Saving Money on IP at a Time of Rising Prices

 

Jane Lambert

At a time of rising production costs and weakening demand for their products and services, businesses are tempted to reduce or even curtail their spending on intellectual property services.  That will often prove to be a mistake because brands, designs, technology and creative output are rather like the golden eggs in Aesop's fable and the laws that protect them the goose   The reality is that many businesses will take that risk because savings have to be made somewhere.  There are, however, steps that can be taken that will save money but not increase risk excessively.  Those steps are suggestions and not recommendations. There will be occasions when only the most expensive option will do.  That will depend entirely on the circumstances. 

Ascertaining Intellectual Assets

Before any decision can be taken as to what intellectual assets are to be protected a business needs to know what it holds.  A patent or trade mark attorney or solicitor specializing in IP will carry out an IP audit for a fee and there are some schemes that will pay for such audits (see How to use an IP Audit 13 Jan 2022 NIPC News).  However, for businesses that do not qualify for such funding and do not want to pay such fees, there are two very useful diagnostic tools from the WIPO and the IPO that will do much of the work for nothing.   

The WIPO IP Diagnostics generates a customized report with recommendations.  There is more information in WIPO IP DiagnosticsAn IP self-assessment tool for SMEs and the WIPO IP Diagnostics Frequently Asked Questions.  The only caveat is that the WIPO tool is not designed specifically for British users though most of the information will apply to users in the UK. 

The IPO's IP Health Check is designed for users in this country.   It will also generate a report covering

• "a personalised list of actions to take
• an explanation of why we have made each recommendation
• guidance on how to put each course of action into practice
• links to useful information, websites and other resources."

Both tools have their strengths and as they are both free there is nothing to stop users from trying both.

Not all Intellectual Property Rights Cost Money

Patents provide the most comprehensive protection but they are not cheap.  An applicant can pay up to £5,000 or more for searches, office charges and attorneys fees just for this country.  Afterwards,there are periodic renewal fees which increase over time in some countries.  One of the conditions for the grant of a patent is that you have to disclose  "the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art." As anyone in the world can read a patent specification once it is published it is often necessary to patent the invention in every country where there is a market as well as every country where there could be a competitor.  The Patent Cooperation Treaty has reduced some of those costs but patenting in more than one country can still cost many tens of thousands of pounds.  Also, if a court or the Comptoller-General of Patents, Designs and Trade Marks ("the Comptroller") finds that a patent should never have been granted, the grant can be revoked.

If the invention cannot easily be reverse-engineered the inventor may decide to keep the invention secret and disclose it in confidence only to people who need to know about it.  Some product information such as the way to make Coca-Cola or Chartreuse can be kept secret for centuries.   Even where an invention can be reverse-engineered but its competitive advantage is unlikely to last more than a few years, it may be sufficient to rely on unregistered design rights, copyright in the software that actuates the invention or some other non-registrable IP right.

Supplementary unregistered designs which provide up to 3 years protection from copying for designs that could be registered under the 1949 Act may be all that is required for toys, novelties and fashion goods  Unregistered design rights, which last up to 10 years (though licences of right are available in the last 5 years of a design right term) are another alternative to design registration. 

Passing off is a less obvious substitute for trade mark registration as goodwill by reference to a mark, sign or get-up has to be built up but the cause of action is sometimes available in circumstances where a trade mark would not be registrable.  Having said that, an action  for passing off is usually more expensive than a claim for trade mark infringement,

Before the Event Insurance

For many small and medium enterprises, the costs of litigation are an existential threat.  Such a threat can be mitigated by legal expenses insurance.  Cover against IP claims is available before a claim arises and afterwards.  As is to be expected, the premiums for before-the-event insurance are considerably less expensive than for after-the-event cover,   The IPO has provided some useful guidance on IP insurance.  The Chartered Institute of Patent Attorneys publishes a list of specialist IP insurance brokers as do the Chartered Institute of Trade Mark Attorneys.

Examiners' Opinions

A dispute over whether a patent is valid or whether it has been infringed can often be resolved by referring the dispute to a patent examiner for an opinion pursuant to s.74A of the Patents Act 1977.  The advantage of the opinion is that it will be based on evidence and argument from both sides.  It is also inexpensive.  The IPO charges £200 for the service.  While the opinion of an examiner is non-binding it can often facilitate settlement through mediation or negotiation.

Domain Name Disputes

Although the Court of Appeal held in  British Telecommunications Plc and others v One In A Million Ltd and others [1998] EWCA Civ 1272, [2001] EBLR 2, [1999] WLR 903, [1999] ETMR 61, [1999] 1 WLR 903, [1998] Masons CLR 165, [1999] FSR 1, [1997-98] Info TLR 423, [1998] ITCLR 146, [1999] 1 ETMR 61, [1998] 4 All ER 476 that unauthorized registration of a trade mark as a domain name is actionable, the Internet Corporation for Assigned Names and Numbers ("ICANN") has devised the Uniform Domain Name Dispute Resolution Policy for resolving disputes between trade mark owners and domain name registrants. For US$1,500, a dispute over entitlement to a domain name ending in ".com", ".org", ".net" or other generic top-level domain can be referred to a tribunal of one or three panellists who will deliver a decision within days of the referral.  Registrars are bound by their agreements with ICANN to give effect to such decisions.  That is considerably easier, cheaper and quicker than seeking to enforce the judgment of a UK court abroad.  There are similar schemes in national or regional domain name authorities such as Nominet for the ".uk" domain or EurID for the ".eu" domain,

Proceedings in the Intellectual Property Office

The Comptroller has jurisdiction to decide many kinds of patent, trade mark, registered and unregistered design disputes.  The procedure of his tribunals is simpler and less formal than that of the courts.  It is often possible to dispose of disputes without a hearing.  Unless a party behaves unreasonably the maximum costs that can be awarded against it are limited to a published scale.  In trade mark and design cases, it is possible to appeal to an appointed person who will award costs on the same scale,

The IPEC Small Claims Track

If the owner of an IP right other than a patent, registered design, plant variety or semiconductor topography has a straightforward claim that can be decided in a day and seeks primarily an injunction and damages of £10,000 or less, he or she should consider an action in the small claims track of the Intellectual Property Enterprise Court (see Small IP Claims last updated 19 Jan 2018 in NIPC News).  The procedure is simpler and shorter than claims in the multitrack and recoverable. costs are limited to a few hundred pounds in most cases.

Other Forums

All other IP claims for damages of £500.000 or less that can be tried in 2 days could be brought in the Intellectual Property Enterprise Court where recoverable costs are also limited.    For slightly higher-value and more complex cases, there is the shorter trials scheme (see IPEC and the Shorter Trials Scheme Compared  28 May 2022).

Conclusion

These suggestions are by no means comprehensive.  Other practitioners will suggest other possible cost savings or disagree with mine.   It would nevertheless be useful to start a conversation on the topic.   Anyone wishing to discuss this article can call me on 020 7404 5252 during office hours or send a message through my contact form.

Where to learn about IP for Free

Jane Lambert

 

Every viable business in the world has something that gives it an advantage over its competitors.  It may be its reputation in the marketplace,  the appearance of its products or their packaging or the technology that it uses to deliver its goods or services.   These are its "intellectual assets" and the laws that protect investment in those assets are the business's "intellectual property".

Because intellectual property is not always included in business education syllabuses many business owners and managers have incomplete knowledge of what it is or how it works.  That is dangerous because intellectual property can literally make or break a business.  

So how does such a business owner or manager get up to speed?

Perhaps the best starting place is the Intellectual Property Office's online training tools.  Users have to open an account with the IPO but that is fairly straightforward and costs nothing.  Once they have registered they can log onto a range of online courses which are designed for business owners, schools and universities.    The course that most newbies are likely to need is "IP Equip" where they will learn the basics of copyrights, designs, patents and trade marks.

Once they have completed that course learners can proceed to the IP Health Check which covers the following:

• whether the user has IP to protect.
• Whether he or she owns it and, if not the user, who does
• how to protect the intellectual asset and whether and how it should. be protected, and
• how to exploit IP commercially.

An excellent little manual called the IP Business Lifecycle Framework can be downloaded from the "IP Business Lifecycle Framework" page.   It provides comprehensive information for start-ups, scale-ups and exits.   From now on I shall recommend it not only to paying clients but those attending my pro bono clinics.

Finally, those looking for equity or short-term funding can take the IP for Investment course where they can learn all about angels, private equity and debentures.   For those who want to work with another business, there is the B2B Toolkit.

Supplementing these online courses is the IPO's YouTube channel which hosts many videos covering the basics, case studies, enforcement and more in-depth discussion of various IP rights.  There are more resources on the British Library'sBusiness and IP Centre website as well as courses, one-to-one mentoring sessions and workshops at the British Library in St Pancras and its nationwide network of public libraries .

Many of those public libraries host IP clinics.  These are free consultations with patent and trade mark attorneys or other IP professionals.   I also offer IP clinics in conjunction with Barnsley Business Village and the Menai Science Park.   Anyone who wants to attend my clinic may call me on 020 7404 5252 during office hours or send me a message through my contact form.

Selling your Invention

 

Jane Lambert

The European IP Helpdesk has recently published a fact sheet on intellectual property assignments entitled Commercialising Intellectual Property: Assignment Agreements which can be downloaded from the EU Publication Office.  I mention it because the European Patent Office's Inventors' Handbook suggests an outright sale of a patent, patent application or other intellectual property right as a possible way in which an inventor can exploit his or her invention.

In my experience, it is rare for inventors who are not employed by companies in research and development or universities in academic research to assign their inventions to a business that is established in the industry for which the invention was created.  As I explained in How to Make Money from your Invention: Licensing on 15 Sept 2017, it is hard enough to find a business that is prepared to take a licence.  Most are even more reluctant to carry out due diligence and pay a lump sum to an inventor from outside their industry.

It is much more likely that a business that has developed an article that does not fit in its product range or a process that it is unlikely to use may offer its invention to others.  In the United States, there are established online and physical marketplaces for the sale of intellectual rights.  That is not yet the case here though there are businesses like Inngot Limited which will prepare an intellectual asset for sale.

Both potential purchasers and vendors should take legal and tax advice before embarking on negotiations,  The vendor should satisfy itself that it will never need to use the invention or the work leading up to its creation again.  If that is not the case it will need to negotiate licences.  The purchaser should satisfy itself that the vendor is entitled to sell the invention, that its use will not infringe other parties' patents or other intellectual property rights and that the patent, patent application or other legal protection is sufficient,   A mechanism for valuing the intellectual asset will have to be agreed.   In the UK and most other countries, the assignment must be in writing and signed by all parties.  The assignment should also be recorded at the intellectual property office of every relevant country.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page, 

I have invented something - What happens next?

By William Heath Robinson - From the Book: William Heath Robinson Inventions,
Public Domain, https://commons.wikimedia.org/w/index.php?curid=39256622

 

Jane Lambert

If you work for a company, university or some other employer in a capacity in which an invention might reasonably be expected from the performance of your duties or you had a special obligation to further your employer's business, any invention you may create in the course of your duties may be claimed by your employer pursuant to s.39 of the Patents Act 1977.  Your reward will be your salary and any perks or  benefits that go with your appointment unless your invention is of outstanding benefit to your employer in which case you may be entitled to an extra reward under s.40,

The position will be different if you are a student and you invent something in the course of your research or studies.   Your university may be entitled to the invention pursuant to a clause in your contract for the right to research or study at your university but you will normally qualify for a share of any royalties or other payments that your university receives from the commercialization of your invention.   

If you made your invention in any other capacity it would be up to you to exploit it.  You can attempt to market it yourself or you can try to license it to a third party.  Neither is easy.  If you choose to make it yourself you have to acquire expertise and resources that inventors are no more likely to possess than anyone else.   If you try to license it you have to persuade a third party that your invention can earn or save that person's business money.   To get you started, here are two articles:

• How to make Money from your Invention - Starting your own Business 15 May 2019 NIPC Invention; and
• How to make Money from your Invention: Licensing 15  Sept 2017 NIPC Invention

You should try to learn from the experience of others.   A good place to find such experience is an inventors' club.  I was saddened to learn recently that one of the clubs that I founded nearly 20 years ago and chaired for many years suspended its meetings during the pandemic and has never revived them.  I consulted the "Inventor's Club" page of the Wessex Region of Technologists and Inventors (formerly the "Wessex Round Table of Inventors" or "WRTI") to see whether the same had happened to other clubs. There were some broken links but I found up-to-date websites for many of those clubs after consulting Google. I also wrote about the Bristol Innovation Group in Bristol Innovation Group: Street2Boardroom on 27 Aug 2020 in NIPC Severn and gave a webinar to Ffiws on 15 April 2020,  I have therefore been able to find inventors clubs in Anglesey with locations in Gwynedd, Birmingham, Bristol. Cambridge, Dudley, East London, Kent, Malvern, Oxford and Southampton,

If there isn't an inventor's club nearby or if the meetings of your local club do not live up to your expectations or needs I should be glad to help you set up a club.  I could draw up a simple constitution and suggest a few guest speakers free of charge.  Over the years I have met a lot of patent and trade mark attorneys, angel and private equity investors, specialist accountants, insurance brokers, product development consultants in all parts of the country.   I should even be happy to address any group you may set up or run a pro bono IP clinic myself.

Finally, two cardinal bits of advice.   The first is to ignore the small ads and spam emails from invention promoters offering to promote your invention for an eye-watering sum. Few have any connections with industry and most offer services that are already offered by your local Business or IP Centre or local enterprise partnership for free.   The second is to keep your invention under wraps until you have obtained optimum legal protection by applying for a patent or otherwise.

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

Student Inventors and their Universities - Ownership of IP in Inventions resulting from Students' Research

Chemistry Research Laboratories at Oxford University

Author M stone Licence CC BY-SA  3.0  Source Wikimedia Commons

 

Jane Lambert

Traditionally universities have been funded by grants from central government, fees and gifts from alumni and philanthropic members of the public.  These are the so-called first and second funding schemes.  More recently universities have been encouraged to exploit their accumulations of knowledge and expertise through licensing, consultancy and training.  That is often referred to as "the third stream" of funding.

In order to tap that income stream, universities have had to own the right to exploit those resources. That is to say, the intellectual property in research carried out by their staff and students. The right to apply for patents for inventions resulting from research carried out by their staff will usually be covered by s.39 of the Patents Act 1977. That section will not apply to research carried out by students in the course of their studies.  Unlike academics who are paid to teach and carry out research, most students pay their a lot of money for their tuition and research facilities. 

Universities address that problem by requiring their students to assign their rights to apply for patents and other intellectual property rights arising resulting from their research to them in certain. circumstances.  An example is section 5 of Statute XVI of the University of Oxford's Statutes:

"5. (1) The University claims ownership of all intellectual property specified in section 6 of this statute which is devised, made, or created:
........................................ 

(b) by student members only in the circumstances specified in sub-section (3) below;"

Subsection (3) provides:

"The University does not claim ownership of any intellectual property which is devised, made, or created by University student members, unless that intellectual property was devised, made or created:
(a) jointly with anyone else subject to section 5 of this Part of Statute XVI;
(b) using University facilities or equipment (unless the terms of access for the facility or equipment provide otherwise);
(c) in circumstances where that intellectual property is subject to obligations (including obligations imposed by contracts or grants) that the University owes to a third party;
(d) using funding received from the University (unless the terms of that funding provide otherwise); or
(e) in the circumstances specified in Section 5(1)(a), (c) or (d) of this Part of Statute XVI."

This section is incorporated by reference into offers to work on a doctorate at Oxford. 

Last night I spent some time checking the websites of a range of universities in England, Wales and Scotland including that of my alma mater and I found very similar provisions in their intellectual property policies.  The foundations that I surveyed included medieval Scottish, English red brick and white brick, Welsh civic, former polytechnics and other recently founded establishments. 

Just before Christmas. Mr Daniel Alexander KC, sitting as a deputy judge of the High Court, handed down judgment in Oxford University Innovation Ltd v Oxford Nanoimaging Ltd [2022] EWHC 3200 (Pat) (23 Dec 2022).  It is a very long and complex decision consisting of 174 pages in the printable version. I have written an article about the case entitled Patents: Oxford University Innovation Ltd v Oxford Nanoimaging Ltd which appeared in NIPC Law on 23 Jan 2023.  The main point of that case is that the provisions requiring students' intellectual property rights to vest in the University of Oxford were challenged by a company that had been set up by one of the university's research students. The company argued that the student had been a "consumer" within the meaning of reg 3 (1)  of The Unfair Terms in Consumer Contracts Regulations 1999 ("UTCCR"). He contended that the provision vesting in the University his right to apply for patents arising from his research was unfair.

The challenge failed but the deputy judge held that the student was indeed a consumer, the UTCCR applied to contracts between students and their universities and there were aspects of the student's contract with Oxford that created an imbalance that was detrimental to him. The only reason why the challenge failed is that the detrimental aspects of the contract were outweighed by benefits to the student.  The University paid for the application for a patent. It had helped to develop the invention.   Its technology transfer company had invested in his company.  The University paid the student a share of the royalties that it received from its licensees.

That will not necessarily apply in all circumstances even at Oxford and it is even less likely to apply to all students at all universities throughout the United Kingdom.  Not every university has Oxford's resources and connections.  There are likely to be other student inventors who feel that they have had a raw deal.  Some of them may challenge their universities on similar grounds to Oxford Nanoimaging's challenge.  It is entirely possible that some of those challenges will succeed.

To avoid such challenges, universities throughout the United Kingdom should review their IP policies and if necessary amend them.  They should also pay regard to some of their other contracts.   If a research student is a "consumer" then a fortiori so is an undergraduate.  Universities should consider their other contracts for tuition, board and lodging, parking on campus and so on as well as their contracts with their graduate students.

It is also worth remembering that the UTCCR implemented the Council Directive 93/13/EEC of 5 April 1993 on unfair terms in consumer contracts which remains in force in the remaining 27 member states of the EU. Mr Alexander reached his decision after a very thorough analysis of the Directive and the case law.  If his decision is correct his reasoning is likely to apply to the EU.

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

Direct Access to Barristers on Intellectual Property Matters

Jane Lambert

I am a member of the Intelectual Property Bar Association to which most barristers specializing in intellectual property and technology law belong.  There are over 100 of us.  Most are in London but there are a few in other parts of the country.  Our job is to advise on difficult points of law, draft complex legal instruments and represent clients in litigation and negotiations.  Most of the judges of the Patents and Intellectual Property Enterprise Courts and many of the other judges of the Chancery Division were recruited from our numbers. 

Barristers are often compared to consultant physicians and surgeons in medicine.  Just as a GP might refer patients to specialists for diagnosis or treatment, patent and trade mark attorneys and solicitors seek our opinions, drafts or representation for their clients. Until 2004  we had to be consulted through those intermediaries. Nowadays, many of us accept instructions directly from members of the public on IP matters under the public access scheme.  Earlier this evening, for example, I was asked how to apply for a patent.  Over the weekend I was asked how to challenge a design registration under s.11ZA of the Registered Designs Act 1949,  Other typical requests would be to review a lengthy business format franchise agreement, draft a complaint in a domain name dispute or appear at an online entitlement hearing in the Intellectual Property Office,

It should not be supposed that we do the work of solicitors, patent or trade mark attorneys or other professionals simply because we can be instructed directly.  Our Public Access Guidance forbids us from conducting litigation unless specifically authorized to do so.  Similarly, we do not prosecute patent, design or trade mark registration applications though we draft statements of case, review witness statements and appear before IPO hearing officers and EPO Boards of Appeal.  Our rules prevent us from acting for a client if we believe it to be in the client's interests or the interests of justice for him or her to instruct a solicitor or other professional intermediary.   Far from competing with other professionals, we are actually a source of work for them. 

Though we do not prosecute patent, design or trade mark applications or conduct litigation we may be the best initial point of contact for clients who may need such services.  There are many ways of protecting the same intellectual asset some of which are free such as unregistered design right or the right to bring an action for passing-off.  The optimum method of protection at a particular time and in certain circumstances is not necessarily the most comprehensive.  Similarly, a request for the transfer of a domain name under the Uniform Domain Name Dispute Resolution Policy can be much faster, cheaper, safer and even more effective than a trade mark infringement or passing-off claim in the courts.  Counsel's advice on those matters is objective and impartial. If an attorney or solicitor is required we can suggest intermediaries with whom we have worked satisfactorily in the past.

If a business owner, manager or individual seeks advice on a point of law we can advise on most matters without the assistance of a professional intermediary.  That would include such questions 

• "Is this computer-implemented invention patentable?",  
• "Do I have an action for copyright infringement?" 
• "I have just received this demand for undertakings and pile of documents from that big firm of solicitors, what are my options?" or
• "Can you help me understand this complex agreement that a potential customer has just sent me?"

There are some issues such as "Is this invention patentable given the prior art?" when we would need a patent search or some other information that a professional intermediary can supply. 

When a business owner or manager understands contracts and has negotiated deals before we can draft just about any kind of agreement or instrument for him or her.  If he or she is feeling his or her way we would advise the owner or manager to introduce a solicitor, accountant or another professional to the team.

Most litigation would need a solicitor, attorney or other professional but sometimes the client can do the necessary work and all that is required is advocacy.   Many hearings in the Intellectual Property Office or small claims track of the Intellectual Property Enterprise Court would fall into that category.  On one occasion I have responded to an appeal in the Court of Appeal and there have been several others when I have appeared in the High Court without a solicitor.

If you want to use our services you will need to supply a passport, driving licence or other photo ID and evidence of residence and if you represent a company your authority to do so.  We will specify what we will do when we shall do it and how much we shall charge in a client care letter.  That is your contract with your barrister.   In the unlikely event that something goes wrong, we are all insured and regulated by the Bar Standards Board or other authorities We have approved complaints handling procedures and the ordinary law of contract and tort applies to us just as much as to any other professional services provider.  You can find more information in the Public Access Guidance from our regulator.

Anyone wishing to discuss this article may call me during office hours or send me a message through my contact form.

Is China still the Best Place to outsource Manufacturing?

Author Daniel Case Licence CC BY-SA 3.0  Source Wikimedia Commons

 

Jane Lambert

For the first 20 years after China joined the World Trade Organization in 2001, it was almost instinctive for small businesses in the UK to look to China to outsource their manufacturing. There were many reasons for that. Labour was relatively cheap.  Components and raw materials were abundant and locally sourced.  Freight costs were tumbling as the belt and road initiative unfolded.  There was even talk of London becoming "the Western hub of Chinese finance" (see HM Treasury and George Osborne Chancellor welcomes London renminbi clearing bank 18 June 2014).

As a result, much of my work was connected with China in one way or another.  I was asked to review and occasionally draft manufacturing agreements or licences with Chinese manufacturers.  I warned clients that their UK or European patents, trade marks or designs afforded no protection against in other countries and urged them to seek legal protection in their principal markets and sources of supply. Quite a few infringing products have been tracked to China, sometimes even by manufacturers that had made the outsourced product under licence.

I have noticed a significant drop in demand for legal services relating to China in the last 2 years and it is not hard to see why.  The Trump administration imposed tariffs on Chinese goods.  The British government restricted Chinese investment in infrastructure projects such as 5G telecoms and nuclear power.  Protracted lockdowns to suppress covid have interfered with production. The Russian invasion of Ukraine and sanctions on Russia have cut overland links to Western Europe.  Chinese labour is becoming scarce and hence more expensive as a result of the one-child policy.  Spiralling transport costs have eroded whatever price advantage remains. Concern over human rights and worries over a possible invasion of Taiwan has added to a change of attitude towards China.   It is hardly surprising that there has been a rethink on outsourcing to that country.

Of course, China remains an enormous market with a faster rate of growth than most countries even now.  The best way to supply that market remains through joint ventures with Chinese businesses or licensing.  But manufacturing in China to supply the UK or other European markets is ceasing to be feasible.  There are alternative outsourcing manufacturers in countries like India, Indonesia and Bangladesh but they are also a long distance away and the manufacturing sectors of Bangladesh and Indonesia are less developed.  At a time of rising costs, businesses that can supply their customers from shot supply chains enjoy an advantage.

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

Invention-Con 2022: The US Patent and Trademark Office's Online Conference for Inventors, Makers and Entrepreneurs

Interior of the US Patent and Trademark Office

Author Hanaxides Licence CC BY-SA 4.0  Source Wikimedia Commons

 

Jane Lambert

Every August, the US Patent and Trademark Office ("USPTO") holds a conference for independent inventors, entrepreneurs, and small business owners known as Invention-Con. I mentioned it for the first time in USPTO Annual Inventors' Conference - something we should do here on 2 Aug 2014. Until 2019 the conference was held at the USPTO's head offices in Alexandria, Virginia just outside Washington DC. No doubt because of the pandemic Invention-Con was held online in 2020 and 2021.  So, too, will the next one which will take place between 10 and 12 Aug 2022.

The importance of the conference is attested by the welcome from Kathi Vidal, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on 10 Aug 2022.  Her entry on the Invention-Con website describes her as follows:

"As the chief executive of the USPTO, she leads one of the largest intellectual property (IP) offices in the world, with more than 13,000 employees and an annual budget of more than $4 billion. She is the principal IP advisor to the President and the Administration, through the Secretary of Commerce, and is focused on incentivizing and protecting U.S. innovation, entrepreneurship, and creativity. She leads an agency whose mission is to help American workers and businesses compete and collaborate, especially in ground-breaking technologies and across all demographics."

Immediately after the Director's welcome, there will be a 5-hour session entitled "Introduction to Intellectual Property" which will cover such topics as "Your IP, a potential gold mine", "IP journeys – Go from eureka to enterprise" and "IPitching: Innovation and investment". There will be another 5 hours the next day on the theme "Now what? How to put in motion a plan to protect your idea/business."  That will include talks on "Funds to fuel your future", "Grants and growth", "Succeed with government funding and resources" and "Inspiration to impact".  The final day will be 5 hours of talks on "IP in Everyday life" covering "IP in the fitness industry", "Tech in arts", "Small Business Success Stories" and "Meet the new trailblazers: Innovation to impact."

The speakers include inventors, angel and private equity investors, US government officials, entrepreneurs and professional advisors.  One of the most interesting is Arul Mathur who intends to read computer science and engineering at my alma mater, UCLA,  Arul, who is aged 18, has invented an automated, self-contained fire suppression system called Fire Activated Canister Extinguisher ("FACE") to protect properties against fires without the need for manual intervention.  He was inspired to invent FACE after a wildfire threatened his home.   After the record temperatures and the fires in London earlier this week, he will find a market for his invention here. 

The talks take place between 12:00 and 17:00 eastern time which would be between 17:00 and 22:00 our time.   Registration is by Eventbrite.  It does not appear to be possible for those who live outside the USA to register through Eventbrite because registrants have to pick a state or territory.   However, special enquiries could be made to inventioncon@uspto.gov.

There is no reason why other countries (including ours) should not stage similar conferences.  We do stage events like the British Invention Show but there is nothing like Invention-Con.  There is a great need for practical advice on patent, design and trade mark prosecution, grant, equity and loan funding, setting up businesses and scaling up which Invention-Con appears to deliver.   

Anyone wishing to discuss this article may call me on +44 (0) 20 7404 5353 during normal business hours or send me a message through my contact form.

What to do if your Patent is Infringed

Patents Court and Intellectual Property Enterprise Court 

Author Judicial Office Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

1. What do I do if my Patent is infringed?

The first thing to do is to take some specialist legal advice.  Do not take matters into your own hands unless and until you have done so. Intellectual property law differs from other types of law in that sending a letter before claim that would be perfectly acceptable in most circumstances can sometimes be actionable.  That is because s.70A (1) of the Patents Act 1977 provides:

"Subject to subsections (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat."

The law on groundless threats has recently been reformed.  It used to be far more draconian. There are now a number of exceptions and defences that did not exist before. But the provision can still land you in big trouble if you fall foul of it.   And one further point!  Not every solicitor or barrister in general civil or commercial practice has heard of s.70A (1) so make sure that you go to an IP specialist for advice on how to deal with suspected patent infringement.

2.  Where will I find Specialist Advice?

Barristers specializing in intellectual property law are eligible to join the Intellectual Property Bar Association, I am a member of that Association and so are most of my colleagues.  There are a lot of barristers who know about IP law who are not members but it is not always easy to identify them.

Many specialist law firms and law firms with expertise in IP law belong to the Intellectual Property Lawyers Association. There are however many law firms with expertise in IP law that do not.  Firms with such expertise tend to publish a lot of articles and give lots of talks on the topic. 

All Chartered Patent Attorneys will have acquired a thorough knowledge of patent law.  Many but not all will also have qualified as "patent attorney litigators" or "patent attorney advocates."  Some attorneys' firms have litigation departments. Others have arrangements with specialist law firms some of which practise from the same premises and under the same names.  The patent attorneys' professional association is the Chartered Institute of Patent Attorneys ("CIPA").

3.   How do I know if my Patent has Been Infringed?

Patents are granted for inventions that may be products or processes.  

S.60 (1) (a) of the Patents Act 1977 says that where the invention is a product a person infringes the patent if he or she makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise in the UK without the consent of the owner of the patent.

Where the invention is a process, s.60 (1) (b) says that a person infringes the patent if he or she uses the process or offers the process for use in the UK when he or she knows, or it would be obvious to a reasonable person in the circumstances, that its use there without the consent of the owner would be an infringement of the patent.

Where the invention is a process s.60 (1) (c) further provides that a person infringes a patent if he or she disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

4.  Yes but how do I identify that "Product" or"Process"?

When you or your patent attorney applied for a patent for your invention you will have filed a document called a "specification".   The specification will have contained a description of the invention and several numbered paragraphs known as "the claims"

S.125 (1) of the Act provides:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

Your invention is therefore set out in those claims.   

Thus, anyone who disposes of offers to dispose of uses or imports a product that is described in any of those claims infringes the patent for that product.  Similarly, anyone who uses a process that is described in any of those claims infringes the patent for that process.  Anyone who disposes of offers to dispose of uses or imports any product obtained directly by means of that process also infringes the patent for that process. 

5.   So  How does it work exactly?

The court works out what the claim means.  Often it breaks the claim into its "integers" or "features" as in the following example:

“1A An apparatus for automatically controlling a ventilator comprising:
1B first means for processing data indicative of at least a measured oxygen level of a patient, and for providing output data indicative of:
1C required concentration of oxygen in inspiratory gas of the patient (FiO2) and positive end-expiratory pressure (PEEP) for a next breath of the patient;
1D wherein FiO2 is determined to reduce the difference between the measured oxygen level of the patient and a desired value;
1E wherein PEEP is determined to keep a ratio of PEEP/FiO2 within a prescribed range and, while keeping the ratio within the prescribed range, to keep the measured oxygen level of the patient above a predefined value; and
1F second means, operatively coupled to the first means, for providing control signals, based on the output data provided by the first means, to the ventilator;
1G wherein the control signals provided to the ventilator automatically control PEEP, and FiO2, for a next breath of the patient.”

(see para [8] of Tehrani v Hamilton Bonaduz AG and others [2021] EWHC 3457 (IPEC) (22 Dec 2021).

As the exclusive right to exploit an invention for up to 20 years is a reward for teaching the world how to make or use it, the court reads the claim in the way that it would be understood by a "person skilled in the art".   He or she is the person to whom the specification is addressed.  He or she is often referred to as"the skilled addressee". Any special terminology or conventions that might be used by such skilled addressee are applied by the court.  Usually, the court requires experts in the technology to explain the terminology or conventions.

Once the court has decided what the claim means it looks at the defendant's product or process to see whether it has the claimed integers.   If the defendant's product or process does have those integers, then the claim is infringed.

6.    So Everything hangs on the Interpretation of the Claim?

Not quite!   The patent is infringed only if the claim is valid.    The first thing that a defendant does when he or she is accused of patent infringement is to investigate the validity of the claim.   There are all sorts of reasons why a claim might not be valid.   The claim may be for something that has already been invented.   That is called "anticipation". Alternatively, it may claim something that would be obvious to a person skilled in the art.  In that case, it would lack an inventive step. 

7.     Wouldn't that be picked up by the Examiners when an Application is made for a Patent?

Not necessarily!  Examiners do their best but they have only so much time and only so many resources.  They will read the patents, patent applications and technical literature in English.  Possibly they may know some other European language and they will consult patent databases or journals in those languages.  But much of the world's technical literature is now published in Mandarin, Japanese and Korean and not many examiners in this country or even at the European Patent Office in Munich speak those languages.  A prior disclosure may be a previous patent application but it may equally be an article in a scientific or technical journal.  If the information is available to the public then it is already known. 

8.     Phew!  So how often are Patents found to be invalid?

I don't have any statistics but quite often as you can see from looking at previous decisions of the Patents Court or Intellectual Property Enterprise Court.

9,.    Are they the Courts that decide Patent Infringement Cases?

Yes. They are the courts for patent infringement disputes in England and Wales.   

The Intellectual Property Enterprise Court ("IPEC") entertains claims that are worth £500,000 or less that can be tried in no more than 2 days.  Cases are very tightly managed in that court.   The costs that can be recovered by a successful party from the unsuccessful one are limited to £50,000 on the determination of liability and £25,000 for the determination of the damages or other financial remedy that is due to the successful party.

The Patents Court hears all other patent cases.   There are no time limits or limits on recoverable costs in cases before the Patents Court.   The judges of that court do their best to control costs but expert witnesses and specialist counsel and solicitors are expensive.

The Patents Court and IPEC are headquartered in the Rolls Building off Fetter Lane in London.  The judges of both courts have said that they will travel outside London for the convenience of the parties and witnesses or to save costs. To the best of my knowledge and belief, the Patents Court has only once sat in Birmingham.  I think that is also true of IPEC.   

There is a patents court in  Edinburgh which is part of the Outer House of the Court of Session.   The Chancery Division of the High Court of Justice of Northern Ireland hears patent infringement cases in Belfast.

If you have a foreign patent you have to go to the courts of the country for which the patent was granted.  Some countries like Germany, Switzerland and the Netherlands have specialist patent tribunals. Other countries do not.   TahylorWessing has a website called the Patent Map which has lots of useful information about patent litigation throughout Europe.

10.   So how much is that likely to cost me?

A lot of money even in IPEC.   A Patents Court dispute over the use of standard-essential patents can cost many millions of pounds.   That is because there are several technical trials to decide whether each patent is valid, essential to the standard and infringed and then a final trial to decide the terms of licences to use the patents.   If you run a start-up or indeed any other small or medium enterprise I strongly advise you to take out patent litigation insurance. I have written quite a lot about patent insurance in this blog over the years and can commend CIPA's work on the topic.

11.   Further Information

This article barely scratches the surface of a huge topic and I am aware that I have left out lots of crucial information.  If you have a specific enquiry call me on 020 7404 5252 during office hours or send me a message through my contact form. 

Innovate UK Funding

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Jane Lambert

The start of a new year is when many new businesses and projects within existing businesses are launched. Such initiatives usually need funding and an important source of funds is Innovate UK.  Innovate UK is part of UK Research and Innovation ("UKRI") which was established by s.91 (1) of the Higher Education and Research Act 2017. Its website states that it "convenes, catalyses and invests in close collaboration with others to build a thriving, inclusive research and innovation system." 

Innovate UK connects businesses to partners, customers and investors that can help them turn ideas into commercially successful products and services and business growth.  Since its establishment, it has invested £2.5 billion in 8,500 organizations which investment is estimated to have created 70,000 jobs and added £18 billion of value to the British economy (see the "About Us" page of the Innovate UK website). A spreadsheet listing all Innovate UK's funded projects and some typical case studies can also be accessed through that site.

A good starting point for anyone seeking funding is Innovate UK's Guidance for Applicants page of UKRI's website.  The General Guidance page contains an overview and provides links to the following information:

• Funding opportunities
• Before you start an application
• Your application
• What happens after you have submitted your application
• What happens if you are successful
• Funding rules
• Categories of research and development
• Other funding opportunities, and
• Updates to general guidance.

The best way to learn about current funding opportunities is to sign up for Innovate UK's newsletter.   This month's edition contains news on the Made smarter innovation: sustainable smart factory, Automotive Transformation Fund expression of interest: round 17. Innovate UK smart grants: October 2021, NATEP helping SMEs innovate in aerospace and Early ideas to improve the delivery of nucleic acid therapeutics. There is also information on Small Business Research Initiative projects.

Established businesses can access assistance through their trade associations, local chambers of commerce, local enterprise partnerships in England, Business Wales in Wales and similar organizations in Scotland and Northern Ireland.  Individuals who are not yet in business should approach the British Library's Business and Intellectual Property Centre or its national network of local partners.

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

Essential Reading for Inventors and Entrepreneurs

Jane Lambert

IP really can make or break a business.  Get it right and you can control entry to your markets or generate substantial amounts of licensing revenue. Get it wrong and you can be ensnared suddenly in complex litigation with draconian remedies and ruinous legal fees. You can try to ignore it but every business in the world has goodwill, some trade secrets, a website with text and photos all of which are likely to be copyright works. 

Problems can be avoided and opportunities seized by spotting them in advance.  By and large, that is what big companies do.  Their executives will have learnt something about IP at business school.   They will have attended conferences or read about IP in business journalists.  They will also be supported by in-house lawyers and patent and trade mark attorneys with ready access to the specialist bar and law firms. But inventors, designers and business owners rarely have the time, expertise or funds for any of that.  

Those who are aware of the problem have often asked me in the past to recommend a manual on IP for startups.  I wrote one on IP enforcement in 2009 but it needs updating and it does not cover non-contentious issues such as patent prosecution, design or trade mark registration or licensing.  But one book that I can recommend is Enterprising Ideas A Guide to Intellectual Property for Startups which was written by Omer Hiziroglu and published this year by the WIPO (World Intellectual Property Organization), the UN agency for intellectual property.

The publication is only 78 pages long and can be downloaded free of charge from the WIPO's website.  It consists of the following chapters:

• Introduction 
• Protecting your innovation
• Distinguishing your product in the market
• Going international
• Other strategic ways to exploit IP
• Managing risks
• Using IP databases, and
• IP audit

There are also two annexes.

The Introduction contains an overview of IP.  The IP office for the UK is the Intellectual Property Office in Newport.  We do not have utility models in this country but we do have unregistered design rights which protect the shape or configuration of articles from copying for up to 10 tears from the first marketing of the articles. Our industrial design law is also complicated because we have overlapping protection by copyright and design registration and now a new supplementary unregistered design right. Product designs that are new and have individual character can be registered with the Intellectual Property Office for 5 consecutive terms of 5 years each.   Also in the Introduction is a section on IP generating as opposed to IP consuming startups and a paragraph of technology readiness rating which is "a technique for assessing how close a technology or product is to commercialization".   Scattered throughout the book are case studies, and the one in the Introduction is about the Turkish company. Arçelik A.Ş.

The next chapter discusses patents, trade secrecy and copyright.  The third covers trade mark registration, domain names and design registration.  Going International introduces the Patent Cooperation Agreement, the Madrid Protocol and the Hague Agreement.  There is a discussion about licences and assignments of IP rights and funding, the scientific, technical and marketing information that can be obtained from patent, trade mark and design databases and an overview of IP audits.   The only area that could be improved is on managing risks.   In the UK there are watch services that warn of applications for possibly conflicting IP rights and there is a developing IP insurance market.

Anyone wishing to discuss this article may call me on +44 (0)20 7494 5252 during normal office hours or send me a message through my contact form. 

The Border Innovation Hub

White Cliffs of Dover

Author Immanuel Giel Licence CC BY-SA 3.0  Source Wikimedia Commons

 

Jane Lambert

In UK Innovation Strategy I discussed ways in which the British government proposed to stimulate innovation so that the UK could join China, the USA, Japan and South Korea as a science and technology superpower by 2039,  Buried away in the text on free ports  on page 78 was this reference to the UK border:

"The innovation activity in Freeports will build on the government’s 2025 UK Border Strategy, published in December 2020, which set out a Technology and Innovation roadmap to drive forward innovation at the UK border."

 The 2025 UK Border Strategy mentioned in that sentence provided for private sector participation "to design, deliver and innovate around the border."

That strategy aims to achieve 6 "transformations:"

"Develop a coordinated user-centric government approach to border design and delivery, which works in partnership with industry and enables border innovation. 

Bring together government’s collection, assurance and use of border data to provide a comprehensive and holistic view of data at the border. 

Establish resilient ‘ports of the future’ at border crossing points to make the experience smoother and more secure for passengers and traders, while better protecting the public and environment. 

Use upstream compliance to move processes away from the actual frontier where appropriate, both for passengers and traders. 

Build the capability of staff and the border industry responsible for delivering border processes, particularly in an environment of greater automation; and simplify communication with border users to improve their experience. 

Shape the future development of borders worldwide, to promote the UK’s interests and facilitate end-to-end trade and travel."

The 4th of those "transformations" is reminiscent of arguments of the Democratic Unionist and the European Research Group politicians against regulatory alignment or the Northern Ireland protocol during the EU withdrawal agreement negotiations on the ground that it ought to be possible to avoid checks and inspections at the geographical frontier between Northern Ireland and the Irish Republic by carrying them out elsewhere with the appropriate technology.

Whether or not the hope of renegotiating the Northern Irish protocol is the motivation for its interest in the topic or merely coincidental, the Cabinet Office published its "Border Innovation Hub" on 31 Aug 2021 together with a Technology and Innovation Roadmap, a list of APIs (Application Programming Interfaces) and guidance on Opportunities and Funding.   The purpose of the Hub is said to bring "together information from across government to help provide industry with the tools needed to innovate at the border."  The overview states that 

"Technology and innovation to unlock new possibilities for smoother and safer border processes is a key element of the new strategy."

Further information about how the government hopes to achieve that objective is set out in the Roadmap.

The Roadmap is taken from the  2025 UK Border Strategy and includes the following:

• "Create a visible first point of contact in UK Government for border innovation suppliers and users"
• "Define target use cases with industry.
• "Set and collate security and interoperability standards," and
• "Work across government to design the border and support border innovation and its uptake."

The "first point of contact" mentioned above is the "Border Innovation Hub". 

Possible funders for research and development work by industry include the Defence and Security Accelerator, the Connected Places Catapult,  Transport Research and Innovation Grants and Innovate UK.

Any inventions resulting from border innovation would be patentable subject to the provisions of the Defence Contracts Act 1958.  The names of businesses, products and services might be registrable trade marks.  Anything written down would be protected from copying by copyright.  Any commercially sensitive unpublished research could be confidential.   Anyone wishing to discuss those matters should contact me on 020 7404 5252 or send me a message through my contact form.

UK Innovation Strategy

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Jane Lambert

In his foreword to Global Britain in a competitive age which I discussed in NIPC Brexit on 19 March 2021, the Prime Minister wrote: "Our aim is to have secured our status as a Science and Tech Superpower by 2030." The Secretary of State for Business referred to that target in his foreword to UK Innovation Strategy Leading the future by creating it.  In my article, I wrote:

"As an intellectual property lawyer, I should love to see the UK become a science and technology superpower with vibrant creative industries attracting investment and expertise from around the world.   I just can't see how it is going to happen,"

I read the UK Innovation Strategy very carefully in the hope that it would explain how the UK will become a science and tech superpower in 9 years.

Synopsis

The document is 116 pages long divided as follow:  

• Secretary of State's Foreword (pages 4-5);
• "At a glance":  a bulleted list of the steps that the government proposes to take (page 6);
• "Introduction:  Why do we need an Innovation Strategy?":  a summary of the strategy (pages 7 - 10);
• Part 1 "Innovation today" covering "What is innovation?", "Why is innovation important?", "The challenge: Innovation created the modern world, but progress is slowing" and "The opportunity: The UK is ideally placed to lead a renewed global spirit of innovation" (pages 11 to 17);
• Part 2 " Innovation tomorrow" covering "Learning from the pandemic to create the world’s best innovation ecosystem", "Vision 2035: The UK as a global hub for innovation" and "Tracking progress towards our vision" (pages 18 - 21);
• Part 3: "Achieving Vision 2035" covering "Pillar 1: Unleashing Business – We will fuel businesses who want to innovate", "Pillar 2: People – We will make the UK the most exciting place for innovation talent", "Pillar 3: Institutions & Places – We will ensure our research, development & innovation institutions serve the needs of businesses and places across the UK" and "Pillar 4: Missions & Technologies – We will stimulate innovation to tackle major challenges faced by the UK and the world and drive capability in key technologies! (pages 18 - 100);
• Part 4: "Achieving our ambitions – implementation and next steps" (pages 101 - 107);
• Annex A "Innovation institutions" (pages 108 - 113) and
• Annex B: "List of Stakeholders Consulted" (pages 114 and 115).

Becoming a "Science and Rech Superpower" in Nine Years

The Introduction states on page 8:

"The Prime Minister has announced our intention to be a science superpower by 2030, placing science, innovation and technology at the heart of his vision for the UK. This involves being to science and technology what we are to finance: a central hub of the global economy, and the country that the world’s most innovative people and firms make their home."

Although there are signs that it has lost some business to Amsterdam, Dublin, Frankfurt, Madrid, Milan and Paris as a result of the UK's departure from the European Union, London remains one of the world's leading financial centres rivalled only by New York, Shanghai, Hong Kong and Singapore (see The Global Financial Centres Index 29  Long Finance. March 2021. Retrieved 18 March 2021).

A good measure of scientific and technical activity is the number of patent applications sought in a year.  According to the World Intellectual Property Indicators for 2019 published by the World Intellectual Property Organization, applicants in China applied for more than 1.5 million parents from the world's top 20 patent offices in 2018.  The United States came second with 597,141. Japan followed with 313,567 and South Korea came fourth with 209,992.  Companies from those countries. Huawei, Mitsubishi, Samsung, Qualcomm and Oppo, were among the top 5 applicants.  China, the USA, Japan and South Korea can fairly be regarded as scientific and technical superpowers.   If the UK is to be in science and technology what it is in finance it should aspire to create a similar number of patentable inventions by 2030.

With 29,941 patent applications in the world's top 20 parent offices, the UK lay number 13th.  It was ahead of Mexico but behind Taiwan, Germany, India, Russia, Canada, Australia and Brazil.   If the UK is to leapfrog over all those countries to join the USA, China, Japan and South Korea as a scientific and technical superpower it has a lot of work to do.

The government acknowledges the magnitude of that task on page 18 in the section headed "The opportunity: The UK is ideally placed to lead a renewed global spirit of innovation":

• "Business investment in R&D has fallen relative to our international peers. 

• There are low rates of technology adoption by firms that lead to underutilised knowledge. 

• We are at risk of a ‘brain drain’, the UK being a net exporter of talent. 

• Our workforce has skills gaps in some key areas which are at risk of growing in the coming years. 

• Our regulatory system often favours incumbent businesses over innovative new ones. 

• Growth is increasingly due to consumption, not due to investment. 

• Data, research and IP must be safeguarded to maintain competitiveness."

 Learning from the Pandemic

Part 2 of the UK Innovation Strategy points to the development of the Oxford/Astra-Zenica vaccine and other medical technologies in response to the pandemic as examples of British scientific and technical prowess and indicators of the way forward to superpower status. The speed with which the Oxford/Astra-Zenica vaccine had been developed and deployed was indeed a substantial achievement despite criticism of its effectiveness and side effects and the delay in obtaining regulatory approval in the USA.   However, similar success has been achieved elsewhere.  China has developed 7 vaccines that have achieved regulatory approval.  Russia has developed another 4.  The USA another 3 although the Pfizer–BioNTech and Janssen or Johnson & Johnson were developed in collaboration with German and Dutch scientists.  Two vaccines have also been developed by Cuba.  Others have been developed by India, Iran, Kazakhstan and Taiwan,

The Four Pillars

On page 21, the UK Industrial Strategy states that the government has four objectives it refers to as ‘Pillars’ in the document:

• "Pillar 1: Unleashing business – We will fuel businesses who want to innovate. 

• Pillar 2: People – We will make the UK the most exciting place for innovation talent. 

• Pillar 3: Institutions & Places – We will ensure our research, development & innovation institutions serve the needs of businesses and places across the UK. 

• Pillar 4: Missions & Technologies – We will stimulate innovation to tackle major challenges faced by the UK and the world and drive capability in key technologies."

These are amplified in  "At a glance" on page 6:

"Pillar 1: Unleashing Business – We will fuel businesses who want to innovate.

Increase annual public investment on R&D to a record £22 billion. 

Reduce complexity for innovative companies by developing an online finance and innovation hub between Innovate UK and the British Business Bank. 

Invest £200 million through the British Business Bank’s Life Sciences Investment Programme to target the growth-stage funding gap faced by UK life science companies. 

Consult on how regulation can ensure that the UK is well-placed to extract the best value from innovation. 

Form a new Business Innovation Forum to drive implementation of this Strategy.

 Pillar 2: People – We will make the UK the most exciting place for innovation talent. 

Introduce new High Potential Individual and Scale-up visa routes, and revitalise the Innovator route to attract and retain high-skilled, globally mobile innovation talent. 

Support, through Help to Grow: Management, 30,000 senior managers of small and medium-sized firms to boost their business’ performance, resilience, and growth. 

Pillar 3: Institutions & Places – We will ensure our research, development and innovation institutions serve the needs of businesses and places across the UK.  

• Undertake an independent review, led by Nobel Laureate Professor Sir Paul Nurse, Director of the Francis Crick Institute, looking across the landscape of UK organisations undertaking all forms of research, development and innovation. 

• Allocate £127 million through the Strength in Places Fund to develop R&D capacity and support local growth across the UK. 

• Invest £25 million of funding to the Connecting Capability Fund to help drive economic growth through university-business innovation. 

Pillar 4: Missions & Technologies – We will stimulate innovation to tackle major challenges faced by the UK and the world and drive capability in key technologies.  

• Establish a new Innovation Missions programme to tackle some of the most significant issues confronting the UK and the world in the coming years. 

• Identify the key seven technology families that will transform our economy in the future.

• Launch new Prosperity Partnerships to establish business-led research projects to develop transformational new technologies, with £59 million of industry, university and government investment."

Those  "pillars" are addressed in more detail in Part 3 and repeated for good measure in Part IV. 

Intellectual Property

One of the reasons why there are relatively few patent applications from businesses in the UK is the high cost of prosecution and enforcement.  

In 2004 the European Patent Office commissioned Roland Berger Market Research to compare the cost of patenting an invention in the UK and 5 other countries with the cost of patenting it in the USA and Japan (see my article Cost of Patents: EPO Report tells us what most of us already knew 23 Dec 2005).   In its Study on the Cost of Patenting Roland Berger reported that the cost of patenting an invention consisting of 10 claims on 3 pages, 11 pages of description designating 6 countries including the UK would be €30,530.  The cost of patenting the same invention would be €24,100 in the USA and €5,460 in Japan.  The cost of patenting in Europe may have fallen as a result of the Agreement on the application of Article 65 of the Convention on the Grant of European Patents in London (OJ EPO p 560 12 Feb 2001) but it is still believed to be higher than in the USA and Japan.

According to TaylorWessing's Patent Map. the typical costs of an infringement claim are between £200,000 and £1 million in England, €200,000 - €800,000 in France, €100,000 - €200,000 on infringement and a similar amount on validity in Germany, €75,000 - €200,000 in the Netherlands and  €2,530 - €375,000 in Switzerland.   The costs of litigation in the USA will be at least as much as in England because it is also a common law country but it is unusual for lawyers' fees to be awarded against the unsuccessful party.  It is arguable that England is the most expensive and possibly the riskiest jurisdiction in the world in which to enforce an intellectual property right.

Governments of both parties have been aware of this problem for at least the last 20 years (see DTI Innovation Report Competing in The Global Economy: The Innovation Challenge 1 Dec 2003).  They have also been aware of the solution which was an EU patent to be enforced by an EU patent court.  It is for that reason that the UK ratified the Community Patent Convention in 1975. It supported proposals for a Litigation Protocol to the European Patent Convention, a regulation for an EU patent and later the agreement for a unitary patent.  Even after the 2016 referendum, the government believed it would be possible to remain party to the agreement.  Mr Boris Johnspn in his capacity as Foreign Secretary actually deposited the UK's instrument of ratification on 26 April 2018.   Sadly, Amanda Solway MP gave notice of British withdrawal from the Unified Patent Court Agreement just over a year ago (see UK Withdrawal from the UPCA 20 July 2020).

As I argued in Has the Volte-Face on the Unified Patent Court Agreement been worth it? in NIPC Brexit on 6 April 2021 and in other articles, the sudden reversal by Amanda Solway of a longstanding policy on a unitary patent did British industry and science no favours.  It has perpetuated the disincentive to patent in this country.   Without adequate legal protection for innovation, investment in research and development can be expected to diminish.

The government might have been expected to respond that withdrawal from the Unified Patent Court Agreement was a necessary consequence of Brexit and that losses resulting from withdrawing from Europe will be more than offset by new opportunities elsewhere.  I looked carefully to see whether that was the case but I found nothing in the UK Innovation Strategy to suggest that it was.  Though the Intellectual Property Office published a press release on 29 July 2021 promising that IP was at the heart of the new innovation strategy, there is very mention of IP at all.  The word "patent" occurs twice in the document's 116 pages and there are a few paragraphs under the heading "Safeguarding Intellectual Property" on pages 39 and 40.  There is nothing in those paragraphs on reducing the cost of patenting or the cost of enforcing intellectual property rights.

I am not the only commentator to spot that lacuna.   Graeme Moore wrote in his comment New Innovation Strategy for the UK for The Patent Lawyer Magazine:

"However, there is a major factor that the UK government’s announcement fails to address satisfactorily – how to better protect the innovations developed in the UK from being copied and exploited by other companies who have not invested in the innovations? This should be at the forefront of the UK government’s mind when committing to spend UK taxpayers’ money on R&D – it’s a key part of ensuring a return on investment."

Conclusion

There are announcements to be welcomed in the Strategy such as the spending promises in Piller 1 and the "new High Potential Individual and Scale-up visa routes" in Pillar 2.  But the idea that British companies will be competing with the likes of Huawei, Mitsubishi and Samsung in such fields as artificial intelligence,  mobile telecoms, consumer electronics or any other new technology is as fanciful as the garden bridge, an airport in the Thames estuary and a bridge to Northern Ireland.  

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