31 January 2018

NESTA Inventor Prize Shortlist












Jane Lambert

In "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy 24 Jan 2017 I blogged about the government's commitment is to:
"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."
I reported on progress in The Inventors Prize 2017  29 June 2017.

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

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

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

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

30 January 2018

No Invention Left Behind - Making Money from an Invention

Author SimonTrew
Licence CC BY-SA 3.0 
Source Wikimedia Commons

















Jane Lambert

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

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

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

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

27 January 2018

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

Jane Lambert











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

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

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

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

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

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

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

13 October 2017

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





















Jane Lambert

On 23 Jan 2017, the Department for Business, Energy & Industrial Strategy ("DBEIS") published its green paper Building Our Industrial Strategy which I discussed in  "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy 24 Jan 2017. In that article, I summarized that green paper as follows:
"Very briefly the green paper suggests ways in which the UK could improve productivity and spread prosperity more evenly across the country and throughout society. After stating those aims it suggests 10 policies that it calls "pillars" to achieve them. One of those pillars is "Investing in science, research and innovation" to "become a more innovative economy and do more to commercialise our world leading science base to drive growth across the UK." The document mentions some of the steps that the government is already taking and then lists some new commitments on page 34."
One of the government's new commitments was "reviewing how to maximise the incentives created by the Intellectual Property system to stimulate collaborative innovation and licensing opportunities – including considering the opening up of registries to facilitate licensing deals and business-to-business model agreements to support collaboration."

On 11 Oct 2017, the Intellectual Property Office published a consultation document entitled Industrial Strategy: Intellectual Property Call for Views. It began with the question:
"What can we do to encourage innovators to do more collaboration and commercialisation, to stimulate knowledge exchange and promote follow-on innovation?"
It explained that the government wants to find ways to stimulate collaborative innovation and increase licensing opportunities for IP rights. The purpose of the call is not to initiate a wholesale review of the IP legislative system, but to look for targeted, nonregulatory interventions that the IPO could make, which would maximize the incentives provided by our IP system.  The government wonders whether there are new products or services that the IPO could offer which would encourage more collaboration, more creation and exploitation of IP.

The ideas that the government seeks should meet the following criteria:
  1. Targeted intervention to either process or policy 
  2. Within the remit of intellectual property 
  3. Backed by evidence of the market failure or commercial potential.
Evidence can come in the form of narratives of respondents; experiences, case studies, published analysis or empirical data. Respondents are asked to state:
  • Whether they are you responding as an individual, business, intermediary, representative body; 
  • What their business does and in what sectors it operates;
  • The size of business, and what proportion of its assets is IP-based;
  • In what UK regions respondents operate;
  • In what international territories do they operate;
  • Whether there is more the IPO could do to help UK companies to operate overseas; 
  • What they spend on IP;
  • Which aspects of the IP system do they use;
  • What they particularly value about the UK’s IP system; and
  • Whether they face barriers when using the UK IP system.
Responses should be emailed to  industrialstrategy@ipo.gov.uk by 15 Nov 2017.

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

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

25 September 2017

Mums Enterprise Roadshow

The Business Design Centre
Author Matt Brown
Licence Creative Commons Attribution 2.0 Generic
Source Wikipedia



















Jane Lambert

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

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

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

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

According to the Mums Enterprise website
"The success of UK mumpreneurs appears to be outpacing the sector's growth in other nations, with the mum economy expected to generate £9.5billion for the UK economy by 2025."
This is an activity that our nation needs to encourage and support.

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

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

15 September 2017

How to make Money from your Invention: Licensing

Jane Lambert











In How to make Money from your Invention 13 Sept 2017, I introduced readers to the EPO's Inventors Handbook. Readers will recall that the Handbook advised that there are basically four ways of exploiting an invention:
  • A licensing agreement with a company
  • A business start-up: get your idea to market yourself
  • A joint venture 
  • Outright sale of the idea.
In this article, I shall consider the first of those ways, namely licensing the invention.

The Handbook explains that a licensing deal is one that allows a party known as a "licensee" to use the invention in return for a periodic payment known as a "royalty". It adds that 
"The exact terms of the licence must be negotiated in a process that can be lengthy (often many months) and complex. The licence is a binding legal document, so it is usually essential to involve patent attorneys and other legal professionals."
The Handbook continues:
"For many inventors, licensing is the best way to benefit from an invention. The main reasons are:
  • The licensee bears the costs and risks of production and marketing.
  • Only established companies may have the resources to exploit an idea with major potential.
  • Licensing can provide the inventor with an income over many years for relatively little effort."
However, it also warns that "only the strongest forms of IP will interest potential licensees" which in most cases means a patent.  Licensing is often seen as a soft option compared to setting up a new business to market the invention, but, in many if not most cases, the reverse is true.

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

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

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

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

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

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

13 September 2017

How to make Money from your Invention

Jane Lambert











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

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

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

The opening words of the Handbook are as follows:
"The purpose of this Inventors' Handbook is to provide you with basic guidance on all the key stages of turning an invention into a commercial product. Or perhaps we should say the key stages of turning an idea into an enterprise, if we are to widen our definition of 'invention' to include novel processes, business methods, social interactions etc. Though invention has traditionally been associated with manufactured products, it is now better understood that new wealth has always been created primarily from new knowledge, or novel uses of existing knowledge."
I would invite readers to read the rest of the page which stresses the need to reduce risk and control costs and that is where someone like me can often be of assistance.

The next passage I should like you to read right now is Exploitation Routes. The page begins with the words:
"There are basically four ways of exploiting an invention:
  • A licensing agreement with a company
  • Business start-up: get your idea to market yourself
  • A joint venture 
  • Outright sale of your idea."
It also warns readers to take care when dealing with invention promotion companies.  Over the next few days, I shall be exploring each of the above options and explaining where you can get more help.

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