents can be granted for new plant varieties under 35 USC § 161 and new, original, and ornamental designs for articles of manufacture under 35 USC § 171 which are equivalent to plant breeders; rights and registered designs in the UK as well as for inventions it performs functions that are carried out by the Plant Varieties Rights Office as well as the Intellectual Property Office in this country. Unlike the IPO, the USPTO has no responsibility for copyright.  There is a separate Copyright Office within the Library of Congress for copyright and related rights in the USA.

Patent Pro Bono Program
Inventors and small businesses that meet certain financial thresholds and other criteria may be eligible for free legal assistance in preparing and filing patent applications under the Patent Pro Bono Program.   This is a nationwide network of independently operated regional programmes that match financially under-resourced inventors and small businesses with volunteer patent attorneys and patent agents.

Pro Se Assistance Programme
"Pro se" is Latin for "on his (or her) own behalf" and refers to what we would call "unrepresented parties", that is to say, inventors or other applicants who file patent applications without the assistance of a US qualified patent attorney or patent agent.   The Pro Se Assistance Program offers a number of services to the public prior to filing, including:

• Dedicated personnel to assist with pre-filing questions including:
• An explanation of different types of application filings
• Assistance with forms completions and filings
• Reviewing application (e.g. Specification, Drawings, and Claims) for compliance with current regulations
• In-person assistance for the general public at USPTO Headquarters at Alexandria in Virginia regarding pre-filing
• Targeted support to connect applicants with relevant resources and information
• Online resources found on pro se assistance programme page. 

The page also contains some very useful videos. It is the resource that inventors and advisors outside the USA are likely to find most useful.

Law School Clinic Certification Program

Participating universities in this programme offer advice and assistance on US patent and trade mark law from selected law students under the supervision of their teachers or other IP professionals. I am delighted to see that the University of California at Los Angeles (which is my alma mater and also that of Mr Iancu) participates in the programme.  A table of universities indicating the services they offer, the geographical area that they cover and the contact details of the organizer appears on the programme page.

Patent and Trademark Resource Centers

These seem to be like our Business and IP Centres. Many are located in public libraries and provide classes and workshops as well as patent specifications, law reports, textbooks and other specialist publications to subscribers.  Some run or host inventors' clubs.  Los Angeles Public Library, for instance, offers:

"computerized searching of patents, trademarks, and copyrights. Library users perform their own searches. Computers are available on a first-come, first served basis. Ask library staff for instructions on use. Use of intellectual property databases is free, but printing is $.25 per page. We also have collections in print and microfilm. During regular library hours, we provide some assistance by telephone at 213-228-7220."

There is a lot of general information on patents, trade secrets, trade marks and other IP rights on the library's web page.  The USPTO lists patent and trade mark resource centres on its PTRC locations by state web page.

Anybody wishing to discuss this article or the resources available to inventors and SME in this or any other country should call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact form.  

Resources for Inventors and other Startups in Northwest Wales

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Jane Lambert

The area coloured bright green on the map may not be the everybody's first choice for setting up a new business but it has a lot going for it:

1. It is a very pleasant place in which to live.  I have travelled the world but never have I found a more attractive combination of coastal, mountain and pastoral scenery than in the Lleyn Peninsula. 
2. It is close to four major conurbations, namely Greater Manchester, Merseyside, South and West  Yorkshire and Dubiln. 
3. It is part of the Northern Powerhouse and on the freight routes between Dublin and London and Dublin and the ports on the Humber.
4. It has a fine research university at Bangor which has developed the Menai Science Park in Anglesey (see M-SParc - Anglesey's Science Park 29 Aug 2018  NIPC News) and the Pontio Centre with its FabLab (see The Pontio Centre: A Resource for Inventors, Designers and Makers in North Wales 14 Dec 2018).

Unlike England, there are no local enterprise partnerships in Wales.  Instead, Business Wales offers the same sort of advice and support that used to be provided in England by Business Link under the strategic oversight of the Welsh government.  There are therefore no Business and IP Libraries though Llandudno junction was once part of the PatLib network (see A New Patlib has opened at Llandudno Junction North Wales 15 April 2011 Patlib UK).  The nearest English Business and IP Centre is at Liverpool Central Library. 

As there are no Business and IP Centres in Wales Liverpool Central Library hosts the nearest CIPA patent clinic. Advice on contracts, copyrights and trade marks is also available through specialist clinics at the library.  The only IP clinic in Wales takes place at the Intellectual Property Office in Newport.  A search of the CIPA and CITMA databases suggests that all the patent and trade mark attorneys in Wales practise in the south and mainly in and around Cardiff.

Business funding in Wales is offered by the National Development Bank of Wales which trades under the Banc trade mark.  The Bank has four offices in Wales the nearest being at St Asaph and Wrexham.  According to the "About Us" page of its website, it offers both loan and equity finance.  A list of the funds it manages also appears on its website,   There is also a business angel network known as Angels Invest Wales 

Anyone wishing to discuss this article or any matter arising from it should call me on 020 7404 5252 during office hours or send me a message through my contact page.

Barnsley IP Clinic 9 May 2017

Jane Lambert

On the second Tuesday of every month, I give up to four 30 minute consultations on intellectual property and related areas if law free of charge to entrepreneurs, inventors, artists, designers or anyone who can get to my clinic at Barnsley Business and Innovation Centre off Innovation Way at Wilthorpe in Barnsley.

Typical questions are:

• "I have an idea for a new business. Can you tell me how to protect it?"
• "How can I find out whether my invention is new?"
• "Someone wants to invest in my business. What sort of agreement should I make with him?"
• "How do I 'copyright' a logo?"
• "Where do I find a patent or trade mark attorney and what should I be looking out for?"
• "I have just received this threatening letter from a firm of solicitors. What should I do about it?"

I have been practising IP law for many years and I can help you with all those issues. I normally charge for my time so a free consultation is quite a saving.

The next clinic is between 10:00 and 12:00 on Tuesday, 9 May 2017. f you want to book an appointment you can fill in this online booking form or call George Scanlan on 020 7404 5252 during normal office hours and ask him to book you a slot.

After the clinic, I shall give a talk on a topic of interest to entrepreneurs and other business owners between 12:15 and 13:15. The topic for next month's talk will be

How do I protect my business idea?

That is the question I am most frequently asked but it is not straightforward to answer because everybody's business idea is different as are everybody's circumstances and resources. The most extensive form of protection for a new product or process is a patent but it is expensive to get and even more expensive to maintain and enforce and for some businesses it is just not possible. I will take the audience through all the options, the advantages and disadvantages of each type of protection, the likely costs and some tips on finding a patent attorney, IP insurance and watch services. If you want to stay for that, call George on 020 7404 5252 to book your place.

A Sad but not Unusual Tale of an Inventor

Mr Perry invented a fence bracket.  In his abstract he described it as

"A fence bracket comprises a main plate 10 adapted to overlie the top edge of a fence panel 18, and depending sides, which may be triangular and apertured as shown, which form a channel to receive the panel, and apertured tabs 14, 16, for the receipt of fasteners 22 to attach the bracket to post 20. An alternative form has a back plate 41 (Fig 4A, not shown) which lies against post 20."

He appears to have applied for a patent by himself for he is named as the agent on the specification. His application was duly granted under British patent number GB3920104.

Mr Perry believed that a wholesaler called FH Brundle sold products that infringed his patent and he wrote to the company's CEO in the following terms on 5 Oct 2012:

"FAO: Chief Executive/Chairman

Notice Before Proceedings

Infringement of Patent GB2390104, 4 August 2003 - October 2011 Through Sales Of Betafence's Nylofor 3D Bracket And 3M Panel

Claim for Damages Under the Patents Act 1977.

Sirs,

I have written to your Company in the past to see if you would have any interest in stocking any of my fencing products and your reply was that you didn't sell any of these products or that type of fencing and your Company had no interest.
It has now been brought to my attention that your Company has been selling a product of Betafence known as Nylofor 3D bracket that is used to install Nylofor fencing, for over at least 5 years, according to your Southampton office and you in fact still sell these products.
This Nylofor product infringes my Patent and I demand that you provide an Account of Profits of direct profit on sales of:
1. The quantity of the Nylofor 3D bracket you have sold between August 2003 – October 2011.
2. The number of Nylofor 3M fence panels that have been sold during the same period that are installed using the Nylofor bracket.
3. The number of fence posts sold corresponding with the number of fence panels sold during the same period.
4. The quantity of add on products sold such as the allen key tool specifically designed to use with the Nylofor 3D bracket.
I am legally entitled to a share of these profits whilst the Patent was in force and which is currently being restored to the register, as it had lapsed temporarily due to Patent Office error in late 2011.
I intend to take proceedings against your Company in the High Court if no amicable solution can be reached regards paying me my share of the profits for your use of my inventions without any licence to do so. Please respond within 14 days or I will commence proceedings against your Company.
Sincerely,"

Mr Perry's letter constituted a threat of proceedings for the infringement of a patent within the meaning of s.70 of the Patents Act 1977. I discussed that section and similar provisions in other intellectual property statutes and regulations in If you think someone has infringed your patent talk to a lawyer first 11 July 2014.

Solicitors acting for the wholesaler replied on the 15 Oct 2013. They denied that their client had infringed the patent, complained that the letter constituted an actionable threat and invited Mr Perry to withdraw it. On 21 Nov 2012 Mr Perry rejected their complaint and demanded particulars of their client's sales:

"Para. 6 Just to clarify, according to you, your client will be ignoring the Cease and Desist Notice and will continue to sell the infringing products. As you and your client both take the Patent Infringement very seriously, you will be providing the information I have asked you for and in the meantime I will put a hold on taking any legal proceedings against your client."

The solicitors repeated their request to Mr Perry to withdraw his threats which were met with yet another letter dated 18 Dec 2012:

"In your initial letter you are claiming 'unjustified threats of legal action for alleged patent infringement' and I pointed out that your client may still have a liability to me between 2004 – 2011 whilst the Patent GB2390104 was in force, …"

The wholesaler brought proceedings against  Mr Perry for groundless threats in what is now the Intellectual Property Enterprise Court ("IPEC"). Mt Perry counterclaimed for infringement of the patent joining the manufacturers of the allegedly infringing products into the proceedings as Part 20 defendants. The action and counterclaim came on before His Honour Judge Hacon in FH Brundle (A Private Unlimited Company) v Perry [2014] EWHC 475 (IPEC).  The judge construed Mr Perry's patent claims and concluded that they had not been infirnged. The failure of the counterclaim meant that there was no defence to the threats action. The judge gave FH Brundle judgment on the claim and dismissed the counterclaim.

Mr Perry represented himself in those proceedings whereas the wholesaler and one of the manufacturers were represented by solicitors and counsel.  At a hearing to assess costs counsel for the claimant and first Part 20 defendant reminded the judge that he had discretion under CPR 44.2 (4) (a) to take account of the conduct of the parties. They urged the judge to disregard the cap on recoverable costs on the grounds that Mr Perry had behaved unreasonably. His Honour described that behaviour as follows:

"Brundle pointed to Mr Perry's persistent use of intemperate language and expletives in his pleadings and in his skeleton argument for the trial. This is consistent with the way Mr Perry has expressed himself in emails sent to my clerk. I was told that Mr Perry was warned about his language by Mr Recorder Meade QC at an application before him on 16 May 2013. Before me Mr Perry, who appeared in person, accepted that he had been warned by Mr Meade and that he had chosen not to heed the warning."

Shortly after judgment had been delivered Mr Perry circulated the following letter claiming that it had come from the judge:

"Royal Courts of Justice
Patents County Court
Rolls Building, Fetter Lane
London

sales@hmcts.fasteners.co.uk

Mr Richard Perry

19 Yerbury Street
Trowbridge, Wiltshire
BA14 8DP

26th March 2014

Claim CC13P00980

Dear Mr Perry,

I have re-considered the case CC13P00980 and upon reflection; your opponents (FH Brundle, Betafence and Britannia Fasteners) having used your name on purchase orders for the infringing goods protected under your patent (which seems to be a fundamental point in the case), have colluded to defraud you of substantial sums of profits you were rightfully entitled to and therefore I have reversed my decision in your favour and award £5,000,000.00 in damages that would settle the claim in full.
I apologise that I did not even question your opponents on this issue or the matters concerning the manipulation of design sheets and copyright dates as at the time I didn't think it was all that relevant.
I order the claimants and counter defendants to pay the claim in full within 14 days and the claim for unjustified threats is dismissed.

Mr Justice Hacon."

Although a deliberate attempt to influence others by means of a forged letter from a judge would normally be an extremely serious matter Judge Hacon thought that the letter was better characterized as a further example of Mr Perry's intemperate and eccentric behaviour. He took it into account by awarding an additional £2,000 costs against Mr Perry but he did not regard Mr Perry's conduct as sufficiently exceptional to take it outside the £50,000 costs cap. Giving his reasons in FH Brundle (A Private Unlimited Company) v Perry (No. 2)  [2014] EWHC 979 (IPEC), [2014] 4 Costs LO 576 the judge awarded costs of £49,645 against Mr. Perry.

Mr Perry was unable to pay those costs and was adjudged bankrupt on 30 April 2015. He appealed unsuccessfully against his bankruptcy order and applied unsuccessfully for permission to remain a company director notwithstanding his bankruptcy. He also issued fresh proceedings against F H Brundle and the manufacturers of the fence brackets which came before Judge Hacon in Perry v F H Brundle and Others [2015] EWHC 2737 (IPEC) 2 Oct 2015). His Honour struck out the claim and made an extended civil restraint order against Mr Perry under para 3.1 of Practice Direction 3C - Civil Restraint Orders which prevents Mr Perry from issuing any proceedings or taking any steps in existing proceedings without the permission of the court for the next 2 years. I discussed those proceedings in Civil Restraint Orders in IPEC: Perry v Brundle 12 Oct 2015 NIPC Law.

Although Mr Perry may have behaved intemperately and unwisely it is hard not to feel sorry for him. As the judge acknowledged at para [34] of his judgment in the strike out proceedings Mr Perry feels a strong sense of injustice which seems to have got the better of him at times. It might have been a different story had be been properly represented. A patent attorney might have drawn up more robust claims and a specialist solicitor would have steered him clear of any liability for groundless threats. But professional advisors come at a cost. For many years business disputes involving sole traders were covered by legal aid but legal advice and representation in business matters were excluded from the Community Legal Service by para 1 (h) of Sched 2 to the Access to Justice Act 1999.

In view of that exclusion this is what inventors should do:

1. Get a reader's card for the British Library and take advantage of the many free courses and inexpensive services available through the Business and IP Centre. It is a good idea to subscribe to the Centre's Facebook and Linkedin groups.
2. If you live outside London check whether there is a Business and IP Centre at a central library near you. Leeds Central Library is particularly good. Call Ged Doonan on 0113 247 8266 for details of his centre's services.
3. Take advantage of the network of free IP clinics up and down the country. Many are run by or in conjunction with the Chartered Institute of Patent Attorneys and I run a monthly one in Barnsley. Most clinics will allow you up to 30 minutes free advice with a patent or trade mark attorney or some other IP professional. They will give you some good advice on such topics as whether your invention is patentable, what to do if you think your intellectual property right has been infringed and how to respond to a complaint of IP infringement.
4. Consider taking out IP insurance whenever you register a patent or other intellectual property right to fund legal advice or representation.
5. Always consult a lawyer or patent or trade mark attorney before threatening legal proceedings. I am aware that lawyers do not come cheap but most of us are ready to do deals or suggest sources of funding.

If anyone wants to discuss this article or patents in general, call me on 020 7404 5252 during office hours or send me a message through my contact form.