Word IP Day Celebrations in Yorkshire

Considering that World Intellectual Property Day followed an Easter Bank Holiday Monday with the best April weather in living memory, that it fell 3 days before a Royal Wedding and that the Intellectual Property Office kept a very low profile, it is remarkable that anybody in the United Kingdom paid any attention to that day at all. In Yorkshire, at least, the day was a resounding success.

Leeds Central Library, one of the UK’s Patent Information Centresheld an exhibition and seminar with Dr Peter Groves as the guest speaker. Peter has just published an indispensable “Dictionary of Intellectual Property Law” which his publishers made available at a special rate to celebrate the day.  The event was attended by local inventors, journalists, product development consultants, lawyers and others.  “An extremely valuable event” was the verdict of the editor of “Science People and Politics”.

In the afternoon Peter and I moved on to Gumption Centres in Bradford where we had an even more enthusiastic audience. Attending the event were artists, entrepreneurs, graphic designers, management consultants, software developers and publishers some of whom had travelled considerable distances.  This time we were joined by trade mark agent Philip Cooper of VeryMark who gave us a very thorough introduction to brand and design law. There then followed a lively Q & A session over such topics as diverse as software patents and rights in performances.  Altogether, a very good day out.

We are already planning for next year which should avoid the competing attractions of this year.   The Bradford and Leeds events will be bigger and better, of course, but we also hope to hold events in other big cities such as Hull, Sheffield and York as well as many of the smaller communities across our county.

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WIPO Day Road Show

“Designing the Future” is the theme of this year’s World Intellectual Property Day 2011. In his message, Francis Gurry, the Director General of the WIPO, said:

“Design touches every aspect of human creativity. It shapes the things we appreciate from traditional crafts to consumer electronics; from buildings and bicycles to fashion and furniture. Design has been called “intelligence made visible”.

Design is where form meets function. It determines the look and feel of the products we use each day – from everyday household items to the latest tablet computers. Design marries the practical with the pleasing. It brings style to innovation.”

In everyday language design can refer either to an object’s appearance or to the way it works. Thus, we speak of “fashion design” and “engine design”. The former is ornamental and the latter functional.

Most countries protect ornamental design by one means or another. For example, EU member states are required by art 3 (1) of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs to protect by registrations designs that are new and have individual character. In the USA, patents known as “design patents” are available for new, original and ornamental designs for articles of manufacture under 35 USC 171. In the UK we protect new designs having individual character by registration in compliance with the Directive, but we also protect functional designs by an intellectual property right that is almost unique to this country known as unregistered design right. Superimposed on our national design law is EU or Community design law which provides a system of design registration for new designs having individual character known as registered Community designs and automatic short term protection against copying for designs that could be registered known as unregistered Community design. Design right protects the shape or configuration of articles or parts of articles including components and even features that cannot be discerned by the human eye. However, surface decoration is specifically excluded from design right protections.   Thus, such things as the design of fabrics and wall coverings can be protected by artistic copyright, design registration or possibly even as unregistered Community designs.

Confused? “You should be” as they used to say on Soap. I shall try to demystify design law in a quick presentation consisting of me, Peter Groves and A N. Other.   Together we will present a whistle-stop road show around Yorkshire to celebrate World Intellectual Property Day on 26 April. We shall visit Leeds, Bradford and Sheffield at 10:00, 14:00 and 18:00 respectively.  As Peter has just published his excellent Dictionary of Intellectual Property Law there may even be the odd Fat Rascal or samosa washed down by Black Sheep or sweet lassi. Gradely!

If you want to learn more about this intellectual feast contact me on 0800 862 0055 or fill in my contact form. If you are interested in intellectual property in Yorkshire generally you can also follow my IP Yorkshire blog.

Posted in Community Designs, Designs, Registered Designs, World IP Day | 1 Comment

World Intellectual Property Day

World Intellectual Property Day takes place on 26 April. It commemorates the day in 1970 when the Convention establishing World Intellectual Property Organization came into force. Since 2000 the WIPO and its member states have held and encouraged others to hold activities, events and campaigns to raise awareness of intellectual property and show how it affects our everyday lives. This year the theme is “Designing the Future” and the focus is to show design touches every aspect of human creativity.

Some countries have celebrated World Intellectual Property Day very enthusiastically. Compare the events arranged by Belarus and the Republic of Moldova last year with the CIPA clinics, Harrison Goddard Foote’s seminar on trade marks and the Scottish Law Society’s conference. We did rather better the year before but were still eclipsed by countries like El Salvador and Vietnam.

This year the UK is making more of an effort. If you have not yet arranged anything for your area here are some suggestions from the WIPO. Here are some of the events that are taking place in Yorkshire and the Humber.

Bradford

The only city in England and possibly the world to name a street after an intellectual property right, will hold an all day exhibition and seminar at Gumption Centres.

Leeds

Leeds Central Library will hold an exhibition and possibly a seminar, clinic and other activities.

Sheffield

Special events will be held at Central Library and other venues.

Over the next few days I shall be publicizing all the events that come to my notice on this blog and my other websites as and when I learn about them. If you want to tell me about them call me on 0800 862 0055 or contact me through this contact form.

Posted in WIPO, World IP Day | Tagged , , , , | 2 Comments

Court of Justice of the European Union holds European and Community Patent Court to be incompatible with EU Law

One of the reasons why the UK lies in 7th place in the number of European patent applications behind the USA, Germany , Japan , France , the Netherlands  and Switzerland  and just barely ahead of South Korea  is that England is arguably the most expensive country in the world in which to enforce a patent.  In November 2003 the Intellectual property Advisory Committee compared the costs of patent enforcement in England, France, Germany, the Netherlands and the USA.   On page 50 of “The Enforcement of Patent Rights”, they reported that the average cost in France, Germany and the Netherlands ranged from €10,000 to €50,000 but the average cost in England was £150,000 to £250,000 in the Patents County Court and a whopping £1 million in the Patents Court. The only country with comparable costs was the USA but in that jurisdiction costs do not usually follow the event, counsel can accept instructions on a contingency fee and the law is in many respects more favourable to patentees.

We have recently done something about litigation in the Patents County Court by limiting the costs that can be awarded in that court to a scale with an ultimate ceiling of £50,000 (see my article “New Patent County Court Rules” IP/IT Update blog 31 Oct 2010) but for heavier claims our best hope lay in the draft Agreement on the European and Community Patent Court of 29 March 2009. That would have provided for a court of first instance comprising a central division and local and regional divisions, a court of appeal and a joint registry.  In other words, a level playing field for businesses and lawyers across the EU.

Most member states agreed that “the envisaged agreement constitutes a legally possible way to achieve the envisaged aims”. Alas, the Irish, Greek, Italian, Spanish and one or two other governments did not and so the Council asked the Court of Justice of the European Union for an opinion on the question pursuant to art 218 (11) of the Treaty on the Functioning of the European Union. The Court has today delivered its opinion (Opinion 1/09 of the Full Court 8 March 2011) and concluded that:

“The envisaged agreement creating a unified patent litigation system (currently called ‘European and Community Patents Court’) is not compatible with the provisions of the EU Treaty and the FEU Treaty.”

The Court seems to have reached its decision by the following reasoning:

(1)           The Treaty of Rome established a new legal order in which EU law takes primacy over national law:

“It is apparent from the Court’s settled case-law that the founding treaties of the European Union, unlike ordinary international treaties, established a new legal order, possessing its own institutions, for the benefit of which the States have limited their sovereign rights, in ever wider fields, and the subjects of which comprise not only Member States but also their nationals (see, inter alia, Case 26/62 van Gend & Loos [1963] ECR 1, 12 and Case 6/64 Costa [1964] ECR 585, 593). The essential characteristics of the European Union legal order thus constituted are in particular its primacy over the laws of the Member States and the direct effect of a whole series of provisions which are applicable to their nationals and to the Member States themselves (see Opinion 1/91 [1991] ECR I‑6079, paragraph 21).” (para [65] of the judgment)

(2)       “The guardians of that legal order and the judicial system of the European Union are the Court of Justice and the courts and tribunals of the Member States.” (para [66]).

(3)       The proposed Patents Court would lie outside the EU institutional and judicial framework (para [71]).

(4)       It would nevertheless have to decide questions of EU patent law and possibly other legislation (para [78]).

The Court’s position is summarized in para [89]:

“Consequently, the envisaged agreement, by conferring on an international court which is outside the institutional and judicial framework of the European Union an exclusive jurisdiction to hear a significant number of actions brought by individuals in the field of the Community patent and to interpret and apply European Union law in that field, would deprive courts of Member States of their powers in relation to the interpretation and application of European Union law and the Court of its powers to reply, by preliminary ruling, to questions referred by those courts and, consequently, would alter the essential character of the powers which the Treaties confer on the institutions of the European Union and on the Member States and which are indispensable to the preservation of the very nature of European Union law.”

It seems to me that exactly the same objections could be made of the Boards of Appeal of the European Patent Office which have subsisted quite happily alongside the Court of Justice and national courts for well over 30 years.

How do we get round this latest roadblock? We could revive the idea of designating national courts as EU patent courts as set out in the Community Patent Convention. We could revisit a French idea for a European Patent Judiciary with advisory powers only.   For so long as Spain and Italy insist on adding their languages to the three already in use in Munich the best we can expect is a patent for some of the member states of the EU.   The courts that will enforce rights under that patent will be national courts.   There is no reason why they should not make preliminary references to the Court of Justice on issues of EU law and seek guidance from a European Patent Judiciary on the construction and enforcement of the European Patent Convention.

Anyone who wants to discuss this article or the proposals for the European and Community Patents Court in general can call me on 0800 862 0055 or use my contact form.

Posted in European and Community Patent Court, Litigation | Leave a comment

Licensing Out Your Invention

“I’m an inventor, me, not a businessmen. I’m quite happy to let someone else work my patent just so long as we share the proceeds 50/50.” Barely a day goes by without someone saying this to me and I am sure other IP professionals the length and breadth of this land.

Licensing your invention or other intellectual asset to an established business is not a bad idea and for some industries it is the only way the inventor is ever going to commercialize his or her invention. Companies like Henkel AG & Co KGaA and Procter and Gamble have always invited members of the public to send in ideas for new products. The Intellectual Property Office has published a useful booklet on the topic.

But if you want to go down the licensing route a dose of humility and possibly a double dose of realism would not come amiss. Don’t assume your potential licensee will roll out the red carpet for you. You are most unlikely to be God’s gift to his industry. If the licensee is a big company he or she has probably recruited science and engineering graduates from the best universities in the world. The chances of your coming up with something they have missed are minuscule. If by some fluke you have done just that you have to imagine how you would explain to a bright, young set of PhDs from St. Andrews, Imperial and Cambridge why you have put on hold the project upon which they have spent the last 2 years of their lives in favour of a submission from a Mr. Pooter of Holloway.

The second thing you need to know is that your potential licensee owes its first duty to its shareholders and not to you. If its management are any good they will run the hardest possible bargain they can with you. If they can find a way of exploiting the competitive advantage that your product opens up without actually taking a licence from you they will do so. They may do that by designing round your patent, challenging its validity, looking for loopholes or just making the product and daring you to sue relying on the fact that you are most unlikely to have before-the-event insurance or other means to enable you to do so.

Thirdly, many businessmen have enough on their plate already without mapping out a route to market for your product. Your chances of persuading them to take a licence form you would be greatly enhanced if you can show them how they can make money from your idea. “That requires market research, detailed costs and profit forecasts, in short, a business plan” says Professor Ron Jones inventor of vitrification of nuclear waste, body armour for transport aircraft in war zones and heating elements.

Fourth, you need plenty of good professional advice from lawyers, patent agents, accountants, engineers and all sorts of other experts. I can help you make a start and introduce you to some of the other professionals you may need to know. Contact me through my contact form.

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Choice of Forum: Chancery District Registry or Patents County Court

Intellectual property cases other than those involving patents, registered designs, registered Community designs, semiconductor topographies or plant varieties cases may be issued out of:

  • The Royal Courts of Justice;
  • the Chancery District Registries at Manchester, Leeds, Liverpool, Newcastle, Birmingham, Bristol or Cardiff; or
  • the Central London, Manchester, Leeds, Liverpool, Newcastle, Birmingham, Bristol or Cardiff County Courts.

Intellectual property cases other than other than those involving patents, registered designs, registered Community designs, semiconductor topographies, plant varieties, trade marks or Community trade marks may also be issued out of the Caernarfon, Mold or Preston District Registries or the Caernarfon, Mold or Preston County Courts.

Until a few months ago I tended to advise clients outside London to issue proceedings out of the nearest Chancery District Registry or associated County Court unless there was a good reason for litigating in London. That was usually because a local venue was more convenient for the parties and witnesses. In most cases it was also less expensive since legal representatives could attend case management conferences and interim applications rather than London agents. However, I am now encouraging clients from outside London to consider the Patents County Court for all intellectual property claims.

The Patents County Court now offers small and medium enterprises in Britain a forum for intellectual property dispute resolution that is at least as good, and only slightly more expensive, than the District Courts (Landgerichthof) of Dusseldorf, Hamburg, Mannheim and Munich (see “The New Patents Court Rules” 31 Oct 2010). The advantages of the Patents County Court are as follows:

  • there is a full time specialist judge;
  • the judge is supported by excellent court staff;
  • CPR 63.31 enables the court to control costs by limiting witness statements, experts’ reports, disclosure and the duration of trials;
  • interim applications are made in writing and considered on the documents;
  • case management conferences take place by telephone or video link wherever possible; and
  • there are scale costs for each stage of the litigation with an overall cap of £50,000.

Even before the new rules were introduced, the Patents County Court judge was able and willing to sit out of London to save time and costs (paragraph 5 of the “Patents Court and Patents County Court Guide”). The Patents County Court must now be the jurisdiction of choice even in a passing off dispute between two shopkeepers in Carlisle or an unregistered design rights case between boat builders in Barnstaple.

Posted in Litigation | 4 Comments

Client Profile No. 1: Gita Mistry Food Ltd.

GitamistryThis is a new feature.  Every so often I shall profile an interesting client. I can think of no better person with whom to start than Gita Mistry, director and shareholder of Gita Mistry Food Ltd.

Gita Mistry, winner of the BBC “Britain’s Best Home Cook”, award has been described by Jay Rayner writer and broadcaster  as “The Greatest Indian Cook in Britain”. Through her company she offers cookery demonstrations, private party cuisine (catering for dinner parties at home or business lunches in the board room) and TV and media work. The photo to the right shows her at the Bingley Fine Food Festival. Visit Gita’s website at www.gitamistryfood.co.uk for some of her great recipes, video clips of some of her triumphs such as her win in “Eating with the Enemy” and her civic reception in Bradford or you can also subscribe to her newsletter through the site. You can also follow Gita on twitter, Facebook and Linkedin.

I first met Gita through one of my IP clinics when she sought my advice on design protection. Since then I have drafted a number of agreements and standard terms and conditions for her business, and advised her on all sorts of intellectual property, licensing and contractual issues under the Public Access Rules.

When asked what she felt about the service she has received, Gita replied:

“Well working with a legal adviser can be a tricky task but with Jane Lambert at NIPC you will receive expertise and quality. A bespoke service.”

Since barristers have the image of being rather out of touch with business speaking a different language  Gita added:

“Her approachable manner with plain English talking makes it that much easier in providing me with precisely relevant solutions to my business requirements .”

If you want advice on protecting or exploiting your brands, design, technology or creative works, give me a call on 0800 862 0055 or contact me through my online form.

Posted in Client Profile, Clinics, Terms and Conditions | Leave a comment

Copyright: Protection of Content

The IPO has published a useful little note “How do I protect copyright?” The announcement on the “What’s New” page suggests that it is an update on the protection of websites but the note applies more generally.

The first point to note is that copyright does not have to be registered in the UK. There are a number of private copyright registration services but it is unlikely that they add anything more than the age old practices of posting a sealed copy of the work to yourself or depositing it with a solicitor or bank.   The note emphasizes that that does not prove that a work is original or created by you but will help show that the work was in your possession at a particular date.

The second suggestion, which I endorse, is to insert the word “copyright” or “(c)” symbol followed by the name of the owner and the year of creation. Again, that is not essential in this country but it will put folk on notice that copyright is claimed in the work and that you believe the work belongs to you.

If you would like to discuss copyright protection, give me a ring on 0800 862 0055 or send me a message through my contact form.

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Guernsey’s Patent Law

In her article Proposed DIFC Intellectual Property laws – A Hub for Innovation, Madeleine Heal proposed legislation whereby foreign patents, trade marks and designs could be re-registered for the Dubai International Financial Centre. A footnote to her article referred to the position in Guernsey so I decided to find out more.

Guernsey has its own Intellectual Property Office and its own intellectual property laws the most interesting of which is The Registered Patents and Biotechnological Inventions (Bailiwick of Guernsey) Ordinance, 2009. This Ordinance provides for the registration in Guernsey  of patents that have been registered overseas:

“Only the oversea registered proprietor of an oversea registered patent may be registered as the proprietor of a patent in the Register of Patents, and in this Ordinance -

(a)      an “oversea registered patent” means a patent registered in a designated country in accordance with the laws relating to the registration of patents in force in that country,

(b)      the “oversea registered proprietor” of an oversea registered patent means the person registered in a designated country as the proprietor of that patent in accordance with the laws described in paragraph (a), and

(c)      a “designated country” means a country or office mentioned in Schedule 2.”

The list of designated countries in Schedule 2 includes not just the UK and the European Patent Office but the USA, China, India, Russia and several other countries.  More interesting still is that there is no equivalent to s.1 (2) of the United Kingdom Act. Hence patents for business method and software inventions granted by say the US Patent and Trademark Office can be registered in Guernsey.

Most interesting of all is that the revocation of a patent overseas does not necessarily result in the patent’s revocation in Guernsey.  That gives rise to all sorts of possibilities which are explored by the Guernsey lawyer, Elaine Gray, in her fascinating article “Guernsey gets ‘IT’: Ditching the domino and the ‘Bilski’ bonus.”

Now why has 73 square kilometre bailiwick off the coast of France enacted this interesting statute? My guess is that it has something to do with IP securitization. We don’t hear much of securization nowadays probably because mortgage backed securities were the means by which bad debts were offloaded onto investors.  But that does not mean that the idea of lending money against future royalties or other income streams and spreading the risk as a means of raising funds for start-ups is a bad one.

Posted in Guernsey, Intellectual property strategy, Patents, securitization | 1 Comment

What is IP Strategy?

I have yet to find a generally accepted definition of IP strategy but the US blogger Jackie Hutter offers an excellent definition of IP strategist in her article “What is an IP Strategist?”

“IP Strategists are a new type of Intellectual Property advisor.  We combine business acumen with IP knowledge to provide business-focused advice.  An IP Strategist does not advise you to spend your money on obtaining IP because you can, but because you need to.  That is, an invention may be legally entitled to a patent, but if that patent does not protect a product or technology that your company is selling currently or planning to sell in the future, obtaining a patent is a waste of your company’s valuable resources.  To ensure that you do not waste money on IP rights that do not align with your goals, an IP Strategist works with you to ensure that you only get IP that supports and maximizes your business value.  In other words, an IP Strategist first listens to you to determine what your business goals are and how you wish to achieve them and only then will the IP Strategist suggest that you move forward with obtaining cost appropriate IP protection.”

That passage and in particular the last sentence suggests that IP strategy means obtaining optimum legal protection of an intellectual asset to achieve a business objective.   For the purpose of this definition “an intellectual asset” means a brand, design, technology or work of art or literature. It is stressed that optimum means best: not the most extensive and certainly the most expensive – but the most appropriate legal protection for a business name or logo, a new product design, a new invention, a film, painting or live performance.  In this context it must be stressed that many assets may be protected in more than one way. An inventor can patent his or her invention but equally he or she can keep it under wraps and rely on the law of confidence to prevent unauthorized use or disclosure.  Trade secrecy can last much longer and be much more effective than a patent. The recipe for Coke has been kept secret for well over a century and that for Chartreuse considerably longer. Similarly, a trader can apply to register a trade mark or he or she can rely on the law of passing off.  The choice of legal protection will depend on a number of factors such as the nature of the asset, the manner in which it is to be exploited, the countries in which it is to be sold, the shelf life of the competitive advantage and so on.  Patenting in all the major markets of the world may be the optimum legal protection for a pharmaceutical product that has taken years and cost millions to develop. Unregistered Community design may be sufficient for a fashion item or novelty that will be in demand for a season or even less.

IP strategy goes far beyond choosing the optimum legal protection for an intellectual asset since business objectives can be furthered by licensing, collaboration and enforcement. It is significant that the publication Intellectual Asset Management, which lists those it believes to be “The World’s Leading IP strategists”, divides its list into the following sectors of expertise: brokering, defensive patent aggregation, finance, intellectual asset and intellectual capital management, IP auctions, IP insurance, IP management consultancy, IP-backed lending, legal, licensing, M&A, tax, technology transfer and valuation. The “legal” sector for instance includes litigation and litigation support as well as infringement evidence collection, patent and trade mark prosecution; expert witness services, IP audits, due diligence, arbitration and insolvency.   The British names on AIM’s list include patent agents like Matthew Dixon of Harrison Goddard Foote and solicitors such as Ben Goodger of Rouse Legal.

Where does a client go for intellectual property strategy? Possibly but not necessarily his patent or trade mark attorney. I say “possibly” because not all patent or trade mark agents see intellectual property strategy as part of their job though many do.  When I posted “In Defence of Patent Agents” on 30 Oct 2010 I received the following very thoughtful response from a Mr. George Pappas a US patent attorney practising in Greece:

“As a US trained patent lawyer of 20 plus years now practicing in Europe, I cannot disagree more that a distinction can be drawn between a patent prosecutor and a patent strategist. A patent expert is “a patent strategist” inherently. ……………. It is the job of the skilled patent attorney to figure out what the invention is based on information asked and provided by the inventor, and where possible knowledge of the prior art. This requires, at a bare minimum, broad and sufficient understanding of (i) the client’s technology, (ii) competitive landscape, (iii) deep understanding of patent law as it applies to the “invention” as claimed, (iv) a deep understanding of what the client aims to accomplish with a particular patent or set of patents, (v) a deeper understanding of litigation strategies and enforceability of patents generally in various jurisdictions around the world; and (vi) most importantly, a client’s budget constraints in the short term, and its exit strategy in the long term.”

Another patent attorney who appears to be an IP strategist is Don Lawrie of Lawrie Intellectual Property of Glasgow:

“We want to know about your business. Only then can we advise you how best to protect your intellectual property. We can work with you in a traditional client-attorney relationship, or we can act as in-house counsel for a specified number of days per month. Tell us what you want, and we’ll meet your requirements.”

But there are other advisers and possibly one of the best sources of advice on IP strategy is the patent bar. Barristers are consulted by patent attorneys on difficult points of law that arise during patent or trade mark prosecution and we are briefed by attorneys in hearings before the Comptroller and appeals to the court.  The judges of the Patents Court and Patents County Court are drawn from our numbers as are the judges of the Chancery Division and Chancery County Courts. We are consulted on licensing and other contractual issues and, of course, infringement proceedings. As we do not apply for patents, trade marks or registered designs we can give completely disinterested advice on the optimum intellectual property package. My article on “Advice and Drafting” helps explain why counsels’ opinions are so highly regarded.

Posted in Intellectual property strategy | Tagged , , | 6 Comments