08 May 2009

Rocky Mountains Inventors' Association

One of the delights of travelling through the New World is finding little bits of home beyond home. For example, when I was a graduate student at UCLA in the early 1970s there was "Ye Mucky Duck" and "The Brigadoon" whenever I felt homesick. Near Boone, North Carolina there was a village called Tynecastle where they actually held highland games.   In Victoria, British Columbia they play cricket and replicate Anne Hathaway's cottage - complete with her husband's second best bed. In Trelew, Argentina there's a "Canolfan Dewi Sant" right in the town centre.

And if any of our us from the land of Newton, Brunel, Darby, Crick, Stephenson. Farraday, Jenner, Whittle, Babbage, Turing, Berners-Lee, Swan, Watt, Trevithick, Dunlop, Shaw, Logie Baird and Cockerell ever stray into Colorado we'll find like minded souls at the Rocky Mountain Inventors Association.  The mission of the Association is almost identical to that of the clubs in Leeds, Liverpool and Sheffield:
"The mission of The Rocky Mountain Inventors Association (RMIA) is to promote successful product commercialization and protection by offering information, education, and guidance including business contacts and networking opportunities."
Like us it has inventor and service provider members.   I learned about the Association from one of those service providers, Kevin Houchin, since we follow each other on "twitter.".

The activities of the Colorado inventors are remarkably like those of the Northern Clubs.   They have regular talks by folk like Kevin. Yesterday, for example, he was talking about trade marks and domain names which gives me an idea for what to do in Sheffield on Monday.   Maybe we can make use of the Internet to link together with Kevin telling us about protecting and promoting innovation in America and maybe some of us telling our American colleagues about what happens here.

26 March 2009

Investing wisely in IP - my 6-Point Plan for any Business

A patent, copyright, trade mark, registered design or other IP right is nothing more than a right to bring a law suit. Its purpose is to protect the income generated by an intellectual asset, that is to say, a brand, design, technology or creative work.   Such protection does not come cheap.   According to research commissioned by the EPO, it costs €32,000 to obtain a typical European patent and maintain it for 10 years.   That is an awful lot of money to spend considering that most patents are never worked.   Enforcement is even more expensive. IPAC (HM government’s high level advisory committee on intellectual property) estimates that a patent infringement action costs £1 million in the High Court.  That explains why I have seen far more businesses fail from having too much IP than from having too little in my 32 years at the English bar.  

Yet there are circumstances in which a business needs to protect its investment in branding, design, technology or creative works. How does a businessman or woman recognize such circumstances and how does he or she choose the optimum legal protection.   Here is a simple 6-point plan that can apply to just about any business.

1.   Choose a period in which you expect your business to develop.   This can be any period of your choosing which will probably depend on the nature of your business and products and services.   For a company in the fashion or novelties business this could be a matter of months or even weeks.   For a pharmaceutical company it could be decades.

2.   Identify the main income streams that you expect to develop in that period.   IP is intended to protect income streams,   If your invention is never going to earn money whether directly or indirectkly through sale or licensing why waste thousands of pounds on patenting it?  Similarly, if you have no sales in country X and are never likely to have any why seek intellectual property proteciton there? You may want tpo protect yourself in country X it it has a sufficient industrial base to allow a competitor to set up there but, if not, why bother?       

3.   Consider potential threats to each of those income streams.   Competition from competing products or services may be one but there may be others such as changing patterns of demand or the general economic situation.

4.   List possible counter-measures to those threats.   Most of these will be commercial rather than legal such as cutting your prices or developing new products or services but for some threats such as plagiarism you may actually need some legal protection such as a patent or design registration.

5.   If any of those counter-measurers is an IP right, choose the most appropriate one for your business.   There is usually a choice. For instance, one way of protecting a new product or process is simply to keep it under wraps and seek to rely on the law of confidence to prevent unauthorized use or disclosure. The other is to proclaim it to the world in exchange for a temporary monopoly of the manufacture, sale and use of the product or use of the process (otherwise known as a “patent”). Where the technology has only a short shelf-life, a 20-year monopoly is otiose.   On the other hand, if you are a drug company which has invested millions in R & D in a new product and waited years for approval from drug licensing authorities you need patent protection in every country of the world of you are to see an adequate return on your investment.

6.   Ensure that there is adequate funding for enforcement proceedings.    Unless you can afford hundreds of thousands of pounds on litigation and can risk at least as much again if you lose your case with equanimity you should think of IP insurance.   Though these articles need to be updated you can start with two articles that I wrote in September 2005: “IP Insurance. Does it Work” (IP/IT Update) and “IP Insurance” (NIPC Inventors Club).

These and other tips are all set out in my presentation to Leeds Inventors Club “So you think you want a Patent?” which I gave on 18 April 2008.   I also discuss them in my book “Enforcing Intellectual property Rights” which appeared earlier this month. 

02 March 2009

Sheffield Inventors Club, 2 March 2009, 18:00

Just a reminder of the meeting of the Sheffield Inventors' Club on Monday 2 March at 18:00..   

Prof Ron Jones will give the talk on how to bring your invention to market that he was prevented form giving last month by the  weather.   

The meeting will take place at Central Library, Surrey Street, Sheffield as usual.

17 February 2009

IP Strategy: IP Asset Maximizer Blog

Over the 30 plus years that I have been at the English Bar I have seen far more businesses ruined by acquiring too much IP than too little.  That is particularly true of private inventors who apply for the most extensive patent, design and trade mark protection around the world long before they know whether they will ever sell a single product.

I have no reason to believe that patent agents act from anything but the purest motives and professionalism when they advise their clients of the narrow geographical extent of a British patent and "the inconvenient truth" (to quote a former US Veep) that the invention is made available to everyone in the world including persons skilled in the art way beyond the boundaries of the country for which the patent is granted.  When asked what can be done in say France to prevent then infringement of a British patent the answer is of course nothing.   The remedy is to get a grant for France, and then the rest of the industrial world until the client has spent his entire life savings.

And what does the client have to show for all that expense? Unless he has an income stream to protect and the wherewithal to protect it, NOT A LOT.   Inventors have to be reminded that it costs €30,500 to maintain a typical European patent in 5 countries for 10 years and that most inventions are never worked.   For them the Office fees, patent attorneys' charges, their disbursements and other expenses is MONEY DROWN THE DRAIN.

When I tell my inventors that at my IP Clinics or inventors' clubs they refuse to believe it because that is contrary to what they are told by patent agents, Business Link and each other.   Imagine my delight, then, at encountering a blog that is devoted to IP strategy.   Jackie Hutter's blog IP Asset Management  is exactly that.   Packed to gunnels with good articles it is.   Here are some examples:
Ms Hutter, who lives in Decatur, Georgia in the USA appears to know what she is talking about. She has 13 years experience in advising companies, investors and universities on how to maximize intangible asset value by developing and executing on IP and patent strategy.   

The URL of this lady's blog is at http://www.ipassetmaximizer.com/ and one can follow her on twitter at http://twitter.com/IPStrategist if one does not have anything better to do than look out for banalities (though never from Ms Hutter) in 140 letters or less.   Talking of twitter, my thanks to @jefflindsay for bringing this blog to my attention.

15 January 2009

The Downturn may be the Best Time to commercialize your Invention

Since October I have been making the rounds of the Northern inventors' clubs with my presentation, "The Coming Economic Downturn: How it will affect Inventors and what they can do". My message is necessarily gloomy but I try to finish on a high note that an economic downturn is often the best time to start a business. There are a number of reasons for this. Costs are low. Governments tend to prime pumps. At a time when most businesses are shedding labour rather than recruiting most entrepreneurs have much less to lose.

That message is usually received scepticlly so I was heartened considerably by Sanjiv Buttoo's feature on the BBC website "Business brains urged to take the plunge". The article features an interview with Ajaz Ahmed who started Freeserve in 1998. When the service was launched, most homes in the UK connected to the Internet through an 0845 number for which they were charge local calls on top of an annual or monthly subscription to their Internet service provider. The idea behind Freeserve was to take a share of the charge for the telephone call rather than charge a subscription. This simply proposition proved extremely popular with the result that Freeserve became the biggest ISP in Britain. Its growth attracted the attention of the French giant Wanadoo which is a subsidiary of the French national telephone company.   Freeserve merged with Wanadoo giving Ajaz  a very substantial share of the merged company.

The reason I happen to know all this is that Ajaz is a local lad and he is involved with a number of institutions with which I am also interested.   There include the Media Centre where our chambers are based and the University with which we have worked. The article begins with the words:
"Budding entrepreneurs should take advantage of the current economic downturn and take the plunge, a self-made millionaire from West Yorkshire is urging."
"Exactly the message I have been putting about in my presentation," I thought to myself. "If the inventors won't take it from me maybe they will take it from someone who has actually made his fortune and at a fairly young age."  

The articles continues with the following admonition from Ajaz that despite the downturn in the economy, now is the time make money
"You can negotiate a good deal on renting a shop or unit, hiring staff, advertising or even buying cheaper raw materials 
Now is the time to start up with minimal costs, but you need to have that idea or you're wasting your time."
Exactly! The article continued with some examples of people in and around Huddersfield who were actually doing this. Mohammed Ramzan who is also in the Media Centre and even more impressively a couple of schoolboys from Elland who seem to making serious money from publishing their own magazine.

If any reader wants to take not my advice but Amjad's he or she will get a lot of help. Not just from me but from the patent and trade mark agents, solicitors, accountants, marketers, product designers and other experts on my IP Yorkshire panel if they happen to live in Yorkshire.   You can access their expertise in many ways, through the Leeds and Sheffield inventors clubs and the clinics in Barrnsley, Bradford, Halifax, Huddersfield, Leeds and Rotherham

If you don't live in Yorkshire, don't worry. I am setting up similar networks in other regions starting with the North West so we shall soon be able to help you wherever you live. Ajaz emailed me yesterday when I said I liked his sentiments: 
"in all this doom and gloom there are opportunities for the brave one, lets hope we see success stories emerging from this sad period."
Let's make sure that happens.

14 January 2009

A Very Sad Tale Indeed: Forrester Ketley & Co v Brent

In Forrester Ketley & Co v Brent [2008] EWHC 3150 (Ch) (19 Dec 2008) Mr. Justice Morgan had to deal with no less than 53 applications for permission to litigate in all sorts of matters including petitions for his bankruptcy and charging orders over his home. 

The reason the applicant needed permission to litigate is that he had been subject to a series of civil restraint orders that required him to apply for permission to the court before going to law. Those orders had been imposed because he had attempted in previous proceedings to join the Crown, the Department for Constitutional Affairs (as the Ministry of Justice was then called), the Lord Chancellor, various judges, and the entire partnership of his opponent's solicitors and had embarked on satellite litigation seeking criminal sanctions against the High Court, the Court of Appeal, various members of the Court of Appeal, and the Health and Safety Executive. He had also tried to sue the UK government, the other side's solicitors and PAMIA in the European Court of Human Rights. All this derived from a claim in 1994 for fees of £4,400 by a firm of patent attorneys and a counterclaim of £5,000 for alleged overpayment and negligence which spawned 100 pages of pleadings by the time it was struck out by the Patents Court in 2003.

This exceedingly sad case would seem incredible to most folk but it is sadly believable to anyone who has ever worked with private inventors. The brilliance of the bright idea and the lure of riches beyond the dreams of Croesus beguile to the extent that some become obsessed with their invention and a few even unhinged. Charles Dickens knew of this tendency and wrote about it in his novels and short stories.  The conditions seems to begin with unfounded optimism: "I've checked round B & Q and can find nothing like it on their shelves" or "sales of trundle humpers amounted to umpteen billion pounds last year and I only have to sell 1% to make so many millions."

In the first few pages of "A Better Mousetrap, The Business of Invention"  Peter Bissell and Graham Barker warn that the vast majority of patents are never worked, that most of those that are do little more than cover their costs and only a tiny percentage of the rest ever make serious money.

05 December 2008

More from NZ:The T-Shirt Marketer's Guide to World Domination

Last week I blogged the patent application of Ryan Nicholls a 9-year old from NZ who has applied for a patent for an ingenious waste separator. Now I have something else to mention from NZ.

My friend, Amanda Lennon, who used to run the Huddersfield Business Mine and Velocity Bradford, now manages the Canterbury Innovation Manager in Christchurch New Zealand.  Amanada and her team have just produced a short video entitled  "The T-Shirt Marketer's Guide to World Domination" which you can view on YouTube. This film explains very simply and also very cleverly the process of innovaiton and commercialization. Though made from a NZ perspective it is relevant everywhere..

29 November 2008

Catching 'em Young

Ryan Nicholls, a 9 year old New Zealand child, has become his country's (and possibly the world's) youngest patent applicant. (see Michelle LotterPatent pending for young inventorNorth Shore Times, 29 Nov 2009 on Stuff.co.nz with thanks to Matthew Buchanan of "Promote the Progress blog" for bringing this story to my attention). Does anybody know of a younger patent applicant anywhere else in the world?  My interest in science and technology developed at about that age.   I never made an invention - much less applied for a patent - but I do remember helping to make a primitive computer using telephone exchange switches (this was in the 1960s) together with several other children and under a teacher's supervision when I was a bit older. So heartiest congratulations to young Ryan from England.

Ryan's invention appears to be a device for separating moisture from food scraps in domestic waste disposal systems. The scraps are removed to a container where they are aerated and eventually form a compost. According to the report, Ryan was fed up with taking out the compost, so he invented a machine that would do it automatically.

Considering its tiny population and remoteness, NZ has contributed more than most countries to science and technology. Ernest Rutherford, of course, but also the inventors of disposable syringes, aerial top dressing and bungee jumping to name just a few.  

Rutherford did his best work in Manchester. Manchester Inventors Group (the average age of which is somewhat greater than 9) has set up a working party to "make the most of their creative and innovative skills".   One of its proposals is a competition similar to the one that Ryan won at home. Should Ryan follow the footsteps of his illustrious compatriot to one of the world's greatest universities he should find a lot of like minded contemporaries with whom to compete and collaborate.

25 November 2008

New IP Clinic at Rotherham

We are delighted to announce a new IP clinic at Catcliffe near Rotherham.   We also have a new clinics website at www.nipc-clinics.co.uk providing a calendar and online booking form to make it easier to secure a slot.

We also have a new website for our training company at www.nipc-training.co.uk which will hold workshops that are likely to interest inventors, thier investors and professional advisors.

16 October 2008

How will the Economic Downturn affect Inventors

I spoke on this topic to the Leeds Inventors Club last night and have uploaded my slides to my Slideshare page

I warned that the coming downturn is likely to be deeper and more prolonged than others in recent years because there will be less scope for interest rate cuts and public expenditure. Inventors in the UK are likely to be affected by falling demand, reduced grant and loan funding, reduced  credit, caution on the part of angels, VCs and other investors, rising costs at least in the long term and increasing competition from the BRICs states (Brazil, Russia, India and China).

However, growth in the BRICs states will provide opportunities. Until now we have looked to those countries to outsource manufacturing and services. Those countries are also fast growing markets, powerhouses of research and development and increasingly they will be a source of investment for business in the UK.

There will also be opportunities here. We shall still need to save energy and protect the environment.   There will be plenty of demand for innovation in energy conservation, renewables and, of course, the Internet as it continues to develop and expand.   I reminded the audience that 1930s, the decade of the worst economic downturn in recent history, was also an age of  innovation producing all sorts of important inventions from ballpoint pens and sellotape to jet engines and radar. 

Economic difficulties are likely to make invention promoters that much more tempting. They are to be avoided like the plague. Stephen Nipper has started a discussion on what to do about these people on his blog ("Counseling (sic) Victims of Invention Promotion  Companies" 15 Oct 2008). 

04 February 2007

Sheffield Inventors Club: Eric Redfern "An Inventor's Alternative Route to Market"

In the first few pages of their excellent book "The Business of Invention" , Peter Bissell and Graham Barker set out some bleak statistics. Most bright ideas fail to get off the drawing board. The vast bulk of the patents registered in the UK Patent Office are never worked. Of the very few inventions that are made, only a fraction cover their costs. Out of that tiny residue only a very small number actually make any money for their inventor.

Finding a successful inventor is therefore as rare as finding a four leaf clover or an NHS dentist. There are a few spectacularly successful American ones like Jerome Lemelson but hardly any British ones. One of the few British inventors who can be described as successful is Eric Redfern. Eric is one of the most prolific inventors I have ever come across. He has come up with earth leak devices, a hands free dryer, a date rape analyser, balloon vending machine and much, much more.

Eric thinks big but he is very practical. When he has a bright idea he approaches the big boys like major firms of accountants and solicitors for introductions to clients who are likely to help him. He gets them to work on a contingency basis. He also keeps his friends as he does not look to them to invest in his projects.

I first heard Eric at Manchester Inventors' Club in October and was so impressed that I choked him for the Leeds and Liverpool Clubs where he was equally well received. Now he is coming to Sheffield Inventors' Club at Central Library, Surrey Street on 5 Feb 2006 at 18:00. Do come along to hear him. You have a real treat in store.

29 June 2006

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:

There is also similar information on trade marks:

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.

28 June 2006

"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.

31 May 2006

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.

28 April 2006

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.

27 April 2006

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.

26 April 2006

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.

05 April 2006

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."

04 April 2006

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
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.