Patent Box Roadshow in London

On 4 May 2013 I referred to the patent box roadshow that is trundling round the country (see "Patent Box Roadshows").. The patent box is an important tax concession that which came into force on 1 April 2013 in order to encourage innovation in this country.

On 12 July 2013 the roadshow came to the Liverpool embassy in London and I reported the event in our IP London blog (see "London Patent Box Workshop" 16 July 2013 IP London). There were three speakers, Howard Veares, tax director at BDO, Michael Sandys, head of commercial at Broudie Jackson Canter and me. You can download copies of our slides and handouts from here.

One of the strengths of our chambers is that we are not only strong in IP (see "We can now field a cricket team" 19 July 2013) but also in tax as we share space and facilities with Atlas Tax Chambers. One of the members of that set is Anne Fairpo who is an authority in IP and taxation.  Atlas and the IP Group work closely together.

I have put together the resources of our two groups on the patent box plus some links to some other useful sites in a new blog on the Patent Box. The London event was so successful that we are holding another at the Liverpool embassy on 13 Sep. This time Anne Fairpo will be the star speaker.   Tickets are likely to go like hot cakes so if you want to attend give us a call on 020 7404 5252 or complete our contact form.

Identifying your USP - the Overlap between Design and Invention

Pat Ross "Finding your Unique Selling Points"

Pat Ross is managing director of Genie Creative, a brand and marketing consultancy in Sheffield. 

On Monday 8 July 2013 he introduced Sheffield Inventors Group to the Unique Selling Point ("USP") which he defined as "a pre-defined difference (uniqueness)".that "sets you apart from your competitors and tells your customers what is special about you." He added "it is a key reason why those customers do business with you rather your competitors."

He then suggested a "few established and fairly simple ways" by which a business owner might find his or her USP:

• Using his or her own personality
• Exploring the intersection of ideas
• Narrowing the target audience, and
• Narrowing the topic.

He then presented his work for Bradfield Brewery as a case study.

Exploring the intersection of ideas is of course something that inventors do all the time. The example that Pat gave was the design of an office block in Harare that kept cool without air conditioning. The architect adapted the technique used by termites used to keep their mounds at an ambient temperature,   There are other overlaps between USPs and invention such as "narrowing the target audience" which is equivalent to "identifying the technical need" and "narrowing the topic" which is akin to developing the solution.

After the talk two of the Group's members presented their inventions to Pat and asked his advice on marketime them.  Pat gave other practical advice such as UK Steel Enterprise as a source of funding for innovation in South Yorkshire.  Pat invites inventors to contact him. An initial interview with him is free and his charges for subsequent work are flexible and affordable,  His number is 0114 234 8423 and his email is  pat@geniecreative.org.uk.

European Inventor Award 2013

Every year the European Patent Office grants awards to outstanding inventors in the following categories:

• Industry
• Small and Medium Enterprises
• Research
• Non-European Countries
• Lifetime Achievement
• Popular Prize.

Members of the public are invited to nominate inventors as are the EPO's 4,000 patent examiners (see the FAQ and eligibility rules and conditions). Entries for all the categories except the "Popular Prize" are judged by a distinguished, international jury which includes Peter Marsh of the Financial Times and Erno Rubik, the  inventor of Rubik's cube.  The awards are presented at an annual ceremony which takes place in a different European city every year.

This year's award ceremony took place in Amsterdam on 28 May in the presence of HRH Princess Beatrix of the Netherlands. The winners were:

• Industry: Claus Hämmerle and Klaus Brüstle of Austria for a damper system that facilitates the smooth closing of furniture doors, drawers and wall cabinets;
• Small and Medium Enterprises: Pål Nyrén of Sweden for a far faster, less complicated and less time-consuming method to sequence DNA strands that uses the photo-reactive properties of chemicals and DNA enzymes to identify DNA sequences;
• Research: Patrick Couvreur, Barbara Stella, Véronique Rosilio and Luigi Cattel of France and Italy for coated inside minuscule capsules of anti-cancer drugs which can be transported straight to diseased cells in the human body, where they take action without harming healthy tissue along the way;
• Non-European Countries: Ajay V. Bhatt, Bala Sudarshan Cadambi, Jeff Morriss, Shaun Knoll and Shelagh Callahan of the USA for one of the most ubiquitous computer advances since the computer processor, the universal serial bus (USB) which has greatly simplified a previous maze of competing plug designs, allowing effortless plug-and-play functionality and simultaneous connection of many devices;
• Lifetime Achievement Award: Martin Schadt of Switzerland for LCD technology; and
• Popular Prize: José Luis López Gómez of Spain for a series of inventions relating to an ‘independent guided' wheel design rather than a standard axle which greatly improves safety and comfort.

The 2014 award ceremony will take place in Berlin and details of the awards ceremonies and winners in previous years winners can be found here.

Inventors Clubs

*Jane Lambert

Most inventors' clubs consist of individuals who are not employed in R & D but who have invented something and are not sure what they can do with it. Although such persons come from all sorts of backgrounds and are of both sexes and all ages, it is my experience that most are male, over 50 years of age and without advanced degrees or professional qualifications. Before we go any further, let me say emphatically that there is absolutely nothing wrong with that. Many such individuals have acquired skills and experience that are at least as useful as anything I have learned in my professional career or at university.

Why Join an Inventors' Club
The persons I have just described usually want to make money from their inventions but they lack the skills, experience and connections to do so. They often have excellent ideas but that is never enough. The quotation wrongly attributed to Ralph Waldo Emerson that if a man can build a better mousetrap than his neighbour the world will beat a path to his door is just not true. Sadly they spend their life savings on patents that are never worked or worse on invention promotion schemes that promise much but deliver little (see the warnings from the US Federal Trade Commission on Invention Promotion Firms and our own Office of Fair Trading).

A good inventors' club will help avoid those costly mistakes by providing a forum for such individuals to share their experience, hear talks by experts and make connections with potential investors and professional advisers. Some clubs go further. Ideas North West of Blackburn,  for example, has set up an inventors' training course at Myerscough College which I discussed in "How to become a Successful Inventor" 21 May 2013 IP North West and has set up its own invention promotion company, Ideas North West Limited.  As a result several of Idea North West's members appear to have marketed their inventions successfully (see its Case Studies page).

Where to Find an Inventors' Club
There are inventors' clubs in many but by no means all parts of the UK. These are the ones of which I am aware:

• Birmingham Birmingham Inventors
• Blackburn Ideas North West
• Cambridge CHASE (Cambridge Hi-Tech Association of Small Enterprises)
• Croydon Round Table of Inventors
• Dudley Black Country Inventors
• Glasgow Scottish Inventors and Innovators
• Kingston upon Thames Round Table of Inventors
• Leeds Leeds Inventors Group
• London East London Inventors Clubs
• Malvern Malvern Inventors Club
• Manchester Manchester Inventors Group
• Sheffield Sheffield Inventors Group
• Southampton Wessex Round Table of Inventors
• Yeovil South West Inventors Club.

There may well be others and some of those on the list may be defunct. 

If you don't live near any of the above towns or cities check with your nearest Patent Information Centre to see whether they run an inventors' club or know of one nearby

If you live near an inventors' club get in touch with the organizer and try one of their meetings.  

If you don't live near an inventors club you could join our Inventors' Club on Linkedin or one of the other organizations such as Ideas 21 (not to be confused with Ideas North West which I discussed above or IP21 a firm of patent agents) which look after inventors nationally. 

Or, and this would be the ideal solution, you could set up your own inventors' club and I will help you if you wish.

How to set up your Own Inventors Club
In order to set up an inventors' club you need members, a venue and speakers.   Here is how to set about getting them.

1. Hold your first meeting.  You will need at least 6 weeks to organize the event.
2. Invite a big name speaker but one who will also pay his or her own expenses. There are plenty of so called "motivational speakers" about - some of whom are inventors - but they are likely to charge. Find someone with an interest in being seen at your meeting such as your MP, a member of the Intellectual Property Office's outreach team or even yours truly if you can't find anybody better. Lawrence Smith Higgins of the IPO is a particularly good speaker. Call the IPO on 0300 300 2000 and ask to speak to the marketing department.
3. Ask your local college, public library, firm of patent attorneys or solicitors or some other organization whether they are willing to host the first meeting at their premises free of charge and to advertise it to their contacts. 
4. Once you have a speaker and venue for the first meeting, advertise it on the internet.  Set up a free blogging account with Blogger or Wordpress and subscribe to Facebook, Linkedin, Twitter and Xing. If you have a mailing list you can advertise the meeting on Eventbrite.
5. Let me know the place, date and time of your meetings and I shall publicise them. I will also circulate details of your events to all my contacts in your area.
6. Nab anybody who shows willing for a steering committee to draft a constitution and fix the second and subsequent meetings.

If you would like me to speak, need a suggestion for or an introduction to some other speaker, want any help in drafting or reviewing a constitution or wish to discuss any other matter feel free to get n touch with me on 020 7474 5252 during normal office hours or fill in my contact form..

*Jane Lambert is a barrister practising intellectual property and technology law from 4-5 Gray's Inn  Square in London. She set up and chairs the Leeds, Liverpool and Sheffield Inventors Groups and runs the Lnkedin Inventors' Club and this blog

Patent Box Roadshows

The patent box is a valuable tax concession to encourage invention in the UK. It came into force on 1 April 2013 and we are holding a series of workshops on the new incentive with our good friends at BDO and Jackson & Canter.

The first of those events took place in Liverpool on 29 April 2013 and you can download the presentations that were given at that workshop from "The Patent Box Workshop: Liverpool Inventors Club" 3 May 2013 IP Northwest.

The next event will be at Leeds Central Library on 8 May 2013 at 18:00 where the main speaker will be BDO tax partner Dan Brookes (see "Leeds Inventors Group: Patent Box and R & D Credits" 4 May 2013 IP Yorkshire).

Further events are planned for London at the Liverpool Embassy in the Royal Mint on 12 July 2013 and others are planned for Manchester and other parts of the country. If you want to attend any of those events  please call me on +44 020 7404 5252 or send me an an email through my contact page. You can also follow me on Facebook,Linkedin, twitter or Xing,

The New IPO Mediation Service

The Intellectual Property Office has recently re-launched its mediation service with fees related to the value of the dispute and the duration of the mediation.  An hour's mediation before a specialist mediator in Newport for a claim of £10,000 or less is £55.  The IPO also provides telephone mediation and will travel outside London or Newport.

For further information see my article "The IPO's New Improved Mediation Service - will it make a difference?" in my NIPC Law blog,

Sheffield Inventors Group News

As the first Monday of this month fell on Easter Monday the April meeting of the Sheffield Inventors Group will take place on 8 April 2013 at 18:00 in the Jackson Room of Sheffield Central Library. The speaker will be Richard Hall of pd-m International Ltd.

Richard has spoken to the Group before and is well known as a product design and manufacturing consultant.  Samples of his company's work can be seen on the "Our Work" page of its website. Its clients range from private inventors, SMEs, manufacturers, universities and investors and its design portfolio covers medical, healthcare, consumer, industrial, lighting and nursery.equipment.

The title of Richard's talk is 'Production Development to Production - Avoiding the Pitfalls' which he promises to be a networking opportunity.

The other news from Sheffield is that the Group welcomes Susanne Knight as its new organizer. 

If you would like more information about the event or the group call or email Susanne on 0114 273 4727.

Enterprise and Libraries: a New National Network of Business & IP Support

The Business and IP Centre of the British Library has offered advice and information to entrepreneurs and inventors in London and Home Counties since 2006. In addition to the publications and databases that would be expected of a library, the Centre offers business planning, intellectual property, market research and networking services which it delivers through clinics, seminars, workshops and on-line.   On-line services include the Centre's newsletter and the British Library UK Entrepreneur Network on Linkedin. Some of those services are offered by British Library staff and others by the Centre's partners.   

In my article "Local Enterprise Partnerships begin to take Shape" 21 Oct 2010 I wrote:

"One of the first casualties of the abolition of the RDAs are likely to be local and regional Business Link services. In an interview with Jason Hesse on the Real Business website, Mark Prisk, the Business Minister, announced:

'We’re going to wind down the Regional Development Agencies, and as part of those, we’ll be winding down the regional Business Link contracts.'  

These will be replaced by a state funded on-line service - presumably the existing Business Link website possibly under the Solutions for Business brand - and greater use of existing service providers such as chambers of commerce and local authorities. The proposal for a new business information service to be provided by thee British Library, NESTA, Newcastle City Council and Northumbria University is probably something like the model Mr. Prisk had in mind (see "Mark Prisk announces new business advisory service" on theReal Business website)."

The Business and IP Centre for Newcastle was subsequently launched and I blogged about it in "BIPC Newcastle"  on 21 Jan 2012.

In “Digital Opportunity A Review of Intellectual Property and Growth” Prof. Hargreaves recommended:

"9.     Small firm access to IP advice. The IPO should draw up plans to improve accessibility of the IP system to smaller companies who will benefit from it. This should involve access to lower cost providers of integrated IP legal and commercial advice."

The IPO drew up those plans in From ideas to growth: Helping SMEs get value from their intellectual property which I blogged in "IPO's Plan to support SME" on 31 May 2012.   One of the IPO's suggestions was "extending the model used at the Business and IP Centre in London to six regional patent libraries."

By a press release dated 19 Nov 2013 the British Library announced that it had signed an agreement with the Intellectual Property Office and six major UK city libraries  to establish a national network of services for small businesses and entrepreneurs across the country, modelled on the services offered by the British Library’s Business & IP Centre.  The six participating libraries are Birmingham, Leeds, Liverpool, Manchester, Newcastle and Sheffield City Libraries four of which host inventors groups that I have helped to set up.

On 11 Feb 2013 Penny Mordaunt MP sponsored a reception at Portcullis House to launch this network to be known as Enterprise and Libraries: A new national network of business & IP support.  The event included speeches from staff of the British Library, entrepreneurs who had used the Centre and representatives of local libraries. I was unable to attend the meeting but I am glad to say that I was represented by Jason McCartney, my Member of Parliament, and by Ian Wishart a patent agent who is also a director of Cobra Special Risks Ltd.

Over the last few years I have worked very closely with Chris Brown in Manchester, Ged Doonan and Stef Stephenson in Leeds, Ruth Grodner in Liverpool and Nicola Avella of Sheffield to support entrepreneurs and inventors in those cities.   Now that I am practising primarily from 4-5 Gray's Inn Square (see "Moving to London" NIPC website 5 March 2013) I hope to make a similar contribution to the Business and IP Centre in London.   If you want to want to discuss this article, call me on +44 020 7404 5252 or send me an an email through my contact page. You can also follow me on Facebook, Linkedin, twitter or Xing,

UKBI Conference

UK Business Incubation ("UKBI") claims to be "the UK’s and increasingly international principal and successful authority on business incubation, business incubation development and best practice."    Since 1998 it has

"helped governments and development agencies to build a thriving business incubation infrastructure that will make increasingly significant contributions to local, regional, national and international economic growth, as thousands of incubated clients grow and move out of their business incubation environments and achieve sustainable commercial success in their own right."

Further information about the UKBI, its resources and news of its latest activities and of incubation generally can be found on its website.

Every year it holds an annual conference and this year it took place at the University of Lincoln Faculty of Business and Law between the 20 and 22 Nov 2012.  One of the events at the conference was a workshop on Protecting and Exploiting clients IP.   I was invited to speak at that workshop together with Mr. Simon Portman, managing associate of the Cambridge branch of Marks & Clerk solicitors and Mr. Brian More, Director of IP at CUE Ltd.  The session was chaired by Mr. Doug Scott, CEO of TEDCO;

I kicked off the workshop with an introduction to IP which Simon kindly described in an email as  "one of the best introductory summaries of IP" he had seen.  In another email, Doug said:

"As I mentioned at the conference, when I was asked to chair it I thought I was well informed about the topic in hand but partly because the world has moved on rather more than I had thought and partly because there were some interesting details that came up in the presentations and responses, I found it extremely useful."

I was followed by Simon who spoke interestingly and perceptively about licences and assignments and other IP contracts and by Brian whose presentation on IP valuation was concise but authoritative.   My slides together with those of all the other speakers at the conference can be downloaded from the UKBI's page on livedrive,

After the sessions we had a reception and dinner at the chapter house of Lincoln cathedral which can only be described as glorious.   You can get some idea of the setting from the pics on UKBI's Facebook page.   I was lucky enough to sit between two very interesting delegates: Maha Al-Bulushi of the ITA in Oman and Mr. David Gill of St John's Innovation Centre in Cambridge.

I was gratified to meet two old friends, Amanda Lennon whom I have mentioned more than once in this blog and Olivier Tomat of Lyon who used to run the Elsie Whitely Innovation Centre in Halifax.   I also made a lot of new connections from Dome Enterprise Centre of Chichester and Cornwall Innivation, Sangeetha Shinde, managing editor of the Business Incubator magazine and of course Bhavan Desai and Keiron Broadbent if UKBI,

If you want to learn more about incubation or the services we provide to incubators and start-ups, call me on             +44 161 850 0080 or send me an an email through my contact page. You can also follow me on Facebook, Linkedin, twitter or Xing,

Unitary Patents: Good News from Europe

I must apologize for the long silence since my last post. The reason I have not been blogging recently is that I have been busy with litigation which will have important consequences not just for my client but for everybody who is party to an intellectual property infringement action in the UK.  If the case goes a certain way it will break new ground and will almost certainly have an impact outside as well as within this country. The hearing took place on 20 Dec 2012 and judgment has been reserved. I will tell you all about this case just as soon as I can.

Probably the most important news for inventors while I have been offline was the adoption by the European Parliament on 11 Dec 2012 of legislation for a unitary patent.    Readers who want an overview should read the European Parliament's press release and the welcome to the resolution by the European Patent Office.  For those who want more detail there are some good frequently asked questions.   Those who want to read the legislation for themselves will find the resolutions on the creation of the unitary patent, a unified patent court and ancillary legislation through these links.

The reason why this legislation is important is that it will become considerably cheaper and easier for inventors to obtain a single patent for all the member states of the European Union except Spain and Italy and to enforce that patent through a new patent court sitting in London, Paris and Munich which will have jurisdiction in all those countries.  

At present inventors have the choice of applying to the European Patent Office for a European patent designating one or more of those 25 countries or to each national intellectual property office for a national patent either directly or through the Patent Co-operation Treaty. Either way that is expensive costing an average of €36,000 according to the European Commission compared to a fraction of those costs for patent protection in the USA, China, Japan or South Korea.   If a European or national patent is infringed the patentee has to sue in every member state in which the infringement occurs which in common law countries, such as the UK and Ireland, can be very expensive indeed.

The new legislation should reduce the cost of patent prosecution - the application for a patent and its examination by the European or national patent office - from €36,000 to about €4,725 according to the European Commission, and the cost of enforcement from millions of pounds to tens of thousands of euro.   With the development of new IP insurance and litigation funding packages universities, small and medium enterprises and indeed individual inventors will find it easier to hold their own against multinational companies and other competitors.

The landscape has already changed considerably for such IP owners in England since Professor Kingston wrote "Enforcing Small Firms Patent Rights". The cost of enforcement was reduced dramatically by the new Patent County Court Rules and the introduction of a small claims track for intellectual property disputes.   It has also been possible to get authoritative advisory opinions from patent examiners on whether UK and European patents are valid and whether they have been infringed for £200 since 2005.  The unitary patent will begin to level the playing field internationally.

Over the next few weeks I will be writing a lot about the unitary patent and its likely impact for my clients.   If you wan to learn more about this topic give me a ring on +44 161 850 0080 or send me an an email through my contact page. You can also follow me on Facebook, Linkedin, twitter or Xing.

Patent Litigation Funding: HLP3 enters the Market

Although it no longer costs anything like as much as it once did to bring a patent infringement claim it is still too much for many individual inventors and small businesses. The small claims track which I discussed in "Soon there will be a Remedy if Someone steals your Idea" on 19 Sept 2012 does not cover litigation relating to patents, registered or registered Community designs, semiconductor topographies or plant varieties.

Ideally a patentee should take out intellectual property insurance before a dispute arises and I have written lots of articles on IP insurance in this blog and elsewhere (see "IP Insurance Five Years On" 23 Oct 2010).  Unfortunately, IP insurance premiums are not cheap and many patent attorneys are sceptical as to the value of the cover.   Consequently many inventors and small businesses cannot afford to fund challenges to their patents.

Some patentees who choose not to take out patent insurance do so in the hope that some law firm or counsel will take their case on a "no win no fee" retainer.   While there are lots of lawyers who will undertake personal injuries litigation on that basis there are very few who will do intellectual property cases without an assured fee for the reasons I explained in "No Win No Fee" (NIPC website on the 14 July 2011).  There will be even fewer such cases after the Legal Aid, Sentencing and Punishment of Offenders Act 2012 takes effect. For very much the same reasons it is hard to get after-the-event insurance ("ATE") for intellectual property cases.   Premiums are high and will be irrecoverable under the new Act.

For some types of litigation, third party funding may offer a solution.   I discussed that option in "Litigation Funding for IP Claims" on 18 Sept 2012.  The latest refinement is HLP3 which was brought to my attention by Peter Rouse.   Peter, who practised IP law for many years, is now working as a consultant with US firm HLP Integration who have brought together funding from Caprica and the legal expertise of Olswang to prosecute patent infringement claims where there is a good prospect of success.   A press release dated 30 Oct 2012 explains how the scheme works:

"In return for an admission fee of £3500 HLP Integration carry out validity, infringement and financial analysis and provide a detailed report. If the results of that report are promising then the report will be sent to Patent Counsel who will carry out an assessment of the prospects of success in patent proceedings. If those prospects meet the required percentage chance of success then the case will pass to ATE insurers for a further risk assessment. If ATE insurance is approved then the patent owner can exercise an option agreement, entered into at the outset, requiring Caprica to fund the proposed litigation. From beginning to end this process is expected to take no more than 3-4 months. In summary: a modest payment per patent; a robust and thorough process of analysis, expert review and risk assessment; and an option agreement exercisable at the patent owner’s discretion for qualifying patents."

Since it is likely to cost at least as much as £3,500 for patent counsel and specialist solicitors to evaluate a claim the admission fee seems almost a bargain.   .

Should any patentee wish to discuss any of these methods of funding he or she may call me on 0161 850 0080 or send me a message through my contact form. Readers can also follow me on Facebook, Linkedin, twitter or Xing..

From the Patent Examiner's Mouth

At the first meeting of the Leeds Inventors Group many years ago, our first speaker Lawrence Smith-Higgins, Head of Business Outreach & Education at the Intellectual Property Office, promised to send us a patent examiner to address one of our meetings. I reminded Lawrence of that promise every time I visited the Intellectual Property Office for a hearing and at every outreach event at which we were both present. Eventually he relented and arranged for Kalim Yasseen to speak to us earlier this year.  Kalim did in fact address the Sheffield group to a packed house but, sadly, he fell ill and was unable to repeat his talk in Leeds.

Happily, Kalim's colleague, Sarah Whitehead, took his place and she was excellent. Starting from first principles, Sarah explained what a patent was and why an inventor or businessman or woman might want one. She distinguished patents from other intellectual property rights such as copyrights and design rights.  She outlined the inventors' bargain with the public - a monopoly in return for teaching the public how to make or work the invention - and showed how a patent specification reflects that deal. The description and drawings setting out the teaching and the claims the extent of the monopoly.   Patiently she educated the audience as to why the application had to be examined, how it was done and indeed why it seemed to take so long.  It is a very strong thing to grant a 20-year monopoly of the manufacture, importation, distribution and use of a new invention and it is not to be undertaken lightly. The British process may seem long drawn out but our Intellectual Property Office was significantly faster than many other countries'. Finally, Sarah talked about disputes over patents and how they may be resolved mentioning in particular the IPO's opinions service.

After her talk I invited Sarah to supper at "All Bar One". Over a hamburger and chips and vegetarian pad Thai (I had the burger and she the pad Thai) she told me a little more about her work and that of the examiners.  We discussed the practical effects of the Supreme Court's decision in Human Genome Sciences Inc v Eli Lilly and Company [2012] 1 All ER 1154, [2011] UKSC 51, [2012] RPC 6, [2012] Bus LR D37 (a case that I had blogged in "Patents: Human Genome Sciences Inc. v Eli Little and Co" IP/IT Update 9 Nov 2011).  Turning to other matters, she mentioned that she came from Derbyshire, that she was educated at the Universities of Bath and Manchester and that her research had been in life sciences. 

One of the many matters upon which we agreed was that the cost and risk of enforcement had inhibited British businesses from protecting their research and development adequately. We welcomed the new small claims track to the Patents County Court (see "Patents County Court - the New Small Claims Track Rules" IP/IT Update 20 Sept 2012) which will be the topic of my talk to Sheffield Inventors Group tomorrow 1 Oct 2012 at Sheffield Central Library at 18:00 and Liverpool Inventors Club at QualitySolicitors Jackson & Canter at 88 Church Street, Liverpool, L1 3AY on 29 Oct at 18:00.

Soon there will be a Remedy if Someone steals your Idea

For many years the UK has lagged behind its competitors in the number of European patent applications. With 6,464 applications in 2011 it has actually slipped a place from 7th in 2009 to 8th in 2011 behind the USA (59,688), Japan (47,404), Germany (33,181), China (16,946), South Korea (13,254), France (12,107) and Switzerland (7,786).

I have long argued that there is a correlation between the number of patent applications and the relative cost of intellectual property enforcement (see "New Patents County Court Rules" IP/IT Update 31 Oct 2010 and "Why IP Yorkshire" IP Yorkshire 10 Sept 2008). Until the new Patent County Court Rules were introduced on 1 Oct 2010 England and Wales was arguably the most expensive and difficult country for a small business to enforce its intellectual property rights in the developed world.

Now that situation is about to be reversed.   From 1 Oct 2012 England will actually be one of the least expensive and least risky places in the world to bring small IP infringement claims.   On that day The Civil Procedure (Amendment No.2) Rules 2012 (SI 2012 No 2208) come into force. Rule 10 of those Rules will amend CPR Part 63  to permit small IP claims to be brought in the Patents County Court.  This seemingly insignificant rule change is potentially of enormous importance for our country's economic future as I have stressed in "Small IP Claims" (NIPC website 8 May 2012), "Enforcing Small IP Claims: Sullivan v Bristol Film Studios" IP/IT Update 7 May 2012 and "The New Small IP Claims Jurisdiction" IP/IT Update 5 March 2012.

The new rules will allow claims for infringement of copyright, design right, trade mark and most other intellectual property rights including breach of confidence relating to trade secrets and passing off to be allocated to a new small claims track provided that the value of the claim does not exceed £5,000 and the parties agree.  If the parties do not agree the court will allocate the case to the small claims track or multitrack as it thinks appropriate.  The significance of allocating a case to the small claims track is that a simplified procedure applies and there is a limit to the costs that the successful party can recover from the other side. It is possible - though I would stress not always prudent - for a party to represent him or herself in that tribunal.

It is important to stress that not every intellectual property right can be enforced in the small claims track. In particular, claims for the infringement of a patent, registered design, registered Community design, design right in a semiconductor topography or plant breeder's rights will still have to be allocated to the multitrack. However, there is nothing to stop the court from re-allocating such a case to the small claims track as the Court of Appeal suggested in Sullivan (see my case note "Enforcing Small IP Claims: Sullivan v Bristol Film Studios") or giving directions similar to those that would be made in the small claims track.

I said above that while it is possible for a party to represent himself before the Patents County Court it is not always prudent to do so. That is because rule 10 (c) provides for most of the rules of CPR Part 63 to apply to the small claims track.  Some of these rules are quite technical as is the substantive law.  In my career at the Bar I have seen several cases in which a litigant in person has proceeded to judgment only to have it set aside at great expense because of an avoidable procedural defect.  For those who are prepared to write their own letters to the court and other side and serve their own documents my chambers will provide fixed fee oral and written representation. For those who are not, I have arranged with JWK Solicitors who have lots of experience of small claims litigation as well as expertise in IP to offer fixed fee litigation. Anyone who wants to learn more of those services should call me on 0800 862 0055 or contact me through Facebook, Linkedin, twitter or Xing, or through my contact page.

Finally, I am giving a talk on the new rules and my new fixed fee enforcement services to Sheffield Inventors Club at Sheffield Central Library in Surrey Street on Monday 1 Oct 2012 between 18:00 and 20:00. Anyone wishing to attend should contact Lynne Hinchcliffe on  0114 273 4712. There will be no charge for the talk but space is limited and recent events have been very well attended.

Playback Rewards: fancy getting paid to watch telly!

Quite literally, Playback Holdings Ltd pays viewers in cash or vouchers for watching TV commercials. As the company's website explains:

"Targeted advertising is the holy grail of the TV and advertising industries. In the US, experts forecast that by 2015 the annual revenues from targeted advertising will exceed $11 billion. But in the UK and Europe it has stalled because subscription-based services and internet-based advertising sales houses know so much about their customers that it would be difficult to avoid claims of abuse of privacy and data protection rights if they targeted them with tailored advertisements. PBR’s technology completely avoids all privacy and data protection issues."

The technology to which the home page refers are inventions that identify each viewer's interests but does not disclose his identity to the company or any other person. The inventor is my very good friend Alistair Kelman  who is chief executive officer of Playback Holdings. Other heavyweights behind the project include David Elstein, former SEO of Channel 5 who will be the company's chair, patent agent Vivien Irish, and, as you can see from the above video, Stephen Fry, who has invested in Playback Holdings.

In the video below Alistair and David explain how the company's business model works:

  Playback Holdings is raising funds for further development by crowd funding,    You can find more information about the company's offer by joining Seedrs - the first British seed funder to obtain FSA authorization.

The project has already attracted a lot of interest in the blogosphere. Neil Infield, manager of the Business & IP Centre of the British Library, has called Playback Rewards a success story in the making.   Here are some of Alistair's posts on the Cisco British Innovation Gateway Awards blog.

For further information, call me on on 0800 862 0055 or contact me through my contact form, Facebook, Linkedin, Xing or twitter.

Celebrating British Technology: we should make a habit of it

For me the best part of yesterday's opening ceremony of the Olympic Games was the focus on Sir Tim Berners-Lee, Sir Tim brought us the world wide web which is one of a very small number of inventions which has revolutionized everyday life. And Sir Tim was not the only great British innovator recognized at the ceremony. Isamard Kingdom Brunel played by Kenneth Branagh was featured too. As I tweeted just a few minutes ago, it is not often that we celebrate British science and technology, We should make a habit of it.

Happily there is an event that does just that.   The Make it in Great Britain campaign, which is run by the Department for Business, Innovation & Skills, aims to challenge outdated notions of British manufacturing industry and in particular the myth that Britain doesn’t make anything anymore.  It celebrates the successes of our manufacturing sector and highlights the best in British innovation. 

The centre piece of the event is an exhibition at the Science Museum which runs from 24 July to 9 September and coincides with the Olympic and Paralympic Games.. It showcases every economic activity in the UK from creative industries to pharmaceuticals. One of the features of the exhibition is a competition to find the best British invention from a number of finalists grouped in a number of categories:

• Breakthrough Finalists
• Smarter Finalists
• Stronger Finalists
• Life Changing Finalists
• Sustainable Finalists.

A different group is features at the exhibition and on the website every week and visitors are encouraged to choose the invention they like best.   The winners of each category will be chosen at the end of the contest.  This is just the sort of encouragement that business needs to invest and innovate for our economic recovery.

Cracking Ideas: My Encounter with Wallace & Gromit

Yesterday I attended the "Cracking Ideas" awards ceremony at the Spaceport in the Seacombe ferry terminal near Wallasey. The event was attended by Baroness Wilcox, Minister with responsibility for Intellectual Property, TV presenter Gareth Jones, 14 innovative youngsters and their families and, of course, these two characters. Wallace & Gromit.

The "Cracking Ideas Competition" is a collaboration between Aardman Animations Ltd. and the Intellectual Property Office. It is part of a wider project consisting of lesson plans, activity packs, challenges and the Cracking Ideas website, to encourage innovation and creativity amongst children and young people between the ages of 4 and 16.

According to the IPO's press release, the competition attracted 4,000 entries.  The national winners were

• Jessica Williamson, aged 8 of Stewarton, who invented Wallace & Gromit style ‘Wrong Trousers’ lace-up football boots, with a spring sole contraption to assist with goal-scoring;
• BritneyAnn Guest, aged 11 of Kidderminster, who designed ‘Mini Flatleys’ dancing shoes with a free lucky charm bracelet for greater performance and comfort; and 
• Elliot Comnene, aged 13 of Bonnyrigg, who created the ‘Footie ChairSpring-O-Matic’ to help wheelchair users develop their football skills.

This year's contest has a space theme.  A good place to start would be the Spaceport's exhibition on astronomy and space travel.  Apparently they host parties so I shall recommend  the Spaceport to Henry Carr QC as a venue for the Intellectual Property Bar Association bash.  It would make a change from Middle Temple.   I can't be the only one who would like to send Sir Robin Jacob into orbit.

Catapulted - Forwards or Back

Last Friday I attended a workshop on Shaping the CDE Catapult to support digital SMEs at the Electric Works in Sheffield.   "Catapults" are the new name for the technology and innovation centres proposed by Hermann Hauser in his report "The Current and Future Role of Technology and Innovation Centres in the UK".   I discussed them in detail in my article "Catapult: Is that really the Sort of Initiative that we need to stimulate Growth?" which I posted to my chambers website on 3 June 2012.  "CDE" stands for "Connected Digital Economy" and it is a collaboration between the creative industries, electronics, sensors and photonics and ICT knowledge transfer networks of the Technology Strategy Board.

Over 80 delegates had signed up for this event though not everybody turned up. Those who did make the effort included Trevor Beard of e2E Services in Hatfield, local lad Adrian Tunicliffe of Can Sudios and Danny Licari, self-styled digital media fixer.

We had a comprehensive introduction to the Catapult concept from Nick Appleyard, Head of Digital at the TSB. After a brief Q & A session, we were divided into groups and asked to address a short questionnaire on the priority areas for small and medium enterprises. My group included Trevor, Adrian, Danny and a bright young chap called Tom who offered somewhat rashly to act as our rapporteur. I had read Hargreaves and the IPO's proposals to help SME to get value from their IP the night before and was thus conscious of Hargreaves's finding that many SME were bewildered by the choice of range of IP advice already on offer.   I argued that the Catapult should work with existing resources such as the IPO and PatLib libraries rather than complete with them.   I also stressed that innovation should be market driven rather than bureaucrat or boffin led. A final task after lunch was to imagine a "user journey" to illustrate how an SME might use a Catapult.   We spotted difficulties in IP sharing and our business's jounrey ended in failure.

As I said in my article this is not the first time a government has tried to induce innovation by bringing together business, the universities and the public sector.   That was the thinking that led to the NCC in 1966 which had to be remodelled in order to survive. One hopes that the Catapult initiative will do better though it is not clear why it should.

Finally, Carmel Harrison, head of public relations for the Institute of Directors in Yorkshire, drew my attention to an event at New Broadcasting House between 98L00 and 10:00 on 21 June 2012 called  "Boost your business with thebigword boss". In a comment to my earlier article, Carmel wrote:

"Based on the Knowledge Transfer Partnership it actually allows SMEs to tell Unis what they need and help them shape and deliver the key skills. WE have been here before and will be again but we need to get SMEs to get closer to the academic and learning community."

The event is free and it takes place at the start of the day so it won't cost you much to attend,   I encourage as many of my readers as possible to find out what Leeds Met can do for your business.  If you do go, let me know whether you found it useful by calling ne on 0800 862 0055 or contacting me through my contact form,, Facebook, Linkedin, Xing or twitter.

IPO's Plan to support SME

"From ideas to growth: Helping SMEs get value from their intellectual property" is the title of the Intellectual Property Office ("IPO")'s plan for supporting small and medium enterprises ("SME"). The services that it proposes to offer are as follows:

1. providing training and awareness raising seminars for businesses;
2. providing online tools to help businesses assess their IP assets, 
3. funding strategic IP audits for businesses where IP has been identified as a critical issue for their growth;
4. funding Masterclass training for business advisers within other public sector business support schemes, such as GrowthAccelerator, the Technology Strategy Board’s Catapult Centres and the Patent Library network;
5. extending the model used at the Business and IP Centre in London to six regional patent libraries;
6. working with the local enterprise partnerships to offer tailored local advice to businesses in different regions;
7. stimulating the creation of business and IP advice networks across the UK;
8. creating a strong network of business advisers that SMEs are able to access for sound commercially relevant IP advice;
9. continuing the Cracking Ideas competition to introduce school children to intellectual property, and
10. working with universities to reach students who need a good understanding of intellectual property to benefit their future careers and the wider economy.

The public is invited to comment on those proposals by 3 July 2012.  The IPO will use any feedback to develop new and improve existing services.   Responses should be addressed to sme@ipo.gov.uk.

Kate Reid: Confidentiality and Licensing

Counsel are probably in the best position to judge whether a solicitor, patent or trade mark agent is any good because we are instructed by members of those professions. Since the 4 July 2004 barristers have been permitted to deal directly with the public. Public access has changed the way we are instructed but it has not changed the work that we do. If a case requires a solicitor we have a professional duty to advise our client to that effect.   As often as not, the first question from the client is "Can you recommend one?"  I usually make a number of suggestions depending on the nature of the work but it it involves litigation or licensing I nearly always include Kate Reid, principal of Pemberton Reid.

According to her web page, Kate qualified as a solicitor in 1995 and worked at both Hammonds and Lupton Fawcett in Leeds before setting up Pemberton Reid.  In addition to her LLB she holds a post-graduate diploma in Intellectual Property Law and Practice.   She has been instructed in some important cases:

"Antec International v AVS (patent infringement), Antec International v SWC (passing off), Scholes Windows v Magnet (design right infringement), Tyco European Metal Framing v Clewer & others (design right infringement ), 1-800 Flowers (objection to a trade mark application), Bentone v EOGB (trade mark invalidity proceedings)."

Her work now includes:

• advising on the existence and extent of intellectual property
• advising on infringements of intellectual property rights
• intellectual property agreements such as licences and assignments and confidentiality agreements
• intellectual property litigation in the High Court and Court of Appeal
• proceedings in the patent office regarding ownership and entitlement to patents
• prooeedings in the trade marks registry regarding opposition and invalidity of trade marks
• WIPO domain name dispute resolution actions 
• due diligence for purchasers and sellers of intellectual property
• distribution, supply and commercial agency agreements
• terms and conditions of trading
• advising on the Commercial Agents Regulations 1993
• litigation in relation to the Commercial Agents Regulations 1993.

Kate was guest speaker to the World Intellectual Property Day meeting of Leeds Inventors Group on 18 April 2012 (see "Kate Reid at the Leeds Inventors Group 18.4.12"  26 April 2012).  The title of her talk was "Confidentiality and Licensing"). On confidentiality she discussed

• why use a confidentiality agreement
• what is confidential information
• when is information not confidential
• how long will information be confidential, and
• what can it be used for.

On licensing she talked about the nature of a licence and the rights that can be granted, royalties and the usual terms with a few special words about trade marks.   

Immediately after her talk we had a presentation from FabLab Airedale which is now open for business (see

"FabLab Airedale: Introductory Offer and Visit" 2 May 2012 IP Yorkshire). The next meeting of the Leeds Inventors Group will be a visit to FabLab Airedale in Keighley on 16 May 2012 between 18:00 and 20:00 (see "16th May Leeds Inventors Group -visit to Fablab Airedale" 2 May 2012 Leeds Inventors Group blog).   Inventors from Sheffield are also invited and I am sure that those from elsewhere would be very welcome.   If you want to come please call Ged or Stef on  0113 247 8266.

Finally, a plug for Sheffield Inventors.   If you want investment to develop your invention come to Sheffield Central Library, Surrey Street, S1 1XZ at 18:00 sharp on 14 May 2012 to hear Mr. Russell Copley of Angels Den speak on  "Raising Business Growth Investment - Alternatives to Bank Finance". Angels Den is one of the largest angels networks in the UK.

Further Reading

Jane Lambert "All you need to know about confidentiality" 14 June 2006

Jane Lambert "Enforce a Confidentiality Agreement for as Little as £475" 21 Aug 2010

Jane Lambert Sample Confidentiality Agreement 21 Sep 2010

Lean Startup

A very good friend keeps telling me that great ideas are 10 a penny. An evening at any inventors' club anywhere in the kingdom seems to prove the point.  Britain is buzzing with inventive talent.   What is much harder to find is great execution.  Many (indeed most) of those great ideas never see the light of day.   Indeed, most of the patents on the register have never been worked.

A possible solution to the problem of getting great ideas to market may be the lean startup methodology. It is a principle developed by entrepreneur and author Eric Ries in his book "The Lean Startup". It is summarized in the following proposition:

"The Lean Startup provides a scientific approach to creating and managing startups and get a desired product to customers' hands faster. The Lean Startup method teaches you how to drive a startup-how to steer, when to turn, and when to persevere-and grow a business with maximum acceleration. It is a principled approach to new product development."

The basic concept is the "minimal viable product" which is represented by the circle set out above. An idea for a new product or service is tested by building one that has just the features that enable it to be deployed and no more. Market reaction is measured and considered and the product is either refined or abandoned.

Publisher and visionary Tim O'Reilly suggested that it is an approach that can be applied to many things other than business:

"The Lean Startup isn't just about how to create a more successful entrepreneurial business...it's about what we can learn from those businesses to improve virtually everything we do. I imagine Lean Startup principles applied to government programs, to healthcare, and to solving the world's great problems. It's ultimately an answer to the question 'How can we learn more quickly what works, and discard what doesn't?"

In other words how to use time effectively.

Ries's book has given rise to a worldwide movement of lean startup enthusiasts. A group has existed in London for some time.  There is now a group in Manchester which will meet on Bank Holiday Monday at the Business School at 18:00. I will be there and am looking forward to meeting other members of the group.