Online Inventors Academy: Tips for Inventors - Confidentiality Agreements

F, Jouffroy Premier Secret confié à Vénus

Photographer Christophe Moustier Licnece Set out in Wikimedia Commons

 

Jane Lambert

Most inventors will have been told by their patent attorneys, Business and IP Centre librarians or other advisors to keep their invention secret until they apply for a patent.  The reason for that advice is that a patent can be granted only if the invention is new.  Once the public knows about it, the invention is by definition no longer new.   It is also worth mentioning that a lot of inventions will never be patented for one reason or another.   In some cases that may be because their subject matter is unpatentable.  In other cases, it may be because the invention is not worth the cost of patenting. 

Inventors often need to discuss their inventions with others such as possible collaborators, product design consultants, business angels, manufacturers or potential licensees.  When they do so, they are often advised to obtain the signature of the person to whom they disclose the invention ("the confidante") on a confidentiality or non-disclosure agreement ("NDA"). Such agreements require the confidante to use the information only for a specified purpose and either not to disclose the information at all or to disclose it only to designated personnel.

It is important to note that the obligation not to disclose or use such information arises not from the agreement but from the law of confidence. Mr Justice Megarry explained the principle in Coco v A.N. Clark (Engineers) Limited [1968] F.S.R. 415, 419:

"In my judgment, three elements are normally required if, apart from contract, a case of breach of confidence is to succeed. First, the information itself, in the words of Lord Greene, M.R. in the Saltman case on page 215, must 'have the necessary quality of confidence about it.' Secondly, that information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorised use of that information to the detriment of the party communicating it. I must briefly examine each of these requirements in turn."

Probably the most frequently found circumstance in which the imparting of information gives rise to an obligation of confidence is when the person confiding the information ("the confider") and the confidante enter a confidentiality agreement.  It is not, however, the only circumstance.   Another instance is where a client seeks advice from a solicitor or patent attorney.   No NDA is required because it is obvious that the client is disclosing, and the solicitor or attorney is holding, such information in confidence.  

In Coco, the judge said that the information must have the necessary quality of confidence about it.  That means that the information must have some value in that its unauthorized use or disclosure must either benefit the confidante or harm the consider. The information must be secret or at least not generally known.   It could be sensitive technical or commercial information or personal information such as the state of a celebrity's marriage.   A third requirement is that the confider must take reasonable steps to prevent the information's disclosure or misuse perhaps by keeping the document containing the information under lock and key or in a restricted file on a computer.

Obligations of confidence are usually enforced by proceedings in the civil courts.  In There's more to the Law of Confidence than NDAs 14 Oct 2019 I wrote:

"If, as sometimes, happens I am instructed to resist an application for an interim injunction where the applicant relies on an NDA I have a field day. First, I ask whether the information was ever confidential in the first place. Sometimes it is something that has been common knowledge in the industry since Adam was a boy. Other times there has been no attempt to keep the information secret. I was once negotiating terms of a licence which negotiations were taking place in serviced offices when I found the other side's supposedly confidential document in the publicly accessible ladies' loo. There is often room to dispute whether the confidentiality agreement was ever intended to apply to the information in question. One way or another, a halfway competent intellectual property specialist can drive a coach and horses through a bog-standard standalone non-disclosure agreement."

It is essential to specify in the NDA the information that is confidential, the occasion on which it is communicated, the documentation or media in which it is held, the persons to whom it can be disclosed, the purpose of the disclosure, the use to which the information can be put, the deadline for the return of the documents, media and any copies and so on.

In the above article, I suggested:

"If you want to rely on the law of confidence, print a form in duplicate on no carbon required paper with boxes for:

• The name and full postal address, job title, email, telephone and other contact details of the confidante and those of his or her employer if they are different.
• Identify the information to be delivered and the way in which it is to be passed (that is to say, private conversation, whether it is is a document and if so what it contains).
• An acknowledgement that the information has been disclosed in confidence.
• A finite period in which the confidante can contend that the information is not confidential at all and a rapid and cost-effective way of resolving such contentions such as expert determination or expedited arbitration.
• The use to which the information may be put.
• A deadline for the return of confidential documents and may have been made.
• Submission to the jurisdiction of the English courts.

Every single confidential conversation and the delivery of every single document should be recorded and logged separately. If any of the conditions is breached, the confider should call the confidante at once. If it is still not put right the confider should consider legal action including possibly an interim injunction."

Interim injunctions are not cheap to obtain because a lot of work has to be done by solicitors, patent attorney or other authorized litigators and counsel or other advocates in a very space of time.  There is always a risk that the application may fail and the applicant will be required to contribute to the respondent's costs in addition to his or her own.  But if the information is essential to the success of an enterprise there may be no other way.  

For most startups and many other small and medium enterprises, the only way in which enforcement litigation can be funded is by obtaining before-the-event insurance.   I have been urging inventors to take out such cover since 2005 (see IP Insurance  3 Sept 2005),   I repeated my message every year until 2020 2020 when the Chartered Institute of Patent Attorneys published its own guidance on IP insurance to its members (see IPO Guidance: Intellectual Property Insurance 25 Feb 2020).  I now refer inventors and all SME to CIPA's Advice on IP insurance which complements comprehensive Guidance on Intellectual Property Insurance from the Intellectual Property Office.

Last September I launched the Online Inventors Academy with a talk on Patents and Alternatives to Patenting.   Although the audience was not large we had a very lively and informed discussion that exceeded the advertised time by a whole hour,  Unfotunately the response to the next event was disappointing.    As Christmas was approaching we decided to relaunch the Online Inventors' Club and the Online Inventors' Academy until the New Year.   I will kick off the new season with a talk on confidentiality on 23 Jan 2025 at 18:00.   Attendees can join by clicking this link.

Anyone wishing to discuss this article or the Online Inventors' Club or Academy generally should call me on 020 7404 5252 during normal UK office hours or send me a message through my contact page, 

The Online Inventors' Academy

Jane Lambert

Independent inventors (that is to say, inventors who are not employed in research and development in a company or university) have contributed much to the economies of many countries including our own. Unlike some other countries, we do not do much to encourage them.  The United States Patent and Trade Mark Office lauds American inventors in a National Inventors Hall of Fame. The Korea Invention Promotion Association has a slogan "One Person with One Invention." Our government did fund an Inventor Prize in August 2017 but terminated that initiative the following year.

British inventors might do better if they were better informed of the steps to be taken between having a bright idea and earning money from it.  Until the pandemic, some of that information was provided by inventors' clubs.  The Wessex Round Table of Inventors has maintained a page of links with inventors' clubs for many years.  I tried all those links yesterday and found many of them were broken.  There may well have been some new clubs.   I recently wrote about the launch of an inventors club at the British Library but I have not heard of any more.  

I have long campaigned for an inventors' academy along the lines of the USPTO's Annual Independent Inventors' Conference at its head office in Alexandria.  Many have agreed that such a conference would be a good idea and nobody has rubbished it but everyone has always had more immediate priorities.  It seems to me that nothing will happen unless I make a start.  To that end, I am offering a course of online lectures between 18:00 and 19:00 on the third Thursday of every month between  19 Sept 2024 and 17 July 2025.  As I chaired the Leeds, Liverpool and Sheffield Inventors Clubs for many years I think I have a pretty good idea of what independent inventors need to know and just as valuable what they don't need.

The first talk on 19 Sept will be on the legal protection of new technology,   I will, of course, discuss patents and how to apply for them and how to apply for them but I will also discuss alternatives.  Prosecution and enforcement costs, renewal fees and other expenses will be mentioned as well as the risks of revocation.  Steps to mitigate the risks and expenses such as before-the-event insurance will be addressed.  I shall also deal with inventions that cannot be protected by patents.  Finally, I will talk about patent attorneys, where to find them and how to select and instruct them.

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.

Other talks will focus on manufacturing, outsourcing manufacturing and licensing.  I will also discuss enforcement in this country and overseas.   Anybody who attends the full programme will receive a transcript which may assist them in fundraising or employment,

The Online Academy will be just one of many benefits of the NIPC Inventors Club;  Others will be the Initial Advice and Signposting service that can be offered online or in Yorkshire, North Wales or London. There will also be a vast library of articles and precedents (template forms) which can be accessed through this publication.

Anyone wishing to discuss this article may call me on 020 7404 5252 or send me a message through my contact form.   Anyone wishing to register for the first talk on 19 Sept 2024 should click here.

Invention-Con 2022: The US Patent and Trademark Office's Online Conference for Inventors, Makers and Entrepreneurs

Interior of the US Patent and Trademark Office

Author Hanaxides Licence CC BY-SA 4.0  Source Wikimedia Commons

 

Jane Lambert

Every August, the US Patent and Trademark Office ("USPTO") holds a conference for independent inventors, entrepreneurs, and small business owners known as Invention-Con. I mentioned it for the first time in USPTO Annual Inventors' Conference - something we should do here on 2 Aug 2014. Until 2019 the conference was held at the USPTO's head offices in Alexandria, Virginia just outside Washington DC. No doubt because of the pandemic Invention-Con was held online in 2020 and 2021.  So, too, will the next one which will take place between 10 and 12 Aug 2022.

The importance of the conference is attested by the welcome from Kathi Vidal, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on 10 Aug 2022.  Her entry on the Invention-Con website describes her as follows:

"As the chief executive of the USPTO, she leads one of the largest intellectual property (IP) offices in the world, with more than 13,000 employees and an annual budget of more than $4 billion. She is the principal IP advisor to the President and the Administration, through the Secretary of Commerce, and is focused on incentivizing and protecting U.S. innovation, entrepreneurship, and creativity. She leads an agency whose mission is to help American workers and businesses compete and collaborate, especially in ground-breaking technologies and across all demographics."

Immediately after the Director's welcome, there will be a 5-hour session entitled "Introduction to Intellectual Property" which will cover such topics as "Your IP, a potential gold mine", "IP journeys – Go from eureka to enterprise" and "IPitching: Innovation and investment". There will be another 5 hours the next day on the theme "Now what? How to put in motion a plan to protect your idea/business."  That will include talks on "Funds to fuel your future", "Grants and growth", "Succeed with government funding and resources" and "Inspiration to impact".  The final day will be 5 hours of talks on "IP in Everyday life" covering "IP in the fitness industry", "Tech in arts", "Small Business Success Stories" and "Meet the new trailblazers: Innovation to impact."

The speakers include inventors, angel and private equity investors, US government officials, entrepreneurs and professional advisors.  One of the most interesting is Arul Mathur who intends to read computer science and engineering at my alma mater, UCLA,  Arul, who is aged 18, has invented an automated, self-contained fire suppression system called Fire Activated Canister Extinguisher ("FACE") to protect properties against fires without the need for manual intervention.  He was inspired to invent FACE after a wildfire threatened his home.   After the record temperatures and the fires in London earlier this week, he will find a market for his invention here. 

The talks take place between 12:00 and 17:00 eastern time which would be between 17:00 and 22:00 our time.   Registration is by Eventbrite.  It does not appear to be possible for those who live outside the USA to register through Eventbrite because registrants have to pick a state or territory.   However, special enquiries could be made to inventioncon@uspto.gov.

There is no reason why other countries (including ours) should not stage similar conferences.  We do stage events like the British Invention Show but there is nothing like Invention-Con.  There is a great need for practical advice on patent, design and trade mark prosecution, grant, equity and loan funding, setting up businesses and scaling up which Invention-Con appears to deliver.   

Anyone wishing to discuss this article may call me on +44 (0) 20 7404 5353 during normal business hours or send me a message through my contact form.

US Patent and Trademark Office Webinar - Invention-Con 2021: Capitalizing on your intellectual property

Author ReubenGBrewer Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

One of the few good things to have resulted from this pandemic is the live streaming of events that would previously have been limited to the venue where they took place. One of those events is the United States Patent and Trademark Office's webinar Invention-Con 2021: Capitalizing on your intellectual property which will take place between 18-20 Aug 2021.  It is billed as an event for inventors, makers and entrepreneurs. There is nothing quite like it in this country or as far as I can see anywhere else in the world.

According to the event web page presentations and workshops will cover:

• "Putting your creativity to work
• How IP applies in various fields, such as artificial intelligence, robotics, fashion, music, and literature
• Types of IP protection: patents, trademarks, and copyrights
• Marketing, manufacturing, and building a competitive advantage around your ideas
• Fun, free educational resources for kids and teens
• Innovation and the fight against COVID-19
• And much more"

There are also special events for children and young people, They will include a session with Gitanjali Rao who was named "Kid of the Year" by Time Magazine and several other promising young inventors. Registration Is through Eventbrite. There does not appear to be a charge and it seems to be open to everyone everywhere in the world.

Although American intellectual property law does differ from our own in a number of important respects the basic principles are the same. The USA is this country's biggest trading partner and its importance is likely to increase if HM Government ever concludes a bilateral trade treaty with it. Businesses that wish to trade or invest in the USA will need to be aware of US intellectual property law and should protect their own intellectual assets by taking out utility, design and plant patents (equivalent to patents, registered designs and plant breeders; rights in the UK) and trade marks in the USA,   

Businesses wishing to apply for patents and trade marks in the USA can ask their British patent or trade mark attorneys to appoint an American agent or they can approach an American one directly.   For those wishing to instruct an American attorney, I can recommend Antoinette M Tease who runs a specialist IP practice in Montana.   I have worked with her on a number of occasions over many years and I have received only good reports of her from my clients.

The USPTO offers a large number of other events some of which would be useful to UK businesses.  Restaurateurs might be interested in Don’t burn your brand: intellectual property for restaurants which takes place this Monday 19 July, Trademark Basics Boot Camp, Module 7: Keeping your registration alive on the following Tuesday, and so on. The USPTO's events page is here.

Anyone wishing to discuss this topic can call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page.

Intellectual Property Resources for Inventors and Small Businesses in the USA

Author: Addicted)4
Licence: Creative Commons Attribution-Share Alike 3.0 unported
Source Wikipedia

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

Author Morwen
Licence Creative Commons Attribution-Share Alike 3.0 unported
Source Wikipedia 

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.

Trade Secrecy Law changes Tomorrow - check your NDA, Standard Terms and other Agreements

Jane Lambert

Tomorrow is a big day for inventors. It is significant because it is the day on which Directive 2016/943 ("the Trade Secrets Directive") is due to be implemented. Every country in the EU, including the UK, has to bring its laws on trade secrets into line with the Directive by 9 June 2018.  It concerns inventors because every patented invention is supposed to start out as a trade secret and for many other inventions that's the way they remain.

Why was the Directive adopted?
At paragraph (9) of a set of paragraphs known as "the recitals", the European Council and Parliament explained that they adopted the Directive because there are big differences in the way that different countries protect trade secrets giving rise to uncertainty, causing unnecessary expense and impeding new product development in Europe.

What does the Directive do?
The most important provision is art 6 (1) which requires EU member states to "provide for the measures, procedures and remedies necessary to ensure the availability of civil redress against the unlawful acquisition, use and disclosure of trade secrets."

What is a "Trade Secret"?
For the purpose of the Trade Secrets Directive a ‘trade secret’ means

"information which meets all of the following requirements:
(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
(b) it has commercial value because it is secret;
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."

Basically that has always been the position in the UK but that was not the case in every country.

What is meant by Civil Redress?
Basically injunctions (orders by a judge) not to acquire, use or disclose trade secrets in future or the payment of compensation or other monetary relief for unlawful acquisition, use or disclosure of trade secrets in the past.  In some circumstances, injunctions and other relief such as orders for the preservation of evidence or assets can be granted before the issue of proceedings.

Do we have to comply with the Directive as we have voted to leave the EU? 
Yes as the UK remains a member of the EU until 29 March 2019 at the very earliest and we should have to abide by EU law until 31 Dec 2020 under the draft withdrawal agreement or even longer under the proposed backstop agreement. More importantly this Directive works in favour of British business because entrepreneurs and inventors know that for the first time the trade secrecy laws of the other countries of the EU are more or less in line with those of the UK.

What has HMG done to comply with the Directive?
HM government believes that our law of confidence and contract law plus our Civil Procedure Rules already comply with most of the provisions of the Trade Secrets Directive but it has identified a few issues where they do not.  One concerns definitions and the other the time limits within which an action for unlawful trade secret acquisition, use or disclosure must be launched. Also there is some doubt as to whether the Scottish courts have the powers to make the orders required by the Directives. To address those issues, Mr Sam Gyimah MP, Minister of State at the Department for Business, Energy and Industrial Strategy, has signed The Trade Secrets (Enforcement, etc.) Regulations SI 2018 No 597 which will come into force tomorrow.

So what do Inventors need to know?
Even though reg 3 (1) of the regulations makes clear that the existing law of confidence still applies in relation to trade secrets the Directive may give trade secret holders (that is to say, persons lawfully controlling trade secrets) greater rights and powers. Also, we are used to talking about "confiders", "confidantes" and "breaches of contract" while the Trade Secrets Directive introduces new terms time like "trade secret holders", "infringers" and "infringing goods".  It would probably be a good idea for trade secret holders to ask their lawyers to review their terms and conditions, standard contracts and, in particular, non-disclosure and confidentiality agreements to make sure that they are still effective.

Where to get more information?
I have written more about this topic in Transposing the Trade Secrets Directive into English Law: The Trade Secrets (Enforcement etc) Regulations 6 June 2018 NIPC Law. That article links to some of my other articles on that topic. I am also giving a talk on the topic at Barclays Eagle Labs in The Landing on 26 June 2018.  If you want to discuss this article or trade secrets generally, contact me on 020 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.

"Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy

Jane Lambert

Yesterday the Department for Business, Energy & Industrial Strategy ("DBEIS") published its green paper Building Our Industrial Strategy which might well have led the news had it not been for the controversy over whether the Prime Minister should have disclosed news of the Trident test failure to the House of Commons before the vote on the renewal of the nuclear deterrent. Today it is likely to be overshadowed by the Supreme Court's judgment in the Art 50 Brexit appeal. It is, however, an important document upon which the public is being consulted and there is a video summarizing its proposals for those who do not wish to plough through its 132 pages.

Very briefly the green paper suggests ways in which the UK could improve productivity and spread prosperity more evenly across the country and throughout society. After stating those aims it suggests 10 policies that it calls "pillars" to achieve them. One of those pillars is "Investing in science, research and innovation" to "become a more innovative economy and do more to commercialise our world leading science base to drive growth across the UK." The document mentions some of the steps that the government is already taking and then lists some new commitments on page 34.

One of those new commitments is to:

"....... 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." 

If this commitment can be taken at face value and followed through it would be a very welcome development indeed. For far too long Britain's inventors have been ignored and in some instances disparaged but they could be an important contributor to industrial regeneration.

Other countries that have to make their way in the world outside large trading blocs such as Korea and Israel encourage their inventors. The Korea Invention Promotion Association ("KIPA"), which shares an office block in Seoul called the Korea Intellectual Property Service Centre with the Korea Intellectual Property Office, the Korea Intellectual Property Institute, The Technology Transfer Centre and related agencies has a slogan: "One Korean, one invention." If we are to emulate Korea which has a slightly smaller population in an even smaller land area than the UK we have to do the same and with all due respect to NESTA and the DBEIS it will take more than the Challenge Prize Centre.

A bit more action is promised in the next commitment though except for the proposal to station IPO representatives in the Midlands and the North it is very vague:

"We are reviewing how to maximise the incentives created by the Intellectual Property system to stimulate collaborative innovation and licensing opportunities – including considering the opening up of registries to facilitate licensing deals and business to business model agreements to support collaboration. We will place Intellectual Property Office representatives in key UK cities - starting with pilots in the Northern Powerhouse and Midlands Engine to build local capability to commercialise intellectual property."

Actual progress will probably have to come from inventors and entrepreneurs aided by their professional advisors, but it the commitments appear to signal a change of mood on the part of the government and that's a start

Should anyone wish to discuss this article with me, please call +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

IP and Brexit: Private Inventors

Jane Lambert

There are two schools of thought on Brexit.  The one that the government, most political parties, much of British business, international institutions and our allies supported is that it will be detrimental to British business. The other, which was supported by a few economists, politicians and business leaders, was that membership of the EU was somehow holding us back and that there will be a blossoming of British enterprise, innovation and creativity once we leave. I was and remain profoundly sceptical of the latter view which is one of many reasons why I voted to remain but I acknowledge that the rosy picture painted by the leave campaign is not entirely outside the realms of possibility. Countries like Israel and South Korea show that it is possible for small nations to survive and prosper outside economic blocs by relying on a propensity to create and innovate and there will probably be opportunities in post-Brexit Britain as well as many downsides.

So what advice should I give the bright research student, small businessman or skilled technician labouring in his or her lab or workshop?   The first is that there is likely to be quite considerable change in the legal, social and economic environment - but not just yet.  The UK remains a member of the European Union until Parliament repeals or amends the European Communities Act 1972 and the two-year notice period for withdrawal from the EU under art 50 (3) of the Treaty on European Union expires. The second is that the nature and extent of many of those changes will be determined by negotiations that have yet to start. Those negotiations are likely to be tough as the Commission and remaining member states have no interest in doing this country any favours. Thirdly, some things will not change. We shall continue to be party to the European Patent Convention, the Patent Co-operation Treaty and many other multilateral treaties. Fourthly, though we may lose preferential access to the European single market we need not stop trading with or investing in it. It consists of several hundred million of the world's most affluent consumers. While we remain in the single market and indeed afterwards we should take every opportunity of consolidating and extending our business relationships . Finally, we should develop new business relationships wherever we can particularly in North America, India, West and Southern Africa, Australasia and the Gulf where English is spoken and the common law is used,

Brexit will have two particularly unfortunate consequences for IP. For the whole of our membership of the EC and EU our government has striven for a Community or EU wide patent. We were one of the few countries to ratify the Community Patent Convention and when that failed to get off the ground we supported other initiatives such as an EU patent regulation, European Patent Litigation Agreement within the European Patent Organization and most recently the unitary patent. Had the UK voted to stay in the EU the unitary patent would have come into effect within 12 months. It would have reduced the cost and complexity of patent litigation and restored legal aid for individuals of modest means which would have included many inventors. It may still come into being and a single patent that covers much of Europe including France and Germany will still be attractive to British business but it will not apply to the UK once we leave the EU. The other unfortunate consequence is that the UK will cease to be covered by EU trade marks and Community designs and our English and Welsh, Scottish and Northern Irish courts will cease to have jurisdiction in disputes over EU trade marks and Community designs.

However, although Brexit has already brought uncertainty and could well bring disruption it need not be the end of the world. In the next few months I shall be publishing a lot of articles on the topic and I am available to talk to local inventors' groups and others. Should anyone wish to discuss this article please call me on 020 7404 5252 or message me through my contact form.

USPTO Annual Inventors' Conference - something we should do here

Every year at this time of the year the US Patent and Trademark Office opens its doors to private inventors and puts on a conference for them. I have mentioned this several times before (see "US Patent and Trade Mark Office helps Independent Inventors"  11 Sept 2005). Last year it was cancelled owing to wrangling between the President and Congress over the budget (see "Politicians wrangle at Inventors' Expense" 12 Oct 2013). Happily a conference is taking place this year between the 15 and 16 Aug.

There is an impressive agenda with star speakers one of whom is the serial inventor Woody Norris. Here is a link to talk he gave about two of his inventions.  The attendance fee is US$90 which is just £53.50 at the current rate of exchange.  Independent inventors are taken seriously in America - not mocked or patronized as they are so often elsewhere. We really should do something like this here.

The USPTO also provides a comprehensive portal for inventors resources which include information on patents and trade marks, inventors' assistance, pro bono services and an excellent newsletter.

The Inventors' Handbook

Source   European Patent Office, Inventors' Handbook

Regular readers will have found a new panel to the left entitled "European Patent Office Guidance to Inventors" which contains links to the home page of "The Inventors' Handbook" and several of its chapters.

I don't know how many times I have visited the European Patent Office ("EPO") website during my career but I shouldn't be surprised if it is very much less than the number of hot dinners I have consumed in my lifetime. Yet it is only this morning that I stumbled on this handbook which contains some of the best advice available to inventors.  Had more inventors visited this useful little site there would have been more successful inventors and flourishing firms and far fewer business failures, broken marriages and nervous breakdowns.

The home page of the site summarizes everything the independent inventor needs to know about confidentiality, market research, working with others, business planning, raising funds, patenting and alternative IP protection and dealing with companies. I will take the last of those topics by way of example since unsuccessful negotiations with potential licensees and joint venture partners provides a large part of my work as an IP lawyer.

Probably the most misleading advice that has ever been given to inventors is: "build a better mousetrap, and the world will beat a path to your door".  It is absolute nonsense.  The phrase is attributed to Ralph Waldo Emerson but he was much too bright to have said such a thing.  What he actually said was

"If a man has good corn or wood, or boards, or pigs, to sell, or can make better chairs or knives, crucibles or church organs, than anybody else, you will find a broad hard-beaten road to his house, though it be in the woods."

Moreover, mousetraps were not invented until after Emerson's death.  

Much better advice comes from the EPO:

"If you want a licensing agreement with a company, you must:

• Find the right companies to approach.

• Approach them in the right way.

Finding suitable companies to approach may be harder than you think, because big, well-known companies are often the least likely to want to deal with inventors."

The page adds that  many inventors also make the mistake of approaching companies too soon, very few big companies genuinely welcome ideas and suggestions from outside their industry, smaller companies may be more receptive but there may be disadvantages in dealing with them too. Subsequent pages advise on how to make the first contact and conduct meetings.  Finally, there is some useful guidance on dealing with companies, negotiating licence agreements and reaching agreement.  Finally, in flat contradiction to the mousetrap misquotation, the EPO warns that companies "will never look at your invention and say: ‘This is so good that we must do it, no matter what it costs us!"

Much better for you to listen to this Emmerson:

If you want to discuss this article or anything to do with inventions you can call me on 020 7404 5252 during normal business hours or fill in my contact form.  Have a good weekend folks.  If you are going to a party tonight I hope it's as good as Emmerson's.

Celebrating British Technology: we should make a habit of it

For me the best part of yesterday's opening ceremony of the Olympic Games was the focus on Sir Tim Berners-Lee, Sir Tim brought us the world wide web which is one of a very small number of inventions which has revolutionized everyday life. And Sir Tim was not the only great British innovator recognized at the ceremony. Isamard Kingdom Brunel played by Kenneth Branagh was featured too. As I tweeted just a few minutes ago, it is not often that we celebrate British science and technology, We should make a habit of it.

Happily there is an event that does just that.   The Make it in Great Britain campaign, which is run by the Department for Business, Innovation & Skills, aims to challenge outdated notions of British manufacturing industry and in particular the myth that Britain doesn’t make anything anymore.  It celebrates the successes of our manufacturing sector and highlights the best in British innovation. 

The centre piece of the event is an exhibition at the Science Museum which runs from 24 July to 9 September and coincides with the Olympic and Paralympic Games.. It showcases every economic activity in the UK from creative industries to pharmaceuticals. One of the features of the exhibition is a competition to find the best British invention from a number of finalists grouped in a number of categories:

• Breakthrough Finalists
• Smarter Finalists
• Stronger Finalists
• Life Changing Finalists
• Sustainable Finalists.

A different group is features at the exhibition and on the website every week and visitors are encouraged to choose the invention they like best.   The winners of each category will be chosen at the end of the contest.  This is just the sort of encouragement that business needs to invest and innovate for our economic recovery.

Resources for Inventors in the West Midlands

The region known as "the West Midlands" consists of

• the metropolitan county of the West Midlands with its metropolitan boroughs of Birmingham, Coventry, Dudley, Sandwell, Solihull, Walsall and Wolverhampton,
• the shire counties of Staffordshire, Warwickshire and Worcestershire and
• the unitary authorities of Hereforshire, Shropshire, Telford and Wrekin and Stoke-on-Trent.

The region covers an area of just over 13,000 square kilometres and has a population of 5.27 million.

Regional Development

The regional development agency for the West Midlands is Advantage West Midlands. This will be abolished with all the other RDA by March 2012. However, proposals for local enterprise partnerships have been accepted for:

• Birmingham and Solihull with East Staffordshire, Lichfield and Tamworth
• Black Country
• Coventry and Warwickshire
• Stoke and Stafforshire
• The Marches, and
• Worcestershire.

Angels

There are at least two local business angel networks:

• Central England Business Angels ("CEBA") of Henley in Arden; and
• MINERVA of the University of Warwick University science park.

Clinics

Local patent attorneys offer free consultations at Birmingham Central Library in conjunction. NIPC Clinics will also introduce inventors and their investors, lenders and professional advisors to local patent and trade mark attorneys, business advisors, product design consultants, lawyers and others.

Community Development Finance Institutions

There are at least 6 community development finance institutions in the West Midlands:

• Aston Reinvestment Trust of Birmingham;
• Black Country Reinvestment Society of Wolverhampton Science Park;
• Coventry & Warwickshire Reinvestment Trust;
• East Lancs Moneyline of Staffordshire;
• Impetus Rural Reinvstment in the Marches; and
• StreetUK of Birmingham.

Inventors Clubs

There are inventors clubs in Birmingham, Kingswinford and Malvern.

Professional Advice

Members of NIPC West Midlands offer specialist advice and advocacy on intellectual property, information technology, telecommunications, media, entertainment and competition law. We can be reached on 0121 286 1551 or through our national contact form.

Further Information

Further information on inventors resources in the West Midlands will be published on the Inventors Club website.

Resources for Inventors in the East of England

This is the second of my regional surveys of resources for inventors.

The East of England covers the counties of Bedfordshire, Cambridgeshire, Essex, Hertfordshire, Norfolk and Suffolk. According to Wikipedia the region has a population of 5.39 million in a land area of 19,120 square kilometres. It is home to one of the world's greatest research universities. According to the Intellectual Property Office there were 1,844 patent applications from the region in 2009 placing it third behind South East England and London with 2,777 and 2,752 respectively. Its regional development agency is the East of England Development Agency. Three local enterprise partnership proposals have been accepted from the East of England, namely Greater Cambridge and Greater Peterborough, Hertfordshire and Kent Greater Essex and East Sussex.

Inventors Clubs

I am aware of only one inventor's club in the region. That is CHASE (the Cambridge High Tech Association of Small Enterprises) in Cambridge. The Association meets on the first and third Tuesdays of most months, holds an annual dinner and an occasional conference. Further information can be obtained from Jeff Veil on 01223 721499. I would have expected to find inventors clubs in Bedford, Chelmsford, Colchester, Hatfield, Ipswich, Luton, Norwich and Southend. If inventors in any of those cities want us to help them set up an inventors club they should call us on 01603 343030 or contact us through this form.

Clinics and Libraries

There are no PatLib libraries and hence no CIPA clinics in the East of England. However, each of the county and district council library authorities have good on-line and printed business information resources. If anybody from the East of England wants advice on any aspect of inventing he or she can contact our clinic using this form. We shall put him or her in touch with a local professional advisor.

Business Advice

The HQ of the local Business Link is at Zenith Court in Hatfield. There are local Business Link offices in each of the major towns and cities of the region. Advice and mentoring is also available from Keith McCallum who holds the Business Doctors franchise for Bedfordshire, Cambridgeshire and Hertfordshire.

Funding

Eastern Capital Alliance is a local angel network. There are three community development finance institutions in the region:

• Foundation East in Bury St Edmunds; and
• NWES and WEETU in Norwich.

Professional Advisers

There are several well known firms of patent and trade mark attorneys as well as law firms that specialize in intellectual property in the region but we do not yet know any of them well enough to recommend to recommend to private inventors with limited budgets. We advise inventors to shop around and tell us what they find,

Further Information

We have a page on Inventors Resources in the East of England on the Inventors Club website which we shall expand and update as and when we can. We have an Inventors Club group on Linkedin which covers developments affecting inventors throughout the UK which you can join. You can of course also join the Inventors Club if you want. The Membership Rules are here. There is no subscription but we may charge for special services such as showcasing inventions and access to professional services. Anyone who wishes to contact us should call us on 01603 343030 or send us an email.