Hydrogen Technology Inventions and the World Hydrogen Summit

Standard YouTube Licence

Jane Lambert

The World Hydrogen Summit will take place at Rotterdam Ahoy between 20 and 22 May 2025.  It will consist of a conference and an exhibition (see the conference programme, the list of speakers and the list of exhibitors).  This event will be of particular interest to the residents of Anglesey (described by their local authority as "Energy Island") because Menter Môn will represent Wales in Rotterdam (see press release 14 May 2025 Ynys Môn to represent Wales at World Hydrogen Summit 2025).

The importance of this source of energy was highlighted in the European Patent Office's press release of 10 Jan 2023 to announce the publication of Hydrogen patents for a clean energy future - A global trend analysis of innovation along hydrogen value chains, a joint report by the European Patent Office and the International Energy Agency.   António Campinos, President of the European Patent Office, said:

"Harnessing the potential of hydrogen is a key part of Europe's strategy to achieve climate neutrality by 2050...."

 Fatih Birol, Executive Director of the International Energy Agency, added:

"Hydrogen from low-emissions sources can play an important role in clean energy transitions with potential to replace fossil fuels in industries where few clean alternatives exist, like long-haul transport and fertilizer production,"

According to the press release, the joint report is the most comprehensive and up-to-date study of global trends in hydrogen technologies for 2011-2020.  Patenting related to hydrogen is led by the EU (28%) and Japan (24%), while the US (20%) is the only major innovation centre to lose ground in the past decade.  Within the EU, Germany (11%), France (6%) and the Netherlands (3%) rank first for patenting hydrogen technologies.  Among end-use applications, automotive continues to be the biggest focus of innovators.  The press release stated that start-ups holding patents attracted more than half of the US$10 billion in venture capital investment into hydrogen-related firms in the last decade.

Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5242 during UK office hours or send me a message through my contact page.

European Universities' Patenting Activity

 

Jane Lambert

In October 2024 the European Patent Office published The Role of European Universities in Patenting and Innovation, A Study of Academic Inventions at the EPO.  The study claims to be "the first-ever comprehensive overview of the role European universities play in patenting and innovation on the European scale." 

The study notes that Europe is often perceived as a world-class academic power with top universities and publications. Europe faces difficulties transforming science into commercial activity compared to other advanced economies. The mismatch between academic excellence and commercial underperformance is sometimes called the 'European paradox'. The study states that this so-called European paradox has become a central policy issue in most European countries and also for the EU.

The study focuses on European universities' patenting activity as a way of addressing that paradox because a patent is essential to knowledge transfer. That is because an applicant for a patent is required by art 83 of the European Patent Convention to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.   

One of the study's key findings is that the contribution of academic researchers to European patent applications has increased steadily in recent decades, and now exceeds 10% of all patents filed by European applicants at the EPO. The study finds that more than 1,200 European universities have generated patent applications at the EPO. Annex 2 to the study lists the top 10 universities for Germany, France and the UK and the top 5 for other countries between the years 2000 and 2020. There are 7 universities with over 1,000 academic patents in Germany, 6 in France and 4 in the UK (Oxford, Cambridge, Imperial and UCL). Denmark, Sweden and Switzerland have 2 such universities each and Belgium, Finland and the Netherlands one each.

It is undeniably a good thing that knowledge is widely disseminated while being properly protected it has to be remembered that universities are not businesses though most have knowledge transfer offices and licensing companies.  It is my experience that they occasionally claim greater legal protection than they need or in some cases to which they are entitled to the detriment of the businesses that pay for the research,  
 

Any business contemplating research cooperation with a British university should seek advice either from a patent attorney or a solicitor or counsel specializing in IP with experience in licensing.  The Intellectual Property Office publishes several model university and business collaboration agreements known as "the Lambert toolkit".  The name of the toolkit refers to Sir Richard Lambert and not to me though I did attend one of the drafting sessions and thus made a small contribution towards their drafting.

Anyone wishing to discuss this article may call me on +44 (0)20 7404n 5252 during UK office hours or send me a message through my contact form at all other times.

Online Inventors' Club: Patents and Alternatives to Patenting

Patents and alternatives to patenting.pdf from Jane Lambert

Yesterday, I launched the NIPC Inventors' Club Online Inventors' Academy with an introduction to patent law and patenting for independent inventors. The slides appear above.  Those who missed the talk can download the slides here or from Slideshare.  There will also be a link to the presentation from the NIPC Inventors Club group page on Linkedin.

Although not everybody who had registered joined the call, those who did enjoyed a very lively discussion.  The session, which was due to last an hour, finished at 19:58 almost two hours after it began.  It was particularly gratifying to welcome one of the regulars at the Sheffield Inventos' Club which I chaired for many years.  

The objective of the exercise is to reproduce the mutual support for independent inventors that used to subsist at inventors clubs that met in Central Libraries, universities and other venues around the country until a few years ago.  Some of those clubs disbanded after several of the libraries joined the British Library's Business and IP Centre's national network.  Others ceased to meet during the COVID-19 pandemic.  

The next talk will be on the resources that are available to independent inventors.   It will take place on 17 Oct 2024 between 18:00 and 19:00.  As I said in The Online Inventors' Academy on 29 Aug 2024:

"The next talk will be on the services that are available to inventors. I will start with the British Library and its national network of Business and IP Centres. I will mention patent clinics and search services at the Centres and other PatLib libraries. I will talk about the help that is available from local authorities in England, Business Wales in Wales and its counterparts in Scotland and Northern Ireland. Lastly, I will consider the online resources that are available for inventors from the IPO, EPO, WIPO, British Library, UKRI and other agencies."

I shall post the registration invitation later today and look forward to welcoming everybody interested to that event.

Finally, I was asked a couple of questions about IP insurance yesterday.   I have written a lot about the topic as can be seen from the bibliography at the end of my article  IPO Guidance: Intellectual Property Insurance which I, posted on 25 Feb 2020.  The most up-to-date guidance is CIPA's and the Intellectual Property Office's.

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

The British Library Inventors' Club

British Library
Author Jack1956  Public Domain  Source Wikimedia Commons

 

Jane Lambert

I am delighted to report that the British Library has set up an "Inventors Club". and I wish its organizers and members every success,  The Club meets on the last Monday of every month. The next meeting will take place between 18:00 and 19:30 on 29 April 2024. According to the Eventbrite registration card, there will be talks by innovators who have already brought their products to market or have licensed their intellectual property,   The organizers are Mr Bob Lindsey who set up and chaired an inventors' club in Kingson and Mr Mark Shehan who has been the British Library's "inventor in residence",

I have written a longer article about this initiative in NIPC London.

Anyone wishing to discuss this article may call me on 020 7404 5252 or message me through my contact page.

I have invented something - What happens next?

By William Heath Robinson - From the Book: William Heath Robinson Inventions,
Public Domain, https://commons.wikimedia.org/w/index.php?curid=39256622

 

Jane Lambert

If you work for a company, university or some other employer in a capacity in which an invention might reasonably be expected from the performance of your duties or you had a special obligation to further your employer's business, any invention you may create in the course of your duties may be claimed by your employer pursuant to s.39 of the Patents Act 1977.  Your reward will be your salary and any perks or  benefits that go with your appointment unless your invention is of outstanding benefit to your employer in which case you may be entitled to an extra reward under s.40,

The position will be different if you are a student and you invent something in the course of your research or studies.   Your university may be entitled to the invention pursuant to a clause in your contract for the right to research or study at your university but you will normally qualify for a share of any royalties or other payments that your university receives from the commercialization of your invention.   

If you made your invention in any other capacity it would be up to you to exploit it.  You can attempt to market it yourself or you can try to license it to a third party.  Neither is easy.  If you choose to make it yourself you have to acquire expertise and resources that inventors are no more likely to possess than anyone else.   If you try to license it you have to persuade a third party that your invention can earn or save that person's business money.   To get you started, here are two articles:

• How to make Money from your Invention - Starting your own Business 15 May 2019 NIPC Invention; and
• How to make Money from your Invention: Licensing 15  Sept 2017 NIPC Invention

You should try to learn from the experience of others.   A good place to find such experience is an inventors' club.  I was saddened to learn recently that one of the clubs that I founded nearly 20 years ago and chaired for many years suspended its meetings during the pandemic and has never revived them.  I consulted the "Inventor's Club" page of the Wessex Region of Technologists and Inventors (formerly the "Wessex Round Table of Inventors" or "WRTI") to see whether the same had happened to other clubs. There were some broken links but I found up-to-date websites for many of those clubs after consulting Google. I also wrote about the Bristol Innovation Group in Bristol Innovation Group: Street2Boardroom on 27 Aug 2020 in NIPC Severn and gave a webinar to Ffiws on 15 April 2020,  I have therefore been able to find inventors clubs in Anglesey with locations in Gwynedd, Birmingham, Bristol. Cambridge, Dudley, East London, Kent, Malvern, Oxford and Southampton,

If there isn't an inventor's club nearby or if the meetings of your local club do not live up to your expectations or needs I should be glad to help you set up a club.  I could draw up a simple constitution and suggest a few guest speakers free of charge.  Over the years I have met a lot of patent and trade mark attorneys, angel and private equity investors, specialist accountants, insurance brokers, product development consultants in all parts of the country.   I should even be happy to address any group you may set up or run a pro bono IP clinic myself.

Finally, two cardinal bits of advice.   The first is to ignore the small ads and spam emails from invention promoters offering to promote your invention for an eye-watering sum. Few have any connections with industry and most offer services that are already offered by your local Business or IP Centre or local enterprise partnership for free.   The second is to keep your invention under wraps until you have obtained optimum legal protection by applying for a patent or otherwise.

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

Direct Access to Barristers on Intellectual Property Matters

Jane Lambert

I am a member of the Intelectual Property Bar Association to which most barristers specializing in intellectual property and technology law belong.  There are over 100 of us.  Most are in London but there are a few in other parts of the country.  Our job is to advise on difficult points of law, draft complex legal instruments and represent clients in litigation and negotiations.  Most of the judges of the Patents and Intellectual Property Enterprise Courts and many of the other judges of the Chancery Division were recruited from our numbers. 

Barristers are often compared to consultant physicians and surgeons in medicine.  Just as a GP might refer patients to specialists for diagnosis or treatment, patent and trade mark attorneys and solicitors seek our opinions, drafts or representation for their clients. Until 2004  we had to be consulted through those intermediaries. Nowadays, many of us accept instructions directly from members of the public on IP matters under the public access scheme.  Earlier this evening, for example, I was asked how to apply for a patent.  Over the weekend I was asked how to challenge a design registration under s.11ZA of the Registered Designs Act 1949,  Other typical requests would be to review a lengthy business format franchise agreement, draft a complaint in a domain name dispute or appear at an online entitlement hearing in the Intellectual Property Office,

It should not be supposed that we do the work of solicitors, patent or trade mark attorneys or other professionals simply because we can be instructed directly.  Our Public Access Guidance forbids us from conducting litigation unless specifically authorized to do so.  Similarly, we do not prosecute patent, design or trade mark registration applications though we draft statements of case, review witness statements and appear before IPO hearing officers and EPO Boards of Appeal.  Our rules prevent us from acting for a client if we believe it to be in the client's interests or the interests of justice for him or her to instruct a solicitor or other professional intermediary.   Far from competing with other professionals, we are actually a source of work for them. 

Though we do not prosecute patent, design or trade mark applications or conduct litigation we may be the best initial point of contact for clients who may need such services.  There are many ways of protecting the same intellectual asset some of which are free such as unregistered design right or the right to bring an action for passing-off.  The optimum method of protection at a particular time and in certain circumstances is not necessarily the most comprehensive.  Similarly, a request for the transfer of a domain name under the Uniform Domain Name Dispute Resolution Policy can be much faster, cheaper, safer and even more effective than a trade mark infringement or passing-off claim in the courts.  Counsel's advice on those matters is objective and impartial. If an attorney or solicitor is required we can suggest intermediaries with whom we have worked satisfactorily in the past.

If a business owner, manager or individual seeks advice on a point of law we can advise on most matters without the assistance of a professional intermediary.  That would include such questions 

• "Is this computer-implemented invention patentable?",  
• "Do I have an action for copyright infringement?" 
• "I have just received this demand for undertakings and pile of documents from that big firm of solicitors, what are my options?" or
• "Can you help me understand this complex agreement that a potential customer has just sent me?"

There are some issues such as "Is this invention patentable given the prior art?" when we would need a patent search or some other information that a professional intermediary can supply. 

When a business owner or manager understands contracts and has negotiated deals before we can draft just about any kind of agreement or instrument for him or her.  If he or she is feeling his or her way we would advise the owner or manager to introduce a solicitor, accountant or another professional to the team.

Most litigation would need a solicitor, attorney or other professional but sometimes the client can do the necessary work and all that is required is advocacy.   Many hearings in the Intellectual Property Office or small claims track of the Intellectual Property Enterprise Court would fall into that category.  On one occasion I have responded to an appeal in the Court of Appeal and there have been several others when I have appeared in the High Court without a solicitor.

If you want to use our services you will need to supply a passport, driving licence or other photo ID and evidence of residence and if you represent a company your authority to do so.  We will specify what we will do when we shall do it and how much we shall charge in a client care letter.  That is your contract with your barrister.   In the unlikely event that something goes wrong, we are all insured and regulated by the Bar Standards Board or other authorities We have approved complaints handling procedures and the ordinary law of contract and tort applies to us just as much as to any other professional services provider.  You can find more information in the Public Access Guidance from our regulator.

Anyone wishing to discuss this article may call me during office hours or send me a message through my contact form.

The Border Innovation Hub

White Cliffs of Dover

Author Immanuel Giel Licence CC BY-SA 3.0  Source Wikimedia Commons

 

Jane Lambert

In UK Innovation Strategy I discussed ways in which the British government proposed to stimulate innovation so that the UK could join China, the USA, Japan and South Korea as a science and technology superpower by 2039,  Buried away in the text on free ports  on page 78 was this reference to the UK border:

"The innovation activity in Freeports will build on the government’s 2025 UK Border Strategy, published in December 2020, which set out a Technology and Innovation roadmap to drive forward innovation at the UK border."

 The 2025 UK Border Strategy mentioned in that sentence provided for private sector participation "to design, deliver and innovate around the border."

That strategy aims to achieve 6 "transformations:"

"Develop a coordinated user-centric government approach to border design and delivery, which works in partnership with industry and enables border innovation. 

Bring together government’s collection, assurance and use of border data to provide a comprehensive and holistic view of data at the border. 

Establish resilient ‘ports of the future’ at border crossing points to make the experience smoother and more secure for passengers and traders, while better protecting the public and environment. 

Use upstream compliance to move processes away from the actual frontier where appropriate, both for passengers and traders. 

Build the capability of staff and the border industry responsible for delivering border processes, particularly in an environment of greater automation; and simplify communication with border users to improve their experience. 

Shape the future development of borders worldwide, to promote the UK’s interests and facilitate end-to-end trade and travel."

The 4th of those "transformations" is reminiscent of arguments of the Democratic Unionist and the European Research Group politicians against regulatory alignment or the Northern Ireland protocol during the EU withdrawal agreement negotiations on the ground that it ought to be possible to avoid checks and inspections at the geographical frontier between Northern Ireland and the Irish Republic by carrying them out elsewhere with the appropriate technology.

Whether or not the hope of renegotiating the Northern Irish protocol is the motivation for its interest in the topic or merely coincidental, the Cabinet Office published its "Border Innovation Hub" on 31 Aug 2021 together with a Technology and Innovation Roadmap, a list of APIs (Application Programming Interfaces) and guidance on Opportunities and Funding.   The purpose of the Hub is said to bring "together information from across government to help provide industry with the tools needed to innovate at the border."  The overview states that 

"Technology and innovation to unlock new possibilities for smoother and safer border processes is a key element of the new strategy."

Further information about how the government hopes to achieve that objective is set out in the Roadmap.

The Roadmap is taken from the  2025 UK Border Strategy and includes the following:

• "Create a visible first point of contact in UK Government for border innovation suppliers and users"
• "Define target use cases with industry.
• "Set and collate security and interoperability standards," and
• "Work across government to design the border and support border innovation and its uptake."

The "first point of contact" mentioned above is the "Border Innovation Hub". 

Possible funders for research and development work by industry include the Defence and Security Accelerator, the Connected Places Catapult,  Transport Research and Innovation Grants and Innovate UK.

Any inventions resulting from border innovation would be patentable subject to the provisions of the Defence Contracts Act 1958.  The names of businesses, products and services might be registrable trade marks.  Anything written down would be protected from copying by copyright.  Any commercially sensitive unpublished research could be confidential.   Anyone wishing to discuss those matters should contact me on 020 7404 5252 or send me a message through my contact form.

Kalifa Review fails to mention Patents for FinTech Inventions

By James Gillray   Public Domain

 

Jane Lambert

This morning the government published the Kalifa Review of UK Fintech.  As I learnt my intellectual property law while working on the legal issues of chip and pin cards and finding ways to protect banking brands before service marks could be registered for VISA International in the 1980s and have followed the sector ever since FinTech is an area of law in which I feel entitled to claim expertise.

The report is 108 pages long in a magazine-style format.  It makes findings that I would expect such as Brexit, covid and competition being threats to the UK's competitive position as well as recommendations that FinTech company founders should be allowed to retain shares with enhanced voting rights after flotation that I found surprising.

One issue that I have found to be problematic in practice but which Kalifa did not mention at all was the exclusion of "a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer" as such from patentability by s.1 (2) (c) of the Patents Act 1977. Because of uncertainty as to whether a patent will be granted and if granted whether revocation proceedings. inventors ten to rely on trade secrecy which discourages collaboration and innovation.

Although the performance of the UK FinTech industry compared favourably to those of other European countries there were no direct comparisons with the performance of the sector in countries outside Europe. There were, however, oblique references such as the greater percentage of initial public offerings on exchanges in the USA which suggested that the US FinTech industry was significantly more successful than the UK's. One anecdotal reason for the greater success of the US industry is the absence of any equivalent to s.1 (2) in the US Patent Act.   Even without that exclusion, the Americans see quite capable of rejecting applications for patents that are not recognizable as inventions (see Bilski v. Kappos, 561 U.S. 593 (2010)).

This is no mere griping.  Many of the most exciting developments in the technology have come from small businesses which are often one-man bands.  In the early days, founders rely heavily on investment from angels or private equity investors and they nearly always insist on some paperwork from the Intellectual Property Office before they open their cheque books. 

Despite these observations and reservations, the Kalifa report is well worth reading.   Anyone wishing to discuss it with me may call me on +44 (0)20 7404 5252 or send me a message through my contact form.

IP Services During the Emergency

Author NIAID  Licence CC BY 2.0

Jane Lambert

The suspension of so much business activity to facilitate social distancing does not mean that intellectual property is no longer a priority. On the contrary, it is now more important than ever.

If we are ever to stop Covid-19 in its tracks it will be through the efforts of universities and biotech and pharmaceutical companies around the world whose research will have to be funded.  Much of that funding will come from the private sector which will require legal protection for the revenue streams from which it will recoup such investment.

The businesses and institutions engaged in research in diagnostics, vaccines and cures will usually understand IP and have access to the best possible advice and representation but that will not necessarily apply to the many businesses, public health authorities and clinicians around the world who distribute those products. They need the best possible advice on patenting, licensing and technology transfer at affordable rates.

Also involved in the effort to stop the spread of the infection will be manufacturers and distributors of personal protective equipment, ventilators, respirators and various medical devices. It is there that there will be scope for small businesses and individuals to invent or design better products or components.  They will need help in putting their ideas and inventions into production.

It will not be just inventors, product designers and engineers who will contribute to this effort. Software developers who will track the spread of infection and the deployment of resources.  Artists and communicators will be needed to convey public health information to the public.

And when this emergency is over businesses will have to innovate and create as never before in order to restore our ravaged economy the planning for which has to start now.

Just at a time when entrepreneurs, inventors and others will require high-quality advice and representation more than ever, social distancing will make it more difficult to obtain.  So this is what I as an experienced IP practitioner will do to help.  Ever since the Public Access Scheme has been in operation I have set up and chaired inventors' clubs, run pro bono clinics in various parts of the UK and given talks at science parks, incubators, FabLabs, Business and IP Centres and other forums throughout the country.  I was due to speak to the inventors, makers and designers of Porthmadog at Ffiws Maker Space on 1 April 2020.  I had an IP clinic at Barnsley Business Village on 14 April 2020.  I was planning a high-level seminar on Green Innovation at the Menai Science Park on 27 April 2020 as Wales's contribution to World IP Day.

Now I can no longer keep these appointments in person but there is nothing to stop me from doing so online and that is precisely what I shall do.  Anybody who needs advice or assistance with an IP issue can contact me through my "Initial Advice and Signposting Form".  I can advise on IP law generally and represent clients in negotiations and disputes but I do not prosecute patent, design or trade mark applications, specialize in tax or company law, develop products or arrange funding.  However, I can probably direct clients to other experts such as patent or trade mark attorneys, commercial law firms, specialist accountants and product design consultants who can help with such issues.

I shall also be offering webinars to business owners, inventors, investors and indeed IP lawyers and attorneys for so long as social distancing has to continue.

Throughout this emergency the British and other intellectual property offices will remain open, most IP professionals will be working from home, the IPO and many courts will conduct hearings by phone or video link.  We may not be so easy to meet but there should be no suspension or diminution in the quality of services.

Anyone wanting to discuss this article can message me through my contact page.  If you want a chat I shall be glad to call you back by phone or Skype.

An Inventor's Guide to Shanks v Unilever

UK Supreme Court

Author Christine Smith Licence CC BY-SA 4.0

Jane Lambert

On 23 Oct 2019, the Supreme Court of the United Kingdom delivered a judgment that could affect anyone who works in R&D or in some other capacity in which he or she is likely to devise an invention. It could also affect an inventor who assigns his or her rights in an invention to his or her employer.  Five justices of the Supreme Court found that an invention that had generated revenues of £24 million had been of such "outstanding benefit" for the inventor's employer that the inventor deserved a payment of £2 million in addition to the salary and perks that he had received from his employment.

The case is known as Shanks v Unilever Plc and others and you can read all about it on the Supreme Court's website and my case note, Employees' Inventions - Shanks v Unilever of 28 Oct 2019 in NIPC Law.  My note links to a press summary of the judgment and a video in which Lord Kitchin, who delivered that judgment, reads that summary.

The right to an additional payment known as "compensation" arises out of s.40 of the Patents Act 1977. Subsection (1) could affect you if you are employed in a capacity where you are likely to devise an invention. Subsection (2) if you are employed in some other capacity that entitles you to patent your invention but you sell or grant an exclusive licence to your patent or right to apply for a patent to your employer,

However, inventors can't expect compensation in addition to their pay and benefits for any old invention.  It has to be one that generates an "outstanding benefit" for the employer. That is to say, a benefit that is exceptional or stands out.  That is not easy to prove.  Not many employed inventors apply for compensation and most of the applications that are made fail.

The significance of the Supreme Court's decision is that the Court made an award to the inventor even though £24 million is chicken feed to a multinational group of companies like Unilever.  The inventor, who is now a visiting professor of electronics and electrical engineering in the University of Glasgow, had worked in R&D for a subsidiary of Unilever in the 1980s. He applied for compensation as long ago as 2006. He took his case to the Comptroller-General of Patents, Designs and Trade Marks who appointed an official known as a "hearing officer" to hear his plea. 

One of the factors that the hearing officer had to consider under s.40 (1) was "the size and nature" of the employer's undertaking.  As Unilever, which makes everything from ice cream to deodorant is massive, the hearing officer could not say that £24 million was an "outstanding benefit" for that company. He dismissed the application. The inventor appealed to Mr Justice Arnold who agreed with the hearing officer. He then appealed to the Court of Appeal which agreed with the judge below and the hearing officer.

The inventor finally appealed to the Supreme Court which is the highest court of the United Kingdom. There Lord Kitchin, who had distinguished himself as a barrister of the intellectual property bar and later as a judge of the Patents Court and Lord Justice of Appeal, said that the hearing officer and the courts below had been looking at the words "the size and nature of the employer's undertaking" the wrong way.  The inventor had not been employed by the whole Unilever group but by a subsidiary that was responsible for R&D.  The correct way to consider the issue was to compare the benefits that had accrued from the invention in this case with all other inventions in the field that had emanated from the same subsidiary.  If that was done the £24 million benefit really did stand out and the inventor was entitled to a fair share of it.

The hearing officer had decided that 5% of the £24 million, which would have amounted to £1.2 million, was a fair share had he been able to make an award of compensation to the inventor and the Supreme Court agreed.  However, as Unilever had enjoyed the use of that money for many years and as the value of that sum had been eroded by inflation the Supreme Court gave the inventor an uplift to £2 million. Mr Justice Arnold had said that corporation tax should be deducted from the £24 million but the Court of Appeal disagreed with him and so did the Supreme Court.

Lord Kitchin made clear that the methodology of assessing the benefit from the invention having regard to the size and nature of the employer's undertaking did not apply to every case.  Sometimes it is appropriate to consider the benefit in relation to the revenues of the whole company as was the case where an employee's invention transformed the fortunes of the company.  Each case depends on its own facts.

While it is still not easy for an inventor to recover compensation over and above his or her salary and benefits this case has undoubtedly removed some obstacles and clarified the law. Most applications for employee's compensation start in the Intellectual Property Office where the procedure is less formal than a court and the costs that may be awarded against the unsuccessful party are considerably lower.

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

A Useful Little Video from the EPO

Standard YouTube Licence

The Pontio Centre: A Resource for Inventors, Designers and Makers in North Wales

Bangor

Author UA
Licence Copyright waived by the author
Source Wikipedia

Jane Lambert

On 1 Dec 2018, I attended a performance of Dylan Thomas – A Child’s Christmas, Poems and Tiger Eggs by Ballet Cymru in the  Bryn Terfel Theatre at the Pontio Arts and Innovation Centre of Bangor University. If you are interested, you can read my review of the performance in Ballet Cymru's Dylan Thomas Programme: The Company's Best Work Ever which I posted on 13 Dec 2018 to my dance blog Terpsichore.

The Bryn Terfel Theatre is just one of a number of facilities at the Pontio. There is also a cinema, restaurant, students; union, bars and cafés and, most importantly, the Hwb which is the Pontio innovation area.  I was unable to visit it on 1 Dec 2018 but here is the description on the "About" page of the Pontio's website:

"Pontio Innovation is about equipping individuals and businesses with the tools they need to succeed in the modern economy. With a focus on transdisciplinary working and rapid prototyping, the Co-Lab, Media Lab, Hackspace and Fablab areas are equipped with cutting-edge technologies. It will boost the University’s cross-disciplinary teaching programmes and encourage collaborative work between students, staff and local businesses. Check out the Innovation Events page for details about what's going on here and read more about the Pontio Innovation philosophy."

For artists, designers, inventors and other makers it is important to translate an idea in the brain or on a sheet of paper into three-dimensional objects that they can show to collaborators, investors and customers. That is where the three-dimensional printers, laser cutters and other equipment at the centre's FabLab can help.

A FabLab is a fabrication laboratory and I have written quite a lot about them in this and other blogs. Readers can find more information and links to some of those articles in Liverpool Inventors Club Re-launch - Fabulous FabLab 28 Jan 2012.  The Pontio offers training in the use of that equipment and access to the machines which can be booked through the centre's website. Details of those courses can be found on the "Innovation Events" page.

There is also some very good information about innovation generally on the "Pontio Innovation" page.  The only topic that appears to be missing from that page is a mention of intellectual property. For the benefit of users of the Pontio innovation space as well as artists, designers, inventors and makers generally I shall try to fill that gap here.

All the things that can be made in the Pontio FabLab and other parts of the Hwb are intellectual assets.  Expenditure of time and money on making those assets can be protected by a bundle of laws known as intellectual property.  Examples of those laws are patents for new inventions, trade marks and the law of passing off to protect brands, registered designs and unregistered design right to protect aesthetic and technical designs and copyright and related rights to protect creative output.

Users of the Hwb's facilities should be aware that the laws that protect their intellectual assets also protect other peoples'.  They must be careful not to copy beyond what is expressly or impliedly licensed, to check for registered rights such as patents, trade marks and registered designs and, wherever possible, to take out specialist IP insurance to enforce their own rights and to resist infringement claims by others.

Anyone wishing to discuss this article or any topic raised in it is welcome to call me on 020 7404 5252 during office hours or send me a message through my contact form.

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.

Talk "How can I protect my Business Idea?"

Jane Lambert

I have been holding patent clinics around the country for many years and the most frequently asked question is "How can I protect my business idea?"

There is no easy answer because it depends on the nature of your business and the type of idea. For instance, a patent may afford the most extensive protection for a new product or process but if the costs of patenting, insuring and policing the are likely to outweigh the income likely to be generated from the invention you would be better off looking at other forms of legal protection.

It is for that reason that I am giving a talk at Barnsley Business and Innovation Centre (BBIC) entitled

How can I protect my Business Idea?

on 9 May 2017 between 12:15 and 13:15.

I will 

• introduce you to all the tools in the legal toolbox such as patents, trade secrecy, unregistered design rights, trade marks et cetera; 
• tell you the advantages and disadvantages of each type of protection; 
•  explain how to get each type of IP and how much it will cost; 
• give you some useful tips about insurance, watch services and enforcement; 
• advise you on the different types of IP professional, where to find them, how to instruct them and how much they are likely to cost; and finally,
• share a methodology for working out an IP strategy.

There is likely to be quite a lot of demand for places so call George or any of his colleagues on 020 7404 5252 to book your place as soon as possible,

Patent or No Patent

Jane Lambert

In IP's not just for Big Brands and High Tech Businesses 27 Aug 2016 NIPC News I wrote:

"In my career at the Bar I have known far more businesses that have failed from having too much IP than too little. Some of those failures had been caused by patents that cost many thousands of pounds to obtain but could never be worked. Others by disputes that were abandoned because the rights owner (who in many cases had a strong claim) simply ran out of money."

I appreciate that observation probably goes against everything that you have been told by your accountant, bank manager, business adviser, your patent agent and your peers but that does not make it any less true. You take a risk and commit yourself to considerable expense which you may never recover whenever you apply for a patent. So think long and hard before you take that step.

What are the Risks and Costs of Patenting?

In order to get a patent for an invention you have to "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" (see s.14 (3) of the Patents Act 1977).  If you don;t do that, the Intellectual Property Office or a judge may take that patent away from you under s.72 (1) (c) of that same Act.  So the first risk is that you tell the world, including potential competitors in countries where you do not seek patent protection, how to make or use your invention. If your invention is any good that is precisely what they will do, The only thing stopping them is whatever patent protection you may be granted around the world and your ability to enforce that protection through civil proceedings in the English and other courts.

Before you apply for a patent you can rely on the law of confidence to prevent anyone to whom you may disclose the invention in confidence, such as angels, consultants, contractors, designers, manufacturers and others, from making use of the invention or disclosing it to third parties for so long as the invention is secret (see Trade Secrets FAQ  24 Aug 2016 NIPC News). You lose that protection as soon as your application is published because your invention becomes public knowledge.  Losing the protection of the law of confidence is the second risk that you run. Moreover, it could be argued that you disclaim all other IP rights, such as unregistered design rights,  when you apply for a patent because you dedicate your invention to the public. The would be another risk.

There is no guarantee that you will get a patent and if, you do get one, there is always the risk that it may be taken away if it is found that the invention had already been invented, that it was obvious in the light if previous inventions or some other reason.  If the IPO decides not to grant you a patent or the IPO or a court decides to take it away all the money that you will have spent on searches. professional fees, payments to the IPO or other patent offices and so on goes down the plughole. That is yet another risk.

Now for the costs.

A patent attorney will charge you several thousand pounds for preparing a patent application just for the IPO or European Patent Office ("EPO").  If you want to apply for patent protection in other countries it will cost you many times more.   Although it is not compulsory to instruct a patent attorney you are strongly advised to do so. Attorneys are trained to draft specifications in such a way as to claim a sufficient monopoly to make the invention commercially viable but not so broad as to render it invalid.  That's a great skill to have and that is why attorneys need good natural science, engineering or technology degrees to do their job as well as years of legal training.  It is possible for a reasonably intelligent and well educated lay person to apply for his or her own design registration or even a trade mark successfully but it us very rare indeed for a lay person to draft a satisfactory patent application.

If you are short of money it is very tempting to apply for a patent for the UK alone and ignore the world outside. The problem with ignoring the rest of the world is that your competitors outside the UK will then be free to make and sell your invention everywhere else and you won't get a bean. You may comfort yourself with the thought that the UK is the 5th or 6th largest economy in the world for time being. That may be true but compared to the USA, China, Japan or indeed the rest of the EU number 6 {or even number 5} is not all that big.  If you are going to confine your monopoly to the UK make sure that there is a sufficient market in this country to make money from your invention.

Your expenditure does not stop on obtaining the grant. Every year for the life of the patent you have to pay renewal fees to the IPO and other patent offices just to keep the patent alive.  In many countries those renewal fees increase during the term. You have to watch out for potential infringements and if the patent is infringed you may have to take legal proceedings to prevent the infringement.  That is the biggest cost and risk of them all because it can cost hundreds of thousands if not millions of pounds to pursue an infringer in a common law country like England or the United States and anything up to 50,000 euro even in civil law countries like France or Germany.

You and your backers need to be pretty sure that your invention is a real money spinner before taking those risks and incurring those costs.

What are the Alternatives to Patenting?

Essentially keeping your invention under wraps and relying on the law of confidence to stop unauthorized use or further disclosure (see Understanding Trade Secrecy and Confidentiality 23 July 2016). That can work very well if your product cannot easily be reverse engineered once it is put on the market which is  the case with beverages like Coca Cola or Chatreuse (see Trade Secrets FAQ 24 Aug 2016). The problem is that most technical secrets can be ascertained by buying a product and taking it apart and analysing it or discovered through parallel research.  In the absence of a patent there is nothing to be done to prevent reverse engineering or parallel research. Indeed, the functioning of a free market depends on it.

In the UK a technical design may be protected from copying for up to 10 years by unregistered design right, an almost uniquely British IP right.  That would include the shape of equipment or the arrangement of its electronic or mechanical components but design right would not protect the technology as such. If a competitor makes a similar product without copying the protected design he is quite free to make and market it in the UK. Moreover, anyone in the world including an infringer is entitled to apply for a licence to reproduce a design as of right for the last 5 years of the design right term.

Design right law is used to protect semiconductor topographies in the UK with a number of amendments that permit citizens of countries outside the EU to apply for protection and give a longer term.

Computer programs are protected from copying for the life of the author plus 70 years by literary copyright and the source code of a program can be a trade secret so long as it is not disclosed.

The advantages of confidentiality, copyright and design rights are that they are all free but they provide only limited protection. However, that may be long enough for a business to establish itself in the market and build up a reputation which would give it a competitive advantage. For many businesses that is all that is required. The big disadvantage is that the protection is much less extensive than the monopoly that only a patent can offer.

So how do I choose between a Patent or No Patent?

Here are my tips.

1. Remember that the purpose of IP is to protect income streams and not to protect clever technology just for the sake of it.  
2. Referring to your business plan try to identify the main income streams for your business over the business planning period.
3. Consider all the possible threats to those income streams. I don't mind betting that a large number of those will be commercial rather than legal such as new products based on different technologies or demand for the product drying up because of changing market conditions.
4. Think about possible counter-measures to those threats. In many cases those counter-measures will be commercial too such as reducing your prices or improving your product. Only in a  few cases will you need a legal remedy,
5. Where you do need a legal remedy consider all the alternatives such as design right and confidentiality. Choose the one that gives you the most cost-effective protection over the business planning period. In some cases that may be a patent but in many other cases it will not.
6. Unless you expect your earnings to grow substantially, take out intellectual property insurance or make other arrangements to fund enforcement litigation.

If you want to discuss this article, call me on 020 7404 5252 during office hours or send me a message through my contact form.

Inventor Assistance Programme

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

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

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

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

If you think someone has infringed your patent talk to a lawyer first

Royal Courts of Justice

Litigation is supposed to be the last resort for any kind of dispute including those over patents or other types of intellectual property. For most cases the first step towards settlement it a complaint to the person who has harmed you with a request to stop and maybe a request for compensation. However if you do that in certain types of intellectual property disputes that could land you in a whole heap of trouble.

That is because s.70 (1) of the Patents Act 1977 provides:

"Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) below, bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below."

There are similar provisions in other enactments relation to design rights, registered designs, Community designs and trade marks including Community trade marks.

The relief to which s,70 (3) and the corresponding provisions of the other statutes and statutory instruments refer is:

"(a) a declaration or declarator to the effect that the threats are unjustifiable;
(b) an injunction or interdict against the continuance of the threats; and
(c) damages in respect of any loss which the claimant or pursuer has sustained by the threats."

Those damages can be heavy. In SDL Hair Ltd v Next Row Ltd. and Others [2014] EWHC 2084 (IPEC) Judge Hacon awarded damages of £40,500 against those who had threatened patent infringement proceedings against the distributor of a competing product and a well kn own shopping channel.

The threat need not be formal, explicit or even uncivil but it must be such as to leave a reasonable persob in no doubt as to the consequences of non-compliance.  In Luna Advertising Co Ltd v Burnham & Co. (1928) RPC 258 one of the defendant's reps visited a customer of the claimant and complained that a sign exhibited outside the customer's premises infringed his boss's patent and asked for it be removed. Granting an injunction against the defendant Mr Justice Clauson said

“I think that an interview of this kind … between business men, although nobody speaks of solicitors and writs, has no real meaning except to convey … that the threatener has legal rights and means to enforce them … in the way in which they are naturally enforced, i.e. by legal proceedings.”

Lawyers and patent and trade mark attorneys have to be particularly careful because they have no special protection merely because they are carrying out their clients' instructions.

There are however a number of exceptions and defences in the Act.

First, and most obviously "the person aggrieved" who may be the person to whom the threat is made or his or her supplier will not prevail against the person making the threat if that person can show that the conduct of which he or she complained would infringe a patent. However, a new subsection (2A) inserted by s.12 of the Patents Act 2004 now provides that the person aggrieved will still win if he or she can show that the patent was invalid in a relevant respect unless the person making the threat can show that at the time he she made the threat that person did not know and had no reason to suspect that the patent was invalid. As you might expect a lot of complex and expensive litigation begins with an action  for groundless threats, a counterclaim by the defendant for patent infringement and a counterclaim to the counterclaim for revocation of the patent.

Another exception is provided by s.70 (4):

"Proceedings may not be brought under this section for -
(a) a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process, or
(b) a threat, made to a person who has made or imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or process."

This subsection was also amended by the 2004 Act. Until the subsection was changed threats to bring proceedings in respect of making or importing an allegedly infringing product were excepted but not threats in respect of other acts. Consequently patentees and their lawyers had to be very careful when corresponding with businesses that made or imported and distributed the allegedly infringing product. Needless to say they still have to be careful when dealing with distributors or other intermediaries of an allegedly infringing product.

Yet another amendment brought about by the 2004 Act was made to s.70 (5).  The subsection now reads:

"For the purposes of this section a person does not threaten another person with proceedings for infringement of a patent if he merely -
(a) provides factual information about the patent,
(b) makes enquiries of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed as mentioned in subsection (4)(a) above, or
(c) makes an assertion about the patent for the purpose of any enquiries so made."

Thus, merely sending a specification to an alleged infringer is not a threat but patentees have to be careful how they respond to any reply. If the recipient of the specification asks "Why have you sent me this?" it is important not to reply "Because you have infringed the patent" or words to similar effect.  In settlement negotiations or mediation parties often mention the possibility of litigation when trying to persuade the other side to make concessions. If uttered in any other context such statements would be actionable threats but the Court of Appeal has held in Unilever plc v. The Procter & Gamble Company [2000] F.S.R. 344 that threats made in bona fide settlement negotiations cannot be referred to in subsequent proceedings. However, the negotiations must be genuine. Merely heading a threatening letter "without prejudice" will not do (see Kooltrade Ltd v XTS Ltd [2001] FSR 344, [2001] ADR LR 7/11).

Supplementing the amended s.70 (5) the 2004 Act inserted a new subsection (6) into s.70 of the 1977 Act which provides yet another defence:

"In proceedings under this section for threats made by one person (A) to another (B) in respect of an alleged infringement of a patent for an invention, it shall be a defence for A to prove that he used his best endeavours, without success, to discover -

(a) where the invention is a product, the identity of the person (if any) who made or (in the case of an imported product) imported it for disposal;
(b) where the invention is a process and the alleged infringement consists of offering it for use, the identity of a person who used the process;
(c) where the invention is a process and the alleged infringement is an act falling within section 60(1)(c) above, the identity of the person who used the process to produce the product in question;

and that he notified B accordingly, before or at the time of making the threats, identifying the endeavours used."

S.70 does not apply to threats to sue abroad unless the person making the threat threatens proceedings in this country too.  Other Commonwealth and a few former Commonwealth countries such as the Republic of Ireland have similar provisions in their patent laws but the United States does not. A few countries actually go further than the UK in that they provide an action for groundless threats for copyright infringement.

There have been calls from time to time by various interest groups to abolish this cause of action and this legislation has been considered recently by the Law Commission. In their report Patents Trade Marks and Designs: Groundless Threats the Law Commission recommended that the cause of action be retained but that the law should be reformed to permit some communication with distributors and lawyers and patent and trade mark attorneys should be exempted from liability.

Threats actions in respect of threats of patent, registered design and registered Community design infringement proceedings should be brought in the Patents Court or the Intellectual Property Enterprise Court ("IPEC"). Proceedings in respect of trade marks, unregistered designs or unregistered Community designs can also be brought in IPEC or the Intellectual Property list of the Chancery Division or any country court that is attached to a chancery district registry such as Manchester, Leeds, Liverpool or Newcastle.

Having cut my teeth in intellectual property litigation in the North of England I have probably seen more threats actions than most members of the intellectual property bar. I was counsel in one of the leading cases on this cause of action. This is a complex area of law in which you can easily get into trouble. If anybody wants to discuss this article or any instance where a threat has been made he or she should not hesitate to call me on 020 7404 5252 during normal office hours or complete my contact form. I am also on twitter, Facebook, Linkedin, G+ and Xing.