What to do if your Patent is Infringed

Patents Court and Intellectual Property Enterprise Court 

Author Judicial Office Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

1. What do I do if my Patent is infringed?

The first thing to do is to take some specialist legal advice.  Do not take matters into your own hands unless and until you have done so. Intellectual property law differs from other types of law in that sending a letter before claim that would be perfectly acceptable in most circumstances can sometimes be actionable.  That is because s.70A (1) of the Patents Act 1977 provides:

"Subject to subsections (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat."

The law on groundless threats has recently been reformed.  It used to be far more draconian. There are now a number of exceptions and defences that did not exist before. But the provision can still land you in big trouble if you fall foul of it.   And one further point!  Not every solicitor or barrister in general civil or commercial practice has heard of s.70A (1) so make sure that you go to an IP specialist for advice on how to deal with suspected patent infringement.

2.  Where will I find Specialist Advice?

Barristers specializing in intellectual property law are eligible to join the Intellectual Property Bar Association, I am a member of that Association and so are most of my colleagues.  There are a lot of barristers who know about IP law who are not members but it is not always easy to identify them.

Many specialist law firms and law firms with expertise in IP law belong to the Intellectual Property Lawyers Association. There are however many law firms with expertise in IP law that do not.  Firms with such expertise tend to publish a lot of articles and give lots of talks on the topic. 

All Chartered Patent Attorneys will have acquired a thorough knowledge of patent law.  Many but not all will also have qualified as "patent attorney litigators" or "patent attorney advocates."  Some attorneys' firms have litigation departments. Others have arrangements with specialist law firms some of which practise from the same premises and under the same names.  The patent attorneys' professional association is the Chartered Institute of Patent Attorneys ("CIPA").

3.   How do I know if my Patent has Been Infringed?

Patents are granted for inventions that may be products or processes.  

S.60 (1) (a) of the Patents Act 1977 says that where the invention is a product a person infringes the patent if he or she makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise in the UK without the consent of the owner of the patent.

Where the invention is a process, s.60 (1) (b) says that a person infringes the patent if he or she uses the process or offers the process for use in the UK when he or she knows, or it would be obvious to a reasonable person in the circumstances, that its use there without the consent of the owner would be an infringement of the patent.

Where the invention is a process s.60 (1) (c) further provides that a person infringes a patent if he or she disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

4.  Yes but how do I identify that "Product" or"Process"?

When you or your patent attorney applied for a patent for your invention you will have filed a document called a "specification".   The specification will have contained a description of the invention and several numbered paragraphs known as "the claims"

S.125 (1) of the Act provides:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

Your invention is therefore set out in those claims.   

Thus, anyone who disposes of offers to dispose of uses or imports a product that is described in any of those claims infringes the patent for that product.  Similarly, anyone who uses a process that is described in any of those claims infringes the patent for that process.  Anyone who disposes of offers to dispose of uses or imports any product obtained directly by means of that process also infringes the patent for that process. 

5.   So  How does it work exactly?

The court works out what the claim means.  Often it breaks the claim into its "integers" or "features" as in the following example:

“1A An apparatus for automatically controlling a ventilator comprising:
1B first means for processing data indicative of at least a measured oxygen level of a patient, and for providing output data indicative of:
1C required concentration of oxygen in inspiratory gas of the patient (FiO2) and positive end-expiratory pressure (PEEP) for a next breath of the patient;
1D wherein FiO2 is determined to reduce the difference between the measured oxygen level of the patient and a desired value;
1E wherein PEEP is determined to keep a ratio of PEEP/FiO2 within a prescribed range and, while keeping the ratio within the prescribed range, to keep the measured oxygen level of the patient above a predefined value; and
1F second means, operatively coupled to the first means, for providing control signals, based on the output data provided by the first means, to the ventilator;
1G wherein the control signals provided to the ventilator automatically control PEEP, and FiO2, for a next breath of the patient.”

(see para [8] of Tehrani v Hamilton Bonaduz AG and others [2021] EWHC 3457 (IPEC) (22 Dec 2021).

As the exclusive right to exploit an invention for up to 20 years is a reward for teaching the world how to make or use it, the court reads the claim in the way that it would be understood by a "person skilled in the art".   He or she is the person to whom the specification is addressed.  He or she is often referred to as"the skilled addressee". Any special terminology or conventions that might be used by such skilled addressee are applied by the court.  Usually, the court requires experts in the technology to explain the terminology or conventions.

Once the court has decided what the claim means it looks at the defendant's product or process to see whether it has the claimed integers.   If the defendant's product or process does have those integers, then the claim is infringed.

6.    So Everything hangs on the Interpretation of the Claim?

Not quite!   The patent is infringed only if the claim is valid.    The first thing that a defendant does when he or she is accused of patent infringement is to investigate the validity of the claim.   There are all sorts of reasons why a claim might not be valid.   The claim may be for something that has already been invented.   That is called "anticipation". Alternatively, it may claim something that would be obvious to a person skilled in the art.  In that case, it would lack an inventive step. 

7.     Wouldn't that be picked up by the Examiners when an Application is made for a Patent?

Not necessarily!  Examiners do their best but they have only so much time and only so many resources.  They will read the patents, patent applications and technical literature in English.  Possibly they may know some other European language and they will consult patent databases or journals in those languages.  But much of the world's technical literature is now published in Mandarin, Japanese and Korean and not many examiners in this country or even at the European Patent Office in Munich speak those languages.  A prior disclosure may be a previous patent application but it may equally be an article in a scientific or technical journal.  If the information is available to the public then it is already known. 

8.     Phew!  So how often are Patents found to be invalid?

I don't have any statistics but quite often as you can see from looking at previous decisions of the Patents Court or Intellectual Property Enterprise Court.

9,.    Are they the Courts that decide Patent Infringement Cases?

Yes. They are the courts for patent infringement disputes in England and Wales.   

The Intellectual Property Enterprise Court ("IPEC") entertains claims that are worth £500,000 or less that can be tried in no more than 2 days.  Cases are very tightly managed in that court.   The costs that can be recovered by a successful party from the unsuccessful one are limited to £50,000 on the determination of liability and £25,000 for the determination of the damages or other financial remedy that is due to the successful party.

The Patents Court hears all other patent cases.   There are no time limits or limits on recoverable costs in cases before the Patents Court.   The judges of that court do their best to control costs but expert witnesses and specialist counsel and solicitors are expensive.

The Patents Court and IPEC are headquartered in the Rolls Building off Fetter Lane in London.  The judges of both courts have said that they will travel outside London for the convenience of the parties and witnesses or to save costs. To the best of my knowledge and belief, the Patents Court has only once sat in Birmingham.  I think that is also true of IPEC.   

There is a patents court in  Edinburgh which is part of the Outer House of the Court of Session.   The Chancery Division of the High Court of Justice of Northern Ireland hears patent infringement cases in Belfast.

If you have a foreign patent you have to go to the courts of the country for which the patent was granted.  Some countries like Germany, Switzerland and the Netherlands have specialist patent tribunals. Other countries do not.   TahylorWessing has a website called the Patent Map which has lots of useful information about patent litigation throughout Europe.

10.   So how much is that likely to cost me?

A lot of money even in IPEC.   A Patents Court dispute over the use of standard-essential patents can cost many millions of pounds.   That is because there are several technical trials to decide whether each patent is valid, essential to the standard and infringed and then a final trial to decide the terms of licences to use the patents.   If you run a start-up or indeed any other small or medium enterprise I strongly advise you to take out patent litigation insurance. I have written quite a lot about patent insurance in this blog over the years and can commend CIPA's work on the topic.

11.   Further Information

This article barely scratches the surface of a huge topic and I am aware that I have left out lots of crucial information.  If you have a specific enquiry call me on 020 7404 5252 during office hours or send me a message through my contact form. 

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.

An IP Strategy for Private Inventors

Strategy Game

Author Julio Reis

Licence Creative Commons Attribution-Share Alike 2.6 Generic

Source: Wikipedia

Jane Lambert

An intellectual asset ("IA") is something that gives a business an advantage over its competitors. No matter how small it may be or how simple its business model, almost every successful business will have such assets.  An  IA may be the business's reputation, its customer list, a way of making or packaging things, a website or even its standard terms and conditions.

A business that possesses such an asset will want to hold on to it and, if possible, make money from it.  Its best chance of doing so is to devise a plan to

• identify assets likely to generate revenue or some other benefit for the company, 
• determine the best legal protection for the IA having regard to its value and available resources, 
• provide a means of enforcing such protection, and 
• manufacture, license or otherwise make money from the asset.

Such a plan is often called "an intellectual property" or "IP strategy".

Inventing is a business activity.  If an inventor is employed in a research and development capacity, his or her employer is likely to have an IP strategy.  If the inventor is not so employed, he or she would be well advised to develop such a strategy for him or herself.

The starting point for a private inventor must be his or her invention. Is anyone likely to buy it? If so, who will be its buyers and how many will they buy?  Developing, marketing and patenting an invention, not to say enforcing a patent, is likely to be costly.  Unless those costs are likely to be recouped, there is no sense in incurring them.  For many private inventors, this is a very difficult question. The technical elegance of their brainchild may blind them to commercial realities.  This is where membership of an inventors' club can help.  The members of such clubs are not a bad cross-section of the general public. If fellow inventors are unmoved by the invention or see snags their views should be considered seriously.

The next issue to address is putting the invention on the market.  That usually boils down to a choice between making and marketing the invention or licensing others to make and market it.  Some inventors already have their own manufacturing or retailing businesses but many do not.  If they want to make or market the invention for themselves they have to set themselves up in business. They will need to draw up business plans, find collaborators, raise funds, acquire premises, plant and staff and market their inventions to the public. They may subcontract production to a manufacturer in this country or abroad. If they do that, they must ensure that their invention is patented or otherwise protected in the country where the manufacturing is to take place and they will need a very tight written agreement with the sub-contractor.

Licensing is often regarded as an easy option but it is not.  A licensee will incur costs in tooling and marketing. A business will incur those costs only if persuaded that to do so would be worthwhile. Determining whether a licence is worth taking is a type of business planning that few potential licensees have the time or inclination to carry out.  It is therefore up to the inventor to persuade them that it is worthwhile.  Daunted by such difficulties many inventors resort to invention promotion companies or making unsolicited offers to manufacturers or retailers.  Such approaches rarely work and often lead to expenses for the inventor.

Patenting is expensive but may be necessary.   Ideally, the invention must be protected in the countries where it is to be sold and the countries where it can be made. However, such protection may cost many tens of thousands of pounds in filing, translation and renewal fees.  Another problem with a patent is that the inventor discloses his or her invention to the world in return for a monopoly in a single country.  If a patentee has a patent for his invention in the United Kingdom but not the United States there is nothing to stop an American from making and selling the invention in the USA or anywhere else where the invention is unprotected.  There may be other, cheaper forms of legal protection for the invention that are available to the inventor.  Simply keeping shtum about the invention is one option if the invention is a product that is hard to reverse engineer.  Relying on some other IP right such as unregistered design right in the shape or configuration of the product or copyright in any software that may control the device may be others.

An inventor must be able to resist applications for the revocation of his patent or a declaration of non-infringement as well as pursue infringers.  Even with costs caps and cost management civil litigation can be cripplingly expensive. The only way that most businesses can sustain such expense is by taking out adequate IP insurance and the premiums for such cover are not cheap.

An IP strategy can be drawn up at any time and it will be reviewed and updated continuously but the ideal time to devise one is when drawing up a business plan.  That is because the costs of prosecution, procurement, professional services, premiums and so on can be funded and balanced against other expenses.

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

Neurofenix is the first Inventor Prize winner

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Jane Lambert

In "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy, 24 Jan 2017 I noted that part of the government's industrial strategy is

"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."

The competition was launched in August 2017 and received over 180 entries.  A shortlist of 10 finalists was announced in NESTA Inventor Shortlist on 31 Jan 2018.  Each of those finalists received £5,000 and mentoring from Barclay's Eagle Labs to perfect their inventions.

The shortlisted inventions have now been evaluated and Neurofenix Limited' is the winner.   Its invention  is the Neuroball  which encouragea stroke patients to perform hand and arm exercises and thereby recover their manual dexterity.

Anyone wishing to discuss this article or inventions generally should call me on 020 7404 5252 or message me through my contact form.

How to make Money from your Invention: Licensing

Jane Lambert

In How to make Money from your Invention 13 Sept 2017, I introduced readers to the EPO's Inventors Handbook. Readers will recall that the Handbook advised that there are basically four ways of exploiting an invention:

• A licensing agreement with a company
• A business start-up: get your idea to market yourself
• A joint venture 
• Outright sale of the idea.

In this article, I shall consider the first of those ways, namely licensing the invention.

The Handbook explains that a licensing deal is one that allows a party known as a "licensee" to use the invention in return for a periodic payment known as a "royalty". It adds that 

"The exact terms of the licence must be negotiated in a process that can be lengthy (often many months) and complex. The licence is a binding legal document, so it is usually essential to involve patent attorneys and other legal professionals."

The Handbook continues:

"For many inventors, licensing is the best way to benefit from an invention. The main reasons are:

• The licensee bears the costs and risks of production and marketing.

• Only established companies may have the resources to exploit an idea with major potential.

• Licensing can provide the inventor with an income over many years for relatively little effort."

However, it also warns that "only the strongest forms of IP will interest potential licensees" which in most cases means a patent.  Licensing is often seen as a soft option compared to setting up a new business to market the invention, but, in many if not most cases, the reverse is true.

For a start, unless you are answering an express invitation from a company to submit your invention, you are likely to spend a lot of time and effort looking for a company that could make money from your invention. Finding a company that can make money from your invention is not the same as finding a company that makes a product like your invention. If, for example, your invention renders obsolete a technology in which a company has invested heavily or threatens an income stream such as the supply of consumables or replacement parts, such a company may be the last business on earth to be interested in your product.

Once you have found a potential licensee you have to persuade that company that it can make money from your invention.  Sometimes, nothing short of a detailed business plan will do. That is bound to be a bit hit and miss as you are unlikely to have access to the financial, marketing and technical information that is available to the company's managers.  Even companies like Procter and Gamble and Henkel that invite submissions from inventors require those inventors to show how the invention will fit into their product range. They usually impose strict legal and technical requirements.

Except for companies like P & G and Henkel, you will have to give some thought as to whom you will contact and how you will present your invention. As I said in Finding a Route to Market for Your Invention - Unsolicited Approaches are not usually a Good Idea 25 Feb 2012, you are unlikely to get anywhere with an unsolicited submission. Your best bet is to find out as much as you can about your potential licensee through industry events like trade shows and seminars.  The inventors who are best placed to license an invention are those already in an industry or academics in a relevant discipline. Members of the public with no special connection with the industry will find it hard to sell their ideas.

As a licensee would take a licence under a patent or other intellectual property right, your intellectual property strategy must be one that works for your licensee rather than you.  Your invention must be protected not just in the United Kingdom but in all the countries where the invention is likely to be sold as well as those in which it can be made. Unless you intend to grant an express licence to your licensee you will have to take proceedings against infringers and resist revocation applications in each and every one of those countries. That can be very expensive for a private inventor or small business.

Finally, do not expect your licensee's management to be particularly kind to you.  Their job is to look after their shareholders and not to look after you.  They are likely to drive a very hard bargain in the licensing negotiations. After the licence is granted they will construe it in a way that suits them. Once they have learned how to make your product and developed a market for it they may try to challenge clauses they don't like or seek reductions in the royalty or other payments. When negotiating the licence you should think about dispute resolution and choose a method and governing law that works for you.

In negotiating your licensing agreement you are likely to need the services of a patent strategist who could be a lawyer with experience of licensing or a patent or trade mark attorney, an accountant with expertise in licensing and tax incentives for new technologies as well as a patent attorney.  Should you wish to discuss this article further, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

How to make Money from your Invention

Jane Lambert

So you've invented something. Congratulations!  That was the easy bit.  Your challenge is to make money from your invention without losing your shirt, your home, your marriage or even your mental health. I am not being flippant.  In all the years that I have been practising law, I have known far more inventors whose lives have been ruined by their inventions than those who have become rich from them.

The reason why bad things happen to inventors is that they allow themselves to become obsessed with their inventions. Obsession clouds judgment which leads to bad deals and bad decisions.  Often there is only so much that an inventor's spouse or partner can stand. That is what leads to family breakdowns. Money and relationship problems can lead to depression or worse.

In many cases, those misfortunes could have been avoided by seeking good advice at an early stage. Now intellectual property advice can be expensive but it does not have to be. There is a lot of good advice on the internet for free.  One of the best sources of advice is the Inventors Handbook on the European Patent Office website.

The opening words of the Handbook are as follows:

"The purpose of this Inventors' Handbook is to provide you with basic guidance on all the key stages of turning an invention into a commercial product. Or perhaps we should say the key stages of turning an idea into an enterprise, if we are to widen our definition of 'invention' to include novel processes, business methods, social interactions etc. Though invention has traditionally been associated with manufactured products, it is now better understood that new wealth has always been created primarily from new knowledge, or novel uses of existing knowledge."

I would invite readers to read the rest of the page which stresses the need to reduce risk and control costs and that is where someone like me can often be of assistance.

The next passage I should like you to read right now is Exploitation Routes. The page begins with the words:

"There are basically four ways of exploiting an invention:

• A licensing agreement with a company

• Business start-up: get your idea to market yourself

• A joint venture 

• Outright sale of your idea."

It also warns readers to take care when dealing with invention promotion companies.  Over the next few days, I shall be exploring each of the above options and explaining where you can get more help.

If you want to discuss this article, call me on +44 (0)20 7404 5252 or send me a message through my contact form.

Animated Advice from across the Pond

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Jane Lambert

In Animated Advice 18 March 2016 NIPC News I introduced readers to some animations published by the Intellectual Property Office, the World Intellectual Property Organization and others. One of the films I mentioned was the IPO's IP BASICS: Should I get a patent?

Today I want to share with you an even more helpful animation published by the US Patent and Trademark Office ("USPTO") so long as you bear in mind that the USA is a different country, with different institutions and different laws. However, the United States like the United Kingdom is party to a number of international agreements such as the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") which requires each country's intellectual property laws to be broadly similar.

Here are also some points to bear in mind for British readers:

• The USPTO is the place to start for inventors in the USA because it is the intellectual property office for that country but inventors in this country can start either at the Intellectual Property Office in Newport (look you) or the European Patent Office in Munich ("there's lovely for you!" as they say in Wales).
• Our law does not expressly define an invention though it does list a number of things that can't be patented as such like computer programs or methods of doing business which are not specifically excluded in US law. Also, we cut out some of the verbiage like "machine" or "composition of matter." Basically, an invention can be patented on this side of the Atlantic if it is a product or process.
• One reason why I really like this animation is that it advises inventors to consider writing a business plan and carry out some market research. I've been ramming that message home in my IP clinics, talks to inventors' clubs and blogs for years. Here is just one of my articles: "Why every business plan should take account of intellectual property" 3 Apr 2016 NIPC News.
• The places where you can get help with your invention in this country would be the Business and IP Centres at the British Library next to St Pancras Station in London and the central libraries of Birmingham, Exeter, Hull, Leeds, Liverpool, Manchester, Manchester, Newcastle, Northampton, Norwich and Sheffield. Those libraries are also part of a wider network of public libraries that are associated with the EPO called PatLib. If you study the list you will find help available in Aberdeen. Belfast, Glasgow, Plymouth and Portsmouth.  We no longer have anything quite as good as Business USA.gov in this country but we do have the Business and Self-Employed pages of the gov.uk website. Also, you can call me on 020 7404 5252 any time during business hours and I can point you in the right direction.
• As in the USA, you can apply to the IPO or EPO for a patent without instructing a patent attorney but I would strongly advise you against it.  I know patent attorneys don't come cheap but there are funding schemes here to help you (see How Small Businesses can fund IP Advice and Representation 3 Sept 2016 NIPC News). By the way, the terms "patent agent" and "patent attorney" mean different things in the USA. There, a patent attorney means a lawyer specializing in IP but a patent agent is a non-legally qualified professional who prosecutes patent applications. Here, the terms patent attorneys and patent agents are used interchangeably. Patent attorneys in the UK are members of the Chartered Institute of Patent Attorneys which used to be called the Chartered Institute of Patent Agents until a few years ago. Finally, the expression "pro se" is not used in this country. Those who apply for patents without the help of patent attorneys are usually referred to as "unrepresented applicants". 
• In this country, we don't have "utility", "design" or "plant patents" as such but we do have registered and registered Community designs (for the time being) and EU and national plant breeders' rights  (see Jane Lambert Protecting Investment in New Plant Varieties 4 May 2016 LinkedIn). What Americans call "utility patents" are simply "patents" here.
• There is no call centre in Newport or Munich like the Inventors Assistance Center but both the IPO and EPO publish guidance for unrepresented applicants on their websites and the Chartered Institute of Patent Attorneys, Ideas 21 and I hold free consultations with an IP professional at towns and cities around the UK. Check out CIPA's IP Clinics page and Ideas 21's regular advice sessions in London. Mine are held in Barnsley on the second Tuesday of every month and you can book your appointment through the BarnsleyBiz Surgeries page.

Wherever you are in the country, you can call me on 020 7404 5252 during office hours or send me a message through my contact form.

The Inventor Prize 2017

Jane Lambert

When NESTA announced on 24 Jan 2017 that it "was working with BEIS to pilot an ‘inventor’ prize that will inspire and harness the potential of the UK’s home-grown inventors and stimulate user-led innovation" (see Zofia Jackiewicz Announcing the Inventor Prize on 24 June 2017 Inventor Prize website), I promised to do everything I could to support the initiative (see NESTA's Inventor Prize 26Jan 2017 NIPC Yorkshire).

Today NESTA appeals to the public for help to "refine the prize design through a better understanding of the support inventors need" (see  The Inventor Prize wants to hear from you 19 June 2017).  As I noted in my article "the Inventor Prize, which opens for entries later this summer, is a challenge prize pilot that aims to inspire and harness the potential of the UK’s home-grown inventors." NESTA is now holding a month-long consultation during which it will aim to talk to inventors, experts and the public about how it can shape the prize so as to achieve its aim of helping inventors.

It will do that by conducting a survey which I did this morning, interviewing respondents and holding a workshop at the Museum of London between 09:00 and 12:00 on the 10 July. Regrettably, I can't attend that workshop as I have conflicting professional obligations but I will report regularly on this initiative.

In the meantime, here are three interesting inventions that NESTA has found which have been created by individual inventors:

• The Comp-A-Tent disposable tent made from non-finite, bio-based materials which are selected for their minimal environmental impact; 
• Sugru, the first new mouldable glue designed for fixing, making and improving stuff; and 
• Nimble which looks like a thimble but seems to do a great deal more.

Today I received a call from an inventor in Northampton about the advice and assistance that was available in his area. If you want to find out what services and resources are available in your part of the United Kingdom, call me on 020 7404 5252 or message me through my contact form.

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.

I want to understand how innovation works - NESTA shows you how

Lots of people have bright ideas for new products or processes. That's called invention. Most of those bright ideas never see the light of day because they are just that. Bright ideas. They exist only in the inventor's mind without any regard to putting them into production or on retailers' shelves.

Putting a bright idea into practice to meet a genuine need is much more difficult. That's innovation. Of course innovation includes more than just inventions and it involves more than just scientists and engineers. For example, the current home page of NESTA (the National Endowment for Science Technology and the Arts) is headed "Meet the Dementia Innovators" and features what it calls "a living map of ageing innovators" (see "Dementia who's innovating" 19 Aug 2015).

NESTA provides a toolkit of videos, templates and information on the innovation process starting with the above video "An Introduction to Innovation".  It then proceeds to "Start a Project" which begins with the "Evidence Planning" template. I shall write more about this process in future articles.

Alternatives to Invention Promotion Companies

The other day I was asked for my opinion on an invention promotion company. It was not one that I had ever dealt with so I could not answer the enquiry directly but I referred the inventor to the advice that the US Patent and Trademark Office and our own Intellectual Property Office had given on invention promotion companies generally. 

The inventor thanked me for my reply and added:

"My family and friends have given me very positive feedback on my invention but how else do I check if my invention is good ?
What should I do next ?
Where can I find trustworthy contacts ?"

I replied:

"First do some market research. You can get some help with that at the Business and IP Centre of the British Library.
Next you should decide whether to exploit your invention directly by setting up in business to produce and sell it or licensing it out to someone else.
If you decide to license it out you will need to show your licensee how it will make money from the invention which means that you have to do much the same work as you would if you were making and selling it yourself. If you do get it out you will get a licence fee which will typically be a small percentage of the sale price.
I can advise you on the legal issues but not on the financial ones.
I wish you all the best with your invention."

The British Library and its associated libraries in Birmingham, Leeds, Liverpool, Manchester, Newcastle and Sheffield have massive resources on market research, business planning and everything else an inventor would need to know to set up in business. If he or she is not clear how to use those resources there are courses from the library staff and its partners.

I also advise the inventor to join an inventors' club if one is nearby. There he or she will meet product development consultants, patent attorneys, business advisers and other professionals who assist individual inventors and, most importantly, other inventors who can share their experience with him or her. I have listed some of the inventors clubs that I know about in the side panel to this blog. The Wessex Round Table of Inventors has a much longer list. I am sure that there will be lots of trustworthy and knowledgeable contacts at any of those associations.

In my email I made clear that I am a lawyer and not a business adviser. Here are some of the things I can do for inventors.

1. Tailoring a non-disclosure agreement to the inventor's needs or reviewing or advising the inventor on somebody else's.
2. Advising the inventor on the optimum intellectual property protection for his or her invention and if that includes patents helping him or her find and instruct patent attorneys in this country and abroad who can apply for them.  As I do not prosecute patent, design or trade mark applications I have no interest in selling the inventor a service though I must stress that every patent attorney I know would try to advise objectively too.
3. Representing the inventor at a hearing in the Intellectual Property Office if the examiner challenges his or her application.
4, Helping the inventor negotiate and draft agreements with collaborators, investors and consultants.
5. Drawing up terms and conditions, manufacturing and distribution agreements if the inventor wishes to make and sell the invention him or herself or licences if he or she doesn't and just about any other agreement the inventor may need.
6. Helping to keep the inventor out of trouble with third parties and resolving difficulties if any arise.

There was a time when barristers could be approached only through solicitors or patent or trade mark attorneys but that rule changed over 10 years ago, Now we can do more or less anything that a solicitor can do and as we don't have offices to maintain our services are often cheaper. You can find out more about instructing us in IP Services from Barristers 6 Apr 2013.

Should anyone wish to discuss this article, invention promotion companies or help to inventors in general they should contact me through my message form or call me on 020 7404 5252 during office hours.

The Downturn may be the Best Time to commercialize your Invention

Since October I have been making the rounds of the Northern inventors' clubs with my presentation, "The Coming Economic Downturn: How it will affect Inventors and what they can do". My message is necessarily gloomy but I try to finish on a high note that an economic downturn is often the best time to start a business. There are a number of reasons for this. Costs are low. Governments tend to prime pumps. At a time when most businesses are shedding labour rather than recruiting most entrepreneurs have much less to lose.

That message is usually received scepticlly so I was heartened considerably by Sanjiv Buttoo's feature on the BBC website "Business brains urged to take the plunge". The article features an interview with Ajaz Ahmed who started Freeserve in 1998. When the service was launched, most homes in the UK connected to the Internet through an 0845 number for which they were charge local calls on top of an annual or monthly subscription to their Internet service provider. The idea behind Freeserve was to take a share of the charge for the telephone call rather than charge a subscription. This simply proposition proved extremely popular with the result that Freeserve became the biggest ISP in Britain. Its growth attracted the attention of the French giant Wanadoo which is a subsidiary of the French national telephone company.   Freeserve merged with Wanadoo giving Ajaz  a very substantial share of the merged company.

The reason I happen to know all this is that Ajaz is a local lad and he is involved with a number of institutions with which I am also interested.   There include the Media Centre where our chambers are based and the University with which we have worked. The article begins with the words:

"Budding entrepreneurs should take advantage of the current economic downturn and take the plunge, a self-made millionaire from West Yorkshire is urging."

"Exactly the message I have been putting about in my presentation," I thought to myself. "If the inventors won't take it from me maybe they will take it from someone who has actually made his fortune and at a fairly young age."  

The articles continues with the following admonition from Ajaz that despite the downturn in the economy, now is the time make money

"You can negotiate a good deal on renting a shop or unit, hiring staff, advertising or even buying cheaper raw materials 

Now is the time to start up with minimal costs, but you need to have that idea or you're wasting your time."

Exactly! The article continued with some examples of people in and around Huddersfield who were actually doing this. Mohammed Ramzan who is also in the Media Centre and even more impressively a couple of schoolboys from Elland who seem to making serious money from publishing their own magazine.

If any reader wants to take not my advice but Amjad's he or she will get a lot of help. Not just from me but from the patent and trade mark agents, solicitors, accountants, marketers, product designers and other experts on my IP Yorkshire panel if they happen to live in Yorkshire.   You can access their expertise in many ways, through the Leeds and Sheffield inventors clubs and the clinics in Barrnsley, Bradford, Halifax, Huddersfield, Leeds and Rotherham. 

If you don't live in Yorkshire, don't worry. I am setting up similar networks in other regions starting with the North West so we shall soon be able to help you wherever you live. Ajaz emailed me yesterday when I said I liked his sentiments: 

"in all this doom and gloom there are opportunities for the brave one, lets hope we see success stories emerging from this sad period."

Let's make sure that happens.