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.