26 October 2005
Protecting Inventions Abroad
The agreement that makes such an application possible is the Patent Cooperation Treaty or PCT. This is a complex multilateral agreement which requires quite a bit of background knowledge to follow properly. Fortunately, the WIPO (the UN agency responsible for international IPR co-ordination) has produced an excellent FAQ to this instrument. Further details are available on our other blog at "Patents: WIPO publishes FAQ on PCT."
25 October 2005
Business Enterprise Exchange
Further Information
Contact Andrea Petrie
Tel: 0161 244 5825 Fax: 0161 244 5823
E Mail: andrea@outthereevents.com
Huddersfield IP Workshops
The next one takes place on Friday, 28 Oct 2005 between 11:00 and 13:00. To book, call Jacquie Asquith on (01484) 483 080 or email her on j.asquith@huddersfieldbg.co.uk.
22 October 2005
Tips for Inventors - No. 5 Meaning of "State of the Art"
"State of the art" is one expression from patent law that has entered common usage. Advertisers, journalists, sales staff and even non-IP lawyers use it loosely as a synonym for new. In fact the term has a very specialized meaning as I explained yesterday in Long Anticipated: House of Lords restores Trial Judge's Judgment in Synthon which I posted in our other blog nipc IP/it-Update.
The relevance to inventors and those wanting to do business with them is that an invention cannot be patented unless it is new and an invention cannot be new if it is within what is called the "state of the art". You get the point now. Far from necessarily being new, "state of the art" includes everything known to humanity about a particular technology including things discovered by cave dwellers.
Our UK Patents Act 1977 includes within the state of the art:
"all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way".
That is to say things that were on sale, published in patents, patent applications, scientific literature or otherwise lawfully accessible to anyone in the world.
But the Act also includes something else within the meaning of "prior art":
What this means is that matter that was not lawfully accessible at the time of a patent application can still count as prior art if it was comprised in somebody else's patent application and the conditions in paragraphs (a) and (b) are satisfied."matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to
say—
(a) that matter was contained in the application for that other patent both as filed and as published; and
(b) the priority date of that matter is earlier than that of the invention."
Cases where this extended meaning of prior art don't happen very often but there has been one recently which was fought all the way to the House of Lords (the highest court of the United Kingdom). The law lords (the judges of that court) delivered their judgments on Thursday in a case called Synthon BV v. Smithkline Beecham plc [2005] UKHL 59 (20 Oct 2005). My case note in the other blog tries to interpret the case and point out the important paragraphs.
As I said above, these cases don't happen very often but the point is important to inventors. For further information, call me on +44 (0)870 990 5081 during business hours or email me on john.lambert@nipclaw.com.
Manchester Inventors Group: Ray Clarke, 1 Nov 2005
Ray Clarke
Marketing Consultant
Shaping Business
Central Library, Manchester
Ray Clarke will highlight some of the key issues involved with case studies of successful marketing, a discussion of the options available to inventors, a brief overview of the key stages and securing a contract with a commercial partner. Mr Clarke has over 14 years experience of industry and an impressive track record of helping inventors.
Tea, coffee, soft drinks and biscuits are served immediately before and after the talk
Admission free
Further info
0161 234 1397
c.brown1@manchester.gov.uk
Last Tuesday Club: "Once the Show is Over" 25 Oct 2005
There will be a speaker who is an investor with a strong interest in innovation. The talk will cover how distributors work and what investors require.
Admission which includes refreshments and buffet in nearby pub afterwards costs £15 for Ideas21 members and £20 for non-members.
More Information
Tel 020 8780 9017
http://www.ideas21.co.uk/Event_Detail/518
20 October 2005
Criminalizing Patent Infringement: Why it is a Bad Idea
The debate was sparked by a post in chambers' other blog entitled "Porridge for Patent Inf ringers" on 22 Aug 2005 where I criticized proposals for a directive to criminalize all intellectual property infringements. Yesterday I came across a much more withering criticism by Prof. Ross Anderson of Cambridge University which I summarized in "Porridge for Patent Infringement? No 2". Essentially, the professor, who was speaking not just for himself but also for a think tank consisting of some pretty high-powered IP and constitutional law practitioners and scholars, argued that the proposal would be bad for the economy and bad for civil liberty.
My view is that he is right. Had IPRTalk not been so offensive I would have posted the note on the prof's evidence to the IPRTalk chatroom. Instead, I emailed it to Babic R Branko and John Mitchell who have up to now taken a different view. Branko's reaction was that the patent system as it stands, does not work for the creative, none of those people can make it work and they continue to be abused by infringement and that our society is losing vast sums to theft of IP. He also queried the prof's calculations relating to the Japanese study on UK loses (150 billion odd per annum), as compared to the gains.
My reply was as follows:
"I agree that the present system does not work. The solution is to make it work at least as well as it does in our major competitors, such as the Germany, Switzerland or the Netherlands in the EC where litigation costs are 20% what they are here, or in the USA where such costs are comparable but there is much less risk of paying the other side's costs and lawyers can accept instructions on a contingency fee.
My fear is that the directive - should it ever be adopted - will make matters even worse for British industry as a whole and for the SME and universities that I represent in particular. It would also hinder the development of pharmaceuticals, telecommunications, electronics and aerospace in countries like Brazil and India to the detriment not only of their industries but also of our consumers.
None of our major competitors outside Europe - the USA, Japan, China, Taiwan, South Korea, India or Brazil - have ever contemplated such legislation. Fortunately, if our governments are silly enough to adopt this measure there is always the WTO to put them right."
I think that it is possible to improve enforcement even within the present legal framework but it is essential for inventors, entrepreneurs and professionals to work together.
Apologies for Interruptions to Email Updates: Normal Service Resumed
Leeds Inventors Group: President of CIPA hears Bissell
Starting from the premise that its much easier to pick losers than winners Peter identified the points that most frequently trip up inventors. Failure to search was the most obvious one including failure to specify a market. Peter pointed out that it is not necessarily the first invention in a technology that proves to be most successful but the first to meet a practical need. Taking cats' eyes as an example, it was not the first reflecting surface that was commercially successful, but the first to use rainwater for self-cleaning. In the Q & A session that followed, a member of the audience asked Peter whether he had actually invented anything that had made money. Peter was able to reply proudly that he had - a concrete breaker and a computer guard among other things.
Next meeting on 16 Nov 2006 will star Terry Singleton and Clayton Roudette, winners of the University of Manchester Incubator Company invention competition (see "Examples of what can be done" 6 Sept 2005). We also plan a brainstorming session on 15 Feb 2005 along the lines of the IdeasNW event planned for today in Blackburn. IdeasNW chair, Basil Philipsz, has kindly offered to show us how it is done. Other talks will include Barry Stoddart of Procter & Gamble on 21 Dec 2005 on how to approach a multinational and two of our local patent agents will talk about their services to local inventors and entrepreneurs. Should be good.
13 October 2005
The Lipitor Case: What it means to Inventors
In Ranbaxy UK Ltd v Warner-Lambert Company [2005] EWHC 2142 (Patents) (12 Oct 2005) Mr Justice Pumfrey gave some guidance as to how patent specifications are to be construed. The case is quite a complex one and much of the judgment is relevant only to the particular facts of that case but the judge did say a few things of general interest. One of these concerned the construction of specifications and passage that is most relevant to the public is as follows:
"I conclude that it is now clear that in deciding what the person skilled in the art would have understood the patentee to be using the language of the claim to mean, the court must approach the problem from the standpoint that the language chosen will be usually of critical importance. An over-meticulous analysis is one that is too willing to draw from a detailed analysis of the grammar, the punctuation and the particular words and phrases used inferences as to meaning that the words might support but which the skilled person would not draw, and it is the antithesis of giving to the words chosen in their context the meaning that the skilled person would give them. Carefulness is not to be equated with over-meticulousness."
What I think that means is that a judge or patent examiner has to put him or herself in the position of someone who could make use of the invention ("a skilled addressee") and give words and phrases the meaning that such skilled addressee would give them. It should not usually look for ingenious meanings that can be drawn from the language unless a more straightforward common sense meaning just won't work.
The judge also dealt with two other issues of general interest. The first was whether our patent examiners and courts consider the question whether an invention is obvious differently from the way that the European Patent Office approaches the question. He didn't think they did. The second issue was whether statements made by an applicant or his patent agent to the British or other Patent Office during the application process ought to be considered when construing a specification. The judge said they shouldn't. This last point is quite significant because the American courts do look at what was said to patent examiners during the application process and will not allow a patentee to say something different from what he or she said during the application process.
I have written a short note about the case in our other blog if anyone is interested in reading more.
IPR Talk: I give up
“I was not the one to put Huddersfield on the IP map.
Carol Cook taught IP law for years at Huddersfield law school before she was recruited to set up the vocational course at BPP Law School in Manchester. In Jan 1998 she hosted a first rate seminar with speakers from Addleshaws, Eversheds, Cobbetts, the University, the Scots Bar and NIPC.
We had a great open day on 18 Feb 2005 with Trevor Baylis (see www.brassfromgumption.org.uk ) and we now have a Huddersfield IP Forum (see www.hip.org.uk ).
There are two firms of patent agents in Huddersfield, Appleyard Lees and David Lister. Harrison Goddard Foote, Bailey Walsh and Janet Bray are also quite near. TM agent Caren Burchill is also keen to lend a hand.
Professor Thompson of the Business School, John Edmonds and Jacquie Asquith of the Business Generator have done much to raise IP awareness.
Please convey the best wishes of everyone at NIPC to Chris and Sybil Goodman and also to Helen Johnstone and Ian Buchan of your firm.”For some reason or other that I do not understand, this post was refused and the refusal was accompanied by a rather cheeky message. I did ask why but the moderator never bothered to respond. As I could not post this message on IPRTalk I have put it up here. Incidentally, I don't propose to waste any more time in the IPR Talk channel so if anyone wants to debate issues such as the one I mention above with me he or she will have to do it here.
10 October 2005
Tips for Inventors - No. 4
IP litigation costs an arms and a leg in this country. Far more than anywhere else in Europe. Unless you can afford tens and sometimes hundreds of thousands on solicitors, counsel and expert witnesses you should consider before-the-event insurance. There are at least three companies that specialize in this kind of business in England and Wales and there may well be more.
Link
3 Sep 2005 IP Insurance
Patent Cafe
Its resources include inventors' guides and start-up kit, patenting software, very cheap confidentiality agreements (surprisingly one for disclosure to patent attorneys), evaluation reports, news, children's' page and lots more.
07 October 2005
Tips for Inventors - No. 3.
Patents are available only for inventions that are new and by definition an invention cannot be new if it is already known to the public.
If you want a patent for an invention be very careful who you tell. An example of what can go wrong is poor old Dr Palmaz who gave
"a short presentation of 5 to 10 minutes, perhaps 8 minutes, to about 40 members of the Radiological Society of North America. He accepted that it was a public disclosure and that at the meeting he showed slides, one of which showed the drawings depicted ...... "
That was enough for a judge to find disclosure of the invention and the Court of Appeal could not reverse it (see Boston Scientific Ltd v Palmaz [2000] EWCA Civ 83 (20 March 2000)). Accordingly, the invention was not patentable.
What do you do about it? The Patent Office has published some useful stuff in its leaflet entitled "Confidentiality and Confidential Disclosure Documents". It has to be stressed that many people don't like signing confidentiality agreements for very good reasons. That is particularly the case with big companies who are offered an unsolicited idea from a member of the public. One reason they may decline to sign such an agreement is that they are already working on similar projects and don't want to be accused of nicking other peoples' ideas. Another is that it is often unnecessary for a decision on whether to accept the unsolicited offer. What they need to know is whether an invention will fit into their business and as often as not they can decide that without knowing how to make the invention.
Remember also that getting the other side to sign a confidentiality agreement is never enough in itself. You need to monitor and enforce disclosures of trade or business secrets. For example, make a note of the date, time, place and persons present at the conversation at which information was disclosed and set out clearly in the record a summary of the subject matter of the disclosure. Similarly, record the date, time and place of delivery of a document and make sure that it is handed back when it is finished with.
Confidential info is a complex area of the law and you may need professional help. For more on the law see "Confidential Information" on our IP/it-Update site. For a case study and more on what can be done visit "Confidential Information" on the nipc site.
06 October 2005
"American Invention", A new American Reality TV Show
To save themselves the humiliation of being beaten by foreigners, entry to this competition is restricted to US citizens and permanent residents. The contest is to be staged in 8 different cities around the USA. The top prize for the winner is US$1 million.
05 October 2005
Tips for Inventors - No. 2.
IPR are monopolies or other exclusive rights granted by the state to encourage investment in research and development, design, distribution and the arts. They are an alternative to subsidy. They are very much a feature of free enterprise. In eastern Europe during the socialist era where the state owned the means of production, distribution and exchange anywhere inventors got inventors' certificates which entitled them to better housing and other perks instead. Consequently, as a general rule it is up to each IPR owner to make his or her own provision for the enforcement of such rights.
The exceptions to the rule are counterfeiting and piracy in that members of the World Trade Organization have agreed to criminalize manufacture and distribution on an industrial scale of branded goods and films, records, games and similar copyright works.
Enforcement litigation is risky and expensive, particularly in common law countries such as England and the USA. IPR owners can reduce those risks and costs by granting exclusive licences so that infringement becomes their licensees' problem, joining collecting societies in the case of owners of certain types of copyrights, rights in performances and related IPR or taking out insurance. Search this blog and its sister blog IP/it Update and related websites for more info.
Further info
Call John Lambert on +44 (0)870 990 5081
Email john.lambert@nipclaw.com
(Snow)BONING UP
Nick and Paddy requested £75k. Only one of the panel, Rachel Elnaugh was prepared to invest in them. Unfortunately, her company Red Letter Days came unstuck not long afterwards and is now under new management. Consequently they never did get their money. Nick and Paddy have not given up. They have a product that I, for one, would like to try. Despite the disappointments they are hanging in there and we all wish them the best of luck.
After the talk, the chair listed some of the sources of help and funding that is available. The evening was over far too quickly.
04 October 2005
Tips for Inventors - No. 1
Tip No 1 No Property in an Idea
03 October 2005
Patent It Yourself Book Review
Dennis writes that he was inspired by this book to become a patent attorney. In his own words:
"It sharpened my already keen interest in the field and gave me an opportunity to learn basics of patent law terminology and practical patent application practice. When I wrote my first patent application, this book was there by my side. I have to say that Patent It Yourself is still the best introductory resource book that I have seen for an inventor or new patent professionals. "
He recommends it not only to inventors but also to professionals. High praise indeed! He does, of course, explain that it is only an introduction and that it is no substitute for professional advice.
For my money, the best introduction to IP in this country is "The Inventors Handbook" written by my neighbours Peter Bissell and Graham Barker on the NESTA website. A good follow up is their book "The Business of Invention" which is available from their website at http://www.abettermousetrap.co.uk/. Peter will be at the Leeds Inventors Group at Central Library on 19 Oct 2005 at 6pm. Don't miss him.
02 October 2005
Restrictions on Applications for Patents Overseas
That discussion broadened out when one of the subscribers to IPR Talk complained of several aspects of our patent law. One of his complaints went as follows:
"I cannot submit my innovations to an international show, exhibition or competition. As I am a UK citizen, it is criminal offence to do so. Punishable by up to two years in jail."
This observation surprised one of the regulars in the forum who asked for clarification. That elicited the following response:
"I've been advised (by a patent lawyer) that even contacting a patent lawyer and discussing my innovations may be against the law! Ergo, submitting them for publication or showing them to the public via an exhibition is well off the righter
(sic) scale."
The person who asked for clarification suggested asking me for an explanation. Since this is an issue upon which the law has recently changed and since it may well interest people who are not registered in the IPR Talk forum I decided to respond in full here.
In order to prevent technology that could affect the security of the UK leaving the country, the comptroller (that is to say, the head of the Patent Office) has power under s.22 of the Patents Act 1977 as amended to prevent or restrict publication of an application for a patent that contains information that might be prejudicial to the defence of the realm or public safety. These restrictions can include prohibiting an application for a European patent or an application under the Patent Co-operation Treaty.
Since these provisions could be circumvented by applying for a patent outside the UK, s.23 (1) of the 1977 Act precluded applications overseas without the written authority of the comptroller unless an application had been made for a patent in the UK at least 6 weeks before the foreign application and the comptroller had not seen fit to impose any of the restrictions mentioned in the previous paragraph. Non compliance with that section is an offence punishable by fine or up to 2 years imprisonment under s.23 (3).
S.23 (1) as it stood applied to all inventions whether they had any relevance to national security or public safety or not. The section has now been modified with effect from the beginning of this year by s.7 of the Patents Act 2004 which restricts applications for patents outside the UK only where the application
"(a) ......... contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security; or
(b) the application contains information the publication of which might be prejudicial to the safety of the public."
Furthermore, a person can now be convicted under s.23 (3) only if he or she knows that filing the application, or causing it to be filed, would contravene that section or he or she is reckless as to whether filing the application, or causing it to be filed, would contravene this section.
As with anything that appears on this blog, I should be glad to answer any questions that may arise on +44 (0)870 990 5081 or john.lambert@nipclaw.com.
01 October 2005
Autumn Programme for IdeasNW
- an inventors' workshop on 20 Oct
- a talk on 17 Nov by Ray Clarke entitled "From Invention to Commercial Success", and
- a showcasing event on 20 Dec on local assistance for inventors with pitches from Business Link, local authorities and the universities.
These events will take place on the third Thursday of every month at Blackburn Technology Management Centre, Challenge Way, Blackburn BB1 5QB from 18:00 and not the Saturn Centre as used to be the case.
I try to attend as many of these events as possible and am always glad to talk to anyone who needs advice. If it looks to me that a member could use some advice from some other professional such as a patent agent, solicitor or Business Link advisor I can sometimes arrange for an initial consultation with one of those too. Anyone wanting to talk to me in advance should contact me at john.lambert@nipclaw.com or call me on 0870 990 5081.
Ideas NW has set up "Chapters" (makes them sound like a community of monks doesn't it - I won't ask their wives what they think of it all) in Lancaster and Liverpool and NIPC will be pleased to help out there too.
Ideas NW has just got a new committee. We wish its chairperson, Basil Phlipsz, every success and will do our best to support him. Further info is available from Mark Grogan on email mailto:markgrogan@fsmail.netor Jim McGovern email j.mcgovern@blackburn.ac.uk tel: +44 (0)1254 581467.
Patent Office Opinions now available
The Patent Office has published the application form and a whole load of useful information about the service on its website. Full details are available on our other blog "Patent Office Opinions available from Monday". This is intended to make it a lot easier and cheaper for independent inventors and small businessmen and women to enforce their rights.
I for my part will do my best to make sure that it is.
New Booklets from the Patent Office
The first of these booklets sets out to provide the sort of information an inventor, investor or other person with an interest in an invention needs to consider before committing him or herself to applying for a patent. It also contains a summary of the patenting process in the UK and abroad as well as information about renewing, enforcing and exploiting patent rights.
The other guide is all about how to apply for a UK patent. Right at the starts it warns of the need to keep your invention secret and the importance of getting professional advice. Other good advice is to be on the look out for invention promotion companies. Sources of disinterested and in some cases free advice are identified.
30 September 2005
Correction
Blogging is supposed to be spontaneous which means that errors sometimes get through. I meant to say in "Making Money from Crime" that I had not been to any "Last Tuesday" (that is to say London Tuesday evening meetings) but I have certainly been to many Manchester ones. I have also been to at least one day time event as well as a talk on advisory opinions on 1 July which was brought to my attention and booked through Linda.
The only reason I haven't been to quite so more this year is that we have moved to the Media Centre and as I don't have time for two trips to Manchester per month I have to make a choice between the Manchester Inventors' Group and Second Tuesday meetings and, up to now, more of the former that have caught my interest than the latter. But that may not always be the case. I went to both inventors groups' meetings when I was working in Manchester. The Second Tuesday ones were always very good.
Linda is certainly a better source of information about Ideas21 than me. She says in her comment that she can be reached on 020 8780 9017 at any time. I had found it difficult to reach her in the afternoons on the four or five occasions that I have tried to call her last year but perhaps I was unlucky. Ideas21 also has a comprehensive events diary on its website the address of which I have previously supplied.
Free Legal Advice
Anyone who wants free advice from me on the last Friday of the month should make an appointment with Jacquie Asquith of the Huddersfield Business Generator on Tel +44 (0)1484 483 080 Email j.asquith@huddersfieldbg.co.uk. Anyone wanting to catch me in Bradford should call David Robertson-Brown on Tel +44 (0)1274 772777 and anyone wanting to catch me in Lancashire should call Paul White at Blackburn Borough Council on Tel +44 (0)1254 692692 Email paul.white@blackburn.gov.uk for an appointment.
28 September 2005
betfair.com British Invention Show
Ideas21 appear recently to have increased their sub to £35 + a £5 joining fee, but for that you get access to the private bits of the Ideas21 website, a book by James Dyson, the bloke who invented the cyclone vacuum cleaner, and a load of pencils as well as £5 discount on admission to Second Tuesday talks in Manchester. I have been told that Ideas21 also let members of some other inventors' clubs into their events for no extra cost but you will have to ask Linda about that because I have never been able to understand the rules. Her telephone number is 020 8780 9017 and the best time to catch her tends to be the morning.
If you are already a member of Ideas21 and you want to take Linda up on her offer you should email events@ideas21.co.uk ASAP.
27 September 2005
Something for Inventors to look forward to
It is perhaps helpful to consider these machines as a bit like 3-dimensional ink jet colour printers. These build combinations of dots of ink into any character imaginable including photos. These build up shapes from small building blocks of material in very much the same way.
Making Money from Crime
It appears that the London meetings are very much like the Manchester ones except that the London ones are free. There is a talk in the Patent Office after which everybody slopes off to "The Witness Box" just up the road. I may have spent a little too long in that establishment in my first 6 months pupillage in common law chambers because I never took to crime, personal injuries or divorce law. That may explain why I now do IP.
Appropriately, tonight's talk is on crime - "Making Money from Crime" to be exact. The speakers include Deborah Leary and Lorraine Gamman as well as patent agent Richard Gallafent. If you want to come, call Linda 020 8780 9017 or email her at events@ideas21.co.uk. Advance booking is essential for security reasons.
I had intended to go to the Last Tuesday meeting after Smith & Williamson's seminar on "The commercial implications for SMEs of owning intellectual property - How to identify, value, exploit and protect intellectual property" at the Institute of Child Health between 12:30 and 18:30 today which looks really good, but professional commitments and distance render that impossible. If anybody wants more info, call Julie Barlin Tel - 020 8492 8600 julie.barlin@smith.williamson.co.uk.
Our Man in Qatar
Huddersfield has already got a number of links with the region through Nadio Granata's office in Dubai and indeed Alex Khan of these chambers. We hope to build on that connection with this very dynamic part of the world.
26 September 2005
Escape from the Dragons' Den

Manchester Inventors' Group
Central Reference Library in St. Peter’s Square, Manchester
Tuesday 4 Oct 2005 18:00
Nick Rawcliffe, one of the more successful inventors on the programme, will address the Manchester Inventors Group next Tuesday on what it is like to stand before the Dragons. He will also give some tips on getting your product to market.
Even without his TV appearance, Nick has a pretty remarkable life story. He worked as a mechanical engineer for the Ministry of Defence, took an MA in Design at the Royal College of Art, worked at Bauhaus in Germany and in Japan.
The Manchester Inventors Group in partnership with Manchester Central Library is a group that aims to help local inventors by providing the right information and sharing experiences.
The group meets on a monthly basis to discuss ideas, listen to talks by keynote speakers, brainstorming sessions, receive help from various support agencies and take part in workshop sessions. In addition, the meetings are a good opportunity to meet likeminded people.
Admission is free to attend. Further information from Chris Brown on 0161 234 1397 email c.brown1@manchester.gov.uk.
Yorkshire Pride
I wouldn't dare otherwise, would I. It is therefore with some considerable pride that I see that Sheffield Hallam and Bradford College have joined with the Open University and Cambridge to set up a website for Women in Science Engineering and Technology (SET). This website is funded by the Department of Trade and Industry as part of their Strategy for Women in SET and includes statistics, information for employers, mentoring information and much more. The website is backed up with a team of people at the Resource Centre in Bradford offering information and assistance through our enquiry form or help line.
While on the subject of Bradford, NIPC would like to congratulate Neil Johnson of University knowledge transfer department on his retirement and wish his successor, Lynsey Grieveson, every success.
24 September 2005
Patent Office Opinions
This new procedure comes into force on 1 Oct 2005 by virtue of The Patents Act 2004 (Commencement No. 3 and Transitional Provisions) Order 2005. The Patent Office has a new "Commencement" page on the topic with links to guidance notes and other information explaining the procedure. Applications will be made on a new form which is not yet on the Patent Office website supported but which should be up later this week with a supporting statement. The procedure is intended to be user friendly so it may not always be necessary to instruct counsel, patent agents or solicitors, but, even where professional assistance is advisable, it ought not to cost very much.
I have already had my first enquiries about settling (barrister talk for "preparing") supporting statements one of which is likely to turn into firm instructions later in the week. I will keep you all posted. Finally, for those who want to learn more. Peter Hayward of the Patent Office and Ian Lewis of Miller Insurance will be speaking on the topic at BPP Law School in Leeds on 24 Nov 2005 at 18:00. Admission is free upon application to Jonathan Haines Tel +44 (0) 845 678 6868, The school can only accommodate 150 in the lecture theatre and tickets will be allocated first come, first served.
22 September 2005
Mike Keenan - 1% Inspiration 99% Perspiration
Admission costs £15 for members and £20 for non-members. Food and drink at
at RAIN Bar, 80 Great Bridgewater Street are included in the fee. To register on line visit http://www.ideas21.co.uk/Event_Detail/502
or call 020 8780 9017 and ask for Linda.
Beta Technology
Her company was set up by Dr Bob Keown OBE, sometime lecturer in metallurgy at Sheffield University, in 1984. Beta has had an impressive portfolio of customers including British Steel, the National Physical Laboratory and several government departments. Its services include assisting applicants for European research and development funding and providing innovation services to companies to help them develop, promote and acquire new technologies. Beta is the designated UK National Contact Point (NCP) for a number of areas of FP6 including SMEs, Life Sciences and Research and Innovation.
Beta's head office is in Doncaster and it has branches elsewhere in the North.
Bronwen is a chemistry and biology graduate of Sheffield Hallam with experience of environmental analysis and scientific instrument sales as well as consultancy. Sadly, she said she was leaving Beta. We all wish her every success wherever she is going to.
Leeds Inventors Group: from Strength to Strength
The Leeds Club is now well and truly established. We now have our own website thanks to Ged Doonan. We meet every Wednesday on the top floor of Central Library at 6pm. We have a full programme with Peter Bissell, author of "A Better Mousetrap" and "The Business of Invention" on 19 Oct 2005, Terry Singleton and Clayton Roudette on 16 Nov 2005 and Dr Barry Stoddart of P & G on 21 Dec 2005.
The Inventors Group is only one of many services of the Business and Business Services of Leeds Central Library. There is also a regular patent clinic staffed by local patent agents.
19 September 2005
US Patent Office to answer Inventors' Questions online
15 September 2005
Help for Inventors in Ireland
He and one of the partners of his firm had written a very interesting article entitled "Tax Exemption on Income derived from Patent Royalties." which he distributed to the list which can be downloaded by clicking here. There is other good stuff on his firm's website. I particularly enjoyed the article on ADR.
12 September 2005
PatentScope
For a start the "PCT Gazette" is now online. This periodical contains information about all new applications received that month. Another useful journal is the PCT Newsletter with information about the patent and utility model; protection available in each country. There is some basic information for applicants as well as more detailed stuff for IP practitioners. There is a facility for registering for email updates.
Manchester Inventors Group Website
Good luck Steve!
11 September 2005
Innovact Conference Rheims 4 - 5 Oct 2005
Around 200 innovative European projects are to be showcased at this event to 4,000 visitors from 18 countries including 18 venture capitalists. There will also be an exhibition with 200 stands, networking, 40 talks and workshops.
Attendance and exhibition fees seem very reasonable.
US Patent and Trade Mark Office helps Independent Inventors
The home page describes the role of the USPTO and its history. The index page contains basic information about patents (which in the USA are available for designs and plant varieties as well as inventions), copyrights and trade marks (spelt as one word in US dialect). There is a links panel to some useful downloadable brochures and a complaints button for invention promotion companies. It's good to know that they are doing something about this problem over there, especially since many of the invention promotion companies operating here are based in the USA. Similar information is available on our Patent Office website but it is spread over several pages and you have to know your way around that site to use it to best advantage.
Another thing that our Patent Office could consider is an independent inventors' conference. They have just held their tenth at the USPTO's head office. The cost was very reasonable (US$90 about £50 in real money) with a US$10 (£5.50) discount for those over 55. Very interesting it looked too.
09 September 2005
Free IP Advice Day
Enforcement - Patent Office Seminar on 27 Sep 2005
07 September 2005
Leeds Inventors Club: Turning Ideas Into Reality
"The Genica Programme: Turning Ideas into Reality"
21 Sep 2005
18:00 - 20:00
We
are all very sorry to learn that Dr Barry Stoddart is to have medical treatment later this month that will delay his speaking to the Leeds Inventors Group on 21 Sep 2005. Everyone in Leeds sends him good wishes for a full and speedy recovery and look forward to his talk on 21 December 2005. Ged and Stef will see whether they can get in some mince pies and something stronger than tea or coffee to make Barry feel especially welcome.We are however delighted to be able to bring forward two speakers we had intended t
o approach in the New Year, Brian Corbett and Bob Middleton of Robinson-Chadburn. Their latest project is the "Genica Programme". Genica "helps entrepreneurs and inventors turn their ideas into reality." This is a series of workshops and one-to-one meetings to help inventors and business people identify possible applications for their inventions and to present them to the market in a way that appeals to users and consumers. The whole programme would take much longer than the time available but Brian and Bob have promised to give us a taster.Brian and Bob were very much involved in the UMIC awards mentioned in my last post, "Examples of What can be Done". They will complement Peter Bissell on "The Business of Invention" on 19 Oct 2005 and the UMIC award winners Terry and Clayton on 16 Nov 2005.
Leeds Inventors' Group now has its own web page on the Leeds City Council website and NIPC is working on a website for them similar to the Huddersfield site. Photos of the first event on 20 July which Lawrence Smith-Higgins launched are above.
06 September 2005
Examples of what can be done
Terry, already with an impressive portfolio of patents, demonstrated his latest invention, the "anyway up bin". As its name suggests, this is a waste disposal system. Its purpose is to reduce the risk of repetitive strain, back and other injuries among local authority and other cleaning staff. It consists of a case made from cardboard (or other inexpensive material capable of being recycled) around which a plastic bin liner is crimped and a cap with an aperture in the form of a slit with two folding side flaps secured to the roof by two treasury tags. As the bin liner fills up the weight drags the folds of the bag up the side of the casing. That in turn forces the cap upwards. The upwards motion relaxes the tags causing the slit to close. The system therefore regulates automatically and inexpensively the weight of rubbish that can be deposited in the bin.
Clayton's invention, the TIKKI Pavilion, was equally elegant. Described in his patent specification as a building with polygonal floor it is a temporary structure as easy to erect and almost as light as a tent. Clayton emphasized in his talk that it should be regarded as a room extension rather than a marquee. He explained that the original concept was for corporate hospitality but people who had seen it gradually began to identify domestic uses. A short video suggested all sorts of uses from mini-gymnasium to dining room.
Both Terry and Clayton have accepted my invitations to address the Leeds Inventors Group at Leeds Central Libtrary at 6pm on Wednesday 16 November 2005. It should be a really good evenining.
The other main event of the evening was a discussion as to how the Manchester Inventors Group should be constituted now that public funding is no longer available. Basil Philipsz offered to welcome the Manchester inventors as a chapter of IdeasNW or work with them closely in other ways if they wished to set up a separate organization. The meeting voted narrowly in favour of accepting Basil's invitation. However, everyone agreed to set up an association and consider links with IdeasNW later. We resolved to establish a working committee under Steve Mansfield's Chairmanship. On behalf of NIPC I pledged to sponsor the new Manchester Inventors Group to the extent that our chambers already support IdeasNW.
05 September 2005
Patent Search Room moves to British Library
03 September 2005
IP Insurance
Preliminary Reading
Before doing anything else I would urge inventors to do some homework on the IP insurance market. There have been some useful recent reports published by the European Commission and IP Wales. The EC report was prepared by CJA Consultants Ltd. and is entitled Patent Litigation Insurance. The IP Wales reports are "intellectual Property & Legal Expense Insurance" by Prof Beynon and others and the preliminary report downloadable from the same site. If you really don't have time for anything else, at least read Mandy Haberman's short article "Insure or Unsure?" (Mandy speaks from experience) and the DTI's "Insurance to protect IP Rights".
Types of Insurance
There are two types of insurance policies available to patentees and other IPR owners:
- IP or "Before-the-Event" Insurance Cover
- "After-the-Event" or Legal Expenses Cover
I shall discuss the latter first because there is less to say about it.
After-the-Event
After the event cover is not specifically related to intellectual property enforcement. It is a policy against the other side's, or your own and the other side's, costs of litigation. Insurers only take on the risk if they are pretty sure you are going to win. A typical premium is one third of the estimated costs. As these are unlikely to be less than £150,000 in a Patents County Court case the insurer will look to the insured for £50,000. Insurers may accept payment for such cover by installments but it is a hell of a lot of money for an SME to stump up at a time of maximum vulnerability.
Before-the-Event
This is very much cheaper and easier to obtain particularly if it is sought at the time of the patent application. Premiums can start as low as £500 for £150,000 cover for a start up company against the other side's costs. More typically, the premium will be £4,000 plus but that will include own costs, as well as other side's costs, cover to hudreds of thousands and perhaps one or two million pounds. Insurers will negotiate exclusions, reduced premiums for accepexcesscesss and so on. Before the event cover is the sort of cover that is most likely to deter infringement.
Further Information
In mentioning the following websites I must make clear beyond peradventure that I am not recommending any of the companies that are mentioned or referred to. This is a small and esoteric area of insurance and it is essential that an IPR owner takes specialist advice. I would also advise a lot of shopping around for the best deal.
One of the informativetiive website on the subject is probably Intellectual Property Insurance Services. This is run by an agent of Templeton Insurance Ltd in the Isle of Man. In fairness, I should point out that Templeton has another agent in Kent or South-East London but I don't know a lot about them. IP Insurance Services' website gives details of its start-up, standard and after-the-event policies. Their prime mover is an entertaining Scotsman of Singapore origin called Ian Macleod. He often accepts invites to address inventors' group, Business Link and other meetings. While repeating that I amendorsingrsing Mr Macleod's or any oinsurancerance company, it is worth listening to what he has to say if he is in your area.
Another good source of information is Mandy Haberman's "Make Sparks Fly" site. I have already mentioned her article "Insure or Unsure?" The reason Mandy speaks from experience is that she was able to see off a number of predators for her feeding cup because she had been wise enough to take out cover. Mandy has found three insurance companies to sponsor her site though when I checked them out while researching for the "Insurance" chapter of a book I am writing on IPR enforcement Hiscox told me that they no longer write before-the-event policies and Richmond House Group is yet to return my call. Miller Insurance Services Ltd does offer bother intellectual property asset protection and Intellectual property litigation cover. Its director, Ian Lewis, has written a very interesting paper "Coming of Age of Intellectual Property Insurance" which I commend.
Finally, I should say that IP Wales has arranged a special scheme for its members with HSBC Insurance the particulars of which can be obtained through its website.
More to come
Insurance is an important topic as it seems to me to be the only way many companies can afford to protect their intellectual assets. I shall be posting a lot of articles on this and other sites over time. Bookmark this one because I shall always link back to this article.
Links
5 Feb 2006 "IP Insurance: Two more Insurers Identified"
02 September 2005
Q. Why aren't there more British Patents? A. Because Enforcement is too Expensive!
fundamentals" when it comes to protecting investment in brands and technology.
In my article, I suggest that business people in this country have only too good a grasp. They know that enforcement is prohibitively expensive. If they can't enforce a patent or other IPR, why bother to apply for one? It hasn't always been the case. Until 2000 there was a lot of state support for innovators through civil legal aid. Since then, inventors and entrepreneurs have been left to their own devices.
The article considers insurance, suing outside the UK and the promise of possible changes in the law.
01 September 2005
Idea Generation Methods
I put it to the test and chose TRIZ which Paul Field of Huddersfield University introduced to me in his Innovation Forum a year ago. Sure enough it was there on Mr Leith's website. I was sufficiently impressed to read more and was led to a Sheffield site "Brainstorming" run by a company called Infinite Innovations.
Some Basic Information
26 Aug 2005 "Acquiring Intellectual Property" a primer on Intellectual Property
24 Feb 2004 "Applying for a Trade Mark"
28 Aug 2005 "Applying for Patents"; and
27 Aug 2005 "Patents Acts 1997 - 2004"
Huddersfield Ideas Gateway Launched
30 August 2005
Building on the success of Trevor Baylis's visit to Huddersfield for "Brass from Gumption" on 18 Feb 2005, Paul Field, Innovation Manager and Business Mentor of the University of Huddersfield has launched the "Ideas Gateway". This offers Baylis style breakouts - that is to say confidential brainstorming sessions at which inventors and professional and business advisors test ideas for new businesses and inventions.
For more information, call Paul Field on 01484 472264 or email him on p.field@hud.ac.uk .
Manchester Inventors Group

St Peter's Square
- Terry Singleton who won first prize with his "anyway up bin" in the UMIC 2005 Ideas competition; and
- Clayton Roudette who came second with his TIKKI pavilion