26 January 2017

Nesta's Inventor Prize

Jane Lambert

In "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy 24 Jan 2017 Inventors Club, I mentioned the government's commitment to:
"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."
To my great joy and surprise, the  government has already started to implement its commitment by advertising for new IP policy advisors for the North and Midlands (see Implementing the Industrial Strategy: IPO seeks new Business Support Policy Adviser 25 Jan 2017 IP North West) and by collaborating with Nesta to "pilot an ‘inventor’ prize that will inspire and harness the potential of the UK’s home-grown inventors and stimulate user-led innovation" (see Announcing the Inventor Prize 24 Jan 2017).

I was even more delighted by the compliment that Nesta paid to two Yorkshire inventors in that announcement:
"But we are also looking for everyday inventors that see a problem in their daily lives and have an idea for a way of solving it in a way that improves people’s lives. This is a search for a modern day Percy Shaw - a Yorkshireman who repaired roads in the 1930s and whose light bulb moment was the invention of the ‘cat’s eye’ that helps prevent car accidents at night. Or more recently Emily Cummins, who at 19 years old invented an award-winning solar evaporation refrigerator."
 Yorkshire may trail London, South East England, the South West, East of England, West Midlands, North West and Scotland in the number of patent applications but there is no denying the quality of inventions that emanate from this county.

I will do everything I can to support this initiative. One of the ways in which I can do that is through the Inventors Club, Through that website I shall try to offer a wide range of services. I can help with advice on intellectual property ("IP") and, in particular, with patents (see also my Patents FAQ and IP Glossary). To help inventors, entrepreneurs, their investors and professional advisors throughout the North West and the rest of the country I have expanded and improved my IP service (see Immediate IP First Aid Nationwide 25 Jan 2017.

If you have a new product and are wondering how best to protect it, if you are thinking of launching a new business and are thinking of registering a trade mark, if you have received a solicitor's letter accusing you of infringing someone's copyright, design, patent or trade mark, if you think someone is infringing one of your IP rights or you have any legal question relating to branding, design, technology or creative works, call me on 020 7404 5252 or send me a message through my contact form.

21 January 2017

Rise & Design in Huddersfield

Jane Lambert

"It is not every office that has a 3D printer chugging away in reception" I thought to myself as I passed through the entrance of the 3M Buckley Innovation Centre in Huddersfield. I was there at the opening in 2012 (see Launch of Huddersfield University's 3M Buckley Innovation Centre 27 Sept 2012). Despite my offer "to help on behalf of my network of patent and trade mark attorneys, solicitors, product design consultants, angels, financial institutions and other contacts with talks, clinics and any other way I can" they had not been in touch with them nor they with me.

The reason I came back was a Rise & Design networking meeting arranged by Design Network North at the Centre between 08:30 and 12:00 on Friday, 20 Jan 2016. The theme of the meeting was "The Power of Collaboration". The event consisted of presentations by:
There were short pitches by various members of the audience and a quick news update by Terry McStea, network manager of Design Network North.

Pete Culmer had already described his collaboration with Richard Hall on his LinkedIn page:
"Richard and his team at Pd-m were commissioned to work with our Surgical Technologies research group on the commercialization of a medical device here are the University of Leeds.

We needed Pd-m’s expertise in converting a research-level concept into an innovative, realisable and manufacturable product which we could present to commercial partners for a license deal.

The project required Richard and his team to work closely with a multidisciplinary team including academic researchers at the university, surgeons at Leeds Teaching Hospitals and commercial partners.

Pd-m were instrumental in helping to deliver a robust prototype for evaluation in a product live trial at the project’s culmination, ensuring that it was a success.

In summary, Richard and his team are a professional innovation consultancy and I can highly recommend them."
 Amanda Scacchetti spoke about developing a market for her company's reconditioned pushchairs which she described as tantamount to a start-up.  She spoke about the coordination of technical and marketing staff within the business, the market research that was undertaken, the financial planning and the not-inconsiderable risks that were taken in the early days. She mentioned the emotional attachment that families develop for their children's pushchairs and how some actually conducted farewell rituals as though they were seeing off a member of the family.  She reported that the scheme has been a success and has actually boosted sales of new accessories.

The last presentation was on the development of a cap for cooling the scalp of patients undergoing chemotherapy by academics of the University of Huddersfield for Paxman Coolers Ltd. The purpose of the cap is to protect hair follicles from chemotherapy drugs by cooling the scalp to a temperature that impedes blood flows. The device is in use in hospitals around the world and patients wearing the cap report relatively little hair loss. Apparently it took several iterations with different tools and materials to perfect the product and several samples of the device were demonstrated to us.  Patrick Burke proudly told us that his company had two UK and two "world patents" for the cap.  Had there been time for questions I would have asked him about Paxman's IP strategy, in particular, the countries in which patents were sought, whether any of the applications had been granted and how they would fund the defence of a revocation claim or an infringement action given the cost of IP litigation in this and other common law jurisdictions. Sadly, there was no time and they left the meeting before I could make my way over to them.

There was, however, time for me to greet Richard Hall whom I have known for many years and with whom I have collaborated occasionally.  It was good to renew my acquaintance with Ian Rowland of Grant Thornton and to meet his colleague, Emily. I also renewed acquaintances with Adrian Sewell who has started to practise as Tandem Patents just outside Keighley and introduced myself to Phil Stephenson of Bailey Walsh. Other folk I met after the talks included Robin Tones of RTC, Gill Watson of Kirklees Council and Leeds LEP, Jason Roebuck of Fizical Design and Tim Stern of AME.

Both the 3M Buckley Innovation Centre and Design Networth North announced some interesting networking meetings which I shall tru to attend in future.

20 January 2017

Who owns Goodwill generated by an Employee or Partner?

  1. City of Sheffield
  2. Rotherham
  3. Doncaster
  4. Barnsley

Jane Lambert

Jay Bhayani is a well-known employment lawyer in Sheffield. When the Doncaster law firm Taylor Bracewell LLP wanted to set up an employment law department with an office in Sheffield they turned to Ms Bhayani to set one up. They agreed to make her a salaried partner and to practise from Sheffield in the name or style of "Bhayani Bracewell."

Ms Bhayani worked for the firm from 2011 until 2014 but then fell out with them. For a little while after she had left the firm they continued to practise from Sheffield in the Bhayani Bracewell name.  She sued them for passing off alleging that their continued use of the Bhayani Bracewell business name and certain other acts might lead people to believe that she was still working there. Taylor Bracewell replied that any goodwill that accrued to the Bhayani Bracewell name belonged to them and not to her.  They applied for judgment on the ground without a trial on the ground that Ms Bhayani had no real prospect of succeeding in her claim and there was no other compelling reason why the case should go to trial.

Taylor Bracewell's application came on before Judge Hacon in the Intellectual Property Enterprise Court ("IPEC") and his judgment is reported at Bhayani and Another v Taylor Bracewell LLP [2016] EWHC 3360 (IPEC) (22 Dec 2016). For anyone who is interested, I analysed the arguments and judgment in Case Note: Bhayani v Taylor Bracewell LLP - Goodwill generated by a Partner or Employee 19 Jan 2016.

Judge Hacon decided the point in favour of Taylor Bracewell.  After reviewing the case law he concluded that "in the general run, goodwill generated by the acts of an employee will be vested in the employer" and, similarly, "where an individual works in a partnership the goodwill generated by his acts will in the normal course vest in the partnership." However, he acknowledged that there were exceptions and considered what they might be and how they might arise. He concluded that an employee or partner acquires goodwill only in respect of activities outside the scope of the employer's or the partnership business. Applying that rule to the facts of the case before him. His Honour could find no reason why the general rules should not apply,

There were other issues in this case. The judge reviewed the principles by which the court can decide a case without a trial, the difference between reputation and goodwill for the purpose of an action for passing off and whether there was any scope for arguing that Taylor Bracewell's registration of the Bhayani Bracewell trade mark should be revoked on the ground that it was likely to mislead the public. Should anyone wish to consult me on any of those points, call me on 01484 599099 during office hours or send me a message through my contact form.

28 July 2016

Leeds Innovation District

Yesterday the Executive Board of Leeds City Council, which is the principal decision making organ of the local authority, approved a report by Tom Bridges to
"Support the formation of a partnership between Leeds City Council, University of Leeds, Leeds Beckett University and Leeds Teaching Hospitals Trusts; to further develop the concept of an innovation district for Leeds."
You can watch the speeches by Councillor Blake, leader of the Council, and Councillor Carter, leader of the Conservatives, on the local authority's webcast player.

The report describes the innovation district as "a catalyst for productive, sustainable and inclusive economic development." It hopes that it will enable creation and growth of firms, inward investment by enabling businesses, entrepreneurs, universities clinicians and government leaders collaborate across sectors, organizations and disciplines, expand job and educational opportunities for people and inspire young people around the range of potential career paths in the modern economy.

The report refers to the concept of innovation districts developed by the Brookings Institute (see Bruce Katz and Julie Wagner The Rise of Innovation Districts, A New Geography of Innovation in America). According to those authors:
"Innovation districts constitute the ultimate mash up of entrepreneurs and educational institutions, start-ups and schools, mixed-use development and medical innovations, bike-sharing and bankable investments—all connected by transit, powered by clean energy, wired for digital technology, and fueled by caffeine."
Mr Bridges's report considers two examples of innovation districts, one in Boston and the other around King's Cross in London.  It is worth pointing out that Katz and Wagner referred to many more and actually identified three possible models for innovation districts.

Mr Bridges lists the city's assets as:
  • two universities; 
  • Leeds General Infirmary (one of largest teaching hospitals in Europe); 
  • leading art and music colleges; 
  • the UK’s largest financial and business services sector outside London; 
  • a fast growing digital sector; 
  • the UK’s only global internet node outside London; 
  • a successful retail core; 
  • major cultural attractions (the only city centre outside London that is home to major opera, theatre and dance companies); and 
  • the busiest railway station in the north of England.
It refers to other investments in  the city such as the Victoria Gate shopping centre and the arrival of the high speed rail and observes that an innovation centre
"provides an opportunity for further expansion on land freed up by consolidating hospital and local government functions on a smaller geographic footprint. More importantly it can help ensure the city makes the most of its existing leading-edge facilities and functions in this part of the city, as well as major new developments such as the University Innovation and Enterprise Centre."
It then proposals a timetable for further work together with a recommendation for the necessary funding.

I shall follow this proposal closely as it develops. If anyone wants to discuss this article or innovation in Yorkshire generally he or she should call me on 01484 599090 during office hours or contact me through this form.

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.