25 January 2017

Immediate IP First Aid Nationwide

Field Hospital in First World War
Author National Museum of Health and Medicine
Source Wikipedia
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Jane Lambert

I have been conducting free monthly consultations on IP law in London and the North for the last 10 years or so. I have seen lots of clients in that time and can count a number of successes as a result.

However, that service does have some five limitations.
  1. it requires my presence and I can only be in one place at any one time. 
  2. A month can be a very long time to wait when a  matter is urgent or you are impatient for information. 
  3. I often need to refer clients to another professional such as a patent or trade mark attorney or a product design consultant which results in further delay. 
  4. Many problems can be dealt with by a simple phone or Skype call or email. 
  5. Clients who need to see me sometimes have to travel for miles.

I have therefore decided to improve and extend my IP Clinic in the following way.

Anyone who wants a free IP consultation with me or some other IP professional should call

020 7404 5252

during office hours and ask for an appointment to speak to me by telephone. I am not always available because I may be in court or a meeting but someone will take your name and number and arrange for me to call you back. Tell the person who takes your call that you are calling about my IP clinic.

Alternatively, you can send me a message through my contact form.

I should be able to give you some basic advice there and then and there will be no charge for that service. Should it appear to me that you need to see some other professional I will call at least one member of the relevant profession who practises in your area wherever possible and ask whether he or she would be willing to see you for an initial meeting or talk to you by telephone for up to 30 minutes free of charge. If the answer is "yes" I will pass you on to him or her.

Please note that you can only use this service once. If you want to consult me or any of the other professionals to whom I may refer you again you will have to instruct us in the usual way and that will usually require a fee the amount of which will be negotiated at the time.

In the next few days, I shall launch an IP clinic website which will provide further information including a knowledge base of answers to frequently asked questions.

24 January 2017

"Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy

Jane Lambert











Yesterday the Department for Business, Energy & Industrial Strategy ("DBEIS") published its green paper Building Our Industrial Strategy which might well have led the news had it not been for the controversy over whether the Prime Minister should have disclosed news of the Trident test failure to the House of Commons before the vote on the renewal of the nuclear deterrent. Today it is likely to be overshadowed by the Supreme Court's judgment in the Art 50 Brexit appeal. It is, however, an important document upon which the public is being consulted and there is a video summarizing its proposals for those who do not wish to plough through its 132 pages.

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 those new commitments 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." 
If this commitment can be taken at face value and followed through it would be a very welcome development indeed. For far too long Britain's inventors have been ignored and in some instances disparaged but they could be an important contributor to industrial regeneration.

Other countries that have to make their way in the world outside large trading blocs such as Korea and Israel encourage their inventors. The Korea Invention Promotion Association ("KIPA"), which shares an office block in Seoul called the Korea Intellectual Property Service Centre with the Korea Intellectual Property Office, the Korea Intellectual Property Institute, The Technology Transfer Centre and related agencies has a slogan: "One Korean, one invention." If we are to emulate Korea which has a slightly smaller population in an even smaller land area than the UK we have to do the same and with all due respect to NESTA and the DBEIS it will take more than the Challenge Prize Centre.

A bit more action is promised in the next commitment though except for the proposal to station IPO representatives in the Midlands and the North it is very vague:
"We are 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. We will place Intellectual Property Office representatives in key UK cities - starting with pilots in the Northern Powerhouse and Midlands Engine to build local capability to commercialise intellectual property."
Actual progress will probably have to come from inventors and entrepreneurs aided by their professional advisors, but it the commitments appear to signal a change of mood on the part of the government and that's a start

Should anyone wish to discuss this article with me, please call +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

01 November 2016

Applying for Patent Protection through the Patent Co-operation Treaty without a Patent Attorney


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Today the Intellectual Property Office has published a 32-page guide entitled Patent Co-operation Treaty for Private Applicants. A private applicant is someone who wants to apply for a patent without using a patent attorney (also known as "a patent agent").

On the third page of the booklet the following warning appears in capital letters:
"THE PCT SYSTEM IS COMPLEX. YOU ARE STRONGLY ADVISED TO SEEK THE HELP OF A CHARTERED PATENT AGENT."
I endorse that warning. It is not too difficult for a reasonably intelligent and well-educated  business owner to register a design or even a trade mark but obtaining patent prevention is a completely different ball game.

A patent is a monopoly of an invention which is granted only if the invention is new, not obvious, useful and falls outside a number of statutory exceptions and a document known as "the specification" discloses the invention with sufficient clarity and detail for the invention to be made or worked by anyone with the right skills or experience. Drawing up the specification is not easy. If it is too wide it may be invalid and if it is too narrow competitors can often make use of the concept without infringing the patent.  It takes several years of book learning and on the job experience for a graduate in a natural science, engineering or technology to learn how to draft such specifications. If you haven't had that training your chances of getting it right are not good.

Nevertheless, there are folk who have a go at drafting their own patent applications and for them the IPO has published a series of guides starting with Before you apply for a patent and continuing with Patents Step By Step and Patenting your Invention.

Now the IPO can only grant you a patent for the UK which is about as useful as a chocolate fireguard if you want to make or sell your invention anywhere else. There is no such thing as a world patent or even a European Union patent though our government did sign an agreement for a unitary patent which would have covered the territories of most European Union countries including the UK but Brexit has probably put paid to that (see  IP and Brexit: Private Inventors 5 July 2016), If you want patent protection for your invention outside the United Kingdom you have to rely on an international agreement known as the Paris Convention for the Protection of Industrial Property which gives you one year in which to apply for patents everywhere else.

Now it is at this point that I advise you to watch and listen to the above video in which Matthias Reischle outlines your options. Basically, you can apply to the patent office of each country or group of countries in which you require protection or you can apply simultaneously to the patent offices of most countries of the world under another international agreement known as the Patent Cooperation Treaty ("PCT"). It is for applications under the PCT that the IPO has prepared its guide. However, before reading that guide I strongly advise you to work your way through all the videos produced by the World Intellectual Property Organization ("the WIPO"), the UN Agency for Intellectual Property. entitled How to file your International Application.

I would add that it is worth your while to read these materials even if you do intend to instruct a patent attorney because IP is crucial to your business. It is much too important for you to leave to lawyers and patent attorneys. If you want to learn more about this topic or patenting generally, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

04 September 2016

What we can learn from Robert Fischell




I came across Robert Fischell for the first time this morning when I read Kate Torgovnick May's article How to solve problems, from an inventor with 200+ patents 1 Sept 2016.

I have embedded the video of Mr Fischell's TED talk so that readers can appreciate his credentials but the purpose of this article is to get inventors to read May's article because it contains the following useful tips:
  • Take your know-how into new arenas;
  • Listen to people and let your mind go wild;
  • When something works, look at how it might apply elsewhere, too; 
  • Don’t be afraid to think big. Really big;
  • Think about those who come behind you; and
  • Innovate for people, not profit.
As a lawyer it is Fischell's last point that I find particularly interesting:
“A lot of people think the purpose of a patent is to make the inventor wealthy, but that’s not why the US created the patent system,” he says. “The purpose of the patent system, as I see it, is to reveal trade secrets so that commerce and technology advance."
That is spot on. As I say in Patents FAQ:
"A patent represents a bargain between a state and an inventor. The state grants the monopoly in exchange for the inventor's teaching those with the necessary skills and knowledge ("persons skilled in the art" or "skilled addresses") how to make or use the invention."
The monopoly is the incentive to the inventor to disclose his or her invention to the public but the purpose of the patent system is to disseminate technology.

28 August 2016

Patent or No Patent













Jane Lambert

In IP's not just for Big Brands and High Tech Businesses 27 Aug 2016 NIPC News I wrote:
"In my career at the Bar I have known far more businesses that have failed from having too much IP than too little. Some of those failures had been caused by patents that cost many thousands of pounds to obtain but could never be worked. Others by disputes that were abandoned because the rights owner (who in many cases had a strong claim) simply ran out of money."
I appreciate that observation probably goes against everything that you have been told by your accountant, bank manager, business adviser, your patent agent and your peers but that does not make it any less true. You take a risk and commit yourself to considerable expense which you may never recover whenever you apply for a patent. So think long and hard before you take that step.

What are the Risks and Costs of Patenting?

In order to get a patent for an invention you have to "disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art" (see s.14 (3) of the Patents Act 1977).  If you don;t do that, the Intellectual Property Office or a judge may take that patent away from you under s.72 (1) (c) of that same Act.  So the first risk is that you tell the world, including potential competitors in countries where you do not seek patent protection, how to make or use your invention. If your invention is any good that is precisely what they will do, The only thing stopping them is whatever patent protection you may be granted around the world and your ability to enforce that protection through civil proceedings in the English and other courts.

Before you apply for a patent you can rely on the law of confidence to prevent anyone to whom you may disclose the invention in confidence, such as angels, consultants, contractors, designers, manufacturers and others, from making use of the invention or disclosing it to third parties for so long as the invention is secret (see Trade Secrets FAQ  24 Aug 2016 NIPC News). You lose that protection as soon as your application is published because your invention becomes public knowledge.  Losing the protection of the law of confidence is the second risk that you run. Moreover, it could be argued that you disclaim all other IP rights, such as unregistered design rights,  when you apply for a patent because you dedicate your invention to the public. The would be another risk.

There is no guarantee that you will get a patent and if, you do get one, there is always the risk that it may be taken away if it is found that the invention had already been invented, that it was obvious in the light if previous inventions or some other reason.  If the IPO decides not to grant you a patent or the IPO or a court decides to take it away all the money that you will have spent on searches. professional fees, payments to the IPO or other patent offices and so on goes down the plughole. That is yet another risk.

Now for the costs.

A patent attorney will charge you several thousand pounds for preparing a patent application just for the IPO or European Patent Office ("EPO").  If you want to apply for patent protection in other countries it will cost you many times more.   Although it is not compulsory to instruct a patent attorney you are strongly advised to do so. Attorneys are trained to draft specifications in such a way as to claim a sufficient monopoly to make the invention commercially viable but not so broad as to render it invalid.  That's a great skill to have and that is why attorneys need good natural science, engineering or technology degrees to do their job as well as years of legal training.  It is possible for a reasonably intelligent and well educated lay person to apply for his or her own design registration or even a trade mark successfully but it us very rare indeed for a lay person to draft a satisfactory patent application.

If you are short of money it is very tempting to apply for a patent for the UK alone and ignore the world outside. The problem with ignoring the rest of the world is that your competitors outside the UK will then be free to make and sell your invention everywhere else and you won't get a bean. You may comfort yourself with the thought that the UK is the 5th or 6th largest economy in the world for time being. That may be true but compared to the USA, China, Japan or indeed the rest of the EU number 6 {or even number 5} is not all that big.  If you are going to confine your monopoly to the UK make sure that there is a sufficient market in this country to make money from your invention.

Your expenditure does not stop on obtaining the grant. Every year for the life of the patent you have to pay renewal fees to the IPO and other patent offices just to keep the patent alive.  In many countries those renewal fees increase during the term. You have to watch out for potential infringements and if the patent is infringed you may have to take legal proceedings to prevent the infringement.  That is the biggest cost and risk of them all because it can cost hundreds of thousands if not millions of pounds to pursue an infringer in a common law country like England or the United States and anything up to 50,000 euro even in civil law countries like France or Germany.

You and your backers need to be pretty sure that your invention is a real money spinner before taking those risks and incurring those costs.

What are the Alternatives to Patenting?

Essentially keeping your invention under wraps and relying on the law of confidence to stop unauthorized use or further disclosure (see Understanding Trade Secrecy and Confidentiality 23 July 2016). That can work very well if your product cannot easily be reverse engineered once it is put on the market which is  the case with beverages like Coca Cola or Chatreuse (see Trade Secrets FAQ 24 Aug 2016). The problem is that most technical secrets can be ascertained by buying a product and taking it apart and analysing it or discovered through parallel research.  In the absence of a patent there is nothing to be done to prevent reverse engineering or parallel research. Indeed, the functioning of a free market depends on it.

In the UK a technical design may be protected from copying for up to 10 years by unregistered design right, an almost uniquely British IP right.  That would include the shape of equipment or the arrangement of its electronic or mechanical components but design right would not protect the technology as such. If a competitor makes a similar product without copying the protected design he is quite free to make and market it in the UK. Moreover, anyone in the world including an infringer is entitled to apply for a licence to reproduce a design as of right for the last 5 years of the design right term.

Design right law is used to protect semiconductor topographies in the UK with a number of amendments that permit citizens of countries outside the EU to apply for protection and give a longer term.

Computer programs are protected from copying for the life of the author plus 70 years by literary copyright and the source code of a program can be a trade secret so long as it is not disclosed.

The advantages of confidentiality, copyright and design rights are that they are all free but they provide only limited protection. However, that may be long enough for a business to establish itself in the market and build up a reputation which would give it a competitive advantage. For many businesses that is all that is required. The big disadvantage is that the protection is much less extensive than the monopoly that only a patent can offer.

So how do I choose between a Patent or No Patent?

Here are my tips.

  1. Remember that the purpose of IP is to protect income streams and not to protect clever technology just for the sake of it.  
  2. Referring to your business plan try to identify the main income streams for your business over the business planning period.
  3. Consider all the possible threats to those income streams. I don't mind betting that a large number of those will be commercial rather than legal such as new products based on different technologies or demand for the product drying up because of changing market conditions.
  4. Think about possible counter-measures to those threats. In many cases those counter-measures will be commercial too such as reducing your prices or improving your product. Only in a  few cases will you need a legal remedy,
  5. Where you do need a legal remedy consider all the alternatives such as design right and confidentiality. Choose the one that gives you the most cost-effective protection over the business planning period. In some cases that may be a patent but in many other cases it will not.
  6. Unless you expect your earnings to grow substantially, take out intellectual property insurance or make other arrangements to fund enforcement litigation.
If you want to discuss this article, call me on 020 7404 5252 during office hours or send me a message through my contact form.

23 July 2016

Understanding Trade Secrecy and Confidentiality

Jane Lambert











The right to bring an action to restrain, or recover damages for, the unauthorized disclosure or use of a trade secret is probably the most widely held intellectual property right but it is also one of the least understood. This article attempts to shed some light on the issue.

1. What is a trade secret?

As good a definition as any would be technical or commercial information that is secret or not generally known the unauthorized use or disclosure of which would benefit the person who receives it or harm the person who wants to keep it secret. That could include an algorithm, business plan, chemical formula or customer list.

2. How does one acquire a trade secret?

You can create it by data analysis, design, experiment, market research, R & D or other work or you can license it in from a third party. The important thing is that the information has to have some intrinsic technical or commercial value and it is kept secret.

3.  Do I need a confidentiality or non-disclosure agreement?

Not necessarily. The right to sue to restrain, or recover damages for, unauthorized use or disclosure arises from a set of judge made rules that imposes a duty upon a person who receives a trade secret in confidence not to use or disclose the information without the owner's consent or other lawful excuse. Sometimes it is obvious that information has been disclosed in confidence. Other times you have to put the recipient of the information on notice. That is done by getting him or her to sign a confidentiality or non-disclosure agreement.

4.  Give me an example of when a duty of confidence is obvious

When you seek legal advice from a lawyer or a patent agent is one example. Our professional codes of conduct impose an automatic duty of confidence which can be enforced by our regulators as well as the courts. Another example is where you spot on envelope marked "TOP SECRET" or "PRIVATE AND CONFIDENTIAL" on a bus or train. You should contact the owner or authorities and hand it in to them immediately.

5. Where can I find a reliable all purpose confidentiality agreement?

Such an agreement does not really exist because the obligation not to use or disclose varies according to the circumstances. The Intellectual Property Office gives some useful guidance in Non-Disclosure Agreements and it offers examples of a one-way and mutual non-disclosure agreements but these are just examples and cannot be used in every single case.

6.  What do you suggest?

if you ever have to enforce a confidentiality or non-disclosure agreement in court you have to:
  • identify the information precisely as well as the date, time, place and circumstances in which it was given;
  • prove that it was communicated expressly in confidence or in circumstances giving rise to an obligation of confidence;
  • persuade a judge that it has technical or commercial value in that its unauthorized use or disclosure would benefit the person receiving it or harm you;
  • satisfy the judge that it has been kept secret at all times; and
  • explain the purpose of the disclosure, state who us entitled to see it and for what purpose and when documents containing the information are to be returned.

The best way to do that is to set it out in an acknowledgement and undertaking by the recipient of the information  and I have prepared a form for that purpose (see Confidentiality Agreement 21 Sept 2010 JD Supra). Particulars of the agreement should be entered into a ledger and strictly monitored.

7.  What happens if the recipient breaches his or her promise?

You contact them immediately, remind them courteously of the terms of their undertaking and ask them to comply with their promises immediately.  If they won't do that immediately then you must take legal advce immediately because you may have to apply to a judge of the Chancery Division for an interim injunction to restrain the disclosure. If you are advised to make such an application you must not hesitate. Once information enters the public domain it ceases to be confidential. A delay of a few days - sometimes of a few hours - can be critical.
NB Don't bring an interim injunction application in the IPEC small claims track as the judge has no jurisdiction to give such relief. You can always transfer your case to IPEC or some other court after you have made your your application.

8.   Are there any get-outs to the duty not to use or disclose?

Loads. Let me give you just a few examples.  As I said above, information ceased to be confidential once it reaches the public domain so long as that is not the fault of the recipient of the information. If the trade secret is a formula or mechanism it is quite lawful to buy a product made to the formula or embodying other technical information to find out how it is made or how it works once it has been placed on the market. You may discover the information yourself by independent, parallel research. You can't rely on the obligation of confidence to break the law or do anything that is regarded as improper.

9.   Say Something about the Trade Secrets Directive

The Council and European Parliament adopted Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (OJ 15.6.2016 L 157/1)  on 8 June 2016 which harmonizes the trade secrets laws of the 28 EU member states. Governments have to implement that directive by the 9 June 2018 which is likely to be before we leave the EU. Although we will cease to be bound by the directive when we leave the EU it will probably be in our interests to transpose it into our law because the directive offers an opportunity to codify our law of trade secrets. I discussed this directive in The Trade Secrets Directive 7 July 2016.

10.   Further Information

If you want to discuss any part of this article call me on 020 7404 5252 during office hours or use my contact form.  Meanwhile, here are some other materials that you may like to read.

Jane Lambert    All You Need to Know About Confidentiality   Leeds Inventors Club 14 June 2006

Jane Lambert    Confidential Information  NIPC Inventors Club, 12 Nov 2005

Intellectual Property Office Guidance Non-Disclosure Agreements 12 March 2015

05 July 2016

IP and Brexit: Private Inventors


Jane Lambert














There are two schools of thought on Brexit.  The one that the government, most political parties, much of British business, international institutions and our allies supported is that it will be detrimental to British business. The other, which was supported by a few economists, politicians and business leaders, was that membership of the EU was somehow holding us back and that there will be a blossoming of British enterprise, innovation and creativity once we leave. I was and remain profoundly sceptical of the latter view which is one of many reasons why I voted to remain but I acknowledge that the rosy picture painted by the leave campaign is not entirely outside the realms of possibility. Countries like Israel and South Korea show that it is possible for small nations to survive and prosper outside economic blocs by relying on a propensity to create and innovate and there will probably be opportunities in post-Brexit Britain as well as many downsides.

So what advice should I give the bright research student, small businessman or skilled technician labouring in his or her lab or workshop?   The first is that there is likely to be quite considerable change in the legal, social and economic environment - but not just yet.  The UK remains a member of the European Union until Parliament repeals or amends the European Communities Act 1972 and the two-year notice period for withdrawal from the EU under art 50 (3) of the Treaty on European Union expires. The second is that the nature and extent of many of those changes will be determined by negotiations that have yet to start. Those negotiations are likely to be tough as the Commission and remaining member states have no interest in doing this country any favours. Thirdly, some things will not change. We shall continue to be party to the European Patent Convention, the Patent Co-operation Treaty and many other multilateral treaties. Fourthly, though we may lose preferential access to the European single market we need not stop trading with or investing in it. It consists of several hundred million of the world's most affluent consumers. While we remain in the single market and indeed afterwards we should take every opportunity of consolidating and extending our business relationships . Finally, we should develop new business relationships wherever we can particularly in North America, India, West and Southern Africa, Australasia and the Gulf where English is spoken and the common law is used,

Brexit will have two particularly unfortunate consequences for IP. For the whole of our membership of the EC and EU our government has striven for a Community or EU wide patent. We were one of the few countries to ratify the Community Patent Convention and when that failed to get off the ground we supported other initiatives such as an EU patent regulation, European Patent Litigation Agreement within the European Patent Organization and most recently the unitary patent. Had the UK voted to stay in the EU the unitary patent would have come into effect within 12 months. It would have reduced the cost and complexity of patent litigation and restored legal aid for individuals of modest means which would have included many inventors. It may still come into being and a single patent that covers much of Europe including France and Germany will still be attractive to British business but it will not apply to the UK once we leave the EU. The other unfortunate consequence is that the UK will cease to be covered by EU trade marks and Community designs and our English and Welsh, Scottish and Northern Irish courts will cease to have jurisdiction in disputes over EU trade marks and Community designs.

However, although Brexit has already brought uncertainty and could well bring disruption it need not be the end of the world. In the next few months I shall be publishing a lot of articles on the topic and I am available to talk to local inventors' groups and others. Should anyone wish to discuss this article please call me on 020 7404 5252 or message me through my contact form.