25 February 2016

Ten Top Tips for Yorkshire Inventors

Probably the most famous Yorkshire inventor is Percy Shaw who invented cat's eyes. Shaw patented his invention and set up a company to manufacture it. After a slow start his company manufactured over a million road studs a year. He ran a Rolls Royce and received an OBE in 1965 (see Reflecting Roadstuds Ltd.'s History page). Not every inventor can be as successful as Percy Shaw but his life story shows how it is possible for a man of very humble origins and limited education to exploit a bright idea spectacularly well.

Here are some tips on how to do it.

Tip No. 1 - Make sure you own the invention

Although the inventor is primarily the person who is entitled to an invention there are some who take priority over him or her. Employers, for example, if the inventor is employed in an R & D department or in some other job in which he or she might be expected to come up with an invention. Product design consultants are another group of people who would not normally claim an invention that they had helped to develop. This was not a problem for Percy Shore because he was self-employed contractor when he made his invention. Check your contract of employment and contact me or some other professional advisor if in doubt.

Tip No. 2 - Keep quite bout the invention until you are ready to exploit it 

You know the good old Yorkshire song that begins "Hear all, see all, say nowt". It makes very good sense for inventors. Patents confer monopolies which can be granted only for inventions that are new. "New" for this purpose means something that is not part of the "state of the art", that is to say the sum of human knowledge at the date of application for a patent. If you go blabbing about your invention it ceases by definition to be new and, thus, not patentable. Not only that it makes it very difficult to protect the invention in some other way such as the law of confidence. Best to keep your trap shut at all times except when talking to people who might help you protect your invention such as lawyers or patent attorneys, design or develop it such as product designers and development consultants and, of course, potential partners or investors who will help you make and market it.

Tip No. 3 - If you do need to discuss your invention do so in confidence

That brings me onto Tip No 3 that if you do need to discuss your invention with anyone do so in confidence.
An obligation of confidence is a duty not to disclose or misuse or disclose information that has been disclosed in confidence without the discloser's permission or other lawful excuse. Such an obligation arises automatically in some cases such as when you consult a lawyer or patent attorney. In other cases it is sensible to get the other party to sign a confidentiality or non-disclosure agreement. Such an agreement should specify the information precisely. It should require the other party to keep the information under wraps except when in use. It should state the purpose of any disclosure, whether the information can be shared with anyone else, whether documents  can be copied and when they are to be returned.   It is then up to you to police and enforce the conditions of the disclosure. I gave a presentation to the Leeds Inventors Club on confidentiality on 14 June 2006 and have written several articles on the subject such as Confidential Information on 12 Nov 2006 in my Inventors' Club blog. Though they were published 10 years ago the law has not changed much. If you need further information on the topic  do get in touch with me.

Tip No. 4 - Be particularly careful when approaching potential licensees

A lot of people write unsolicited letters to manufacturers or retailers whom they believe could be interested in the invention in the hope that they will develop it, put it into production, market it and pay them some money for their idea. That is nearly always a mistake. In most cases the letter ends in the bin and nothing more is heard from the manufacturer or retailer except a short acknowledgement. The reason for that is that many businesses have more than enough ideas that never see the light of day from their own R & D or marketing staff and they would risk a strike or at the least a lot of resentment by such employees where they to run with an idea from outside the business without good reason. Moreover, if the unsolicited idea is taken up the recipient is under no duty to pay the person who had the idea any money or even to give him or her any recognition unless the recipient receives the idea in confidence or the person who had the idea applies for a patent. There are, of course, exceptions. The NHS has set up a number of innovation hubs such as Medipex to develop its employees' inventions and a few companies such as Procter & Gamble and Boots invite submissions from members of the public but even then you should take care and seek professional advice if in any doubt. That was not a problem for Percy Shaw who set up a company to manufacture his own road studs. For many inventors, that is the best way forward.

Tip No 5 - Treat invention promotion companies with caution

Invention promotion companies are businesses that offer to evaluate an invention and bring it to market. They advertise widely in the press and on the internet.  There are some reputable companies such as the NHS hubs that I mentioned above and I am aware of one not-for-profit enterprise that has been formed by an inventors' club in Lancashire but many are not. The Intellectual Property Office warns in Seeking intellectual property advice:
"Some unreliable firms promise to evaluate your invention for a fee of a few hundred pounds. They then tell you that your invention has great market potential. They may offer to promote your invention to manufacturers if you pay a fee of several thousand pounds up front. Once you have paid up, they may do little or nothing for you."
Very few invention promotion companies offer information or services that are not available free of charge or for a modest fee elsewhere.

Tip No. 6 - Use the Business and IP Centres

One of those resources is the Business and IP Centre at the British Library in London which supports business owners, entrepreneurs and inventors with a comprehensive collection of databases and publications for free, as well as attend practical workshops, one-to-one advice sessions and inspiring talks. The Centre has a Facebook page, Linkedin group and twitter account.. There are also Business and IP Centres in Leeds Central Library which also holds a regular patent clinic, enterprise club and inventors' group and Sheffield Central Library which has Mr Roger Tipple, an innovator in residence, as well as inventors' club and patent clinic. I should add that I set up and chaired the Leeds and Sheffield inventors' clubs for many years and that that I also hold patent clinics at the Business Innovation Centre in Barnsley on the second Tuesday of every month.

Tip No. 7 - Think about the IP protection you need when drawing up your business plan

Patents are expensive to acquire, maintain and enforce and may not be what you need. In  order to obtain a patent you have to teach those with the relevant knowledge and skills ("skilled addressees") how to make or use the invention after the patent has expired, lapsed or been revoked. As patents are territorial anyone with such knowledge and skills outside the UK can make or use the invention unless you seek a patent for his or her country too. There are often better ways in which you can use your money. A good exercise when writing your business plan is to:
(1) identify the income streams for your business over the planning period;
(2) consider the threats to those income streams over that time;
(3) think about possible counter-measures to those threats most of which are going to be careful;
(4) if some of those counter-measures are going to be require an intellectual property right choose the one that is most likely to protect the income stream; and
(5) ensure that you have the funding to enforce your intellectual property right.

Tip 8 - Consider IP insurance

IP litigation is still expensive and most legal indemnity policies exclude it. However there are some brokers who specialize in such cover and can give you a very competitive quotation. You can also get policies to protect you against revocation or invalidity claims or actions by third parties for the infringement of their rights.

Tip 9 - Consider all funding options

For many years banks were the first and last port of call for inventors but it has now become increasingly difficult to raise money from them. There are now other options. You can raise capital through business angels, venture capitalists and crowd funding. You can raise working capital or other short term loans community development financial institutions such as the Business Enterprise Fund and peer-to-peer lenders.

Tip 10 - Take professional advice 

Professional fees can be expensive but you've heard the expression about spoiling the ship for a ha'p'orth of tar. If you need legal or other professional advice get in touch with me on 020 7404 5252 or through my message form and I will point you in the right direction.

5 December 2015

Northern Powerhouse One Year On

The Northern Powerhouse

Just over a year ago I attended the Northern Futures Summit which was chaired by Nick Clegg MP who was then Deputy Prime Minister. The summit brought together speakers like Ed Glaeser, Jim O'Neil, Tony Trathers and Bob Kerslake as well as local politicians. entrepreneurs and even schoolchildren from across the region to discuss how the resources of the individual communities in the North of England could be pooled and coordinated for the benefit of all.

The shorthand term for this pooling and coordination is "the Northern Powerhouse" which was coined by George Osborn MP who, like Clegg, is a Northern MP. The concept was summarized by the Chancellor in his Autumn statement for 2015:
"The Northern Powerhouse is the government’s plan to boost the economy across the North of England. It is built on the solid economic theory that while the individual cities and towns of the North are strong, if they are enabled to pool their strengths, they could be stronger than the sum of their parts. It means investing in better transport to connect up the North; backing the science and innovation strengths of the North, so that new ideas can be turned into new products and new jobs; investing in culture, housing and the quality of life to make the North a magnet for new businesses and talented people; devolving powers and budgets from London to local areas across the North, and creating powerful new elected mayors who will give people in northern cities and towns a strong voice."
The Northern Powerhouse was a brainchild of the Coalition Government and Clegg and Osborn were its progenitors. Clegg is no longer in office but Osborn is and I am encouraged to see that he appears to remain committed to the project.

In his Autumn statement the Chancellor announced investment in public transport, science based innovative companies and the arts in the North.  A body called Transport for the North ("TfN") with its own website and logo has already been formed.

The Chancellor proposes to invest £150 million of public money in TfN's plans for a new smart ticketing system to allow passengers to cross the region easily by bus, metro, rail or tram.

As for science and innovation, he announced a £250 million investment in nuclear technology some of which will go to Sheffield and a new Northern Powerhouse investment fund to be run by the British Business Bank in collaboration with the local enterprise partnership, new enterprise zones, a sovereign growth fund for the North funded by shale gas exploration  and a £50 million investment in agricultural technology centres in York.

The timetable for the implementation of the Northern Powerhouse is as follows@

2015-16 and 2016-17

Key project starts:
  • The first of almost £3 billion of Growth Deal projects get underway
  • Launch of Health North
  • Construction work on UK Collaboratorium for Research In Infrastructure and Cities hubs
  • Investment package for Small Modular Reactor development and nuclear R&Dlaunched
  • Accelerating £220 million upgrade to M6 Junctions 16-19
Key project completions:
  • Electrification of railway between Manchester and Liverpool
  • Appointment of Transport for the North’s Chair
  • Interim report from Transport for the North
  • Contract award for the New Northern and Transpennine Rail franchises
2016-17 and 2017-18

Key project starts:
  • Construction work on Sir Henry Royce Institute in Manchester
  • Energy Subsurface Test Centre, Chester
  • Construction of National Centre for Ageing Science, Newcastle
  • Great Exhibition Legacy Fund
Key project completions:
  • First mayoral elections for northern cities
  • Graphene Engineering and Innovation Centre, Manchester
  • Cognitive Computing Research Centre, Cheshire
  • Mersey Gateway Bridge opens
  • New East Coast InterCity Express trains come into service
  • National College of High Speed Rail, Doncaster
  • Investments under the Builders Finance Fund for new homes
  • ‘The Factory, Manchester’ – a new theatre and exhibition space
  • 2019-20
Key project starts:
Major roads investment projects underway across the North, such as the A1 north of Ellingham and A1 Morpeth to Ellingham

Key project completions:
  • Northern Hub rail enhancements scheme
  • £350 million Metrolink extension to Trafford Park in Greater Manchester
  • Development in extending the capabilities of the National Nuclear Users Facility
  • Improved East Coast rail timetable with additional and faster services
  • Hartree Cognitive Computing Research Centre, Cheshire
Should anyone wish to discuss this article or the Northern Powerhouse project in general, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Northern Powerhouse Reading List

16 Nov 2015
BBC website
14 May 2015
BBC website
7 Nov 2014
Eddie Copeland

Are elected mayors enough to deliver the Northern Powerhouse?

Policy Bytes
27 Nov 2015
HM Treasury

Autumn Statement 2015

Policy Paper
3 Dec 2014
HM Treasury

Autumn Statement 2014

Policy Papr
6 Nov 2014
Buce Katz

Manchester England England: Devolution U.K. Style

10 Dec 2014
Jane Lambert

Let's Take this Opportunity with Both Hands

IP North West
8 Nov 2914
Jane Lambert

Northern Futures Summit

IP Yorkshire
25 Oct 2014
Jane Lambert


IP North West
22 July 2014
Jane Lambert

How can Leeds regain its Lustre

IP Yorks
5 July 2914
Jane Lambert

Power. Performance. Potential. Leeds Economic Conference

IP North West
3 Apil 2014
Jane Lambert

Creating a Northern Counterweight to London is good for the Nation

IP North West
3 Jan 2013
Jane Lambert

NESTA in Manchester

IP North West
10 Sept 2011
Jane Lambert

LEP Summit: My Impressions of the Day as a Delegate

IP Yorkshire
16 Oct 2014
Northern Futures

Open Ideas Day

5 Nov 2014

North of England Economic Indicators

6 Nov 2014

Northern Futures summit - PwC comments

PWC in the North
7 Nov 2014
Tony Travers
LSE, British Politics and Policy
7 Nov 2014
Paul Unger
Place North West

5 October 2015

Sheffield Educational Charity's Trade Mark Case: NOCN v Open College Network Credit4Learning

In NOCN  v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC) (25 Sept 2015) NOCN which is based in Sheffield sued its former affiliate OCN Credit4Learning for trade mark infringement and passing off for using the following sign:

The Trade Marks

NOCN had registered the following signs as well as the letters OCN and NOCN as trade marks for accreditation and certification services:

The Arguments

NOCN argued that it was the only organization in the country that was entitled to use the initials OCN or the swoosh device in relation to vocational qualification and accreditation services.  OCN Credit4Learning replied that OCN was short for "Open College Network" and counterclaimed for invalidation of the registration of the letters "OCN" as a trade mark.

The Decision

The action and counterclaim came on before His Honour Judge Hacon who held that NOCN had no monopoly of the use of the letters OCN and declared the registration of those letters as a trade mark to be invalid. However, he found that OCN Credit4Learning's use of the dot device in a sort of V shape around the words "OCN Credit4Learning" was too similar to the swoosh device in NOCN's trade marks and found that such use amounted to trade mark infringement and passing off.

The Reasons for the Decision

The judge came to his decision because a trade mark is supposed to distinguish one supplier's goods or services from those of all others. OCN is simply an abbreviation for "open college network" of which there are several in the UK. Some of these are affiliated to NOCN while others are not. If NOCN were allowed a monopoly of the abbreviation it would make it difficult for other open college networks to carry on their business.

On the other hand the letters "OCN" combined with the swoosh device were capable of distinguishing NOCN's services from those of other organizations. The dots device when combined with the letters "OCN Credit4Learning" looked very like NOCN's registered trade marks. Its use might lead people to believe that OCN Credit4Learning was somehow connected with NOCN.

If anyone is interested in the legal issues I have discussed them at length in When one charity sues another - NOCN v Open College Network Credit4Learning 4 Oct 2015 NIPC Law.

The Postscript

In a postcript to his judgment, Judge Hacon said:
"I now know that between them the parties, both charities, have incurred well over £400,000 on fees in this litigation. A very strong recommendation to settle at the case management conference was not taken up. The laudable cause of encouraging adult education will presumably have to endure an equivalent cut in funding solely because this dispute was not resolved at an early stage. Such an outcome is much to be regretted."
The action and counterclaim were brought in the Intellectual Property Enterprise Court, the successor to the Patents County Court, which requires trials to be completed in 2 days and limits the costs that one party can recover from the other to a scale (see Jane Lambert New Patents County Court Rules NIPC Law 31 Oct 2010). However, nothing in the new rules prevents lawyers charging their clients more than the costs that they can recover on the scale and that seems to have happened in this case.

Alternatives to Litigation

There are alternatives to litigation which parties to a dispute are required to consider (see paragraphs 8 to 11 of the Practice Direction - Pre-Action Conduct and Protocols). These include direct negotiations, mediation, expert determination, early neutral evaluation, arbitration and proceedings in the Intellectual Property Office.

Most disputes are settled by direct negotiations between the parties or their legal advisers. If conducted in the right spirit with a proper exchange of information and documents they can be the fastest and cheapest way of resolving a dispute. The Practice Direction promotes such negotiations by requiring parties to exchange information and documents in their letters of claim and response and they can be penalized if they fail to do so.

If a dispute cannot be settled by direct negotiations the parties are required to consider alternatives. One of the reasons why direct negotiations do not always succeed is that the parties do not usually know each other's bottom line or interests. Another is that bitter emotions and recriminations can get in the way. Mediation addresses those problems. It is essentially a form of negotiation where the mediator makes it his or her business to understand the underlying issues and suggest solutions which may not have occurred to either party but with which both may live. I am a mediator specializing in IP disputes and I sit on the WIPO and Consensus Mediation Panels. The Intellectual Property Office also offers a very cost-effective mediation service for trade mark and other IP disputes.

Expert determination, early neutral evaluation and arbitration are all forms of adjudication, that is to say where the parties agree to refer their dispute to a trusted third party for determination. ICANN's Uniform Domain Name Dispute Resolution Policy for generic top level domain name disputes and the IPO's opinion service for patent disputes is an example of early neutral evaluation.  The terms upon which neutrals are retained will depend on the needs and wishes of the parties. Our panel of arbitrators can sit as experts, neutrals or arbitrators in any kind of dispute though I specialize in IP.

Although the Registrar of Trade Marks does not have jurisdiction in infringement disputes his hearing officers can hear revocation and invalidity disputes. Proceedings before a hearing officer are more informal than court proceedings and can often be disposed of without a hearing. Costs are awarded in IPO proceedings but these rarely exceed a few thousand pounds.

Further Information

Should anyone wish to discuss this article or trade mark law or passing off in general call me on 01484 599090 during office hours or use my contact form.

22 September 2015

The High Cost of Copying in Buttershaw: Absolute Lofts v Artisan Home Improvements

Author Ordnance Survey
Source Wikipedia
Crown Copyright and Database Right

On 14 Sept 2015 a Buttershaw builder was ordered to pay £6,300 in damages to a London loft conversion company for downloading images of the London company's loft conversions from its website and posting them to his own (see Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd and Another [2015] EWHC 2608 (IPEC)).

The parties were not competitors as they were separated by 200 miles of clogged motorway and the only loss that the claimant had suffered was a notional licence fee of £300 for the use of the pictures but the judge awarded the London company additional damages of £6,000 under art 13 (1) of Directive 2004/48/EC on the enforcement of intellectual property rights. His Honour made that award to take account of the defendant company's profits as a result of the infringement which he regarded as "unfair" and also to dissuade others from doing the same. I discussed the case in my case note
Damages for infringing Copyright in Photographs - Absolute Lofts v Artisan Home Improvements 22 Sept 2015 NIPC Law.

The judge made the award because art 13 (1) of the Directive comes into play when an infringer knowingly, or has reasonable grounds to know, that he or she is engaging in infringing material.  In this case there was an aggravating factor in that the defendants were misrepresenting the London company's handiwork as their own but that article can apply in any other case where the defendant knows he is copying without permission or copies anyway whether he or she has permission or not.

There is a widespread myth that if something is on the internet it must be free for anyone to use. Thus photos, videos and text including company's terms and conditions are downloaded and recycled with gay abandon. The number of times that clients have told me this week that their neatly drawn up terms of business have been lifted from a company in the same industry (sometimes even a competitor) does not bear thinking about. It has always been wrong to copy and now it is dangerous because the small claims track of the Intellectual Property Enterprise Court with its fixed costs makes it possible for copyright holders to pursue pirates at minimal cost and risk to themselves.

There is in truth a lot of stuff on the internet that is free to share or use under Creative Commons and other licences but check first.  Most but by no means all of the material on Wikipedia is free to use but click the image first and read the notes that appear on the Wikipedia Commons page. Usually you have to attribute the author and copyright owner and there are nearly always restrictions on use. Very much the same applies to clip art and other material. If in doubt ask the copyright owner for permission to use the material and if he or she says "no" then take your own photo or get a lawyer to draft your own terms. The few hundred pounds a professional will charge you is a fraction of the cost of litigation.

If you are accused of copying then remove the infringing material at once and apologize profusely. If the complainant wants money then take legal advice as a matter of urgency. Don't ignore the demand or you may find yourself in court with sky high costs and court fees.

Similarly, if you think your image, text or other work has been ripped off take legal advice before doing a thing. Some countries like Australia provide threats actions for unjustifiable threats of copyright infringement.

If you want to discuss this article call me during office hours on 01484 599090 or 020 7404 5252 or use my contact form.

20 September 2015

IP and Fashion Seminar - 7 Oct 2015

For nearly 200 years the Leeds City Region formed one of the twin pillars of the British textile, clothing and fashion industries. Overseas competition has diminished those industries and forced them to specialize but products from this region are still regarded as the best of their kind. I proudly recall visiting an area of Kyoto which consisted entirely of cloth merchants where I found that Huddersfield worsted was the most prized of all. The region has always been an important retail centre. Household names such as Marks & Spencer and Montague Burton started in Leeds.

With initiatives such as Lambert's Yard and the Textile Centre of Excellence in Huddersfield the region is striving to restore its pre-eminence in textile and fashion design and technology.  However, it can only do that if its designers, retailers and manufacturers can properly protect their brands, designs and innovation. That is where intellectual property comes in. Shortly after entering office the Coalition government commissioned Professor Hargreaves to review the legal protection for brands, designs, technology and the creative industries and propose changes in the legislation to promote growth.

Hargreaves came up with nine recommendations in his report DigitalOpportunityA Review of Intellectual Property and Growth all of which were accepted by HM government and have now been largely implemented.  On 10 Sept 2015 I discussed how those changes affect the clothing, fashion and textile industries in a full day seminar in London which received very favourable feedback from most of the 20 solicitors, trade mark attorneys and in-house legal advisers who attended the event  (see IP and Fashion Law 12 Sept 2015 IP London) and I am repeating the talk in Leeds on 7 Oct 2015.

In that seminar  I hope to cover the following topics:
  • What sort of IP protection does my employer or client require for his business and where?
  • What provisions should I insert in my employer or client's licence or manufacturing agreement?
  • What should I do if I find copies or lookalikes of my products in competitors' shops?
  • What's Hot? The implementation of s.74 of the Enterprise and Regulatory Reform Act 2013 - John Kaldor v Lee Ann, Specsavers v ASDA and Thomas Pink v Victoria's Secrets;
  • IP basics; terminology, intellectual assets (brands, designs, technology and works of art and literature), intellectual property (trade marks, registered designs and unregistered design rights, patents, trade marks, law of confidence and action for passing off), institutions (Intellectual Property Office, Office for Harmonization in the Internal Market, European Patent Office, World Intellectual Property Organization), Sources of law (treaties and conventions (TRIPs, Paris and Berne), EU legislation, statutes), enforcement. remedies, licensing
  • Advising the designer: types of design, aesthetic design, functional design, design registration and equivalent regimes, TRIPS, Paris and Rome Conventions, Designs Directive, Community Design Regulation, Copyright, Designs and Patents Act 1988, Registered Designs Act 1949, licensing, enforcement
  • Advising the manufacturer; patents, trade marks, designs, licensing, cabbage, summary of laws in China, Egypt, India, Indonesia, Morocco, Pakistan, Thailand and Turkey
  • Advising the retailer: trade marks, passing off, searches, agreements with designers and manufacturers
  • Dispute resolution: High Court, Patent Court, IPEC (multi track and small claims), IPO examiners' opinions, appointed person
  • IP strategy: identifying appropriate rights for particular jurisdictions, selecting and instructing foreign attorneys, watch services.
Rather than read from notes and slides I taught the course by setting typical problems such as
"The day after a royal baby makes his or her first public appearance you want to sell a similar set of baby clothes. How would you set about doing that without being sued?"
"What provisions would you place in a contract with a supplier from Bangladesh?"I got that idea from Ross Burrows of Burrows Law because that is how he taught the public access top-up and litigation courses which I took last year. He built on participants' knowledge and experience which he encouraged us to share. I decided to do the same next time I taught a CPD training course.
Preparing such courses requires a lot more work on the part of the trainer but it aids comprehension and retention. The overwhelming response of the London group was very positive according to the feedback forms.

If you want to attend this course there are still places available but you will have to move fast. You can register on-line or call MBL Seminars on 0161 793 0984.  The course will start at 09:30 and end at 17:15 and thus earn 6 hours CPD. The standard cost is £480 but there will discounts for season ticket and smart plan subscribers. If you want to discuss this course or any other point of IP law call me on 01484 599090 or 020 7404 5252 or message me through my contact form.  I look forward to meeting you.

30 August 2015

What's happening to Yorkshire?

A Wooden Spoon
Author David Jackmanson
Source Wikipedia
Creative Commons Licence

Yorkshire and the Humber have a population of nearly 5.3 million according to the 2011 census which is 8.4% of the population of the UK and larger than the populations of Norway (5.2 million), the Irish Republic (4.6 million and New Zealand (4.2 million) but the region contributed only 6.5% of the nation's UK patent applications in 2014 (see page 7 of the IPO's Facts and Figures for 2013 and 2014). Whereas there was a slight increase in the number of UK patent applications from 14,946 in 2013 to 15,187 Yorkshire's share actually dropped from 983 in 2013 to 980 in 2014. Yorkshire was 7th in the number of patent applications trailing London (2,766), South-East England (2,701). East of England (1,938), South West (1,510), North West (1,239) and the West Midlands (1,144).

It is the same story in trade mark applications (2,872 compared to London's 14,308, the South East's 12,484, North West's 4,676, South West's 3,597, East of England's 3,415 and West Midland's 3,127) and registered design applications (310 compared to London's 1,120, South East England's 988, North West's 585, West Midland's 505, South West's 452, East of England's 389 and Scotland's 326) though to be fair the region's registered design applications increased from 69 in 2013 to 310 in 2014).

With some of the nation's greatest research universities at Leeds, Sheffield and York, a highly developed financial services industry including business angel networks and private equity investors, Business and IP Centres in Leeds and Sheffield and strong cultural institutions, Yorkshire and the Humber should do better. In the next few months we shall investigate why our region under-performs and what can be done about it. We shall consult local enterprise partnerships, local authorities, chambers of commerce, universities and professionals throughout the region to see where (if anywhere) we have been going wrong and what (if anything) can be done to put it right. In the New Year we plan a day long conference to coordinate our activities. If you want to be involved email me or call me during office hours on 01484 599090.

26 July 2015

Business University Collaboration - the Yorkshire Innovation Fund

Yesterday the Yorkshire Innovation Fund started to follow me on twitter so I thought that the least I could do was to check it out. It describes itself on its home page as "a way of funding new ideas within your business" and explains:
"Many new ideas require a blend of skills and expertise to get them off the ground and working with a local university can often help by providing access to expertise, specialist equipment or facilities or new talent to develop your idea. YIF funds this access."
In other words, it puts up the money to pay for R & D and other work carried out by one of its partner universities which seem to include most of the universities in Yorkshire with the notable exception of the University of Sheffield.

Available Funding
According to the Is my company in an eligible sector? page of its website
"The Yorkshire Innovation Fund is available to Small and Medium-sized Enterprises (SMEs) in the Yorkshire region from the following areas:
  • Advanced manufacturing, engineering & materials
  • Bio-renewables (feedstocks, raw materials and ingredients)
  • Healthcare technologies
  • Low carbon energy (e.g. wind, nuclear, carbon capture & storage, bio-fuel)
  • Bioscience
  • Creative and digital 
  • Chemicals
  • Financial and business services
  • Food and drink
  • Sport (South Yorkshire SMEs only)"
On the What types of project has YIF supported? page the website mentions small innovation projects up to £10,000, research and development projects up to £31,000 and strategic intervention for which no figure is given. Detailed case studies of projects that the Fund has supported in the past can be downloaded from the Projects YIF has funded page on its website.

Funding for New Projects
This would seem to be a good port of call for many of the entrepreneurs and inventors I have seen in my IP clinics and the Leeds and Sheffield inventors clubs over the years except for this warning that appears on the home page:
"YIF is currently unable to commence any new projects with regional SMEs and is exploring new funding opportunities to support collaborative projects in the future."
We must hope that this is only a temporary hiccup and that the Fund will refill its coffers soon. It must be remembered that this is only one funding option among many and that I discussed some of the other options in Business Funding in Leeds City Region on 1 June 2015.

Issues to consider when Negotiating with a University
If a business does commission a university to do some work for it, its management should give some thought as to
  • the ownership and rights to use the results of the project
  • the financial and other contributions made by the commercial sponsor
  • the university’s use of the results for academic purposes.
It may come as a shock to readers that a not insignificant part of my work as a member of the IP bar is taken up with negotiating those issues with, and occasionally on behalf of, universities and resolving disputes over those issues once the work has been completed.

The Lambert Agreements
At the beginning of the present millennium Mr Gordon Brown who was then the Chancellor of the Exchequer commissioned Sir Richard Lambert (as he now is) to review collaboration between businesses and universities. In his Final Report which was published in December 2003 Sir Richard identified concern over those issues as one of the impediments to such collaboration. To allay those concerns the Chancellor asked Sir Richard to hold further meetings with stakeholders to develop model contracts for such collaboration and I actually participated in one of those sessions, The result has been a number of model agreements which are explained in The Lambert Toolkit. The Intellectual Property Office has helpfully provided a Decision Guide to help negotiators choose the right contract.

Need for Caution
Although it is a lot easier than it was dealings between universities and businesses are still tricky largely because academics and businessmen have different interests and come from different cultures. Universities have become pretty savvy of late and they have access to good and experienced legal and accounting advice. Entrepreneurs are often at a distinct disadvantage (especially in the early days of their business careers) and they need all the professional help they can get.

Should any reader want to discuss this article or requires advice on business-university collaboration or funding in general, he or she should call me on 020 7404 5252 during office hours or contact me through this form.