9 August 2017

Trade Missions from Yorkshire to China, Germany, the Netherlands and the USA











Jane Lambert

Yesterday I received an email from DIT North West stating:
"Working closely with our colleagues in both Yorkshire & Humber and the North East, we have created a calendar of 16 trade missions, covering various markets, trade shows and exhibitions to support your business to win sales overseas."
The email contained details of trade missions to California, Amsterdam, Cologne, Dusseldorf, China and Boston between 24 Sept and 28 Nov 2017 for the healthcare, food and drink and other industries.

Should any of my readers in Yorkshire or the Humber wish to learn more about those missions, I have written a short article on them entitled Powerhouse Trade Missions in IP Northwest.  Readers will find in that article a link to the Eventbrite page which contains details of each of the missions with links to the each of the mission Eventbrite pages.

I wish anyone whom goes on any of those missions the very best of luck and would urge them to have regard for their trade secrets and designs. They may find the following extract useful:
"If you plan to go on any of those trade missions, be careful not to disclose anything that you might wish to patent, register as a design or otherwise keep under wraps except in confidence (see Duty of Confidence). However, there is a year's grace period for design registration in Britain and the rest of the EU (see Registered Designs and Registered Community Designs) and don't forget the international exhibition exception provided by s.2 (4) (c) of the Patents Act 1977. Make sure that any non-disclosure or confidentiality agreement is to be construed and enforced in accordance with English law. We are harmonizing our trade secret law across the EU with the Trade Secrets Directive which will come into effect o 9 June 2018 just before Britain flounces out of the EU but we are not there yet (see my article on The Trade Secrets Directive 7 July 2016 NIPC Law).
You must also be aware of the ease with which it is possible for IPR owners to get without notice injunctions just before international exhibitions in Germany and some other countries and serve the orders on the first day (see the penultimate paragraph of Pre-Action Correspondence: What to do if you get a Stroppy Letter ....... or worse 4 Aug 2017 NIPC Law). That nearly happened to one of my clients not long ago. The antedate in Germany is to get a German lawyer to file a Schutzschrift ("protective brief") with the court in which the application is likely to be made setting our reasons why such an order should not be granted. You should also take a look at the arbitration schemes that exist in Italy and Switzerland (see my article Resolving IP Disputes at Trade Fairs 1 June 2017)."
Should anybody wish to discuss any of these matters, call me on 020 7404 5252 during office hours or send me a message on my contact form.


Further Reading

Northern Powerhouse Index

3 August 2017

FiNexus Labs: Leeds's "Digital Woodwork Shop"

Standard YouTube Licence

Jane Lambert

When he addressed the FinTech North event at Leeds Digital Festival on 26 April 2017, Christopher Woolard, Executive Director of Strategy and Competition at the Financial Conduct Authority said:
"We’re especially interested in areas where ‘Fin’ and ‘Tech’ collide, that is, areas that have both strong financial centres and a technology presence, often backed by strong relationships with local universities.
We’ve mapped these and we see two specific locations where we think we can add value to emerging hubs – namely in the Edinburgh-Glasgow corridor and the Leeds-Manchester area.
.......................
In Leeds, the development of a FiNexus Lab – a collaboration between local government, industry and central government – will be key to creating a fertile ground for FinTech firms to grow"
(see  his speech "The FCA's regional FinTech engagement" 26 April 2017 FCA website).

The FiNexus Labs is now inviting enquiries. It is described by its managing director, Christopher Sier, as a "digital woodwork shop" or, as the website puts it, "a multi-stakeholder project that will build a Leeds City Region-based digital innovation laboratory and hub on three key pillars ..... industry lab environment, startup ecosystem [and] centre for academic research." A graphic on the "About" page shows how the project is supposed to work.



"- An industry lab environment focusing on test & learn for the ecosystem consisting of access to advanced technologies, sandbox, hackathons (where industry meets start-ups), compliance protection, as well as UX testing tied into a free school / city user base
- A startup ecosystem that feeds into the wider Leeds economy and consisting of a fintech incubator
- A knowledge exchange hub for both physical and virtual networking and info depository consisting of events, conferencing, flexible meeting space, idea exchange, speed dating."
All this is expected to bring benefits for industry, academics and entrepreneurs. The enterprise is to be housed in a building under construction on the White Rose Office Park near Beeston. Its landlord, Munroe K is one of the project's partners together with Zerado and Singularity Universiy of the USA. The rest of the website is rather bare except for a blog with a few posts and a reference to a "Grand Challenge" and invitation to get involved,

It is not clear whether FiNexus Labs has attracted any businesses yet.  As you can see from the table in my article, Protecting FinTech Innovation  27 April 2017 NIPC Law there does seem to be a lot of fintech accelerators and incubators about nowadays but it would also appear from the DIFC's press release on the Dubai accelerator that demand for places in incubators and accelerators greatly exceeds supply (see FinTech in Dubai 3 Aug 2017 NIPC Gulf).

In my FinTech page, I noted that there were at least three sets of legal issues for fintech entrepreneurs:
  • data protection particularly from next May when the General Data Protection Regulation takes effect;
  • intellectual property issues as software, methods of doing business and the presentation of information are excluded from the definition of patentable invention as such, and
  • regulation of the industry.
It is in this last regard that the Financial Conduct Authority is showing considerable flexibility and indeed originality with its regulatory sandbox. In his speech to FinTech North Mr Woolard promised to "work with the local authorities, development partners and firms in those locations, as well as the Scottish Government and the Treasury's digital envoys ..........  to encourage the emergence of more innovative firms, whether home grown or inward investors."

That leaves IP and data protection.  As I said in How far (if at all) is it possible to protect Innovation in Financial Technology? 12 Aug 2014 IP protection of fintech products and services is not easy but there are things that businesses can do. I shall follow this venture with great interest and will always be glad to help. I have been working in this area of law ever since I was legal advisor to VISA International for Europe, the Middle East and Africa in 1983 and contributed much to the early literature of fintech law,

Should anybody wish to discuss these issues, call me on 020 7404 5252 during business hours or send me a message through my contact form.

Further Reading


Date
Author
Title
Publication
03 Aug 2017
Jane Lambert
NIPC Law
03 Aug 2017
Jane Lambert
NIPC Law
12 Aug 2014
Jane Lambert
IP Yorkshire

21 July 2017

Meet our IP Attaché to China

Author Ssolbergj
Creative Commons Attribution-Share Alike 4.0 International Licence
Source Wikipedia



























Jane Lambert

Mr Tom Duke is our IP Attaché to China. His job is to build relations with the Chinese government to understand and actively engage with IP policy makers in that country.  He is part of a network of British IP attachés in Brazil, India and South East Asia which has significantly increased the level of support available for UK businesses operating in those markets. Based in the British Embassy in Beijing he supports over 200 companies each year on IP strategies and on dealing with problems such as infringement whenever they arise.

Every year Mr Duke and his colleagues hold a series of business outreach events across the UK called the “China IP Roadshow” with the aim of raising awareness of protecting IP in China amongst (potential) UK exporters and companies involved in other types of business/innovation collaborations with Chinese partners. This year they plan to visit Yorkshire as well as Scotland, Liverpool, Manchester and London.

Mr Duke will be in Yorkshire on 19 Sept 2017 and plans to speak in Leeds morning and Barnsley in the afternoon.  His talk in Leeds will take place in the boardroom of Northern Ballet and the provisional programme is as follows:


09:30 -  10:00
Registration and networking
10:00 - 10:30
Tom Duke, British Embassy Beijing/UK Intellectual Property Office “Succeeding in China – How to mitigate IP risk”
10:30 - 11:30
Other presentations, questions and answer and discussions
11:30 - 12:00
One to one meetings (please request at time of registration)

The Barnsley meeting will take place at the Barnsley Business and Innovation Centre and will follow a similar format:



14:30 -  15:00
Registration and networking
15:00 - 15:30
Tom Duke, British Embassy Beijing/UK Intellectual Property Office “Succeeding in China – How to mitigate IP risk”
15:30 - 16:00
Questions and answer and discussions
16:00 - 16: 30
One to one meetings (please request at time of registration)
According to the WIPO China has a population of 1,371 million and a GDP of US $18,374.71 which is even bigger than that of the USA in terms of purchasing power parity, In 2015 there were nearly a million applications to the SIPO for patents for Chinese inventions. That is more than the applications made to their national patent office by the inventors of any other country. China is an important innovator and shares our national interest in ensuring proper protection for brands, designs, inventions and creative works around the world.

Mr Duke will tell you all about registration of patents, designs and trade marks in China and Hong Kong, licensing and joint ventures and enforcement through the courts and tribunals. As the new Business and Property Courts will launch in Leeds and other major cities I will tell you all about your contractual and IP rights, remedies and liabilities in respect of your dealings with Chinese partners here.

Space is limited at both venues and demand is likely to be heavy. If you want to be sure of your place, call Steve on +44 (0)20 7404 5252 and ask to reserve a place at either venue or send me a message through my contact form.

12 July 2017

The Leeds Business and Property Courts

Leeds Courthouse
© 2005 Jane Lambert: all rights reserved

















Jane Lambert

On Monday 10 July 2017, the Leeds Law Society held a reception at BPP Law School to launch the Business and Property Courts in Leeds (see Leeds Law Society Business & Property Court Launch Event).  The Business and Property Courts is an amalgam of the chancery and commercial courts sitting in Leeds and the idea is to integrate those courts with others sitting in London. I mentioned this initiative and discussed its potential significance to the economy of the North in Launch of a Judicial Superhighway?  12 June 2017 IP North West).

As I said in that article, litigators and advocates will have to get used to listing cases in one of 11 specialist lists one of which will be "Intellectual Property" regardless of the nature of the IP right and the court in which the action will proceed.  Having chosen a list the claimant's legal representative will have to choose a court centre where the claim will be issued and where it is to proceed. Advocates will have to get used to settling statements of case in the "Business and Property Courts in Leeds" rather than the name of the Division and the District Registry,

The reason why I say this development affects more than just lawyers is that it should allow any case to be heard in Leeds no matter how big and regardless of the subject matter.  If any kind of work can be done in Leeds there will be less incentive for bright young men and women to leave the city to practise in London. Such lawyers should be able to service entrepreneurs and other creative people which may be far more significant for economic regeneration than the millions to be spent on infrastructure projects for the North.

Should you want to discuss this post or dispute litigation in Leeds generally, call me on 020 7404 5252 or send me a message through my contact form.

17 May 2017

How to Access Useful Cost-Effective IP Services in Yorkshire

Percy Shaw's Cats' Eyes - Possibly Yorkshire's most
famous invention
Author ELIOT2000
Source Wikipedia 


















Jane Lambert

Our national prosperity depends on the competitiveness of British industry and that, in turn, depends on the propensity of our businesses to create and innovate.  Start ups and other small and medium enterprises ("SME") are among the most creative and innovative businesses in our economy.  They need to protect their investment in branding, creativity, design and innovation with intellectual property rights just as much as any other business but they do not appear to do so.  According to the European Patent Office, only 5,142 European patent applications originated from the UK in 2016 which is only 163 more than in 2007. In that time we have slipped from 7th place in the number of European patent applications to 9th having been overtaken by China and South Korea in our own backyard.

Soon after it entered office, the Coalition government commissioned Prof. Ian Hargreaves to review how the intellectual property framework supports growth and innovation and, in particular, "the cost and complexity to SMEs of accessing IP services to help them to protect and exploit IP". Hargreaves found 3 issues that impede SME in obtaining the support they needed:
  • the complexity of available offerings; 
  • a lack of broad-based, strategic business advice; and 
  • the substantial costs involved in IP management.
He recommended that:
"The IPO should draw up plans to improve accessibility of the IP system to smaller companies who will benefit from it. This should involve access to lower cost providers of integrated IP legal and commercial advice."
Although the government accepted that and all Hargreaves's recommendations, not much has been done to implement it.  Arguably access to IP services is worse now than it was when Hargreaves delivered his report because Yorkshire Forward and Business Link Yorkshire which signposted entrepreneurs and other business owners to the appropriate services and often funded them was abolished shortly after Hargreaves delivered his report.

The gap left by Business Links and Yorkshire Forward has been partly filled by the PatLib Centres at the Leeds, Sheffield and Hull Central Libraries which have been re-branded as Business and IP Centres in association with the British Library and funded by Arts Council England.  According to the British Library website:
"The British Library Business & IP Centre National Network provides entrepreneurs and SMEs across the UK with free access to databases, market research, journals, directories and reports worth thousands of pounds. There is a programme of free and low-cost events and workshops on a range of topics including business planning, marketing and intellectual property."
The British Library also hosts Linkedin and Facebook groups which carry useful articles and discussion.

So what does an entrepreneur, inventor, business angel do now if he or she wants to access the sort of cost-effective integrated business advice that Prof Hargreaves recommended?  Well here are my tips.

Tip #1.   Find out as much as you can about IP generally before you seek professional advice.
A good starting point is the IPO section of the Government website.  Particularly useful pages are:
I also recommend the IPO's IP Basics animations such as What is Intellectual Property? which you will find on the IPO's YouTube channel. If you want to learn more about protecting your intellectual assets outside the UK, a good place to start is the Protecting your UK intellectual property abroad page on the IPO website. The IP BASICS: Should I protect my Intellectual Property overseas? video is also worth watching. You will also find useful information on the European Patent Officee, EU Intellectual Property Office and World Intellectual Property Office websites. Each of those sites will introduce you to other resources. You can get a very thorough grounding in IP law from those and other materials.

Tip #2   Attend a Workshop or Seminar
Each of the Business and IP Centres in Yorkshire holds workshops and other events on IP law. I give one at Barnsley Business and Innovation Centre ("BBIC") in conjunction with BarnsleyBiz Surgeries on the second Tuesday of every month between 17:45 and 18:30. The IPO also holds regular events which you will find on the IPO events calendar.

Tip #3  Attend an IP Clinic
These are free consultations with a patent or trade mark attorney or a special st lawyer that would otherwise cost you quite a lot of money. The Chartered Institute of Patent Attorneys holds clinics once a month at Leeds and Sheffield Central Libraries (see the IP Clinics page of the CIPA website) and I hold one on the second Tuesday of every month at Barnsley BIC between 16:00 and 17:45. If you want a 30 minute consultation with me call George on 020 7404 5252.

Tip #4  Get a Search before consulting an IP Professional
You can only get or keep a patent if your invention is new and not obvious having regard to what what is already known. You can find out what has been invented before and what was known by searching the prior art. That is essentially a search of the register of British, European and other patents.  Similarly, you can only register a trade mark or keep a trade mark registration if the same or similar mark has not been registered for the same or similar goods or services. You can find out whether such a mark has been registered by searching the British, EU and WIPO registers. Finally, you may lose any design registration that you may obtain if the similar designs have been registered before. Leeds and Sheffield Business and IP Centres will carry out searches for you for a very reasonable fee. Call 0113 378 6010 for further details.

Tip #5  Consult a Regulated Professional
There are a lot of people who offer advice and assistance on IP but not all are reliable. In particular, there are businesses or individuals who promise the earth, charge a hefty fee and then supply information which is either wrong or available from other service providers free of charge or for a much lower fee or fail to deliver altogether. You should be on the lookout for them and avoid them like the plague. 

There are, however, other advisers who follow a code of conduct enforced by a professional regulator which requires them among other things to insure against the consequences of negligent advice. These are patent and trade mark attorneys and specialist counsel and solicitors. 

Although there is considerable overlap in the work that members of each of those professions carry out, there are differences in training and experience that equip members of one profession to perform a particular task better than any of the others. For instance, patent attorneys have natural science, engineering or technology qualifications as well as legal ones and are trained to draft patent specifications in a way that  is clear enough and complete enough for the invention to be performed by a person skilled in the art and claims that afford the widest possible monopoly while remaining valid. Similarly, barristers are trained as advocates which equips them to present cases to judges and hearing officers. They are therefore well placed to advise on difficult points of law and draft complex legal instruments which they are often instructed to do by members of the other professions. All the judges of the Patents Court, Intellectual Property Enterprise Court and the rest of the Chancery Division practised at the Bar before their elevation to the bench (see Jane Lambert IP Services from Barristers 6 April 2013).

Patent attorneys are members of the Chartered Institute of Patent Attorneys whose website has a searchable databases of patent agencies. Trade maek attorneys belong to the Chartered Institute of Trade Mark Attorneys who also have a Find an Expert feature. Most barristers who specalize in IP law belong to the IP Bar Association  Many but by no means all law firms that specialize in IP are members of the Intellectual Property Lawyers Association.

Tip #6  Ensure Adequate Funding for Litigation
Enforcing or defending IP rights can be expensive even in IPEC and the IPO. Because of the length and uncertainties of litigation very few cases are undertaken on a "no win no fee" retainer, particularly as success fees and after-the-event insurance premiums are no longer recoverable under the Legal Aid, Sentencing and Punishment of Offenders Act 2012 (see Jane Lambert Intellectual Property Litigation - The Funding Options 10 April 2013 NIPC Law), It is therefore prudent for businesses to consider before-the-event insurance when they apply for patents, trade marks or registered designs or when they create a copyrught work or original design. For information on IP insurance, see IP Insurance, CIPA's paper 1 May 2016.

For fiurther information, call me during office hours on 020 7404 5252 or send me a message through my contact form.

5 May 2017

How can I protect my Idea for a New Service?

Author TeaLaiumens
Source Wikipedia 
Creative Commons Licence

















Jane Lambert

Intellectual property law developed in the 19th century when the first industrial revolution was in full swing. An invention was necessarily a new product or a process for making products. Until the Trade Marks (Amendment) Act 1984 it was not possible to register trade marks for services in the United Kingdom. I remember accompanying the late Hugh Laddie to the Patent Office in 1984 when I was legal adviser to VISA International for Europe, the Middle East and Africa on an appeal against an examiner's refusal to grant VISA a trade mark for printed matter on the grounds that it was a roundabout way of obtaining a service mark for travellers' cheques.

The economic picture has changed a lot since then. Services now account for nearly 80% of GDP in advanced countries like the UK, France and the USA. But the law does not cater for innovation in services even though a new financial service using blockchain technology such as a new virtual currency can be every bit as ingenious as a new drug or communications device. One of the reasons why the law lags behind technology is that the leading industrial countries agreed to protect the intellectual assets of each other's nationals on a reciprocal basis in the Paris and Berne Convention of 1882 and 1886 because reciprocity requires such legal protection in all participating states to be approximately the same.

So when a client comes to me with an idea for an innovative new service his or her options are limited. It may be possible to patent a product or process used in delivering a new service such as a drone or even in some circumstances a software implemented invention but it is not possible in any country to patent a service as such. Even in countries like the United States where there is no equivalent to the statutory exclusions in s.1 (2) of our Patents Act 1977 the protection of methods of doing business has rolled back since the decision of the Supreme Court in Bilski v. Kappos, 561 U.S. 593 (2010).

Generally I advise a client to keep his or her idea to him or herself until he or she is ready to launch. If the client needs to talk to a contractor, collaborator he or she should do so in confidence. Every disclosure in confidence should be acknowledged in writing by the confident, recorded by the confider, closely monitored and strictly enforced. After the launch the idea will be in the open for anyone to see and, of course, imitate. Nevertheless, the innovator may still derive some advantage from being the first to market the service. Any reputation or goodwill accruing to his or her business can now be protected by registering the brand under which it is supplied as a trade mark.  All forms, manuals and other stationery used in the business will be literary works in which copyright will subsist automatically, If properly coordinated and supplied under a brand, the client may have a business format that can be franchised.

In its early days any business will be vulnerable to legal action either to enforce such IP rights as it may own or to defend a claim for their invalidation or revocation.  Even in the Intellectual Property Enterprise Court litigation can be ruinously expensive. Some form of IP insurance is therefore essential if it is to retain its market advantage.

I shall be talking about how to protect a service and other matters at Barnsley Business and Innovation Centre at 12:15 on 9 May 2017. If you want to attend that event you can do so by registering here.

2 May 2017

How can I protect my Business Idea?














Jane Lambert


Probably the question I have been asked most frequently in the IP clinics that I have run around the country is "How can I protect my business idea?"

It is not an easy question to answer because it depends on the nature of the idea and the size and the strength of the business.

For instance, patents provide the most extensive protection for new products or processes but they come at a cost:
  • several thousand pounds in Office fees and attorneys' costs for the UK alone and a great deal more if you want protection in other countries whether under the European Patent Convention or the Patent Cooperation Treaty;
  • Complete disclosure of the invention to enable those with the skills and knowledge to make or work it if the patent isn't granted, or if it is revoked or in countries where you haven't applied for patent protection;
  • periodic renewal fees that increase with the age of the patent in some countries; and
  • the costs of enforcing, or resisting an application to revoke, the patent that can run to many hundreds of thousands of pounds in some common law jurisdictions like the United Kingdom.
If nobody wants to buy or use the invention, all that money is wasted.

So is there a better way of protecting an invention? How about trade secrecy or unregistered design rights? Well, maybe, but then again, maybe not. Also, some of those costs can be insured again.

On Tuesday 9 May I will be talking about all those subjects and more at Barnsley Business and Innovation Centre between 12:15 and 13:15.  The talk is free but space is likely to be limited.

If you want to come you can register by clicking this link.