US Patent and Trademark Office Inventors' Resources Site

A resource that other patent offices around the world would do well to emulate is the "Inventor Resources" page on the USPTO (US Patent and Trademark Office) website. That is a web page designed specifically for independent inventors.

The welcome page explains that "the innovation and dedication of independent inventors have played a critical role in the USA's evolution into the most technologically advanced, economically vibrant power on earth". It continues that ever since it was founded in 1802, the USPTO has been dedicated to assisting independent inventors in utilizing America’s intellectual property system. A new comprehensive Inventor Assistance Program has been launched to expand the scope of services provided to independent inventors to make sure that they receive appropriate attention.

Information on patents includes:

• What is a Patent?
• Who can apply for a Patent?
• What can and cannot be patented?
• How do I know if my invention is patentable?
• How long does patent protection last?
• How much does it cost to get a patent?
• What is a PCT application?
• Frequently asked questions about patents

There is also similar information on trade marks:

• What is a Trademark?
• Why should I obtain a trademark?
• How do I register my trademark?
• What do I need to include in my trademark application?
• How much does it cost to apply for a trademark registration?
• How do I do a federal trademark search?
• Does the USPTO determine trademark infringement?
• Frequently asked questions about trademarks.

Though US law is different in some respects a lot of the information on both patents (which includes what we would call registered designs) would apply here too.

The site also contains plenty of good brochures some of which apply here. The excellent little card entitled "Scam Prevention" definitely does. Another really good feature that others could copy is a chat room for advice and many of the transcripts are published. An example of the latest one follows here. There is a lot of other good stuff such as whether to hire a patent attorney, funding and special inventors' events. Good stuff nephew Sam.

"The Innovators' Toolkit", Lancaster University 3 Aug 2006

I am honoured to have been invited to speak at “The Innovators Toolkit” a workshop to be held at Info Lab 21 at the University of Lancaster on 3 August, 2006 between 09.15 and 12.30.

“The Innovators Toolkit” is targeted at SMEs and organisations that assist them. The workshop gives a compact but tailored overview of the ways that innovation is best protected and managed in order to rank amongst the tangible assets of a company and to illustrate just how much more an enterprise can do itself to minimize the costs associated with the protection of intellectual property.
Topics include obtaining a patent, registration of designs and unregistered design rights, copyright, managing innovation and enforcement.

The main speaker is Dr. Ron Jones who has spent that past 25 years as an inventor/entrepreneur in his own SME and has successfully licensed technology to global corporations and seen these inventions reach a high level of commercial success. In addition to his entrepreneurship Ron holds a Master of Laws from the Edinburgh Law School in Innovation Technology and Law. I shall be talking about enforcement and ADR.

The course is organized by "ip.com" which has recently opened up in the UK and further information can be obtained from Ron at rjones@ip.com. There will be a charge of £30 to attend the workshop.

Liverpool Inventors Club: I've got a Great Idea - How not to Spoil It

I have uploaded the slides of my talk to Liverpool Inventors Club at the end of last month. Late, I know but I hope you will find they are worth it. It was a good meeting with a lot of networking. The club us definitely gelling.

The next meeting will be on 26 June. Jo Pritchard of Liverpool John Moores and Jonathan Butters of JAB Design will discuss ways of bringing new products to market. They will discuss all the local services available and how they all come together.

I am very conscious that I have not put up a great deal of stuff this month. It has been a very full month for me working hard for you inventors. There are some really exciting local services in the pipeline including in particular the IPCEX IP pro bono clinic which will open in Manchester next month and the Huddersfield and Bradford inventors' clinics on 5 July. Will keep you all posted.

IP Audits: Tips from Downunder

Advice that I give constantly to my clients is to carry out an intellectual property audit (see, for instance, "Acquiring Intellectual Property" on our chambers website). But what is an IP Audit and how do you carry one out. Ian Cockburn, a patent agent from Aotearoa (aka NZ), has the answer in "IP Audit – A “How to” Guide". Ian gives us a worked example of a typical SME. There are other ways of approaching the task but this is certainly one way.

Ian's article appears in the WIPO SME Newsletter together with an article by one Aswath Damodaran of Stern School of Business on valuing brand names, flexibilities and patents which complements Ian's article in several ways and an article by a whole warren of worthy US patent lawyers on when to patent and when to rely on trade secrets.

Information and Communications Technologies: Presentation to West Yorkshire Information Security Users' Group

Last Thursday I gave a talk on information security and the law at Leeds Civic Hall to the West Yorkshire Information Security Users Group. The talk was essentially an introduction and overview prompted by the recent publication of the DTI's Information Security Breaches Survey for 2004. I covered the various types of legal protection for information processing and also the corresponding burdens. As an experiment I have tried an animation with a voice over for the slides. This has turned out to be one of the most difficult and tedious jobs I have ever attempted so do listen. I have also uploaded a short handout in pdf.

Happy World Intellectual Property Day

Today marks the anniversary of the day on which the WIPO Convention came into force and to celebrate that event the WIPO and its several member states have designated the 26 April as World Intellectual Property Day. For those who want to know more about it and more about what is going on today around the world, see "happy world intellectual property day" my other blog.

Sheffield Inventors: Website Improvements

I have added a new "Presentations" page to the site. The first of these are the slides for Miles Rees's excellent talk "Raising Awareness" which I mentioned yesterday ("Sheffield Inventors: Rees launches Group" . Other additions are eight new service providers and a link through to our hosts, Sheffield Patent Library.

I have also announced the next event which will take place in Sheffield Central Library on Monday 5 June 2006 at 18:00 hours. I will give a talk on everything you will need to know about intellectual property:

"Introduction to law of confidence, patents, designs, trade marks and copyright. How you get each of these rights. What they protect. How to enforce them. How to exploit them. How to find and instruct patent and trade mark agents. Worked examples and questions and answers."

Manchester Inventors: Grobox

We have had many examples of the wrong way to develop an invention. Today we were shown the right way. Beautifully presented, Jayne Lawton presented her GROBOX. A "grobox" is essentially a bulb or bulbs in a box. All you have to do is plant the box and let the plants grow. Even the laziest and most hamfisted gardener can use it.

Jayne told her story of how she got the idea from an egg box. She tested all sorts of combinations and bulbs in all sorts of environments to get the product right. Having perfected her product she protected it with a patent, trade mark and registered design. She also made sure that she could enforce her rights by taking out IPR insurance. However, her most important lesson was how she marketed the invention. From networking with more experienced business people she learned that the best publicity came from winning awards. She has won several including some of the really major competitions.

Although Jayne has displayed considerable business acumen, she has also shown concern for the environment. On the "Ethical Environmental" page of her website, she stresses the importance of being environmentally friendly. Her boxes are made from recycled and biodegradable material - even the straw benefits the garden ecosystem. Even the gift wrapping offered is made from seeded paper.

Jayne supports several charities and will be running for one of them in the London Marathon. She is looking for sponsors.

IPCEX: IP Students to help Manchester Inventors

A team of students from the BPP Law School in Manchester intends to offer pro bono IP legal advice service to Manchester Inventors. This is the latest service provided by the IP Centre of Excellence for the North, an initiative of lawyers, patent agents, academics, business people and others to improve and promote IP services in the region. The team has already published an excellent newsletter which can be downloaded from the Centre's website.

Maria Udalova-Surkova and at least one of her colleagues from that team will announce the service to the Manchester Inventors Group meeting at Central Library at 18:00 tonight. The team will be supervised at all times by at least one member of the teaching staff who holds a practising certificate from the Law Society and there will be input from each of the major law firms and chambers who support the Centre.

The Manchester initiative complements a similar scheme started by students at the BPP Law School in Leeds. Their service does not specialize in IP but they do publish an excellent IP newsletter. The November and January issues.

Finally, though he has no formal links with the Centre, I have to mention the efforts of Ian Best of Ohio State University in the USA. Ian has just completed a taxonomy of American and Canadian legal blogs which can be found at

http://3lepiphany.typepad.com/3l_epiphany/2006/03/a_taxonomy_of_l.html

This is part of a blog-for-credit independent study project, the first of its kind in the USA and probably the first anywhere. Ian's effort has been featured in Moritz e-Record which appears to be an interesting online publication from his law school. He has asked us to provide a link to his taxonomy which we are glad to do and we welcome his aim of encouraging more interaction between legal bloggers in different countries.

Sheffield Inventors: Rees launches Group

Sheffield Inventors got off to a flying start yesterday with an excellent presentation by Miles Rees of the Patent Office on what the Patent Office does for SME and individual inventors. He mentioned the Patent Office's liaison with schools and universities including Think KIT, its collaboration with police, customs and other agencies to stamp out piracy and counterfeiting, the specialist teams to handle enquiries from unrepresented applicants and the Patent Office Opinions and Mediation Services which had just been launched. The only thing that Miles did not mention was the announcement attributed to him on the IP/it Update blog on 1 April.

Miles had a good audience. I counted well over 22 persons in the audience which included patent agents and technical assistants, solicitors, business advisors and academics as well as inventors. Chris Hemingway of Bailey Walsh LLP and Kate Reid of Pemberton Reid said a few words about their firms as well as our host, Patent Librarian Sue Sayles, Richard Campos, Alan Warren of Business Link South Yorkshire and several other service providers. After a very lively discussion I asked for volunteers for a steering committee to confer by telephone and meet shortly before each event to discuss future events and a structure for the group. Kate Reid, Olusola Onatanmi, Sue Sayles, Chris Hemingway and Richard Campos very kindly offered to join. Many thanks to all of them. Thanks also to the Patent Office, Sheffield Central Library and staff and, of course, Miles Rees for a very enjoyable evening.

Liverpool Inventors Club: Website Updates

I have updated the Liverpool Inventors Club website with some details of

- our next meeting at the Central Library on 24 April at 16:00
- our new service providers, venture capitalists Liverpool Inventors, product development consultants PD-M International and law firms DLA Piper and Eversheds; and
- our new email address at info@liverpoolinventors.org.uk.

The club now has a steering committee consisting of inventors Alan Wells and Christopher Edgar, consultant Jonathan Butters, Liverpool John Moores staff Jo Pritchard and Di Burbidge, Ruth Grodner of the Central Library, Michael Sandys of Kirwans and me. The first committee meeting will take place at 15:45 in the Hornby Room of the Library on 24 April. I look forward to meeting everybody who was there last time plus hopefully lots of new faces.

Hundredth Post: New Inventors Clubs in Liverpool and Sheffield

What better way to celebrate the 100th post of this blog than the launch of two new inventors clubs? Liverpool will launch at Sheffield Central Library tomorrow at 16:00 with a presentation by Peter Raymond OBE and Sheffield on 3 April at 18:00 will a presentation by Miles Rees at Liverpool Central Library.

There will also be the first Manchester meeting of the IP Centre of Excellence on Thursday, 30 March 2006. This Centre will be the staff college for the patent agents, trade mark attorneys, solicitors and other professionals who advise inventors and entrepreneurs in the North. The topic is Freedom of Information. While the talk is most likely to appeal to IP and legal professionals everybody is welcome.

For further information about IP events in the North click "Events" on www.hip.org.uk .

Baby Dream Machine

I have never been able to watch Dragons' Den. To my mind it borders on voyeurism. Watching four supercilious business people (one of whom came to grief herself) grilling folk who have put their hearts and souls into their business or products reminds me of 18th century gentle folk visiting the poor lunatics in Bedlam. I had the chance to ask Doug Richard why he did it at last month's Venturefest. He admitted that it was "for a hoot".

One of the first pitches (if not the very first) was Graham Whitby's "baby dream machine". Essentially it is an electric rocker. A video clip on Graham's sit actually shows it working. It appears to consist of a set of rollers connected by a belt and powered by an electric motor. The baby is placed in a pram or push chair, the back wheels are placed on the device, the motor is switched on and baby is lulled to sleep. At least that is the theory.

Now Graham and his partner Barry Haigh who invented this contraption didn't get very far on Dragon's Den. The dragons appeared to like the concept but they thought that Graham and Barry were asking too much for their investment. So they sent them off empty handed. But they did not give up. They found support from a local business angel and with the help of Huddersfield Business School Lecturer and marketing consultant, Nadio Granata, and his contacts they are well on the way to a successful re-launch.

One of the milestones on the re-launch was yesterday's "Enterprise Event" at Huddersfield University. This is one of a series of seminars arranged by Nadio around a real business. After drinks and canapes it starts with a presentation by an inventor or entrepreneur. It is followed by cross-examination by a financial journalist and is completed by some pearls of wisdom from an expert panel and one of the professors from the Business School.

Much of the discussion was about price and distribution but I thought that there was a very real issue about IP. I asked Graham about whether his company had any specialist insurance. He said he hadn't but when I told him about Mandy Haberman's battle over the anywayup cup (see her article "Insure or Unsure") I got the impression that he was certainly going to think about it.

Although I have never managed to sit through a whole programme I have met quite a few Dragons' Den contestants - the snowbone man and the interflush to name but two. The thing that impresses me is that they are all sensible folk. I wish them all well. They deserve to be taken seriously.

"I have yet to see a Confidentiality Agreement that is not flawed"

One lesson that seems to have been drilled into the consciousness of almost every single inventor is the imperative of getting a confidentiality agreement. I have even been asked whether inventors should get their lawyers and patent agents to sign these things.

Now in a sense this concern for confidentiality is a good thing. An invention is patentable only if it is new. By definition an invention cannot be new if everyone knows or can find out about it. Patents have been lost because inventors have disclosed them prematurely to the public. For instance, in Boston Scientific Ltd and another v Palmaz and another [2000] EWCA Civ 83 (20 March 2000) the inventor gave a short presentation of 5 to 10 minutes (perhaps 8 minutes) to about 40 members of the Radiological Society of North America at which he showed a series of slides including some drawings. There was no written record of the presentation and the inventor denied that he had disclosed his invention but the court took the view that he had. It followed that the patent was invalid for want of novelty as a result of that presentation.

What is often forgotten however is that it is not any old disclosure that invalidates a patent. It has to be an enabling disclosure. An enabling disclosure is one that teaches a skilled person enough to make the invention so that it is no longer new or at least enough for him or her to deduce the invention so that it is obvious.

In his talk to the Leeds Inventors Club on 15 March 2006, Dr Barry Stoddart of Procter & Gamble showed how insisting on confidentiality is often unnecessary and can sometimes destroy business opportunities. What a potential customer, partner or investor needs to know is not how an invention works but what it will do. Had the inventor of the wheel told the clerk of works at Stonehenge that he had a world beating invention but he wouldn't say a word about it unless he signed a confidentiality agreement the inventor would have been given very short shrift. If, instead, the inventor had said: "What I have is an invention which will make it much faster and much easier for you to transport stones from one point to another. Are you interested?" The likelihood is that the clerk of works would have replied: "You bet I am interested." There would have been evaluations and a licensing deal.

Companies like Procter & Gamble have large numbers of employees working on all sorts of new products and services all over the world. The problem of confidentiality agreements is that they have to be honoured. Typically, they have to be honoured for years. Where the inventor has hit upon something upon which Procter & Gamble are already working they are embarrassed. The message from Barry's talk was that inventors have to be commercially minded. There is no point in having an invention that is technically brilliant but has no consumer appeal. What P& G need to know is does the invention have such appeal and what is that appeal?

In the course of his talk Barry said that he had never seen a completely satisfactory confidentiality agreement. Hence the headline to this post. That is because different confidential relationships need to be governed by different sets of promises.

The other memorable thing he said in answer to a question from me is that P&G trust inventors' clubs. They know the people behind the clubs and trust them. I can attest to that. I introduced to Barry one of the chaps who attended the IP workshop that I give in the Huddersfield Media Centre on the last Friday of every month. Barry liked his invention and put in train a chain of events that led to his getting a licence from P & G.

Patents: Resources on Yahoo

It's funny how one discovers useful tings in the most unexpected places isn't. A good example of this serendipity is the "Patent And Trade Law" (sic) - I think they meant "trade secrets" - on the "Small Business " section of Yahoo. The material is written from an American perspective and is therefore based on US law, but much of it is universally applicable.

My favourite article is "You Don't Need a Lawyer to Get a Patent". The article starts with the position of many inventors:

"you have more imagination than money, and a patent attorney wants $7,500 to file a patent application for you. Must your invention gather dust in the garage, or can you apply for a patent yourself, without a lawyer?"

The advice that the article gives is very sound. The only bit that isn't really necessary here is: "record every step of the invention process in a notebook." That is very necessary in America because the right to apply for a patent goes to whoever is the first to invent in America and not the person who is the first to file as it is in most other countries of the world including here. It is still however good practice and as many foreign inventors would want patent protection in the USA there is no harm in following it. The articles ends with potted life histories of four persons who have done very well from their inventions.

Two interesting related articles are "Patent searching online" and "Making your own patent drawings". There are also some good articles on enforcement, non-disclosure agreements and plenty of other stuff.

IP Centre of Excellence for the North

I have mentioned the launch of the IP Centre of Excellence for the North several times already. I am now glad to announce that it has a website at www.ipcex.org.uk and plans 3 new events:
- 30 March 2006 "Freedom of Information 15 Months on" BPP Law School, Manchester 18:30 to 20:00, Speakers Gerrard Tracey, Assistant Information Commissioner and Ibrahim Hassan,
Freedom of Information Specialist, Proprietor, Act Now Training;
-10 May 2006 Half Day Seminar: "Alternatives to Litigation for Resolving IP Disputes" - BPP Law School, Leeds, 14:00 - 17:00 Speakers: Ignacio de Castro, WIPO Arbitration and Mediation Centre, Felicity Brandwood, NCC and Sara Ludlam, Keeble Hawson; and
- 15 June 2006 Prof Jeremy Philliips "Five Live IP Issues" - BPP Law School, Leeds. 18:00 - 20:00 to be followed by dinner in nearby restaurant.
Please email me on john.lambert@ipcex.org.uk or call me on 0870 990 5081 ASAP if you want to come as space is likely to be limited.

OFT moves on Invention Promoters

A post from my other blog that readers may interest readers of this one is that the Office of Fair Trading has issued a stern warning to the directors of a Dublin based invention promotion concern that is now out of business that they can expect swift action if they try to carry on their activities through a new company (see "OFT issues warning to former directors of inventions promotion company", 8 March 2006).

The OFT reminded the public that there is plenty of free advice about from the Patent Office, the Institute of Patentees and inventors' clubs. One of the reasons for providing "service provider" membership in the Huddersfield, Liverpool, Sheffield and other clubs is to divert folk with bright ideas away from the cowboys to reputable businesses and professional practises that offer useful and cost-effective services, in many cases free. I am glad to say that Eversheds and Nabarros have joined the list of service provider members to the Sheffield club and that Halliwells will be at the first meeting of the Liverpool club.

American Wisdom: The 6 Life Stages of Inventors: Part 6 Senescense

Since January 2001 the adjective "American" has been associated with the noun "wisdom" less and less frequently, but the phrase "American wisdom" is not an oxymoron. It abounds in copious quantities on the Rethink(IP) and companion blogs of US patent lawyer Stephen Nipper. One series of articles that I would urge all here to read are "The 6 Life Stages of Inventors". I picked it up at "Part 6 Senescense" but I have seen the others and they are all worth reading. Also worth reading is "The Invent Blog".

Sheffield Inventors Group

Joining the inventors clubs that I sponsor in Blackburn and Manchester, and the ones that I helped to start in Leeds, Huddersfield and Liverpool is the new Sheffield Inventors Group. The group will launch at 18:00 on 3 April 2006 with a talk by Miles Rees of the Patent Office at Sheffield Central Library in Surrey Street.

The group will be run very much like the others. There will be two classes of members: inventors from anywhere in South Yorkshire and service providers (people who offer business and professional services to inventors) from anywhere.

Now that we have a fair measure of organization in the North we should soon be in a position to negotiate substantial benefits for Northern inventors such as discounts for searches and library services, legal advice and representation, patent and trade mark agents' services, prototyping and IP insurance.

Michael Sandys of Kirwans and Kate Reid of Pemberton Reid and I have already giving free workshops and clinics. So, too, has Chis Hemingway of patent agents Bailey Walsh. Nadio Granata of PNG Marketing gave a lot of input to the Huddersfield inventors as did product development consultant Richard Hall of PD-M International Ltd. On the financial side Iain MacLeod of IP Insurance Services is already working on a group IP insurance policy for members of any of the Northern inventors' clubs. After that, we shall try to arrange networking events with angels and VCs.

Details of these events are or will be on the "Events" page of www.hip.org.uk. We hope to help make you all rich men and women. We shall certainly do our best.

Manchester Inventors' Club: Arthur to tell us how

At the end of the last Manchester Inventors Group a remarkable thing happened. An inventor appeared who had made a success of his invention. And in less than a year too. The inventor's name is Arthur Arnold and he has nabbed immediately by Steve Mansfield to give the talk next Tuesday.

Arthur has invented a device for securing disabled badges. It is sorely needed because hundreds are stolen in Manchester alone. Arthur showed us his invention in a blister pack ready for sale. He has already had loads of interest from police forces around the country, local authorities, disabled groups and many others. A good example of what can be done.

The talk will take place in the committee room at Manchester Central Library. Refreshments will be available from 18:00 on 7 Mar 2006. Afterwards, Steve will buy a drink for anybody who follows him over to the pub. Can't remember its name but it is in the building where Slater Heelis (one of the oldest law firms in Manchester) used to practise.