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

Corporation of Lloyds

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

Jane Lambert

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

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

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

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

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

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

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

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

Intellectual Property Resources for Inventors and Small Businesses in the USA

Author: Addicted)4
Licence: Creative Commons Attribution-Share Alike 3.0 unported
Source Wikipedia

Jane Lambert

In a post to the US Patent and Trademark Office ("USPTO") blog entitled Intellectual property resources in your area, which was published on 24 June 2019, Mr Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO wrote:

"Providing entrepreneurs, small businesses, and independent inventors with access to intellectual property (IP) resources is one of the major priorities for the USPTO. These entities are vital to our country’s economy, but they often don’t have the same resources that larger entities can leverage to protect their innovations. Because of that, the USPTO oversees several programs to assist with free or reduced-cost help in applying for patents, including the Patent Pro Bono Program, the Pro Se Assistance Program, the Certified Law School Clinic Program, and Patent and Trademark Resource Centers. That’s all in addition to the reduced filing fees we charge to small and micro entities."

Entrepreneurs, small businesses and independent inventors are as important to the British (and probably every other advanced country's) economy as they are to the American economy.  At the very least, we can learn from Mr Iancu's blog post.  British inventors and entrepreneurs seeking US patents and trade marks may even be able to take advantage of some of the facilities and resources that Mr Iancu mentions.

USPTO
The USPTO is the intellectual property office for the USA.  Because patents can be granted for new plant varieties under 35 USC § 161 and new, original, and ornamental designs for articles of manufacture under 35 USC § 171 which are equivalent to plant breeders; rights and registered designs in the UK as well as for inventions it performs functions that are carried out by the Plant Varieties Rights Office as well as the Intellectual Property Office in this country. Unlike the IPO, the USPTO has no responsibility for copyright.  There is a separate Copyright Office within the Library of Congress for copyright and related rights in the USA.

Patent Pro Bono Program
Inventors and small businesses that meet certain financial thresholds and other criteria may be eligible for free legal assistance in preparing and filing patent applications under the Patent Pro Bono Program.   This is a nationwide network of independently operated regional programmes that match financially under-resourced inventors and small businesses with volunteer patent attorneys and patent agents.

Pro Se Assistance Programme
"Pro se" is Latin for "on his (or her) own behalf" and refers to what we would call "unrepresented parties", that is to say, inventors or other applicants who file patent applications without the assistance of a US qualified patent attorney or patent agent.   The Pro Se Assistance Program offers a number of services to the public prior to filing, including:

• Dedicated personnel to assist with pre-filing questions including:
• An explanation of different types of application filings
• Assistance with forms completions and filings
• Reviewing application (e.g. Specification, Drawings, and Claims) for compliance with current regulations
• In-person assistance for the general public at USPTO Headquarters at Alexandria in Virginia regarding pre-filing
• Targeted support to connect applicants with relevant resources and information
• Online resources found on pro se assistance programme page. 

The page also contains some very useful videos. It is the resource that inventors and advisors outside the USA are likely to find most useful.

Law School Clinic Certification Program

Participating universities in this programme offer advice and assistance on US patent and trade mark law from selected law students under the supervision of their teachers or other IP professionals. I am delighted to see that the University of California at Los Angeles (which is my alma mater and also that of Mr Iancu) participates in the programme.  A table of universities indicating the services they offer, the geographical area that they cover and the contact details of the organizer appears on the programme page.

Patent and Trademark Resource Centers

These seem to be like our Business and IP Centres. Many are located in public libraries and provide classes and workshops as well as patent specifications, law reports, textbooks and other specialist publications to subscribers.  Some run or host inventors' clubs.  Los Angeles Public Library, for instance, offers:

"computerized searching of patents, trademarks, and copyrights. Library users perform their own searches. Computers are available on a first-come, first served basis. Ask library staff for instructions on use. Use of intellectual property databases is free, but printing is $.25 per page. We also have collections in print and microfilm. During regular library hours, we provide some assistance by telephone at 213-228-7220."

There is a lot of general information on patents, trade secrets, trade marks and other IP rights on the library's web page.  The USPTO lists patent and trade mark resource centres on its PTRC locations by state web page.

Anybody wishing to discuss this article or the resources available to inventors and SME in this or any other country should call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact form.  

How to make Money from your Invention - Starting your own Business

Jane Lambert

On 13 Sept 2017, I introduced readers to the Inventors Handbook on the European Patent Office's website which suggests four ways of exploiting an invention in its Exploitation Routes page:

• "A licensing agreement with a company
• Business start-up: get your idea to market yourself
• A joint venture 
• Outright sale of your idea."

I discussed the first way in How to Make Money from your Invention: Licensing on 14 Sept 2017. This article discusses the second option, namely a business start-up.

Before starting on this route inventors should satisfy themselves that they have the right personal qualities. Wherever they live in the UK, a good place to start is Business Wales's Starting up and Business Planning page.  In particular, they should read Is self-employment for you? and complete the Assess Your Personal Qualities questionnaire. There may be options even for those who score badly on that assessment such as employment or a consultancy with a business to be set up by others who are of the right temperament and possess the right skills and experience.  Considerably caution should be exercised by both sides in those circumstances.  Any agreement should be properly documented with both sides taking legal and accounting advice.

The next question for inventors is whether they have the right skills.   Some of these can be taught.  The Business and IP Centre at the British Library and its national network of city centre libraries host free or inexpensive courses and workshops on all sorts of topics from accounting to writing business plans. Other good places to learn include Tech Nation's Digital Academy and the Google Campus.  Another option is to build a team.  Again, that requires caution. professional advice for all concerned and full documentation.  Ideally, there should be a professionally drafted shareholders' or other agreement between the promoters with robust dispute resolution procedures in case things go wrong.

Such an agreement should incorporate or at least refer to a business plan and it goes without saying that the business plan should take account of intellectual property (see Jane Lambert Why Every Business Plan Should Take Account of Intellectual Property 3 April 2016 NIPC News). The business plan should be more than something to impress the bank manager.  It should be the company's road map.  The business plan should coordinate every aspect of the company's activities and policy including research and development, marketing and of course intellectual property (see An IP Strategy for Private Inventors  13 Jan 2019).

The business plan will be relied upon by the company's investors and lenders.  Long term investment to enable the company to buy or hire premises, equipment, vehicles and the like will be exchanged for shares in the company.  That is called "equity investment" and it is usually provided by inventors' friends and family, business angels and private equity or venture capital investors.  Working capital to cover components or raw materials, professional service and other short term costs may be provided by the company's bankers or, increasingly frequently, peer-to-peer lenders.  This is often referred to as "debt".  Lenders may require security over the company's assets but they are unlikely to wish to interfere in its management. Equity investors 0ften want representation on the board. Again, both sides should take professional advice and document any agreement that they may reach in a shareholders' agreement or some other instrument.

Inventors should be aware that very few fortunes are made from a single invention.  It may give their business an advantage for a time but that advantage will usually be eroded as competitors' launching their own new products or services. Research and development and innovation should continue.  Inventors should always be looking for the next gap in the market or other business opportunity.

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

Resources for Inventors and other Startups in Northwest Wales

Author Morwen
Licence Creative Commons Attribution-Share Alike 3.0 unported
Source Wikipedia 

Jane Lambert

The area coloured bright green on the map may not be the everybody's first choice for setting up a new business but it has a lot going for it:

1. It is a very pleasant place in which to live.  I have travelled the world but never have I found a more attractive combination of coastal, mountain and pastoral scenery than in the Lleyn Peninsula. 
2. It is close to four major conurbations, namely Greater Manchester, Merseyside, South and West  Yorkshire and Dubiln. 
3. It is part of the Northern Powerhouse and on the freight routes between Dublin and London and Dublin and the ports on the Humber.
4. It has a fine research university at Bangor which has developed the Menai Science Park in Anglesey (see M-SParc - Anglesey's Science Park 29 Aug 2018  NIPC News) and the Pontio Centre with its FabLab (see The Pontio Centre: A Resource for Inventors, Designers and Makers in North Wales 14 Dec 2018).

Unlike England, there are no local enterprise partnerships in Wales.  Instead, Business Wales offers the same sort of advice and support that used to be provided in England by Business Link under the strategic oversight of the Welsh government.  There are therefore no Business and IP Libraries though Llandudno junction was once part of the PatLib network (see A New Patlib has opened at Llandudno Junction North Wales 15 April 2011 Patlib UK).  The nearest English Business and IP Centre is at Liverpool Central Library. 

As there are no Business and IP Centres in Wales Liverpool Central Library hosts the nearest CIPA patent clinic. Advice on contracts, copyrights and trade marks is also available through specialist clinics at the library.  The only IP clinic in Wales takes place at the Intellectual Property Office in Newport.  A search of the CIPA and CITMA databases suggests that all the patent and trade mark attorneys in Wales practise in the south and mainly in and around Cardiff.

Business funding in Wales is offered by the National Development Bank of Wales which trades under the Banc trade mark.  The Bank has four offices in Wales the nearest being at St Asaph and Wrexham.  According to the "About Us" page of its website, it offers both loan and equity finance.  A list of the funds it manages also appears on its website,   There is also a business angel network known as Angels Invest Wales 

Anyone wishing to discuss this article or any matter arising from it should call me on 020 7404 5252 during office hours or send me a message through my contact page.

An IP Strategy for Private Inventors

Strategy Game

Author Julio Reis

Licence Creative Commons Attribution-Share Alike 2.6 Generic

Source: Wikipedia

Jane Lambert

An intellectual asset ("IA") is something that gives a business an advantage over its competitors. No matter how small it may be or how simple its business model, almost every successful business will have such assets.  An  IA may be the business's reputation, its customer list, a way of making or packaging things, a website or even its standard terms and conditions.

A business that possesses such an asset will want to hold on to it and, if possible, make money from it.  Its best chance of doing so is to devise a plan to

• identify assets likely to generate revenue or some other benefit for the company, 
• determine the best legal protection for the IA having regard to its value and available resources, 
• provide a means of enforcing such protection, and 
• manufacture, license or otherwise make money from the asset.

Such a plan is often called "an intellectual property" or "IP strategy".

Inventing is a business activity.  If an inventor is employed in a research and development capacity, his or her employer is likely to have an IP strategy.  If the inventor is not so employed, he or she would be well advised to develop such a strategy for him or herself.

The starting point for a private inventor must be his or her invention. Is anyone likely to buy it? If so, who will be its buyers and how many will they buy?  Developing, marketing and patenting an invention, not to say enforcing a patent, is likely to be costly.  Unless those costs are likely to be recouped, there is no sense in incurring them.  For many private inventors, this is a very difficult question. The technical elegance of their brainchild may blind them to commercial realities.  This is where membership of an inventors' club can help.  The members of such clubs are not a bad cross-section of the general public. If fellow inventors are unmoved by the invention or see snags their views should be considered seriously.

The next issue to address is putting the invention on the market.  That usually boils down to a choice between making and marketing the invention or licensing others to make and market it.  Some inventors already have their own manufacturing or retailing businesses but many do not.  If they want to make or market the invention for themselves they have to set themselves up in business. They will need to draw up business plans, find collaborators, raise funds, acquire premises, plant and staff and market their inventions to the public. They may subcontract production to a manufacturer in this country or abroad. If they do that, they must ensure that their invention is patented or otherwise protected in the country where the manufacturing is to take place and they will need a very tight written agreement with the sub-contractor.

Licensing is often regarded as an easy option but it is not.  A licensee will incur costs in tooling and marketing. A business will incur those costs only if persuaded that to do so would be worthwhile. Determining whether a licence is worth taking is a type of business planning that few potential licensees have the time or inclination to carry out.  It is therefore up to the inventor to persuade them that it is worthwhile.  Daunted by such difficulties many inventors resort to invention promotion companies or making unsolicited offers to manufacturers or retailers.  Such approaches rarely work and often lead to expenses for the inventor.

Patenting is expensive but may be necessary.   Ideally, the invention must be protected in the countries where it is to be sold and the countries where it can be made. However, such protection may cost many tens of thousands of pounds in filing, translation and renewal fees.  Another problem with a patent is that the inventor discloses his or her invention to the world in return for a monopoly in a single country.  If a patentee has a patent for his invention in the United Kingdom but not the United States there is nothing to stop an American from making and selling the invention in the USA or anywhere else where the invention is unprotected.  There may be other, cheaper forms of legal protection for the invention that are available to the inventor.  Simply keeping shtum about the invention is one option if the invention is a product that is hard to reverse engineer.  Relying on some other IP right such as unregistered design right in the shape or configuration of the product or copyright in any software that may control the device may be others.

An inventor must be able to resist applications for the revocation of his patent or a declaration of non-infringement as well as pursue infringers.  Even with costs caps and cost management civil litigation can be cripplingly expensive. The only way that most businesses can sustain such expense is by taking out adequate IP insurance and the premiums for such cover are not cheap.

An IP strategy can be drawn up at any time and it will be reviewed and updated continuously but the ideal time to devise one is when drawing up a business plan.  That is because the costs of prosecution, procurement, professional services, premiums and so on can be funded and balanced against other expenses.

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

The Pontio Centre: A Resource for Inventors, Designers and Makers in North Wales

Bangor

Author UA
Licence Copyright waived by the author
Source Wikipedia

Jane Lambert

On 1 Dec 2018, I attended a performance of Dylan Thomas – A Child’s Christmas, Poems and Tiger Eggs by Ballet Cymru in the  Bryn Terfel Theatre at the Pontio Arts and Innovation Centre of Bangor University. If you are interested, you can read my review of the performance in Ballet Cymru's Dylan Thomas Programme: The Company's Best Work Ever which I posted on 13 Dec 2018 to my dance blog Terpsichore.

The Bryn Terfel Theatre is just one of a number of facilities at the Pontio. There is also a cinema, restaurant, students; union, bars and cafés and, most importantly, the Hwb which is the Pontio innovation area.  I was unable to visit it on 1 Dec 2018 but here is the description on the "About" page of the Pontio's website:

"Pontio Innovation is about equipping individuals and businesses with the tools they need to succeed in the modern economy. With a focus on transdisciplinary working and rapid prototyping, the Co-Lab, Media Lab, Hackspace and Fablab areas are equipped with cutting-edge technologies. It will boost the University’s cross-disciplinary teaching programmes and encourage collaborative work between students, staff and local businesses. Check out the Innovation Events page for details about what's going on here and read more about the Pontio Innovation philosophy."

For artists, designers, inventors and other makers it is important to translate an idea in the brain or on a sheet of paper into three-dimensional objects that they can show to collaborators, investors and customers. That is where the three-dimensional printers, laser cutters and other equipment at the centre's FabLab can help.

A FabLab is a fabrication laboratory and I have written quite a lot about them in this and other blogs. Readers can find more information and links to some of those articles in Liverpool Inventors Club Re-launch - Fabulous FabLab 28 Jan 2012.  The Pontio offers training in the use of that equipment and access to the machines which can be booked through the centre's website. Details of those courses can be found on the "Innovation Events" page.

There is also some very good information about innovation generally on the "Pontio Innovation" page.  The only topic that appears to be missing from that page is a mention of intellectual property. For the benefit of users of the Pontio innovation space as well as artists, designers, inventors and makers generally I shall try to fill that gap here.

All the things that can be made in the Pontio FabLab and other parts of the Hwb are intellectual assets.  Expenditure of time and money on making those assets can be protected by a bundle of laws known as intellectual property.  Examples of those laws are patents for new inventions, trade marks and the law of passing off to protect brands, registered designs and unregistered design right to protect aesthetic and technical designs and copyright and related rights to protect creative output.

Users of the Hwb's facilities should be aware that the laws that protect their intellectual assets also protect other peoples'.  They must be careful not to copy beyond what is expressly or impliedly licensed, to check for registered rights such as patents, trade marks and registered designs and, wherever possible, to take out specialist IP insurance to enforce their own rights and to resist infringement claims by others.

Anyone wishing to discuss this article or any topic raised in it is welcome to call me on 020 7404 5252 during office hours or send me a message through my contact form.

Neurofenix is the first Inventor Prize winner

Standard YouTube Licence

Jane Lambert

In "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy, 24 Jan 2017 I noted that part of the government's industrial strategy is

"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."

The competition was launched in August 2017 and received over 180 entries.  A shortlist of 10 finalists was announced in NESTA Inventor Shortlist on 31 Jan 2018.  Each of those finalists received £5,000 and mentoring from Barclay's Eagle Labs to perfect their inventions.

The shortlisted inventions have now been evaluated and Neurofenix Limited' is the winner.   Its invention  is the Neuroball  which encouragea stroke patients to perform hand and arm exercises and thereby recover their manual dexterity.

Anyone wishing to discuss this article or inventions generally should call me on 020 7404 5252 or message me through my contact form.

Trade Secrecy Law changes Tomorrow - check your NDA, Standard Terms and other Agreements

Jane Lambert

Tomorrow is a big day for inventors. It is significant because it is the day on which Directive 2016/943 ("the Trade Secrets Directive") is due to be implemented. Every country in the EU, including the UK, has to bring its laws on trade secrets into line with the Directive by 9 June 2018.  It concerns inventors because every patented invention is supposed to start out as a trade secret and for many other inventions that's the way they remain.

Why was the Directive adopted?
At paragraph (9) of a set of paragraphs known as "the recitals", the European Council and Parliament explained that they adopted the Directive because there are big differences in the way that different countries protect trade secrets giving rise to uncertainty, causing unnecessary expense and impeding new product development in Europe.

What does the Directive do?
The most important provision is art 6 (1) which requires EU member states to "provide for the measures, procedures and remedies necessary to ensure the availability of civil redress against the unlawful acquisition, use and disclosure of trade secrets."

What is a "Trade Secret"?
For the purpose of the Trade Secrets Directive a ‘trade secret’ means

"information which meets all of the following requirements:
(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
(b) it has commercial value because it is secret;
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."

Basically that has always been the position in the UK but that was not the case in every country.

What is meant by Civil Redress?
Basically injunctions (orders by a judge) not to acquire, use or disclose trade secrets in future or the payment of compensation or other monetary relief for unlawful acquisition, use or disclosure of trade secrets in the past.  In some circumstances, injunctions and other relief such as orders for the preservation of evidence or assets can be granted before the issue of proceedings.

Do we have to comply with the Directive as we have voted to leave the EU? 
Yes as the UK remains a member of the EU until 29 March 2019 at the very earliest and we should have to abide by EU law until 31 Dec 2020 under the draft withdrawal agreement or even longer under the proposed backstop agreement. More importantly this Directive works in favour of British business because entrepreneurs and inventors know that for the first time the trade secrecy laws of the other countries of the EU are more or less in line with those of the UK.

What has HMG done to comply with the Directive?
HM government believes that our law of confidence and contract law plus our Civil Procedure Rules already comply with most of the provisions of the Trade Secrets Directive but it has identified a few issues where they do not.  One concerns definitions and the other the time limits within which an action for unlawful trade secret acquisition, use or disclosure must be launched. Also there is some doubt as to whether the Scottish courts have the powers to make the orders required by the Directives. To address those issues, Mr Sam Gyimah MP, Minister of State at the Department for Business, Energy and Industrial Strategy, has signed The Trade Secrets (Enforcement, etc.) Regulations SI 2018 No 597 which will come into force tomorrow.

So what do Inventors need to know?
Even though reg 3 (1) of the regulations makes clear that the existing law of confidence still applies in relation to trade secrets the Directive may give trade secret holders (that is to say, persons lawfully controlling trade secrets) greater rights and powers. Also, we are used to talking about "confiders", "confidantes" and "breaches of contract" while the Trade Secrets Directive introduces new terms time like "trade secret holders", "infringers" and "infringing goods".  It would probably be a good idea for trade secret holders to ask their lawyers to review their terms and conditions, standard contracts and, in particular, non-disclosure and confidentiality agreements to make sure that they are still effective.

Where to get more information?
I have written more about this topic in Transposing the Trade Secrets Directive into English Law: The Trade Secrets (Enforcement etc) Regulations 6 June 2018 NIPC Law. That article links to some of my other articles on that topic. I am also giving a talk on the topic at Barclays Eagle Labs in The Landing on 26 June 2018.  If you want to discuss this article or trade secrets generally, contact me on 020 7404 5252 during office hours or send me a message through my contact form.

Trevor Baylis

Trevor Baylis CBE

Author: Euchiasmus
Licence: Copyright released by the copyright owner
Source Wikipedia

Jane Lambert

I am very sorry to learn of the death of the inventor, Trevor Baylis CBE. I met him on two occasions.  The first was the Brass from Gumption  event at the Huddersfield Media Centre and the University of Huddersfield  on 18 Feb 2005 where Mr Baylis ran a brainstorming session (see Bright Ideas Get a Boost 26 Jan 2005 Huddersfield Examiner). The second was at an LES meeting in Leeds hosted by Liz Ward at her previous law firm.

Mr Baylis founded the business Trevor Baylis Bands which has published his biography on its website. It will be seen that he was a remarkable man and although I did not see eye-to-eye with on everything - particularly not criminal liability for patent infringement which I debated with him on at least one occasion - I had a lot of time for him.

I offer his family, friends and connections my sincere condolences.

Free Digital Skills Training and Coaching

Jane Lambert

An issue that I have found with many inventors is that while they may be very good at finding technical solutions to life's problems they are not always very good at making money from their inventions. One of the reasons for that is that they have never had any training in business or digital skills.

One place where they can acquire such skills is a Google Digital Garage of which there are now three in the United Kingdom:

• Birmingham
• Manchester, and
• Sheffield.

Training is also available online.  Classes range from "First Steps Online" for absolute beginners to coding and there is also one-to-one coaching.   

Yesterday I visited the Manchester Digital Garage where i received some coaching in domain name direction and attended an hour's class in web design where we all made a simple website using Google sites.   You can read about what happened in Visit to Manchester's Google Digital Garage 6 March 2018 IP North West.

There are Google Digital Garages or similar initiatives in many other countries including Africa, Australia, Belgium, Brazil, France. Germany, India, Ireland, Italy and Spain.

Anyone wishing to discuss this article should call me on +44 (0)20 7404 5252 or send me a message through my contact form.

NESTA Inventor Prize Shortlist

Jane Lambert

In "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy 24 Jan 2017 I blogged about the government's commitment is to:

"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."

I reported on progress in The Inventors Prize 2017  29 June 2017.

In Congratulations to the Inventor Prize finalists 26 Jan 2018, NESTA reports that it had received 180 applications from across the UK which were judged by a panel of 8 judges (one of whom was Claire Mitchell of Chillipeeps who had addressed both the Leeds and Sheffield inventors clubs) in accordance with the following criteria: innovation, insight and impact, quality and safety and market potential and feasibility.

A shortlist of 10 finalists have now been selected and Emma Renowden has published their names and particulars of their inventions in Congratulations to the Inventor Prize finalists! 26 Jan 2018 on the Inventor Prize website.

According to Ms Renowden, each of those finalists will receive £5,000 and mentoring from Barclay's Eagle Labs to perfect their inventions. This seems to come close to an accelerator for inventors which I discussed in No Invention should be left behind here - the Case for Inventor Academies 27 Jan 2018. The winner, who will be chosen in September, will receive £50,000 and the runners up prizes of £5,000 and £15,000 towards the development of their inventions.

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

No Invention Left Behind - Making Money from an Invention

Author SimonTrew
Licence CC BY-SA 3.0 
Source Wikimedia Commons

Jane Lambert

If you are an independent inventor - that is to say, an inventor not employed in a capacity in which you are likely to create an invention - there are two ways by which you can profit from your  invention. One is by manufacturing and marketing the invention yourself as Percy Shaw did with cats' eyes (see Well at least a Yorkshireman invented Cats' Eyes 20 July 2014 IP Yorkshire). The other  is by licensinBIPCCase for Inventor Academies 27 Jan 2018.

As many of the inventors I see in my IP clinics or at local inventors' clubs are of a certain age  it should be noted that a lot of help is available for older people who wish to open businesses. The European Commission recognizes that senior citizens are increasingly interested in becoming entrepreneurs and is exploring how to benefit from the knowledge and skills of seniors, and how to ensure that they are able to go into business for themselves (see the Senior entrepreneurs page on its website). The Commission has published a Senior Entrepreneurship Good Practices Manual which presents 24 good practice examples from around the EU including the UK.  One of the more interesting initiatives mentioned in the manual is the Latvian Inventors Association's mentoring scheme.

Licensing or assigning an invention is often seen as an easier option than going into business but that is not always or perhaps even usually the case.  Someone with an established business has to be persuaded to set up a new production line and distribution channel for a product that he or she did not invent. Such a person will require a lot of persuasion especially if the inventor has no knowledge, experience or status in the industry. The established business owner will require the inventor to show the owner how the business will benefit from the invention which means that the inventor will often have to do much the same business planning and market research for a licensee as he or she would do for him or herself.

This is the third of a series of articles entitled "No Invention Left Behind". The others are The Case for an Inventor Academies and the WIPO's Inventor Assistance Programme. The next will be on the IP law that every inventor should know.  Should anybody wish to discuss this article or invention generally, he or she should call me on 020 7404 5252 or send me a message through my contact form.

No Invention should be left behind here - the Case for Inventor Academies

Jane Lambert

Last week I featured a scheme by the World Economic Forum and the World Intellectual Property Organization to assist inventors in less developed countries to launch their inventions known as the Inventor Assistance Programme (see Jane Lambert "No Invention left behind" - WIPO's Inventor Assistance Programme gathers Pace 21 Jan 2018).  David Kappos, a former head of the US Patent and Trademark Office, coined the phrase "No invention left  behind" as the watchword for the scheme.

The slogan "no invention left behind" should not be limited to inventions in developing countries. Bringing an invention to market is difficult and risky for an individual or small business even in Mr Kappos's country as 20th Century Fox's film Joy showed a couple of years ago (see Jane Lambert Joy 3 Jan 2016). That is in spite of the resources for inventors and entrepreneurs offered by the USPTO which includes a 2-day annual conference every August at the USPTO's head office in Alexandria and the Inventors' Eye newsletter for individual inventors.  Over the last few years the British Library's Business and IP Centre and its partner libraries outside London have begun to offer similar help in this country but it is still not as extensive as the resources that are offered in the USA,

I have met a lot of individual inventors over the years through my practice at the patent bar, my inventors' clinics in London and the North, the Leeds, Liverpool and Sheffield inventors clubs and running this blog and only a few have ever made any money from their inventions.  Far more lose money than earn it and some lose more than just money.  The reason why so few of those inventors make money from their inventions and so many more lose from them is that they spend money on things they do not need and fail to invest in things that they do. 

Inventions, like brands, designs and works of art or literature, are business assets which earn money only if they are used in business.  Individual investors are representative of the general public and most members of the public go through life without acquiring the skills, knowledge and experience needed to run a business.  It should therefore surprise no one that when a member of the public creates an intellectual asset he or she may have no idea what to do with it  That is why money is wasted not just on invention promotion services but also on legal protection where there will never be sales while services that could be useful, such as IP indemnity insurance, are overlooked.

So how do we equip private inventors with the necessary skills?   Five years ago I thought that inventors clubs were the answer.  That is why I wrote about inventors clubs, why they are useful, where they are and how to establish one if there is none in a particular area (see Inventors' Clubs 25 May 2013). I am not so sure now.  The inventors clubs that I helped to found and chaired for many years disbanded when the Leeds, Liverpool and Sheffield Central Libraries became Business and IP Centres. They provide many of the skills through short courses on such topics as patent searching and business planning but not on a comprehensive basis.

I think something can be learned from business accelerators where fledgling businesses are offered office or lab space, mentored by experts, helped to refine their products or services and eventually introduced to investors.  Accelerator programmes tend to last between 3 and 6 months which is longer than is necessary to decide whether an invention has legs.   Week long or perhaps even weekend academies may be enough.

Anyone wishing to discuss the idea of inventor academies or inventor support generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

"What can we do to encourage innovators to do more collaboration and commercialisation, to stimulate knowledge exchange and promote follow-on innovation?" Answers on an Email to the IPO by 15 Nov 2017

Jane Lambert

On 23 Jan 2017, the Department for Business, Energy & Industrial Strategy ("DBEIS") published its green paper Building Our Industrial Strategy which I discussed in  "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy 24 Jan 2017. In that article, I summarized that green paper as follows:

"Very briefly the green paper suggests ways in which the UK could improve productivity and spread prosperity more evenly across the country and throughout society. After stating those aims it suggests 10 policies that it calls "pillars" to achieve them. One of those pillars is "Investing in science, research and innovation" to "become a more innovative economy and do more to commercialise our world leading science base to drive growth across the UK." The document mentions some of the steps that the government is already taking and then lists some new commitments on page 34."

One of the government's new commitments was "reviewing how to maximise the incentives created by the Intellectual Property system to stimulate collaborative innovation and licensing opportunities – including considering the opening up of registries to facilitate licensing deals and business-to-business model agreements to support collaboration."

On 11 Oct 2017, the Intellectual Property Office published a consultation document entitled Industrial Strategy: Intellectual Property Call for Views. It began with the question:

"What can we do to encourage innovators to do more collaboration and commercialisation, to stimulate knowledge exchange and promote follow-on innovation?"

It explained that the government wants to find ways to stimulate collaborative innovation and increase licensing opportunities for IP rights. The purpose of the call is not to initiate a wholesale review of the IP legislative system, but to look for targeted, nonregulatory interventions that the IPO could make, which would maximize the incentives provided by our IP system.  The government wonders whether there are new products or services that the IPO could offer which would encourage more collaboration, more creation and exploitation of IP.

The ideas that the government seeks should meet the following criteria:

1. Targeted intervention to either process or policy 
2. Within the remit of intellectual property 
3. Backed by evidence of the market failure or commercial potential.

Evidence can come in the form of narratives of respondents; experiences, case studies, published analysis or empirical data. Respondents are asked to state:

• Whether they are you responding as an individual, business, intermediary, representative body; 
• What their business does and in what sectors it operates;
• The size of business, and what proportion of its assets is IP-based;
• In what UK regions respondents operate;
• In what international territories do they operate;
• Whether there is more the IPO could do to help UK companies to operate overseas; 
• What they spend on IP;
• Which aspects of the IP system do they use;
• What they particularly value about the UK’s IP system; and
• Whether they face barriers when using the UK IP system.

Responses should be emailed to  industrialstrategy@ipo.gov.uk by 15 Nov 2017.

Suggestions that the IPO has already received include establishing IP trading platforms, publishing model B2B licence agreements, establishing a voluntary IP register, promoting the use of IP as collateral, facilitating licensing of standard-essential patents and royalty free licences and standardizing IP valuation methods.

Should anyone wish to discuss this article, call me on 020 7404 5252 during office hours or send me a message through my contact form.

Mums Enterprise Roadshow

The Business Design Centre

Author Matt Brown
Licence Creative Commons Attribution 2.0 Generic
Source Wikipedia

Jane Lambert

I apologize to the organizers of the Mums Enterprise Roadshow and my readers for not mentioning this event earlier but I only found out about it myself this morning when I checked the events calendar of the Intellectual Property Office website.

Mums Enterprise Events are holding what they describe as a series of "child-friendly work and business exhibitions helping mums on a mission whether that be retraining, finding flexible work, starting up or growing a business."

The first of the present series is taking place at the Business Design Centre in London today and you can find out how to get there, how to get in and what you can do when you get there from Lindsey Fish's blog post 10 Ways to make the Most of your Visit to the Mums Enterprise Roadshow - London 12 Sept 2017 Mums Enterprise Blog. You can find an agenda and a list of exhibitors on the London page of the website.

One of the phenomena that I noticed when I chaired inventors clubs in Leeds, Liverpool and Sheffield was that while the overwhelming majority of the audience at talks and other events in those cities were gentlemen of a certain age, many of the inventions that actually worked, sold or were of practical use were invented by young women. In fact, most of them were young mothers who had invented items that helped them look after their children. Claire Mitchell of Chillipeeps and Mimi &Mago and Rowena Johnson of BugBrush are just two who spring to mind.

According to the Mums Enterprise website

"The success of UK mumpreneurs appears to be outpacing the sector's growth in other nations, with the mum economy expected to generate £9.5billion for the UK economy by 2025."

This is an activity that our nation needs to encourage and support.

If you miss today's event in London there will be others in Solihull near Birmingham on 31 Oct 2017 and Brighton on 22 Feb 2018. I can't make it to London today but I will try to attend and report on one of the Mums' Enterprise other shows.

Should you want to discuss this article or innovation in general, call me on 020 7404 5252 during office hours or send me a message through my contact form.

How to make Money from your Invention: Licensing

Jane Lambert

In How to make Money from your Invention 13 Sept 2017, I introduced readers to the EPO's Inventors Handbook. Readers will recall that the Handbook advised that there are basically four ways of exploiting an invention:

• A licensing agreement with a company
• A business start-up: get your idea to market yourself
• A joint venture 
• Outright sale of the idea.

In this article, I shall consider the first of those ways, namely licensing the invention.

The Handbook explains that a licensing deal is one that allows a party known as a "licensee" to use the invention in return for a periodic payment known as a "royalty". It adds that 

"The exact terms of the licence must be negotiated in a process that can be lengthy (often many months) and complex. The licence is a binding legal document, so it is usually essential to involve patent attorneys and other legal professionals."

The Handbook continues:

"For many inventors, licensing is the best way to benefit from an invention. The main reasons are:

• The licensee bears the costs and risks of production and marketing.

• Only established companies may have the resources to exploit an idea with major potential.

• Licensing can provide the inventor with an income over many years for relatively little effort."

However, it also warns that "only the strongest forms of IP will interest potential licensees" which in most cases means a patent.  Licensing is often seen as a soft option compared to setting up a new business to market the invention, but, in many if not most cases, the reverse is true.

For a start, unless you are answering an express invitation from a company to submit your invention, you are likely to spend a lot of time and effort looking for a company that could make money from your invention. Finding a company that can make money from your invention is not the same as finding a company that makes a product like your invention. If, for example, your invention renders obsolete a technology in which a company has invested heavily or threatens an income stream such as the supply of consumables or replacement parts, such a company may be the last business on earth to be interested in your product.

Once you have found a potential licensee you have to persuade that company that it can make money from your invention.  Sometimes, nothing short of a detailed business plan will do. That is bound to be a bit hit and miss as you are unlikely to have access to the financial, marketing and technical information that is available to the company's managers.  Even companies like Procter and Gamble and Henkel that invite submissions from inventors require those inventors to show how the invention will fit into their product range. They usually impose strict legal and technical requirements.

Except for companies like P & G and Henkel, you will have to give some thought as to whom you will contact and how you will present your invention. As I said in Finding a Route to Market for Your Invention - Unsolicited Approaches are not usually a Good Idea 25 Feb 2012, you are unlikely to get anywhere with an unsolicited submission. Your best bet is to find out as much as you can about your potential licensee through industry events like trade shows and seminars.  The inventors who are best placed to license an invention are those already in an industry or academics in a relevant discipline. Members of the public with no special connection with the industry will find it hard to sell their ideas.

As a licensee would take a licence under a patent or other intellectual property right, your intellectual property strategy must be one that works for your licensee rather than you.  Your invention must be protected not just in the United Kingdom but in all the countries where the invention is likely to be sold as well as those in which it can be made. Unless you intend to grant an express licence to your licensee you will have to take proceedings against infringers and resist revocation applications in each and every one of those countries. That can be very expensive for a private inventor or small business.

Finally, do not expect your licensee's management to be particularly kind to you.  Their job is to look after their shareholders and not to look after you.  They are likely to drive a very hard bargain in the licensing negotiations. After the licence is granted they will construe it in a way that suits them. Once they have learned how to make your product and developed a market for it they may try to challenge clauses they don't like or seek reductions in the royalty or other payments. When negotiating the licence you should think about dispute resolution and choose a method and governing law that works for you.

In negotiating your licensing agreement you are likely to need the services of a patent strategist who could be a lawyer with experience of licensing or a patent or trade mark attorney, an accountant with expertise in licensing and tax incentives for new technologies as well as a patent attorney.  Should you wish to discuss this article further, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

How to make Money from your Invention

Jane Lambert

So you've invented something. Congratulations!  That was the easy bit.  Your challenge is to make money from your invention without losing your shirt, your home, your marriage or even your mental health. I am not being flippant.  In all the years that I have been practising law, I have known far more inventors whose lives have been ruined by their inventions than those who have become rich from them.

The reason why bad things happen to inventors is that they allow themselves to become obsessed with their inventions. Obsession clouds judgment which leads to bad deals and bad decisions.  Often there is only so much that an inventor's spouse or partner can stand. That is what leads to family breakdowns. Money and relationship problems can lead to depression or worse.

In many cases, those misfortunes could have been avoided by seeking good advice at an early stage. Now intellectual property advice can be expensive but it does not have to be. There is a lot of good advice on the internet for free.  One of the best sources of advice is the Inventors Handbook on the European Patent Office website.

The opening words of the Handbook are as follows:

"The purpose of this Inventors' Handbook is to provide you with basic guidance on all the key stages of turning an invention into a commercial product. Or perhaps we should say the key stages of turning an idea into an enterprise, if we are to widen our definition of 'invention' to include novel processes, business methods, social interactions etc. Though invention has traditionally been associated with manufactured products, it is now better understood that new wealth has always been created primarily from new knowledge, or novel uses of existing knowledge."

I would invite readers to read the rest of the page which stresses the need to reduce risk and control costs and that is where someone like me can often be of assistance.

The next passage I should like you to read right now is Exploitation Routes. The page begins with the words:

"There are basically four ways of exploiting an invention:

• A licensing agreement with a company

• Business start-up: get your idea to market yourself

• A joint venture 

• Outright sale of your idea."

It also warns readers to take care when dealing with invention promotion companies.  Over the next few days, I shall be exploring each of the above options and explaining where you can get more help.

If you want to discuss this article, call me on +44 (0)20 7404 5252 or send me a message through my contact form.