One of the Few Silver Linings - Innovation during the Pandemic

Under a cloud (with a silver lining) (1920)

Punch 22 Sept 1920  Wikipedia Silver Lining

 

Jane Lambert

At the start of the lockdown just under a year ago, I wrote in IP Services During the Emergency on 22 March 2020:

"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."

And so it transpired.  The total number of international patent applications through the Patent Cooperation Treaty has increased from 265,381 in 2019 to 275,900 in 2020.  In spite of brexit and all the other dampeners on its economy, the UK was no exception to that trend,   Applications from the UK rose from 5,773 in 2019 to 5,912 in 2020 (see Innovation Perseveres: International Patent Filings via WIPO Continued to Grow in 2020 Despite COVID-19 Pandemic 2 March 2021 WIPO press release).   As The Economist noted in its YouTube video How covid-19 is boosting innovation of 10 March 2021, the last 12 months have been a year of innovation.

In my previous article: I wrote that 

"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."

That was not a widely shared view when I write that sentence.   At the start of this pandemic, pundits warned the public not to expect vaccines to come to the rescue any time soon. They said that it takes years to develop vaccines and even longer to obtain regulatory approval and set up distribution networks.  They were wrong.    New technologies enabled pharmaceutical companies in different parts of the world to develop effective vaccines within a few months of each other.  Most achieved regulatory approval within weeks of their clinical trials.  The UK, the USA and several other countries have been able to roll out those vaccines very quickly.

There have also been advances in diagnostics and therapies that have enabled health services throughout the world to treat far more patients in the second wave than at the peak of the first without buckling.  At the same time, there have been inventions to prevent the spread of infection.  Examples include Thrsus's "Bump" which I covered in Rise and Design Online: A Webinar for Designers in Northeast England on Designing our Way out of Lockdown in NIPC Northeast on 15 June 2020 and DABS's gloves which I mentioned in the same publication in Rise & Design: Wearable Tech Webinar yesterday.

Innovation has not been confined to healthcare. There are businesses founded on new products and services that did not exist a year ago in such fields as distribution, education and entertainment.  The Economist mentioned drones to distribute medicines and other essential supplies, video conferencing to facilitate online learning and professional consultations, home delivery services by Michelin starred restaurants and the letting out of ghost kitchens to self-employed chefs. Here are some more examples that have occurred to me. In May 2019 the Chinese internet courts were so unusual that they merited an article in NIPC Law. Less than a year later the UK Supreme Court, the Court of Appeal and much of the High Court in England and Wales were dispensing justice over the internet.  In retailing, contactless payments have driven cash into retreat.   The Economist estimated that the pandemic had accelerated the use of digital technology by about 5 years. The presenter actually welcomed his audience to 2025.

In IP Services During the Emergency, I wrote:

"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."

There will be lots of opportunities for entrepreneurs as the world emerges from lockdown. Anybody lucky enough to have worked from home on full pay will have saved considerable sums by not commuting, maintaining their wardrobes or spending on leisure activities.  They will be looking for such services as extra tutoring for kids who have missed half a year of schooling, broadband upgrades, home extensions and maintenance after a year of restrictions.  There will, of course, be a return to the office for some but many other businesses will have noticed a reduction of costs and improvements in productivity from home working so the demand for home delivery is likely to stay firm.

The businesses that provide those services will need trade marks for their brands and maybe patents and design registered designs for their products. Inevitably disputes will arise with IPO examiners and other intellectual property owners.   Last year I wrote:

"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 have experienced strong demand for those services, especially over the last few weeks.   I will continue those services after lockdown.  Anybody wishing to discuss this article or book an appointment for a free 30-minute advice and initial signposting session can call me during normal UK office hours on 020 7404 5252 or send me a message through my contact form at other times.

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.

Patent Cooperation Treaty

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Jane Lambert

Two of the problems of applying for a patent are:

• Patent protection is territorial: that is to say, a patent enables an owner to prevent others from making, using, offering for sale, selling, or importing his or her invention in the country, group of countries or territory for which the patent is granted and not beyond; and
• In order to get a patent, an applicant has to disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person with the relevant skill and knowledge.

Thus, if an inventor gets a patent for the United Kingdom but nowhere else, there is nothing to stop an entrepreneur in India, China, Continental Europe or even the Republic of Ireland from making and selling your product everywhere in the world except the UK.

The only way to prevent that from happening was to seek patents in all the markets in which the applicant intends to market his or her invention as well as every country in which a competing product can be made.  As a patent will be granted only for an invention that is new, that used to mean simultaneous applications to every patent office from which a patent was required. 

Life became a lot easier for applicants in 1883 when the UK and other leading countries established the 
Paris Convention for the Protection of Industrial Property ("Paris Convention").  Art 4A (1) and art 4C (1) of the Convention gave a person who had duly filed an application for a patent in any of the contracting countries 12 months priority over anyone else who might file a patent for the same invention.  So long as an application was made within a year of the first application in the first country applications in all other countries were backdated to the first filing.

As more and more countries industrialized the task of filing multiple applications even over the period of a year became increasingly burdensome. The solution was the Paris Cooperation Treaty ("PCT") which made it possible to seek patent one' protection for an invention simultaneously in every country that is a party to the PCT by filing an "international" patent application with the applicant's home intellectual property office or, ins some cases, with the World Intellectual Property Organization ("WIPO").

The WIPO made the video that appears at the beginning of this article on 17 Dev 2020.  More useful introductory information is available from PCT FAQ on the WIPO website,   There are now 153 countries that are party to the PCT.  They include China, the USA, Japan, India, Germany and France.   Big countries that are not yet party to the PCT include Argentina, Bangladesh, Pakistan and Venezuela.   The UK Intellectual Property Office has published a useful booklet entitled Patent Cooperation Treaty (PCT) for Private Applicants which was last updated on 1 July 2020.  I reviewed a previous edition of the booklet in 

Applying for Patent Protection through the Patent Co-operation Treaty without a Patent Attorney on 1 Nov 2016.

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

European Patent Office's "Inventors against Coronavirus"

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Jane Lambert

At the start of the coronavirus crisis, I published  IP Services During the Emergency.   In it, I wrote:

"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."

The European Patent Office has magnified that point with a series of videos called Inventors against Coronavirus.   It features inventors whose work has already facilitated the world response to the pandemic.  Each of those inventors is a winner or finalist of the EPO's European Inventor Award.

The inventors include Rino Rappuoli whose reverse vaccinology 2.0 enables pathogens' genomes to be studied by teams working on vaccines instead of samples of the pathogen itself.  Not only is that safer for the researchers but it is faster and more effective.   Dr Rappuoli's work is featured in the above YouTube video which has just appeared in the EPO's YouTube channel.

Other inventors featured include Helen Lee whose point of care diagnostic device which was originally developed for HIV can deliver test results in 20 minutes, Thomas Tuschi who has pioneered treatments for COVID-19 and José Ángel Ávila Rodríguez whose work on communications technology has facilitated contact tracing and infection mapping.

As I said in my article 

"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."

Over the last few months, I have advised and assisted on many of those issues as I anticipated when I wrote those words.

Anyone wanting to discuss this article can call me on 020 7494 5252 or message me through my contact page. If you want a chat I shall be glad to call you back by phone, Zoom or Skype.

Bristol Innovators Group

Jane Lambert

I have recently come across the Bristol Innovators Group which joined Twitter in October 2019. It appears to have held its first meeting at the University's Centre for Innovation and Entrepreneurship on 4 Nov 2019:

Great to gather together as a group of Bristol innovators to share experiences and best practice! Thanks for coming along! pic.twitter.com/bA0vLeRMbA

— Bristol Innovators Group (@InnovateBristol) November 4, 2019

I have been unable to find a website but its Twitter stream provides a lot of information about its activities:

pic.twitter.com/iaA1JZ4coQ

— Bristol Innovators Group (@InnovateBristol) August 25, 2020

It has grown rapidly since its formation and now claims over 500 members.   Its "Purpose/Vision" infographic shows exactly how entrepreneurs, inventors, makers and others should collaborate.  I said very much the same thing in An Inventors Group for Northwest Wales on 25 Aug 2020 NIPC Wales.

The Group seems to have managed to continue its activities over lockdown and has planned a full programme of events for autumn:

• 9 Sep Monthly virtual meetup
• 25 Sep BIG (Bristol Innovators Group) virtual chat on a topical issue
• 7 Oct Monthly virtual meetup
• BIG Pitch
• 11 Nov Monthly virtual meetup
• Birthday meetup in the park with marshmallows and hot chocolate
• 9 Dec Monthly virtual meetup
• BIG Festivities

The BIG can be contacted at bristolinnovatorsgrouo@gmail.com.   I think the Bristol Innovators Group is a great idea and I wish them every success. Should they ever need a speaker on IP law or any other topic within my expertise that may be of interest to them, I shall be glad to meet them either over the Internet or in person once COVID-19 is eliminated.

Further Information

28 Aug 2020

Jane Lambert

Bristol Innovation Group: Street2Boardroom

NIPC Severn

InnovateUK to fund Innovative Responses to the COVID-19 Pandemic

Author: Innovatedigital Licence CC BY-SA 4.0

Jane Lambert

It is often said that the world will never be the same after the coronavirus pandemic. If that is true,. old ways of doing things may have to be abandoned and new solutions developed   To help businesses to develop such solutions, InnovateUK has announced a £20 million fund to invest in solutions to tackle new or emerging societal or industry needs in the wake of the pandemic.

Projects suggested by InnovateUK include:

• community support services
• couriers and delivery (rural and/or city-based)
• education and culture
• entertainment (live entertainment, music, etc.)
• financial services
• food manufacture and processing
• healthcare
• hospitality
• personal protection equipment
• remote working
• retail
• social care
• sport and recreation
• transport
• wellbeing.

Funding will take the form of a grant of up to 100% of the project costs which should be between £25,000 and £50,000.   Proposals must be submitted online no later than 12:00 on Friday 17 April 2020.

Further details including an application form can be found at Business-led innovation in response to global disruption (de minimise).

If you require any help in relation to intellectual property you can book a slot on my online IP clinic on 14 April between 16:00 and 18:00.  I am also giving a talk on IP for Makers at 17:30 on 15 April to which you would be most welcome.

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.

IPO Guidance: Intellectual Property Insurance

Lloyd's Coffee House Source Wikipedia Insurance

Jane Lambert

The Intellectual Property Office ("IPO") has recently updated its guidance on IP insurance, It makes the point that such insurance may not be for every business but for some, it brings numerous benefits.  According to the guidance, those benefits are as follows:

• "It can protect cash-flow: IP insurance can ensure that your dispute and particularly litigation, does not tie up capital which you could use to grow the business

• it can provide a deterrent: LEI can give you the power to take action to enforce your rights where your financial position might not otherwise allow it. If a potential infringer knows that your insurance will cover making a claim, then it may be less likely to infringe or more likely they will stop when challenged. Some insurers are happy for you to confirm in marketing literature or on websites that your IP is insured, alerting competitors that insurance is in place

• it can improve your negotiating position: If this deterrent does not work then the knowledge that you can go to court (as a last resort) can encourage the alleged infringer to negotiate or mediate. Insurance can provide you with the means to take vital defensive action meaning there will be no need to settle on poor terms

• it might allow your IP to be used as collateral and can add value: Insurance can reassure lenders and investors that the value will not be lost because you cannot fight infringers/invalidity challenges. Potential licensees will also know that you can take legal action if necessary and will be indemnified if required."

Cover against the costs of litigation and other expenses is available both before and after an infringement has occurred.   Cover that is obtained before an infringement occurs is known as before-the-event ("BTE") insurance and cover after the infringement is known as after-the-event ("ATE") insurance.  As might be expected BTE insurance is considerably cheaper than ATE.  ATE policies were very popular before the Legal Aid, Sentencing and Punishment of Offenders Act 2012 came into force because a successful party could recover its premiums and its legal representatives' success fee from the losing party. That came to an end on 31 March 2013 (see Jane Lambert Intellectual Property Litigation - the Funding Options 10 April 2013 NIPC Law and Jane Lambert The Effect of the Legal Aid, Sentencing and Punishment of Offenders Bill on Intellectual Property Litigation 14 July 2011 NIPC Law). It is still possible to take out ATE insurance but the premiums must be paid by the insured. For that reason, such policies are much less common and the IPO guidance does not even bother to mention them.

The guidance lists the risks against which it is possible to insure.   These include:

• opinion only: covers legal costs of obtaining an opinion on the likelihood of successfully enforcing or defending an IP claim;
• enforcement and defence: covers legal costs of taking action to stop others infringing IP rights and defending allegations of infringement. Can cover enforcement and defence either separately or together
• damages: covers any damages payable in an infringement action
• validity: covers legal costs of defending challenges to the validity of the insured's IP rights
• lost revenue: covers revenue lost as a result of losing IP rights
• indemnity: covers liabilities arising under guarantees given to third parties, and
• cyber: covers losses from a variety of cyber incidents, including IPR breaches.

Premiums and excesses are also considered in the guidance.   By way of a rough indication, a typical premium for £100,000 (the cost of patent infringement proceedings in the Intellectual Property Enterprise Court) would be about £1,500.  The guidance adds that many insurers will accept premiums by instalments.

A link to a list of brokers, insurers and other providers is in the guidance. Advice is given on identifying a broker, selecting the optimum cover, making a claim and resolving disputes with insurers through the Financial Ombudsman.  The guidance discusses alternative methods of resolving IP disputes such as examiners' opinions on such matters as whether a patent is valid or whether it is infringed, and the IPO's mediation service.

Readers are referred to the IP insurance pages of the Chartered Institute of Patent Attorneys and the Chartered Institute of Trade Mark Attorneys.  I have also written a number of articles on IP insurance since 2005 which are listed in the table below.  Anyone wishing to discuss this article or IP insurance generally can call me on 020 7404 5252 or send me a message through my contact page. 

Further Reading

Date	Author	Title
1 May 2016	Jane Lambert	IP Insurance: CIPA’s Paper
13 Aor 2013	Jane Lambert	Intellectual Property Litigation: The Funding Options
23 Ocr 2010	Jane Lambert	IP Insurance Five Years On
5 Feb 2005	Jane Lambert	IP Insurance: Two More Insurers Identified
3 Sep 2005	Jane Lambert	IP Insurance
3 Seo 2005	Jane Lambert	IP Insurance: Does it work?
2 Seo 2005	Jane Lambert	Q. Why aren't there more British Patents? A. Because Enforcement is too Expensive!
2 Seo 2005	Jane Lambert	Patents: Why are there no British Names in the Patent Office’s Top Ten?

FFIWS - Another Resource for Inventors, Designers and Makers in North Wales

Jane Lambert

In The Pontio Centre: A Resource for Inventors, Designers and Makers in North Wales 14 Dec 2018 I wrote about the FabLab at the Pontio Arts and Innovation Centre in Bangor. I have recently learned of another resource for inventors, designers and markers on the other side of Snowdon at Porthmadog.

The resource is known as Ffiws and is to be found at 125 High Street just a short walk from Cadwalader's ice cream parlour which is not just a Welsh but a UK culinary treasure. FFIWS's website describes it as "a co-operative maker space" containing a variety of different high-tech equipment, as well as electronic equipment and hand tools.

According to the website, the equipment includes:

• a 3D Printer
• Laser Cutter
• CNC Machine
• Heat Press
• Mug Press
• Sublimation Printer
• Vinyl Cutter

and more,  There are pictures of some of those items on the website.

The website states that this is a pilot project to create a community of makers and to give everyone the chance to access high-tech equipment.  The objective is to encourage creativity and teach new skills. It is hoped that the community will be able to take ownership of the space and to carry it on beyond our pilot project.  This project is one of a growing number of initiatives to encourage inventors and startups in Northwest Wales (see Jane Lambert Resources for Inventors and other Startups in Northwest Wales 5 Feb 2019).

Anyone wishing to discuss this article or business startups generally may call me on 020 7404 5252 during office hours or send me a message through my contact page,

So You've Got A Patent!

Jane Lambert

Congratulations! It probably took a little longer to get than you expected. It almost certainly cost you more money than you had bargained for.  But so long as you pay the renewal fees you have an asset that is bound to make your fortune. Right?

Well, not exactly. You have a right to stop other people from making, marketing, importing or selling something that you have invented but a patent is not a meal ticket. It exists to give you an opportunity to recoup the time and money you spent in devising the invention and perhaps a little extra on the side either by working the patent yourself or by licensing it to others. Whether you can do that or not will depend on whether anybody wants to buy your invention.

If there is a market for the invention, there is always a possibility that somebody will want to muscle in. Such a person may want to do it fairly by seeking a licence from you or by using a technology that does not infringe your patent, but there are also those who would try to sweep your patent out of the way in revocation or declaration of non-infringement proceedings or simply ignore your patent if they don't think you can afford to enforce it.  Unlike some other intellectual property rights such as copyright, trade marks, rights in performances or, nowadays, registered designs, it is not an offence to infringe a patent in this country even if it is done quite blatantly, cynically and on an industrial scale.

If anyone infringes your patent you have to sue and patent litigation is not cheap. You can't use the small claims track of the Intellectual Property Enterprise Court ("IPEC") because the rules specifically exclude patents, registered and registered Community designs, semiconductor topography and plant variety claims from that tribunal.  You can use the IPEC multitrack but you have to be prepared to pay up to £50,000 if you lose the case and probably a great deal more than that to your own legal team. That is a lot better than the Patents Court where the costs that can be awarded against you are unlimited and can run into millions.

So unless you are a millionaire, your company is really coining it or you have some other source of funding you should consider before-the-event insurance cover against IP disputes before a dispute arises (see my article It is never enough to get a patent, trade mark or registered design 19 Aug 2019 and my links to other articles). It is unrealistic to expect a lawyer specializing in IP to represent you on a no-win no-fee basis because the risks, costs and wait for payment are too great however strong your case. IP insurance is not cheap but it is a lot better than bankruptcy or watching a competitor ride roughshod over your rights.

So, what should you do if you think that someone is infringing your patent? Well, one thing you should not do is take matters in your own hands and write a stroppy letter to the other side. S.70 of the Patents Act 1977 and subsequent sections prohibit threats of patent infringement proceedings that cannot be made out. If you make such a threat (however politely) you risk an action for an injunction, declaration and costs that could cost you plenty. Any lawyer or patent attorney with any experience of patent litigation will be aware of this section but many non-specialist lawyers aren't. If they make a groundless threat on your behalf it is you who will have to carry the can.

Where do you find a specialist lawyer? Any firm that belongs to the Intellectual Property Lawyers Association should be able to help you. There are good solicitors in other firms but you have to be careful because not every solicitor who claims experience of IP has actually done a patent case.  Another possible option is a patent attorney litigator.  Not every patent attorney has expertise in civil litigation but there is a growing number who have. The CIPA and IPReg websites should help you find one. Yet another option is to consult a member of the IP Bar. We are advocates and not litigators but we are probably in a better position than most to recommend a good litigator.

Civil proceedings begin with the service or delivery of a claim form on the alleged wrongdoer.  The claim form is usually accompanied by another document known as particulars of claim. Those particulars must state the facts on which you base your claim and the remedy that you want precisely. In a patent infringement claim, your particulars of claim must state which of the claims of your patent is alleged to have been infringed and give at least one example of at least one alleged infringement.  The "claims" are the numbered paragraphs at the end of your patent specification setting out the features of your invention.  The reason they are set out in numbered paragraphs is that if one of them is too broad you may still be able to rely on one of the others. If your invention is a product the patent is infringed by making, marketing, importing or using a product that has all the features of at least one of the claims.

It is possible that the alleged infringer will accept the strength of your case and seek a settlement or simply throw in the towel but you cannot bank on that. He or she may challenge your interpretation of the claim and argue that his or her product falls outside its wording,  It is likely that he or she will dispute the validity of the patent on one of several grounds.  If your opponent can show that someone else invented exactly the same thing before you applied for your patent can be revoked (taken away) on the grounds that your invention was not new. Another possible ground for revocation is that your invention would have been obvious to anyone with the appropriate skills and knowledge having regard to everything that was known at the time of your application.  You might think that all this would have been considered by the examiner when you applied for your patent but the sad fact is that the time and resources that are available to an examiner are nothing like the time and resources that your opponent will expend in order to knock out your patent.  A surprisingly large number of patents are revoked in whole or in part when patentees bring infringement claims.

If you win your action you will be awarded an injunction and a contribution to your legal fees which will be limited to £50,000 if you brought your claim in IPEC.  You would probably get more if you sue in the Patents Court but even the awards in that court are unlikely to cover everything you spent. An injunction is an order by a judge to do or not to do something. If it is disobeyed the court may punish the defendant with a fine or even imprisonment.  What you will not get at this stage is damages or accountable profits.  That will require another hearing known as an account or inquiry which may take place several months or even a year or so in the future. That will also cost a lot of money,

There is obviously a lot more to patent enforcement than I can mention in a short note.  The important thing is to think about enforcement and arrange to fund it whether by insurance or otherwise well before a dispute arises. If you want to discuss this article or anything relating to it, call me on 020 7404 5252 or send me a message through my contact form.

Business and Technical Information from Patent Databases

Jane Lambert

An invention is a solution to a technical problem. When applying for a patent for an invention, the inventor has to file among other things a document known as a "specification".  Such specification must contain a description of the invention and any drawing referred to in the description and disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. In due course, the specification is examined by officials of the intellectual property office known as "examiners" for compliance with the legislation governing patents and published on the office's website for all to see.

As an invention has to be new and involve an inventive step to justify a patent, such publications are important sources of scientific and technical information.  Many of those publications are held on giant databases such as the UK Intellectual Property Office's Ipsum, the European Patent Office's Espacenet and Google Patents.

These are two good reasons for consulting such a database.  The first is that you have an invention for which you seek a patent. You will want to check the prior art to ascertain whether your invention really is new and does involve an inventive step.  In almost every case your patent attorney will do that for you when you first instruct him but, if there is something out there that you can spot for yourself, you can save yourself a lot of time and money and instruct him more effectively by making your own search.  The second good reason is to find out about the latest technology.  In Why researchers should care about patents, the European Patent Office offers three advantages:

• Avoiding duplication of R&D efforts and spending; 
• Finding solutions to technical problems; and
• Gathering business intelligence. 

Henk Heus actually gives 10 Reasons Why Research Scientists Should Patent Search though these seem to be substantially the same as the EPO's (see 29 Oct 2015 GQ Life Sciences). According to Heus, up to 30% of R&D expenditure is wasted on duplicating research that has already been carried out.
Different databases will allow you to search in different ways.  With Ipsum, you need the application or publication number and the first page will look like this:

From the menu in the top right-hand corner, you can select the documents that you need.  Nearly every transaction relating to the invention will be recorded on Ipsum. So if you want to trace the prosecution history this is the place to go.   Espacenet and Google will allow you to search by proprietor, title and other search terms as well as by number.  These are the tools that you will use to make a more general enquiry,

When you find an invention that interests you can choose the full specification or the parts of the specification that interest you most such as the abstract, description, drawings or claims. The abstract will be a summary of the invention.  The description is essentially an instruction manual. It will identify the problem that the invention seeks to solve, discuss previous attempted solutions where they fell short. set out the solution in principle and then give an example.  It may do that by reference to numbered diagrams known as the "drawings".  At the end of the specification, there will be numbered paragraphs known as "the claims". That is the monopoly sought by the applicant.  Usually, the widest is expressed first and all subsequent ones tend to be narrower than the first rather like a matryoshka doll.    You should remember at all times that the specification is addressed to the "person skilled in the art", that is to say, the person or team of persons having the knowledge, skills and experience to make or use the invention.  Some words or terms may have a special meaning which is different from everyday usage.

While not essential, some introductory training in patent searching can help at the start.  Patent search workshops have been offered from time to time by the British Library and some of the other Business and IP Centres around the country. I shall be giving a short one-hour introduction to patent, trade mark and design searches and how to read patent specifications at the Menai Science Park on Angelsey between 13:30 and 14:30 on 29 Nov 2019 (see How to use Patent, Trade Mark and Registered Design Databases 2 Nov 2019 NIPC Wales). If you want to sign up for the class which is free, click here.

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

An 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

There's more to the Law of Confidence than NDAs

Jane Lambert

I am often asked to draft or review non-disclosure agreements or "NDA". I do so with a lot of trepidation because there are many misconceptions about such instruments.  A typical example occurred last week when I was asked to advise how to prevent potential collaborators and investors from stealing the idea for a new software product.  I had advised that copyright was likely to subsist in anything that had been written down and that the law of confidence could prevent unauthorized use or disclosure.

"Oh!" came the reply. "So long as I have an NDA in place I should be alright?" Where that idea had come from, I just don't know.  I had not even mentioned non-disclosure agreements.  "That's not what I said," I told him.  "There's much more to the law of confidence that NDAs",

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

I think confusion arises because folk regard an NDA in the same way as they do commercial agreements.  That is a mistake because any obligation not to disclose or use confidential information arises not from the contract but from the confidential relationship between the parties.  Mr Justice Megarry put it this way in Coco v A.N. Clark (Engineers) Limited  [1968] F.S.R. 415, 419:

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

The key phrase is "circumstances imparting an obligation of confidence".  The signing of a confidentiality or non-disclosure agreement can indeed be one of those circumstances but it is not essential.  There are many circumstances in which an obligation of confidence can arise where there is no agreement at all.  Consulting a patent attorney about a patent for an invention is one obvious example.  Finding documents in the street marked "Top Secret" or "Confidential" would be another.

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

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

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

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

It is never enough to get a patent, trade mark or registered design.

Corporation of Lloyds

Author phogel, Licence: Creative Commons Attribution-Share Alike 2.0 GenericSource Wikipedia 

Jane Lambert

As a barrister, I am often shown a blatant act of piracy or a breathtakingly unjustified letter before claim and am asked for my opinion on the strength of the claim. More often than not, that is the last I ever hear of the matter.  Sometimes I run into the patent agent or solicitor who consulted me and ask what happened. "Oh! The client just could not afford to fight" is the usual answer. "So he let it go" or as the case may be, "He just caved in."

Now if you consult TaylorWessing's Patent Map, click the arrow beside "I have a question for all countries" in the left-hand box, click again on "Questions concerning First Instance" and choose the "Typical costs at first instance?" option, you will see why.  The figure for England and Wales is £200,000 to £1 million. Compare that to France (€200,000 to €800,000), Germany (infringement €100,000 to €200,000 and the same for validity), the Netherlands (€75,000 to €200,000_ and Switzerland (court fees: €830 - €125,000 attorney's fees: €1,700 - €250,000). It is not surprising that only 5,736 European patent applications were made from the UK in 2018 compared to 26,734 from Germany, 10,317 from France, 7,927 from Switzerland 7,140 from the Netherlands (source European patent applications by country of origin 2009 to 2018).

Of course, those figures don't tell the whole story. Patents for European countries can be granted by national intellectual property offices such as the IPO in Newport as well as by the European Patent Office. Intellectual property litigation can be conducted far more cheaply in the Intellectual Property Enterprise Court than the Patents Court or the rest of the Chancery Division.  But these figures tend to confirm the widely-held view that IP litigation in England and Wales is prohibitively expensive and that it is just not worth spending many thousands of pounds on a patent or other registered right which costs many thousands of pounds more to enforce. 

Now what, if anything, can be done about that? The Ministry of Justice has probably done as much as it could by streamlining the practice and procedure of the Intellectual Property Enterprise Court, introducing a small claims track for the simpler cases and requiring all courts to manage their cases at proportionate costs. The IPO offers a cost-effective mediation service and examiners' opinions on such issues as whether a patent is valid and whether it has been infringed. The Unified Patents Court would have created a level playing field for all European patent owners but that may well have been scuppered by brexit and litigation in the German Constitutional Court,

Probably the best way forward is for businesses to consider enforcement whenever they apply for a patent, trade mark or registered design or acquire some non-registrable right. In the case of a start-up or other small business that probably means taking out IP insurance.  I have been writing about this topic since 2005 (see IP Insurance: Does it Work? 3 Sept 2005 NIPC Law, IP Insurance 3 Sept 2005 NIPC Inventors' Club, 6 Feb 2006 IP Insurance: Two More Insurers Identified 6 Feb 2006 NIPC Inventors Club, IP Insurance Five Years On 26 Oct 2010 NIPC Inventors Club, Intellectual Property - The Funding Options 10 April 2013 NIPC Law, IP Insurance: CIPA's Paper and 1 May 2916 NIPC Inventors Club).

Back in 2005, there were not many brokers with experience of arranging IP insurance and many patent and trade mark attorneys were sceptical of the value of the policies. Because after-the-event premiums and success fees were then recoverable from unsuccessful paries, many rightsholders thought that it would always be possible to find solicitors and counsel who would accept instructions on a no-win-no-fee retainer should a dispute ever arise.  All that changed with the Legal Aid, Sentencing, Punishment and Management of Offenders Act 2012 and costs capping in the Intellectual Property Enterprise Court (see Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd 14 July 2011 NIPC Law). The Chartered Institute of Patent Attorneys published IP Insurance and other IP litigation funding arrangements in 2016.  The Intellectual Property Office published its guidance on Intellectual Property Insurance on 22 Jan 2016 which it updated earlier this year.

The IPO's guidance covers the types of before-the-event IP insurance policies that are available, the types of litigation, jurisdiction and risks that can be covered, the costs and benefits, the criteria for setting premiums, the claiming process and alternatives to litigation such as IPO examiners' opinions and mediation.  There is also a list of specialist brokers on the CIPA and IPO's websites.  Provision for IP insurance premiums or some other funding should appear in every business plan.  Angels, private equity investors, bankers and other lenders should insist on it.  It is as important as rent, equipment hire and employees' wages.

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