Essential Reading for Inventors and Entrepreneurs

Jane Lambert

IP really can make or break a business.  Get it right and you can control entry to your markets or generate substantial amounts of licensing revenue. Get it wrong and you can be ensnared suddenly in complex litigation with draconian remedies and ruinous legal fees. You can try to ignore it but every business in the world has goodwill, some trade secrets, a website with text and photos all of which are likely to be copyright works. 

Problems can be avoided and opportunities seized by spotting them in advance.  By and large, that is what big companies do.  Their executives will have learnt something about IP at business school.   They will have attended conferences or read about IP in business journalists.  They will also be supported by in-house lawyers and patent and trade mark attorneys with ready access to the specialist bar and law firms. But inventors, designers and business owners rarely have the time, expertise or funds for any of that.  

Those who are aware of the problem have often asked me in the past to recommend a manual on IP for startups.  I wrote one on IP enforcement in 2009 but it needs updating and it does not cover non-contentious issues such as patent prosecution, design or trade mark registration or licensing.  But one book that I can recommend is Enterprising Ideas A Guide to Intellectual Property for Startups which was written by Omer Hiziroglu and published this year by the WIPO (World Intellectual Property Organization), the UN agency for intellectual property.

The publication is only 78 pages long and can be downloaded free of charge from the WIPO's website.  It consists of the following chapters:

• Introduction 
• Protecting your innovation
• Distinguishing your product in the market
• Going international
• Other strategic ways to exploit IP
• Managing risks
• Using IP databases, and
• IP audit

There are also two annexes.

The Introduction contains an overview of IP.  The IP office for the UK is the Intellectual Property Office in Newport.  We do not have utility models in this country but we do have unregistered design rights which protect the shape or configuration of articles from copying for up to 10 tears from the first marketing of the articles. Our industrial design law is also complicated because we have overlapping protection by copyright and design registration and now a new supplementary unregistered design right. Product designs that are new and have individual character can be registered with the Intellectual Property Office for 5 consecutive terms of 5 years each.   Also in the Introduction is a section on IP generating as opposed to IP consuming startups and a paragraph of technology readiness rating which is "a technique for assessing how close a technology or product is to commercialization".   Scattered throughout the book are case studies, and the one in the Introduction is about the Turkish company. Arçelik A.Ş.

The next chapter discusses patents, trade secrecy and copyright.  The third covers trade mark registration, domain names and design registration.  Going International introduces the Patent Cooperation Agreement, the Madrid Protocol and the Hague Agreement.  There is a discussion about licences and assignments of IP rights and funding, the scientific, technical and marketing information that can be obtained from patent, trade mark and design databases and an overview of IP audits.   The only area that could be improved is on managing risks.   In the UK there are watch services that warn of applications for possibly conflicting IP rights and there is a developing IP insurance market.

Anyone wishing to discuss this article may call me on +44 (0)20 7494 5252 during normal office hours or send me a message through my contact form. 

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.  

How to make Money from your Invention - Starting your own Business

Jane Lambert

On 13 Sept 2017, I introduced readers to the Inventors Handbook on the European Patent Office's website which suggests four ways of exploiting an invention in its Exploitation Routes page:

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

I discussed the first way in How to Make Money from your Invention: Licensing on 14 Sept 2017. This article discusses the second option, namely a business start-up.

Before starting on this route inventors should satisfy themselves that they have the right personal qualities. Wherever they live in the UK, a good place to start is Business Wales's Starting up and Business Planning page.  In particular, they should read Is self-employment for you? and complete the Assess Your Personal Qualities questionnaire. There may be options even for those who score badly on that assessment such as employment or a consultancy with a business to be set up by others who are of the right temperament and possess the right skills and experience.  Considerably caution should be exercised by both sides in those circumstances.  Any agreement should be properly documented with both sides taking legal and accounting advice.

The next question for inventors is whether they have the right skills.   Some of these can be taught.  The Business and IP Centre at the British Library and its national network of city centre libraries host free or inexpensive courses and workshops on all sorts of topics from accounting to writing business plans. Other good places to learn include Tech Nation's Digital Academy and the Google Campus.  Another option is to build a team.  Again, that requires caution. professional advice for all concerned and full documentation.  Ideally, there should be a professionally drafted shareholders' or other agreement between the promoters with robust dispute resolution procedures in case things go wrong.

Such an agreement should incorporate or at least refer to a business plan and it goes without saying that the business plan should take account of intellectual property (see Jane Lambert Why Every Business Plan Should Take Account of Intellectual Property 3 April 2016 NIPC News). The business plan should be more than something to impress the bank manager.  It should be the company's road map.  The business plan should coordinate every aspect of the company's activities and policy including research and development, marketing and of course intellectual property (see An IP Strategy for Private Inventors  13 Jan 2019).

The business plan will be relied upon by the company's investors and lenders.  Long term investment to enable the company to buy or hire premises, equipment, vehicles and the like will be exchanged for shares in the company.  That is called "equity investment" and it is usually provided by inventors' friends and family, business angels and private equity or venture capital investors.  Working capital to cover components or raw materials, professional service and other short term costs may be provided by the company's bankers or, increasingly frequently, peer-to-peer lenders.  This is often referred to as "debt".  Lenders may require security over the company's assets but they are unlikely to wish to interfere in its management. Equity investors 0ften want representation on the board. Again, both sides should take professional advice and document any agreement that they may reach in a shareholders' agreement or some other instrument.

Inventors should be aware that very few fortunes are made from a single invention.  It may give their business an advantage for a time but that advantage will usually be eroded as competitors' launching their own new products or services. Research and development and innovation should continue.  Inventors should always be looking for the next gap in the market or other business opportunity.

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

Resources for Inventors and other Startups in Northwest Wales

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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.