Tuesday, 26 January 2016

Preparing for the Unified Patent Court

I have been invited to speak to the Merseyside meeting of the Chartered Institute of Patent Attorneys at the Hope Street Hotel at 40 Hope Street in Liverpool on 28 Jan 2016. The title of my talk is "Preparing for the UPC" and the reason why I have been asked to give that talk is that the UPC or Unified Patent Court is likely to open for business in the next few months. When it does the European Patent Office will be able to grant European patents with unitary effect or unitary patents, that is to say single European patents for the territories of a group of EU member states, including the UK, France and Germany, as though they were one country.

One of the reasons why European businesses have been less creative and innovative than their competitors in the United States, Japan and other countries is that it is much more expensive for European entrepreneurs to patent their inventions in the European Union.  In 2005 the European Patent Office commissioned research which compared the cost of patenting an invention  set out in a specification consisting of 11 pages of description with 10 claims spread over 3 pages in Europe the USA and Japan (see Cost of Patents: EPO Report tells us what most of us already knew 23 Dec 2015 NIPC Inventors Club). I wrote:
"The cost of obtaining such a patent was €30,530 in Europe (as of 23 Dec 2005 £20,861.15) compared to €10,250 (£7,004.85 for a comparable US patent granted to a US company - British applicants would have to pay £16,469.94 which is still less than they have to pay for protection in their own market) and €5,460 (£3,731.36) that a Japanese company would have to pay for a patent in Japan."
That was 10 years ago and some costs such as translation have come down as a result of the London agreement (though others have gone up) but the differential still remains. The unitary patent will greatly reduce the cost of patent prosecution in our home market (or if we decide to exit the EU in the forthcoming referendum) our biggest and closest export market.

Even greater savings will be made in the cost of patent enforcement. Another report from about the same time compared the cost of bringing an infringement claim in France, Germany, the Netherlands, the United Kingdom and United States (see The Enforcement of Patent Rights by the Intellectual Property Advisory Committee). The costs in France, Germany and the Netherlands ranged from €10,000 to €50,000 whereas those in the Patents Court were over £1 million and between £150,000 and £250,000 even in the Patents County Court. Costs in the USA were even higher that in England but there it is unusual for the losing party to pay the successful party's costs and it is possible for lawyers to accept instructions on a contingency fee basis. When those factors are taken into account it is small wonder that the UK continues to file consistently fewer applications for European patents than German, France and the Netherlands (6,823 in 2014 compared to 31,647 from Germany, 12,873 from France and 8,104 from the Netherlands according to the European Patent Office).

From the day it opens Unified Patent Court will have exclusive jurisdiction over claims for the infringement and revocation of unitary patents. For a transitional period of 7 years it will share jurisdiction over claims for infringement and revocation of other European patents including those that designate the UK with the Patents Court, Intellectual Property Enterprise Court and other national courts unless the owners of such patents decide to withdraw their patents from the UPC's jurisdiction within that transitional period.  After that transitional period the UPC will have exclusive jurisdiction over all European patents including those that have been granted for the UK. Eventually businesses from all parts of Europe, including the UK, will operate on a level playing field in that costs and delays for UK businesses should be no greater than for their German, French or Dutch competitors.

The immediate reduction in prosecution and maintenance costs and the eventual levelling out and reduction in enforcement costs should act like a shot in the arm for British businesses and especially those based in North West England. Lower costs should be particularly beneficial for small businesses and individual inventors who will be eligible once again for legal aid - a benefit that was taken away by the Access to Justice Act 1999 (see Jane Lambert Legal Aid for the UPC 23 Jan 2016 NIPC  Inventors Club).  If you want to discuss this article or the unitary patent or Unified Patent Court in general please call me on 0161 850 0080 during office hours or message me through my contact form.


Preparatory Committee
UPC website
23 Jan 2016
Jane Lambert
23 Jan 2016
Jane Lambert
NIPC Inventors

Friday, 18 December 2015

.lancaster Domain Name

Author Antiquary
Source Wikipedia
Creative Commons Licence

I am proud to have been born in the historic county of Lancaster even though the city in which I was born had been a county borough for many years. For centuries there was a Court of Chancery of the County Palatine of Lancaster and the judicial title "Vice-Chancellor of the County Palatine of Lancaster" for the presiding judge of the Chancery Division in the Northern and North Eastern Circuits remains survives to this day. The city from which Lancashire derives its name is of course Lancaster which has a population of just over 52,000 according to Wikipedia.

There is  another Lancaster on the other side of the Atlantic in Pennsylvania.  That Lancaster has a slightly larger population than the English city but it retains its allegiance to the red rose which appears in the city's flag (see Wikipedia Lancaster, Pennsylvania). There is also a county of Lancaster in Pennsylvania which was settled by the Pennsylvania Dutch. It is well known for its distelfinks.

Lancastrians on both sides of the Atlantic may be interested to learn that ".lancaster" will soon be available as a new generic top level domain name.  According to Nathalie Dreyfus that gTLD will be generally available in December 2015. Surprisingly, the application to sponsor this gTLD came not from Lancashire or even Pennsylvania but from France.  The proposed sponsoring organization is "Lancaster" of 95 Rue du Parc, 93130 Noisy le Sec in France. Even more surprising is that ICANN's String Delegation Readiness Report  determined the LANCASTER String not to be a Geographic Name which meant that it did not have to complete a Geographic Names Review.

Apparently there have been no objections to the creation of the .lancaster registry but that begs the question how many people in either the UK or the USA were aware of the application? If anyone wants to discuss this further give me a ring on 0161 850 0080 or 020 7404 5252 during office hours or send me a message through my contact form,

Saturday, 24 October 2015

Why you need an IP Strategy - even if you don't export

Yesterday I attended the Daresbury Business Breakfast Networking Event at the Park Royal Hotel in Stretton. After the meeting Tony Brown and Sara Knowles of UK Trade and Investment gave a very interesting talk entitled UKTI Services - how to internationalise your business. I hope to get the slides for that talk and I shall make them available to you in this blog if I do.

During his talk Tony listed some of the questions that he he is often asked by small and medium enterprises. Three of them were on IP topics:
  1. What can I do to protect my business if I can't afford a global patent?
  2. How do I protect my brand internationally? and 
  3. How can I protect my software for US$35?
Tony's reply to the first question was protect what you can with trade marks and confidentiality. There were three patent and trade mark agents in the audience plus me and we all stuck our hands up at that point because we wanted to make clear that trade marks protect brands and not technology for which you need a patent. To be fair Tony acknowledged and clarified that point. His answer to the second question was to apply for a trade mark in key markets possibly through OHIM or the Madrid Protocol. The answer to the third question was that $35 was the cost of registering a copyright with the Library of Congress. I pointed out that the USA was party to the Berne Convention and that registration was required not for subsistence but for enforcement.

At that point Paul Treloar, Business Support Manager at Sci-Tech Daresbury, intervened to say that these are difficult legal issues for which businesses should take the appropriate professional advice. Realizing that not everybody can afford a patent or trade mark agent or specialist IP lawyer I mentioned the excellent materials available on the IPO, European Patent Office, OHIM (EU trade marks and designs registry) and WIPO (UN specialist agency for intellectual property) websites and the services of the Business and IP Centre of the British Library and its associated libraries in Manchester, Liverpool, Leeds, Sheffield and elsewhere.

It also prompted me to stress the need for an IP strategy which takes account of enforcement as well as registration of IP rights.  I have suggested the following simple one many times but it does bear repetition.
  1. When writing your business plan consider where your revenue is likely to come over the period for which you are planning.
  2. Consider the potential threats to those revenues streams. I don't mind betting a penny to a pound that most of them will be commercial like a competitor brings out a better product or the market for the product will become satiated.  Ripping off your idea or claiming an association with your brand is not the primary worry for most businesses though it does happen.
  3. Consider the counter measures to those threats. Again I would wager that most of these will be commercial like lower your prices or develop an improved model. Only in a few cases will you need legal protection for your brand, design, technology or work of art or literature.
  4. If you do need legal protection tailor that protection to meet the precise threat. You may have a brand new, earth shaking technology but if consumers are attracted to the shape of your product then it is the design that you need to protect with a national or EU design registration rather than a patent.
  5. Prioritize your protection to your principle markets and the countries in which your competitors operate. Very few businesses can afford or even need blanket protection in every market of the world.
  6. Consider how you will enforce your rights in each market. Don't assume that the authorities will prosecute infringers on your behalf. Not all infringements are criminal offences. Art 61 of the TRIPS agreement requires governments to provide criminal sanctions only for piracy and counterfeiting (copyright and trade mark infringement on an industrial scale) and although some countries such as ours do a little more adding bootlegging and most recently intentional copying of registered designs to the list of IP offences many other countries do not. Do not assume that a lawyer will act for you on a no win, no fee basis - at least not in this country now as success fees are no longer recoverable from your opponent. If you can't afford to fund an action out of your current account then you should consider some kind of IP insurance.
I have offered to train UKTI's advisors in these matters if they so wish and that offer extends to other organizations that advise and assist small and medium enterprises. If anyone wants to discuss this article or IP strategy in general, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Friday, 9 October 2015

Vaping a claim - Fontem v Ten Motives

In Easyair Ltd (t/a Openair) v Opal Telecom Ltd [2009] EWHC 339 (Ch) (2 March 2009),  Mr Justice Lewison, sitting in Manchester, said at paragraph [15] of his judgment
"it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it."
Patent cases often turn on a question of construction because the monopoly granted to a patentee is set out in a series of numbered paragraphs called "claims".

In Fontem Holdings 1BV and anther v Ten Motives Ltd and Others [2015] EWHC 2752 (Pat) (2 Oct 2015), another case from North West England, a Cheshire business which marketed and distributed e-cigarettes was sued by one of its competitors for patent infringement. The claimants alleged that two of the defendants' products fell within the claims of their patent.  The defendants applied for summary judgment under CPR Part 24 .  The action turned on the construction of claim 1 of the patent and the defendants invited the judge to construe it in their favour.

Mr Justice Norris refused to do so. Patents are addressed to "persons skilled in the art", that is to say persons with the skill and knowledge needed to make or use the invention and judges have to construe patents from the perspective of such persons. In order to do that they require expert evidence as to how a skilled addressee would read the patent. Expert witnesses can inform the judge whether any of the terms used in the patent has a special meaning, how the addressee would interpret the drawings and what technical knowledge would be expected of such persons.  Such evidence is often hotly disputed as it was in Fontem Holdings. Even though he referred to Easyair  in his judgment Mr Justice Norris did not think that he could construe claim 1 without such evidence. That is the crucial difference between the two cases.

In  How to read a patent 2 Aug 2013 IP London I explained how patents are presented and how they are to be read and understood.  For those who want more basic information I wrote "So what's a patent" on 6 Sept 2014 in IP East Midlands and What is a Patent? Why might I want one? How do I get one? on 19 March 2014 in IP South East. For those who want more detail I have discussed Fontem in Summary Judgment in Patent Cases: Fontem Holdings 1BV and Another v Ten Motives Ltd and Others 8 Oct 2015 NIPC Law.

Mr Justice Norris's decision in Fontem is important for another reason. The patent that he was asked to construe was a European patent, that is to say one issued by the European Patent Office in Munich as opposed to the UK patents which are issued by the Intellectual Property Office in Newport. European patents are usually granted simultaneously for several European countries one of which may be the UK. For the first 9 months after the grant of a European patent can be challenged in the European Patent Office by a procedure called "opposition" under art 99 of the European Patent Convention. After those 9 months have expired a European patent can only be challenged in the courts of the countries for which the European patent is granted.

If an opposition succeeds the European patent is revoked and any infringement proceedings that have been launched fail automatically. The only problem with opposition proceedings is that they can take a long time during which time the patent remains in force. Sometimes the courts will stay infringement cases until after the opposition proceedings have run their course.

There was an opposition in Fontem Holdings and the defendants applied for a stay of the infringement action in England until after the opposition proceedings in the European Patent Office had been resolved in case their summary judgment application failed.  The judge refused that application as well. In reaching his decision he weighed the interests of the parties in very much the same way as he would consider an interim injunction application and he decided that the balance of justice law in allowing the infringement action to continue. That is not to say that a stay will be refused in every case. Each case is to be decided on its own facts.

If anyone wants to discuss this case or patent law in general, he or she should call me on 0161 850 0080 or 020 7404 5252 during office hours, or send me a message through my contact form.

Saturday, 29 August 2015

Venturefest Manchester

There has been a Venturefest in York since 2005 and one in Oxford for even longer. Over the years there have been Venturefest events in Bristol, the East and West Midlands and other parts of the country. Last year there was the first in Manchester. On the 22 Sept 2015 the second Venturefest Manchester will take place at Lancashire County Cricket Club at Old Trafford.

As its name suggests Venturefest is a festival of enterprise. It brings together business, the professions, education and local government in an all day conference and exhibition. The event is organized by the Business Growth Hub and sponsored by InnovateUK and the Knowledge Transfer Network.

The event will begin with business breakfasts at 08:30 on life sciences, investment and graphene, a welcome from Mark Edwardson, the keynote speech from Sir Howard Bernstein and then parallel events in different rooms (see the Agenda).  One of those events will be the Innovation Showcase competition the winner of which will receive
"a unique package of business support worth up to £30,000 and including a year’s free space at the Sci-Tech Daresbury, support around accountancy, patents and legal issues and a range of marketing and PR services."
Exhibitors include Lancaster, Manchester and Salford universities, the Intellectual Property Office, UK Trade and Investment, local business angels, science parks and patent agents.

You can register for the event through the Business Growth Hub website. I shall be there and I shall look forward to meeting you.

Wednesday, 3 June 2015

An Introduction to Intellectual Property for Commercial Lawyers

Jane Lambert

These are the slides of a presentation that I gave to Manchester Trainee Solicitors Group at the Manchester Study Centre of BPP University on 29 April 2015. As I had been told that all the members of the audience would be law graduates but few (if any) would have any training or experience of intellectual property law I discussed the following topics:
  • Intellectual property and intellectual assets
  • International legal framework for IP
  • Institutions
  • Types of IP
  • Choosing the right kind of IP
  • Practical tips
  • Enforcement
  • Contracts relating to IP.
I circulated a handout to delegates which can be downloaded here.

Anyone who wishes to discuss this presentation or my article should call me on 020 7404 5252 during office hours or use my contact form.

Monday, 2 March 2015

Jean Wars - Lessons from G-Star Raw v Rhodi

Photo Wikipedia

In G-Star Raw CV v Rhodi Ltd and Others [2015] EWHC 216 (Ch) (6 Feb 2015) a group of companies in Preston and two of their directors were sued by one of Europe's leading denim fashion brands and designers of contemporary urban garments for unregistered design right infringement. Design right is an almost uniquely British intellectual property right that protects investment in product designs. It applies to the "shape or configuration (whether internal or external) of the whole or part of an article".  I have written an introduction to design right law in Unregistered Design Rights: Overview 18 Sept 2008 IP Yorkshire.

In this case the defendants were accused of importing into the UK and selling jeans that had been manufactured abroad that reproduced the claimant's "Arc Pant" designs knowing or having reason to believe that they were infringing articles. The case came on before Mr Richard Spearman QC sitting as a deputy judge of the High Court who decided against the first, second, fourth and fifth corporate defendants but not the company directors. I have written a short note on this case at Unregistered Design Rights: G-Star Raw v Rhodi 28 Feb 2015 NIPC Law.

Design right is one of a range of intellectual property rights of which the garment trade should be aware. Other rights include 
  • copyright which protects the artwork for fabric designs from copying for the life of the designer plus 70 years, 
  • registered designs and registered Community designs which confer monopolies of the appearance of new designs having individual character for up to 25 years, 
  • unregistered Community designs which confer 3 years protection from copying on designs that could be registered as registered or registered Community designs, 
  • registered trade marks and the law of passing off which protect brand names and logos.
It is particularly important for such businesses to know about registered and registered Community designs because it has been an offence since the 1 Oct 2014 to make a product exactly to a registered or registered Community design or with features that differ only in immaterial details from that design knowing or having reason to believe that the design is registered under s.35ZA of the Registered Designs Act 1949. This new offence is one of many changes to design law that were introduced by the Intellectual Property Act 1949 (see Reflections on the Intellectual Property Act 2014 7 June 2014 4-5 IP.

Just to the North of Manchester's Piccadilly station lies one of the largest concentrations of garment manufacturers, importers and distributors in the UK. The Liverpool law firm QualitySolicitors Jackson Canter has recently opened an office at 111 Piccadilly with a view to serving that industry. On 20 April 2015 between 16:00 and 18:00 QualitySolicitors Jackson Canter will hold a workshop at that office entitled Protecting your Brands and Designs: IP Advice for the Fashion Trade at which Alex Rozycki and I have been invited to speak.  

Alex is an expert on IP crime and he has also spoken on the subject to the Merseyside meeting of the Chartered Institute of Patent Attorneys. Our chambers are recognized for their expertise in IP law relating to fashion and luxury goods which is why Alex and I were invited to speak to IALCI (The international association of lawyers for the creative industries) at the St Pancras Pullman in London on 10 Feb 2015 and at seminars in London and Paris on the "Paradox of Fashion" organized by the Franco-British Lawyers Association. You can download my slides to the IALCI seminar from IALCI Seminar: Enforcing IPR in England and Wales 13 Feb 2015 4-5 IP. The other speaker at the event will be Mr Michael Sandys, Director and Head of Commercial at QualitySolicitors Jackson Canter.

This workshop will cover just about everything on IP that businesses in the garment trade need to know including in particular the changes to the law brought about by the IP Act which I discussed in detail in How the Intellectual Property Act 2014 changes British Registered Design Law  19 June 2014 and How the Intellectual Property Act 2014 will change British Unregistered Design Right Law 11 June 2014. This is a workshop that you really can't afford to miss. Admission is by invitation only and demand is likely to be brisk. If you want an invitation or indeed if you want to discuss any aspect of fashion law including Mr Spearman's judgment in G-Star Raw call me on 020 7404 5252 during regular office hours or fill in my contact form.