Knowledge Asset Management Hub

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Jane Lambert

The Knowledge Asset Management Hub is a resource to help universities and other research institutions identify, protect and commercialise their intellectual assets.  It brings together a comprehensive set of practical resources.  According to the announcement on the Intellectual Property Office website, the Hub consists of the following components:

• "Institutional IP strategy guidance — practical frameworks to help universities and research organisations develop and implement IP strategies and policies at an organisational level
• Project-level IP risk and opportunity tools — resources to help teams identify and manage IP considerations within individual research projects, from early-stage collaboration agreements through to commercialisation
• Patent data analysis and IP due diligence resources — tools to support the assessments that underpin licencing, spin-out formation, and investment decisions
• Knowledge Asset Management Toolkit — guidance recognising that effective knowledge asset management requires strategic and operational management."

The following guides were published with the announcement:

• KAM Guide: Introduction and intellectual property policy:  an excellent introduction to those unfamiliar; 
• KAM Guide: Intellectual property management: a more detailed guide on the different IP rights and how they mayh be acquired; 
• KAM Guide: Further resources and glossary of terms: links to the relevant statutes, guidance on funding and licensing and glossary;
• Knowledge Asset Management Guide:  very handy document, particularly for those with a grounding in IA management; 
• Knowledge Asset Management(KAM) Toolkit: useful charts, checklist and basic infor; and 
• IP due diligence quick guide: introduction to due diligence and an explanation of why it is important.

Useful though these guides are they cannot cover everything.  Anyone wanting to discuss any of these topics is welcome to give me a bell on +44 (0)20 7404 5252 during UK office hours or send me a message at any time.

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.

Intellectual Property Resources for Inventors and Small Businesses in the USA

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Jane Lambert

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

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

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

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

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

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

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

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

Law School Clinic Certification Program

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

Patent and Trademark Resource Centers

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

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

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

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

BIPC Newcastle

Newcastle City Library

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Jane Lambert

On 26 Oct 2010, I blogged an announcement by Mark Preece MP of a new collaboration between the British Library, NESTA, Newcastle City Library and Northumbria University for a new Business and IP Centre in Newcastle along the lines of the British Library's Business and IP Centre in London (see Jane Lambert "Resources for Inventors in North East England"). I am pleased to say that the Centre is now open at Newcastle City Library, and it has a website and Twitter feed.

The home page of the website claims to be the "only dedicated Business and Intellectual Property Centre outside London". Leeds Business and Patents would be entitled to argue with that. Like Leeds, the BIPC sets out to be  "a comprehensive one-stop-shop for the region’s business talent, offering everything from research materials to subscription database access; tailored 1:1 consultation sessions to the latest business journals."

The BIPC's resources include:

• A wide selection of business reference and lending books.
• Free factsheets and guides (including Trade Marks, Design, Copyright, Esp@cenet, Historical Patents Searching, Patent Information and IP protection)
• Current and backdated newspapers and journals including Management Today, Investors Chronicle, Trade International, Moneyfacts, Marketing, People Management and Contrax Weekly.
• A dedicated seating/study/networking area for business use.
• Display cabinets exhibiting successful case studies and historical patents journals.
• 2 x Apple Macs and 1 PC dedicated to business use.
• Business database subscriptions including Keynote, Cobra, Corporate Researcher and Which?
• A private interview room with PC/internet access.
• Interactive ‘Skills Swap’ networking board.

Resources available in the wider library include a 100-seat café with a terrace area, printing, photocopying, scanning and faxing facilities and free internet and Wi-Fi.   All good stuff.

The enterprise is a joint venture between the City and British Libraries, Newcastle Science City, Northumbria University, the Bdaily business network, some local solicitors and the Newcastle branch of a firm of patent and trade mark agents. Advertised services include assistance with business planning, patent, trade mark and design searches and skill training.  BIPC has an interesting programme of events starting with business coaching and a talk by Trevor Baylis on 24 Jan 2012. It plans to develop a range of services on the London model.

One thing that they do seem to lack in Newcastle is an inventors group like the ones in Leeds, Liverpool, Manchester and Sheffield.   When I published my article in 2010, I received a number of enquiries and offers of help from inventors in the North East.  Our chambers would be very glad to help set up such a group in Newcastle if anyone would care to contact us on 0191 580 8090 or through our form.

The Library is open until 20:30 on Monday to Thursday.   It shuts at 17:30 on Friday and Saturday and 17:00 on Sunday.   Its address is 33 New Bridge St West, Newcastle upon Tyne, NE1 8AX.

Resources for Inventors in South West England

South West England consists of the counties of Cornwall, Devon, Dorset, Gloucestershire, Somerset and Wiltshire. the city of Bristol and the Isles of Scilly. The region covers an area of 23,828 square kilometres and has a population of just under 5 million.

Regional Development

The regional development agency for the region is the South West Regional Development Agency. This will be abolished with all the other RDAs by March 2012. Proposals for local enterprise partnerships have been accepted for:

• Bath and North East Somerset (The West of England LEP); and
• Cornwall and the Isles of Scilly.

Clinics

There are clinics at Bristol Central Library and the University of Plymouth. Inventors in South West England can also access online advice and, where appropriate, introduction to local patent and trade mark agents and other intellectual property practitioners through NIPC Clinics.

Community Development Finance Institutions

There are three CDFIs in South West England:

• Bristol Enterprise Development Fund for the Bristol Metropolitan Area
• Frederick's Foundation which has branches in Devon, Dorset, Gloucester, Somerset and Wiltshire; and
• South West Investment Group which covers the whole of the region.

Inventors Clubs

The South West Inventors Club meets on the third Wednesday of the month at Yeovil to discuss members' inventions, intellectual property, funding and other matters.

Libraries

There are PATLib libraries at Bristol and Plymouth.

Professional Advice

We are building up a network of local patent and trade mark attorneys, specialist solicitors and other professionals in South West England. You can access that network by calling us on 0117 325 6300.

Further Information

We have a page on inventors' resources in South West England on the Inventors' Club website which we shall update and expand as and when we can. We have an Inventors Club group on Linkedin and you can of course join the Inventors Club itself. If you want to contact us you can also get in touch through our contact form.

Resources for Inventors in South East England

South East England consists of the counties of Berkshire, Buckinghamshire, East Sussex, Hampshire, Isle of Wight, Kent, Oxfordshire, Surrey and West Sussex. The region covers just under 19,096 square kilometres and has a population of just over 8 million.

Regional Development

The regional development agency for the region is the SEEDA (South East England Development Agency). This will be abolished with all the other agencies by the end of March in 2012. Proposals for local enterprise partnerships have been accepted for the following areas:

• Coast to Capital: Brighton, Croydon, Gatwick Triangle, East Sussex and Surrey;
• Enterprise M3 (North East Hampshire and West Surrey)
• Kent and Greater Essex and East Sussex
• Oxfordshire City Region
• Solent
• Thames Valley and Berkshire

Business Angels

There are no less than 4 angel networks:

• Finance South East
• Ground Floor Ventures
• Kent Investor Club
• Thames Valley Investment Network

Clinics

A clinic is run by local patent agents at Southampton Central Library on the last Wednesday of the month between 17:00 and 19:00. Local inventors can also access NIPC Clinics through our website or call us on 023 9316 2030.

Community Development Finance Institutions

There are no less than 5 Community Development Finance Institutions in South East England:

• Capitalise Business Support
• Frederick's Foundation
• Hastings Trust
• Isle of Wight Lottery
• South Coast Moneyline

Inventors Club

The Wessex Round Table of Inventors is based in Southampton. It holds regular monthly meetings and offers advice on funding, IP, licensing, marketing and other matters. It also has an excellent blog and website.

Libraries

Portsmouth Central Library is the only PATLib library in the region. However, clinics are held not there but in Southampton.

Professional Advice

We are building up a network of local patent and trade mark attorneys, specialist solicitors and other professionals in South East England. You can access that network by calling us on 023 9316 2030.

Further Information

We have a page on inventors resources in the South East on the Inventors Club website which we shall update and expand as and when we can. We have an Inventors Club Group on Linkedin and you can of course join the Inventors' Club. The rules are here and use this form to join.

Resources for Inventors in North East England

On 9 September 2010 Mark Prisk, Minister of State for Business and Enterprise, announced a new collaboration between the British Library, NESTA, Newcastle City Library and Northumberland University for a new Business and IP Centre in the City along the lines of the British Library's Business and IP Centre in London (see "Mark Prisk announces new business advisory service" on the Real Business website).

What's There Now?

That announcement prompted me to look at what is available for private inventors in the North East and indeed the rest of the country. As I want to provide a resource for inventors in the North East I should be very grateful if folk from the region could let me know if I have missed anything. They can get in touch with me either through our contact form or on our local number 0191 580 8090.

Inventors' Clubs

First up is that there does not seem to be a local inventors' club in North-East England. I could not find one either through googling, the excellent WRTI's directory of inventors' clubs or any other source. Now there are patent attorneys and patent clinics in the region so there must be inventors, As inventors like to get together there are almost certainly informal gatherings of inventors. But that is not the same thing as a club with regular meeting, networking and mutual assistance. Having helped set up the inventors clubs in Leeds, Liverpool and Sheffield and having supported the ones in Blackburn and Manchester we'd like to help. Again, if any local inventor, patent librarian, business angel, local government officer or entrepreneur would like our help, please let us know.

Clinics

According to the City library website intellectual property advice is available at the City Library in the Charles Avison Building, 33 New Bridge Street, Newcastle upon Tyne, NE1 8AX on Wednesday mornings and Friday afternoons. Appointments can be booked through information@newcastle.gov.uk or 0191 227 4100. According to the CIPA website this advice is provided by local patent agents.

Libraries

The City Library at 33 New Bridge Street is a member of the PatLib network and offers lots of printed and on-line resources on all aspects of business law including patent, trade mark and registered design searches for which it charges a fee.

Funding
In addition to national banking, angel and VC networks there are several strong local financial institutions. These include the Entrust business angel network and 4 local community development finance institutions, namely Five Lamps, Northern Pinetree Trust, PNE Group and Street North East.

Regional Development

The Regional Development Agency ("RDA") for the North East England is One North East which, of course, will go the way of the other RDAs very shortly (see "Local Enterprise Partnerships begin to take shape" 21 Oct 2010). There is a regional Business Link based at Spectrum 6, Spectrum Business Park, Seaham, SR7 7TT, Tel: 0845 600 9 006. The RDAs will be replaced by local enterprise partnerships ("LEPs") and proposals have been submitted for County Durham, Northumberland, North Tyneside and the whole North East. Some of these can be accessed from the BIS website.

Professional Advice

There are lots of patent and trade mark agents and some law firms that belong to the Intellectual Property Lawyers Association in Newcastle and other towns and cities in the region. We don't yet know any of them well enough to recommend for private inventors who will have limited budgets and would advise such clients to ask around and shop around and let us know what they find. The same goes for accountants, business advisers, marketing consultants, product designers. We have a page on Inventors Resources for North East England on the Inventors Club website which we will update as and when we can.

Further Information

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.