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 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.