25 November 2015

Inventor Assistance Programme

The Inventor Assistance Programme (IAP) matches inventors and small businesses in developing countries with patent attorneys who are willing to offer their services to such clients pro bono. This is a joint initiative of the World Intellectual Property Organization and the World Economic Forum. So far, Colombia is the only developing country in the programme but other countries are expected to join shortly.

A brochure explaining the IAP can be downloaded here and frequently asked questions can be found here.

This scheme is likely to benefit both inventors and attorneys. The inventors will have a chance of protecting their inventions in their potential markets with robust patents. Attorneys will get a chance to cultivate some of the multinationals of the future. All we benefit from the growth of the developing country's economy

I already offer up to 4 thirty minute slots for free legal  on all sorts of intellectual property issues to individuals and small businesses in the UK. I am very happy to provide a similar service to inventors, designers, software developers and other creative or innovative individuals from other countries if they care to get in touch. I may not know all the answers but I do know a lot of IP lawyers and patent and trade mark attorneys around the world who can probably help. If you want to discuss any IP issue give me a call on +44 (0) 207 404 5252 between 08:30 and 19:30 London time or send me a message through my contact form.

15 October 2015

A Sad but not Unusual Tale of an Inventor

Mr Perry invented a fence bracket.  In his abstract he described it as
"A fence bracket comprises a main plate 10 adapted to overlie the top edge of a fence panel 18, and depending sides, which may be triangular and apertured as shown, which form a channel to receive the panel, and apertured tabs 14, 16, for the receipt of fasteners 22 to attach the bracket to post 20. An alternative form has a back plate 41 (Fig 4A, not shown) which lies against post 20."
He appears to have applied for a patent by himself for he is named as the agent on the specification. His application was duly granted under British patent number GB3920104.

Mr Perry believed that a wholesaler called FH Brundle sold products that infringed his patent and he wrote to the company's CEO in the following terms on 5 Oct 2012:
"FAO: Chief Executive/Chairman
Notice Before Proceedings
Infringement of Patent GB2390104, 4 August 2003 - October 2011 Through Sales Of Betafence's Nylofor 3D Bracket And 3M Panel
Claim for Damages Under the Patents Act 1977.
I have written to your Company in the past to see if you would have any interest in stocking any of my fencing products and your reply was that you didn't sell any of these products or that type of fencing and your Company had no interest.
It has now been brought to my attention that your Company has been selling a product of Betafence known as Nylofor 3D bracket that is used to install Nylofor fencing, for over at least 5 years, according to your Southampton office and you in fact still sell these products.
This Nylofor product infringes my Patent and I demand that you provide an Account of Profits of direct profit on sales of:
1. The quantity of the Nylofor 3D bracket you have sold between August 2003 – October 2011.
2. The number of Nylofor 3M fence panels that have been sold during the same period that are installed using the Nylofor bracket.
3. The number of fence posts sold corresponding with the number of fence panels sold during the same period.
4. The quantity of add on products sold such as the allen key tool specifically designed to use with the Nylofor 3D bracket.
I am legally entitled to a share of these profits whilst the Patent was in force and which is currently being restored to the register, as it had lapsed temporarily due to Patent Office error in late 2011.
I intend to take proceedings against your Company in the High Court if no amicable solution can be reached regards paying me my share of the profits for your use of my inventions without any licence to do so. Please respond within 14 days or I will commence proceedings against your Company.
Mr Perry's letter constituted a threat of proceedings for the infringement of a patent within the meaning of s.70 of the Patents Act 1977. I discussed that section and similar provisions in other intellectual property statutes and regulations in If you think someone has infringed your patent talk to a lawyer first 11 July 2014.

Solicitors acting for the wholesaler replied on the 15 Oct 2013. They denied that their client had infringed the patent, complained that the letter constituted an actionable threat and invited Mr Perry to withdraw it. On 21 Nov 2012 Mr Perry rejected their complaint and demanded particulars of their client's sales:
"Para. 6 Just to clarify, according to you, your client will be ignoring the Cease and Desist Notice and will continue to sell the infringing products. As you and your client both take the Patent Infringement very seriously, you will be providing the information I have asked you for and in the meantime I will put a hold on taking any legal proceedings against your client."
The solicitors repeated their request to Mr Perry to withdraw his threats which were met with yet another letter dated 18 Dec 2012:
"In your initial letter you are claiming 'unjustified threats of legal action for alleged patent infringement' and I pointed out that your client may still have a liability to me between 2004 – 2011 whilst the Patent GB2390104 was in force, …"
The wholesaler brought proceedings against  Mr Perry for groundless threats in what is now the Intellectual Property Enterprise Court ("IPEC"). Mt Perry counterclaimed for infringement of the patent joining the manufacturers of the allegedly infringing products into the proceedings as Part 20 defendants. The action and counterclaim came on before His Honour Judge Hacon in FH Brundle (A Private Unlimited Company) v Perry [2014] EWHC 475 (IPEC).  The judge construed Mr Perry's patent claims and concluded that they had not been infirnged. The failure of the counterclaim meant that there was no defence to the threats action. The judge gave FH Brundle judgment on the claim and dismissed the counterclaim.

Mr Perry represented himself in those proceedings whereas the wholesaler and one of the manufacturers were represented by solicitors and counsel.  At a hearing to assess costs counsel for the claimant and first Part 20 defendant reminded the judge that he had discretion under CPR 44.2 (4) (a) to take account of the conduct of the parties. They urged the judge to disregard the cap on recoverable costs on the grounds that Mr Perry had behaved unreasonably. His Honour described that behaviour as follows:
"Brundle pointed to Mr Perry's persistent use of intemperate language and expletives in his pleadings and in his skeleton argument for the trial. This is consistent with the way Mr Perry has expressed himself in emails sent to my clerk. I was told that Mr Perry was warned about his language by Mr Recorder Meade QC at an application before him on 16 May 2013. Before me Mr Perry, who appeared in person, accepted that he had been warned by Mr Meade and that he had chosen not to heed the warning."
Shortly after judgment had been delivered Mr Perry circulated the following letter claiming that it had come from the judge:
"Royal Courts of Justice
Patents County Court
Rolls Building, Fetter Lane
Mr Richard Perry
19 Yerbury Street
Trowbridge, Wiltshire
BA14 8DP
26th March 2014
Claim CC13P00980
Dear Mr Perry,
I have re-considered the case CC13P00980 and upon reflection; your opponents (FH Brundle, Betafence and Britannia Fasteners) having used your name on purchase orders for the infringing goods protected under your patent (which seems to be a fundamental point in the case), have colluded to defraud you of substantial sums of profits you were rightfully entitled to and therefore I have reversed my decision in your favour and award £5,000,000.00 in damages that would settle the claim in full.
I apologise that I did not even question your opponents on this issue or the matters concerning the manipulation of design sheets and copyright dates as at the time I didn't think it was all that relevant.
I order the claimants and counter defendants to pay the claim in full within 14 days and the claim for unjustified threats is dismissed.
Mr Justice Hacon."
Although a deliberate attempt to influence others by means of a forged letter from a judge would normally be an extremely serious matter Judge Hacon thought that the letter was better characterized as a further example of Mr Perry's intemperate and eccentric behaviour. He took it into account by awarding an additional £2,000 costs against Mr Perry but he did not regard Mr Perry's conduct as sufficiently exceptional to take it outside the £50,000 costs cap. Giving his reasons in FH Brundle (A Private Unlimited Company) v Perry (No. 2)  [2014] EWHC 979 (IPEC), [2014] 4 Costs LO 576 the judge awarded costs of £49,645 against Mr. Perry.
    Mr Perry was unable to pay those costs and was adjudged bankrupt on 30 April 2015. He appealed unsuccessfully against his bankruptcy order and applied unsuccessfully for permission to remain a company director notwithstanding his bankruptcy. He also issued fresh proceedings against F H Brundle and the manufacturers of the fence brackets which came before Judge Hacon in Perry v F H Brundle and Others [2015] EWHC 2737 (IPEC) 2 Oct 2015). His Honour struck out the claim and made an extended civil restraint order against Mr Perry under para 3.1 of Practice Direction 3C - Civil Restraint Orders which prevents Mr Perry from issuing any proceedings or taking any steps in existing proceedings without the permission of the court for the next 2 years. I discussed those proceedings in Civil Restraint Orders in IPEC: Perry v Brundle 12 Oct 2015 NIPC Law.

    Although Mr Perry may have behaved intemperately and unwisely it is hard not to feel sorry for him. As the judge acknowledged at para [34] of his judgment in the strike out proceedings Mr Perry feels a strong sense of injustice which seems to have got the better of him at times. It might have been a different story had be been properly represented. A patent attorney might have drawn up more robust claims and a specialist solicitor would have steered him clear of any liability for groundless threats. But professional advisors come at a cost. For many years business disputes involving sole traders were covered by legal aid but legal advice and representation in business matters were excluded from the Community Legal Service by para 1 (h) of Sched 2 to the Access to Justice Act 1999.

    In view of that exclusion this is what inventors should do:
    1. Get a reader's card for the British Library and take advantage of the many free courses and inexpensive services available through the Business and IP Centre. It is a good idea to subscribe to the Centre's Facebook and Linkedin groups.
    2. If you live outside London check whether there is a Business and IP Centre at a central library near you. Leeds Central Library is particularly good. Call Ged Doonan on 0113 247 8266 for details of his centre's services.
    3. Take advantage of the network of free IP clinics up and down the country. Many are run by or in conjunction with the Chartered Institute of Patent Attorneys and I run a monthly one in Barnsley. Most clinics will allow you up to 30 minutes free advice with a patent or trade mark attorney or some other IP professional. They will give you some good advice on such topics as whether your invention is patentable, what to do if you think your intellectual property right has been infringed and how to respond to a complaint of IP infringement.
    4. Consider taking out IP insurance whenever you register a patent or other intellectual property right to fund legal advice or representation.
    5. Always consult a lawyer or patent or trade mark attorney before threatening legal proceedings. I am aware that lawyers do not come cheap but most of us are ready to do deals or suggest sources of funding.
    If anyone wants to discuss this article or patents in general, call me on 020 7404 5252 during office hours or send me a message through my contact form.

    31 August 2015

    I want to understand how innovation works - NESTA shows you how

    Lots of people have bright ideas for new products or processes. That's called invention. Most of those bright ideas never see the light of day because they are just that. Bright ideas. They exist only in the inventor's mind without any regard to putting them into production or on retailers' shelves.

    Putting a bright idea into practice to meet a genuine need is much more difficult. That's innovation. Of course innovation includes more than just inventions and it involves more than just scientists and engineers. For example, the current home page of NESTA (the National Endowment for Science Technology and the Arts) is headed "Meet the Dementia Innovators" and features what it calls "a living map of ageing innovators" (see "Dementia who's innovating" 19 Aug 2015).

    NESTA provides a toolkit of videos, templates and information on the innovation process starting with the above video "An Introduction to Innovation".  It then proceeds to "Start a Project" which begins with the "Evidence Planning" template. I shall write more about this process in future articles.

    25 July 2015

    Enterprising Libraries

    Library card index
    Author Stuart Caie
    Source Wikipedia
    Creative Commons Licence

    On Monday 22 June 2015 I attended a reception at the British Library to celebrate the launch of a report by Adroit Economics entitled Enterprising Libraries: A blueprint for delivering economic growth in UK cities. According to Adroit Economics
    "Adroit evaluated the British Library's major business support programme which provides advice on IP and other business start-up and growth issues, serving c 2,200 start-ups."
    I have not yet been able to find a copy of the report but its highlights are summarized in an article in the British Library's Innovation and Enterprise blog on 23 June.

    Evidently the British Library were very pleased with the report for they threw quite a lavish party which included a private view of the Magna Carta: Law, Liberty, Legacy exhibition. There were speeches by Roly Keating, Chief Executive of the British Library, Darren Henley, Chief Executive of the Arts Council and Kanya King, founder and CEO of MOBO (Music of Black Origin). Unfortunately, the acoustics in the entrance hall to the British Library where the reception was held were appalling. I  could barely make out a word that any of them said. I could hear none of King's speech whatsoever because she spoke very softly even though I moved as close to the lectern as possible.

    There were also some of the great and the good of innovation at the reception:  Mandy Haberman, inventor of the Anywayup cup. Bola Olabisi founder of the Global Women Inventors and Innovators Network whom I featured in  Innovation in Africa - Bola Olabisi 5 March 2011 and the patent agent Richard Gallafent who founded Ideas 21. There were also friends and acquaintances from the Intellectual Property Office and PATLib libraries like Joyce Gray of Sheffield and Ruth Grodner of Liverpool though sadly neither Ged Doonan nor Stef Stephenson who had blazed a trail for libraries everywhere from Leeds were present. Instead, Leeds libraries were represented  by officials whom I had never met before in the decade that I have been running the Leeds Inventors Club and giving talks and dispensing free legal advice there.

    However, I made some new acquaintances in the PatLib network such as John Musham of Newcastle and a delightful pair from the magnificent Library of Birmingham  I commended the new library and the Hippodrome Theatre which I had visited two days earlier to celebrate the 25th anniversary of Sadler's Wells Royal Ballet's move to Birmingham and David Bintley's 20 years as artistic director of the company (see In Praise of Bintley 21 June 2015 Terpsichore). They were purring like kittens at the compliments to their city until I reminded them of the latest census returns which had put Greater Manchester marginally ahead of the West Midlands in the number of inhabitants (see Largest urban areas of the European Union Wikipedia) and muttered about the Northern Powerhouse. Cruel I know but as a Mancunian I am incensed by the notion that the city of Cobden, Rutherford and Turing yields to anyone. Now there is no longer even a statistical basis for the estwhile metal bashers to claim to be the UK's second city if indeed there ever was.

    I should say a few words about the Enterprising Libraries programme. This is a joint venture between the British Library and the Department for Communities funded by the Arts Council England to develop local libraries into community hubs for local economic growth. I have written extensively about this programme in this and my other blogs over the last few years and you will find links to my articles in PatLib Libraries in the UK 25 Jan 2015. To a very large extent this initiative compensates for the closure of the Business Link network  by the Coalition government. The first phase was to develop Birmingham, Leeds, Liverpool, Manchester, Newcastle and Sheffield libraries into local Business and IP Centres in partnership with the British Library (see the National Network page of the British Library's website). The Arts Council has just announced that 10 other library authorities in England have been awarded a share of a £450,000 grant to develop business and IP reference services (see the Successful applicants page of the Arts Council's website). Pilot schemes to develop Exeter and Northampton Central Libraries into Business and IP Centres.

    With 10 years experience of working with libraries in the North to holding clinics, running inventors clubs and speaking on intellectual property I see the value of this initiative and will support it in any way I can. Should anyone wish to discuss this they should call me on 020 7404 5252 during normal office house or contact me through this form.

    14 May 2015

    The Intellectual Property Office looks at Additive Manufacturing

    Turbine produced by 3D Printing
    Source Wikipedia

    I have written quite a lot about additive manufacturing including 3 dimensional printing over the last few years. You will find links to those articles at Liverpool Inventors Club Re-launch - Fabulous FabLab 28 Jan 2012. At the end of April 2015 the Intellectual Property Office published A Legal and Empirical Study into the Intellectual Property Implications of 3D Printing in the following parts:
    The IPO had commissioned the study because Andrew Sissons and Spencer Thompson had recommended a review of the intellectual property implications of 3D printing in their report Three Dimensional Policy Why Britain needs a policy framework for 3D printing which was published by the Big Innovation Centre in Oct 2012.

    Study 1 considered the legal framework in the UK and other countries and concluded that there was some uncertainty as to whether CAD files and their data could be protected adequately. Study 2 discussed additive manufacturing technologies and their application to date. The Studies concluded that from the data retrieved in Study I, there was nothing to indicate that the activity on 3D printing on-line platforms was a mass phenomenon yet. As such, there was no urgency to legislate on 3D printing. Indeed the report argued that
    "a premature call for legislative and judicial action in the realm of 3D printing could stifle the public interest of 'fostering creativity and innovation and the right of manufacturers and content creators to protect their livelihoods.'”
    Nevertheless, there was a need to clarify the law on  whether a CAD file is capable of copyright protection. It was thought that the territorial nature of copyright law, coupled with the extra territorial nature of on-line platforms and CAD files shared thereon, could lead to uncertainty and complex issues in the future. The Studies urged the IPO to
    "establish a Working Group to cover the various IP rights which may need to be tackled in the future. The Working Group should also provide clarity on the status of CAD files and how they can best be used in industry. The Group should also consider how best to tackle the traceability of 3D printed spare parts."
    In other words, pretty well much the same recommendation as Sisson and Thompson had made in their report nearly three years ago.

    I take issue with some of those conclusions. Additive manufacturing may not be a mass phenomenon in the sense that there is a 3D printer in every home or a 3D print shop on every street corner but those technologies are developing rapidly and are finding ever increasing uses ranging from the fabrication of prosthetic body parts and the reconstitution of human tissues to precision engineering. The industry may be in its infancy but it is already big and it is growing quickly. Secondly, Study I concentrated on copyright but not other intellectual property rights albeit that Study 2 considered them in the context of the case studies. I do not anticipate any difficulty over whether copyright subsists in CAD files but I do see increasing scope for arguments over obviousness in relation to inventions developed with CAD technology. Also, there is an clear risk of counterfeiting through the use of such technology. However, I would agree that there is no need for specific legislation at this stage if ever. The existing legislative framework and the courts should be able to cope with all  foreseeable problems.

    Should anyone wish to discuss these studies or the legal consequences of additive manufacturing technology in general, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

    14 March 2015

    Trade Marks for Inventors

    Jane Lambert

    Inventors are most interested in protecting their inventions for which they require patents but some set up businesses to manufacture or market their inventions. Such businesses need to identify themselves and their products in the market place and for that they need brands. Brands are built up by sales and marketing and the common or judge made law of England and Wales gives a measure of protection for established brands by the law of passing off, But if you are new to the market or are about to launch a new product or service you can't rely on that law. You need to register a trade mark first.

    What are trade marks?
    S.1 (1) of the Trade Marks Act 1994 defines a trade mark as
    "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."
    The following paragraph helpfully adds:
    "A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."
    The Trade Marks Act 1994 applies only to the United Kingdom but our trade marks law has been harmonized for over 20 years with the laws of the rest of the European Union by an EU Directive and a string of decisions of the Court of Justice of the European Union. As all the EU member states are members of the World Trade Organization EU trade mark law and the trade mark laws of each of its member states have to comply with Annex 1C to the World Trade Organization Agreement which is better known as TRIPS (Trade-Related Aspects of Intellectual Property Rights). Art 15 (1) of TRIPS contains a definition that is very similar to s.1 (1) of our Trade Marks Act 1994.

    A word on spelling
    You will have noted that trade mark is spelt as two words in our statute but as one word in the TRIPs. Both spellings are correct but we tend to use the two word spelling in the UK, the EU and most of the Commonwealth whereas Americans use one word. As I am British I shall stick to spelling it as two words but you may find your spell check prefers the American spelling.

    Specified goods
    Trade marks are registered for goods or services and when you apply for a trade mark you have to specify the goods or services to which it is to apply.

    It is still sometimes possible for two different trade mark owners to register the same sign for different goods. We were once familiar with Mazda card and Mazda light bulbs. But that has become more difficult since s.5 (3) of the Trade Marks Act 1994 now provides that a trade mark shall not be registered if it is
    "identical with or similar to an earlier trade mark, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark or international trade mark (EC) in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."
    Goods and services are divided into a number of classes by an international agreement called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks or Nice Agreement for short.  Our Intellectual Property Office has very helpfully published Guidance Trade mark classification list of goods and services 2 May 2014 which you can consult on its website.

    When you apply to register a trade mark you have to state the class or classes of goods and services for which you wish the mark to be registered. You should bear in mind that one class of goods or services is included in your application fee and that you have to pay extra for each additional class of goods or services.

    What is the point of a trade mark?
    The rights conferred by the registration of a trade mark are set out most succinctly in art 16 (1) of TRIPS:
    "The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed"
    That is echoed by s.9 (1) of our Trade Marks Act 1994:
    "The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent."
    The acts that constitute infringement are set out at some length in the first three sub-sections of s.10 of the 1994 Act.

    UK and Community Trade Marks
    Applicants for trade marks in the UK has the choice of registering a trade mark for the UK alone or for the whole of the EU. Trade marks for the whole EU are known as "Community trade marks" or "CTM" and I shall refer to them as CTM for the rest of this article.

    If you want a trade mark for the UK alone you apply to the Intellectual Property Office or "IPO" in Newport. The department that looks after trade marks is known as the Trade Marks Registry which us usually referred to as "the Registry".  Confusingly the head of the IPO is called "the Comptroller" in relation to patents and unregistered design rights but "the Registrar" in relation to trade marks and registered designs, However, he or she is the same person.

    If you want a CTM you have to apply to the curiously named Office for Harmonization in the Internal Market Trade Marks and Designs ("OHIM") in Alicante in Spain. Applications for CTM are governed by the CTM Regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark OJ 24.3.2009 L78/1) but its provisions are very similar to those of the Directive and hence our Trade Marks Act 1994.

    Guidance on applying for trade marks
    The IPO contains a useful step by step guide to registering a UK trade mark that begins with the section "Trade marks: protect your brand". The next sections are "What you can and can't register", "Apply" and "After you apply". Most of the information in those pages would also be of use if you are applying for a CTM or a trade mark in any other country's trade marks registry.

    If you want a CTM, OHIM also gives you some useful information. I recommend starting at the Trade Marks Basics page and working your way from there. There is an amusing little animated video called "It's all about trade marks" which you shouldn't miss.

    There is also useful stuff on the British Library's Business and IP and World Intellectual Property Office websites and there is lots more from law firms, patent offices, trade mark and patent agencies and universities around the world but for now I would be content with the publications that the IPO and OHIM put out otherwise you will never get started.

    Should you get professional advice?
    It is perfectly possible for a reasonably well educated and intelligent individual to apply for a UK trade mark or CTM without the assistance of a trade mark or patent attorney or lawyer and many business owners do just that but unless you have a lot of experience of IP and trade marks you can easily come unstuck if you try to do it yourself. For instance, you may miss something on a search, you may fill out the form incorrectly, you may apply for a mark that can't be registered or a third party may oppose your mark after it has been advertised if he thinks that you are unrepresented in circumstances that he wouldn't try if he knew you were professionally represented. The cheapest you can register a UK mark is £170 if you make the application on-line and there are many attorneys who will do all the searches, draft the application, pay the Registry fees for £500 or less. To me that seems a no-brainer.

    If you don't have an attorney and you would like me to suggest one, call me on 020 7404 5252 during normal office hours or message me through my contact form.

    On-line or paper
    Both the IPO and OHIM encourage on-line applications by offering slight discounts for on-line applications.

    Regardless of whether you apply for a UK mark or a CTM it is imperative that you carry out a thorough search for you will probably not be allowed to register a mark that is the same or similar to an existing one for the same or similar goods or services. Even if your application does somehow slip through the owner of the earlier mark can apply to invalidate it on the grounds that it should never have been registered.

    You can search the IPO or OHIM databases yourself (see Search for a Trade Mark on the IPO website and eSearch plus on OHIM's) but you will get a better result if you instruct an attorney for he or she knows what to look for. You can also get a good search from Leeds Business and IP Centre if you call Ged or Steff on 0113 247 8266.

    Making the application
    As there is excellent information from the IPO and OHIM on trade mark applications I am not going to repeat it here.

    If you are doing it yourself and encounter a problem you can contact me on 020 7404 5252 or use my contact form. In most cases my advice will be go find an attorney and I will tell you how to get one but there may be a point of law which requires professional advice in which case I will see you in conference or advise you in writing (see "What happens if the examiner says no?" below).

    IP insurance
    Another thing you should consider when you apply for a trade mark is enforcement. Although some trade mark infringements are crimes which can be prosecuted by trading standards officers in the magistrates or Crown Court it is generally down to you to enforce your trade mark. You do that by issuing proceedings in the civil courts. Though you can't start proceedings until your mark has been registered your rights and hence your claim to damages can be backdated to the date of application. IP litigation in the UK has always been more expensive than on the Continent and the costs of issuing proceedings for claims over £10,000 have recently sky rocketed (see How to enforce your IP claim after court fees sky rocket 7 March 2015). Unless you have lots of money I would advise your taking out before-the-event IP insurance at the earliest possible opportunity (see Intellectual Property Litigation - the Funding Options 10 April 2013 NIPC Law) which is when in the case of trade marks is when you make your application.

    What if the examiner says no?
    Here's where I come in. Any decision of the hearing officer can be appealed but appeals are be expensive and you will want to make sure that you are on firm ground. You could ask your trade mark or patent attorney or your solicitor but at the end of the day they may well suggest your taking counsel's opinion. "Counsel" is another word for barrister or someone like me and if you want to know what IP barristers such as I can offer read my article IP Services from Barristers 6 April 2013 4-5 IP). I will advise you on your options and if you decide to appeal I will represent you all for a fixed fee that will be agreed in advance. Again, if you want to consult me call me on 020 7404 5252 during normal office hours or message me through my contact form.

    In the IPO appeals from examiners are made to an official known  as a hearing officer who sits on behalf of the Registrar. The IPO has published two useful articles on Options following an objection to a trade mark examination and Trade mark disputes resolution: hearings which I advise you to read.

    Appeals in OHIM are made to Boards of Appeal and the procedure is set out in the Appeal page.

    What if someone else says no?
    if the examiner finds no objection  to your application it will be advertised on the web and elsewhere. If anyone objects to your application he or she may get a trade mark or patent attorney to write to you to explain the objection and ask you to withdraw your application.  Again, this is where I could come in either at your request or the request of your attorneys or lawyers. I can advise you whether the objection is justified and if it is not represent you in opposition proceedings again for an agreed fee.

    There are basically two grounds upon which an opponent can object to your application. The first is that he or she has an earlier trade mark with which your mark conflicts. The second is that he or she could bring an action for passing off, copyright infringement or some other cause of action that would prevent your using your mark.

    Appeals in the IPO are heard by hearing officers and appeals in OHIM by Boards of Appeal, Much of what I have written under the previous heading applies to opposition proceedings.

    If nobody objects to your application or if all objections are resolved in your favour your application will proceed to grant and you will receive a certificate of registration and your mark will be entered on the register.  However, that is not necessarily the end of the story because it is still open to a third party to apply for invalidation of your mark on the ground that it should never have been granted. You also have to make sure that you use your mark within 5 years of registration otherwise someone may seek its revocation for non-use. Invalidity proceedings can be made in the Trade Marks Registry or as the case may be OHIM or by way of counterclaim in any proceedings you may bring for infringement of its mark.

    Watch service
    You need to make sure that another business does not apply to register the same or similar mark for the same or similar goods. As it is impractical for most businesses to scour the intellectual property offices or trade mark journals it is a good idea to instruct someone to do that for you. That is known as a "watch service". Your attorney ought to be able to arrange that for you but if not call Ged or Steff at Leeds Business and IP Centre on 0113 247 8266.

    If you want to discuss this article or trade marks generally call me on 020 7404 5252 or use my contact form.

    07 March 2015

    How to enforce your IP claim after court fees sky rocket

    Saturn V rocket - the biggest rocket ever to fly
    Photo Wikipedia

    A patent or other intellectual property rights is essentially a right to bring a law suit. With a few limited exceptions it is not a crime to infringe an intellectual property right. Patentees and other intellectual property rights holders have to enforce their rights have to enforce their rights themselves which generally means bringing proceedings in the civil courts.

    1.  Court Fees are about to Sky Rocket

    Unfortunately, the costs of issuing proceedings in the civil courts of England and Wales are about to soar through the roof. Art 2 of The Civil Proceedings and Family Proceedings Fees (Amendment) Order 2015 which is currently before Parliament requires those claiming more than £10,000 in damages or other monetary relief to pay 5% of the value of the claim up to a cap of £10,000.  At present, the most that anyone has to pay for issuing a claim is £1,920. That will increase to £10,000 after the Order is made - a whopping £8,080 or 421%. It is even worse for those with modest claims. Those seeking damages of £190,000 will have to pay £9,500 an increase of £8,185 or 622%.

    The peers including the law lords have protested at these new fees as have the senior judges and lawyers (see Senior judges attack government's planned court cost rise 4 March 2014 BBC and Wednesday in Westminster 4 March 2015) but governments tend to get their way and the draft order will go through. So what should inventors and other small businesses do now?

    2. Limit Damages Claim to £10,000

    The issue fees for claims under £10,000 remains unchanged. They increased quite a bit last year but they will not be going up this time. If your claim for damages is between £5,000 and £10,000 the issue fee will still be £455. Limiting claims to £10,000 is not nearly as bad as it sounds because the principal relief that an intellectual property owner wants is an injunction - that is to say, an order of the court to do or refrain from doing something on pain of a fine or imprisonment for disobedience. Inquires as to damages and accounts of profits are very rare in IP litigation. I can count on the fingers of one hand the number of cases in which I have been instructed that have actually gone all the way to a full blown inquiry.

    Happily there is now a court for small intellectual property claims, namely the Intellectual Property Enterprise Court (formerly the Patents County Court) small claims track. The judges of that court will hear claims for all types of IP cases except those involving patents, registered designs, registered Community designs, semiconductor topographies and plant breeders' rights where the damages or other pecuniary relief is £10,000 or less. I have written a lot about that tribunal, given a lot of presentations and even argued a case before it. You will find links to those articles at Patents County Court - the New Small Claims Track Rules 20 Sept 2012 NIPC Law. The great advantage of the small claims track is that the procedure is very simple. There is usually only one hearing which lasts less than half a day and the judge can award an injunction and damages at the same sitting. Something that can't be done in any other court. The risk as to costs is limited to a few hundred pounds though by the same token you can's recover more than a few hundred pounds if you are successful.

    Even if your claim is in relation to patents, registered or registered Community designs, semiconductor topographies or plant breeders' rights you can still limit your damages claim to £10,000. Your case will be allocated to the multitrack which means that your liability for costs will increase but you will still only be charged £455 for issuing proceedings and recoverable costs in the multitrack are limited to £50,000.

    3.   Bring your Case in the Intellectual Property Office

    The hearing officers of the Intellectual Property Office have extensive jurisdiction in patents, trade marks, registered designs and unregistered design rights disputes and recoverable costs in proceedings before hearing officers are limited in most cases to a fixed scale (see Tribunal Practice Notice 2/2000 Costs In Proceedings Before The Comptroller).

    In patents, for instance, hearing officers can decide who is entitled to a patent or to be named as an inventor, they can amend or revoke a patent, they can declare that a patent has not been infringed and they can decide compulsory licensing and licence of rights disputes. They can even hear infringement claims with the consent of the parties under s.61 (3) of the Patents Act 1977 though that has rarely if ever happened, possibly because hearing officers cannot grant injunctions.

    In trade mark disputes hearing officers can revoke or declare trade mark applications invalid.

    In designs hearing officers can cancel design registrations and determine the conditions for licences of right.

    Appeals from decisions of hearing officers in trade mark disputes can be made to an Appointed Person rather than the court who will generally award costs on the same scale as hearing officers.   S.10 of the Intellectual Property Act 2014 makes similar provisions in respect of designs.

    4.   Seek an Examiner's Opinion

    For the last 10 years Intellectual Property Office examiners have delivered non-binding opinions as to whether a British or European patent is valid and whether it has been infringed.  This has proved very popular and their jurisdiction has recently been extended to other patent disputes and will shortly extend to designs. The cost of an examiner's opinion remains at £200.  In some cases an authoritative opinion is all that is needed to resolve a dispute. In cases where the losing party refuses to back down a favourable opinion should make it easier to get after-the-event insurance or litigation funding.

    5.  Use established Arbitration or other Alternative Dispute Resolution Schemes where they exist

    Probably the best known schemes are the ICANN Uniform Domain Name Dispute Resolution Policy for generic top level domain name disputes and Nominet's Dispute Resolution Service for domain name disputes in the .uk top level domain name space. For a few hundred pounds trade mark owners can obtain an order for the transfer of a domain name in less time than it takes to exchange statements of case in many intellectual property disputes. Costs are irrecoverable but then you don't usually get all your costs back on a detailed or summary assessment anyway.

    6.  Insert Dispute Resolution Clauses into your Licences and other Agreements

    If you don't want to go to court to resolve a dispute with your licensee, joint venturer or other associate you can insert provisions for mediation, expert determination or arbitration into your licences or other agreements.

    7.  Take out Before-the-Event Insurance

    Although the 622% and 421% increases that I mentioned above are enormous, they are not a large part of the total cost of litigation and should not increase before-the-event insurance premiums greatly. There are some good IP packages on the market, particularly the IP Insured package which Sybaris IP offers to ACID members.

    8.  On the Horizon

    The British government has signed an agreement to establish a Unified Patent Court with exclusive jurisdiction to determine disputes over European patents and passed enabling legislation to implement the agreement. Art 71 of that agreement restored legal aid for inventors which was taken away from them by paragraph 1 (h) of Schedule 2 to the Access to Justice Act 1999. The Court will consist of a Court of Appeal in Luxembourg and a Court of First Instance with a central division based in Paris with a section in London. The Court will have its own rules and charge its own fees. So long as this country remains in the EU it is the best news for private inventors for 20 years.

    Should anyone wish to discuss this article or IP law in general, he or she should call me on 020 7404 5252 during normal office hours or message me through my contact form.