3 October 2019

IP Training in Doncaster

Doncaster Minster
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Jane Lambert

Yesterday I delivered a half-day workshop on intellectual property law to a prominent South Yorkshire law firm at its officers in Doncaster.  My audience consisted of contentious and non-contentious law practitioners in company/commercial, dispute resolution and employment. Their experience ranged from head of department to trainee.

The timetable and syllabus were as follows:

09:00 - 09:15   Registration and set-up

09:15 -10:00    Basic Concepts and Terminology: What is intellectual property? What is the difference between intellectual property and intellectual assets? What are intellectual assets? Registerable rights and non-registerable rights, Intellectual Property Office, EU Intellectual Property Office. European Patent Office. World Intellectual Property Organization, World Trade Organization. Intellectual Property List: Patents Court, Intellectual Property Enterprise Court, Small Claims Track, Chancery Division, County Court. Hearing officers. Remedies: injunctions, delivery up, account and inquiry, costs. Interim injunctions, search orders, freezing injunctions, blocking orders. Licensing: non-exclusive, exclusive, sole. Reports of Patent Cases, Fleet Street Reports.

10:00 - 10:45  How the Law Protects Brands: What is a brand? Law of Passing-off: Reckitt and Colman Products Ltd v Borden Inc.and Others [1990] 1 WLR 491, [1990] 1 All ER 873, [1990] UKHL 12, [1990] RPC 341. Trade mark registration: what is a trade mark? Trade Marks Act 1994, Directive (EU) 2015/2436, Regulation (EU) 2017/1001, Madrid Protocol, TRIPS, distinctiveness, specified goods and services, infringement, application process, opposition, revocation and invalidation Geographical Indications of Origin extended passing-off, certification and collective marks, EU legislation for foods and beverages, Other ways of protecting brands

10:45 - 11:00   Break

11:00 - 11:45  How the Law protects Designs Distinction between ornamental design and functional design Ornamental Design Registered Designs Act 1949,  Directive 98/71/EC Regulation 6/2002, novelty, individual character, registered Community designs, unregistered Community designs, infringement Functional Designs Part III Copyright Designs and Patents Act 1988, infringement Artistic copyright Surface decoration, artistic craftsmanship, Semiconductor topographies

11:45 - 12:30  How the Law protects Technology Common law obligation of confidence Trade Secrets Directive, Subsistence, Breach, Patents Patents Act 1977, European Patent Convention, Proposed Unitary Patent and Unified Patent Court, Patent Cooperation Treaty, Subsistence, Specification, Infringement, revocation, Computer software exception Plant Breeders' Rights

12:30 - 13:15   How the Law protects Creativity    Copyright, Part I of Copyright Designs and Patents Act 1988, Berne Convention, Subsistence, Restricted Rights, Exceptions, Infringement, Licensing    Performances Part II of 1988 Act 

Should any other firm in Yorkshire (or indeed elsewhere) desire such training, please call my clerk, David, on 020 7404 5252 and he will assist you further.

26 September 2019

Speaking to Entrepreneurs in Bansley


IP for Start-ups and other Small and Medium Enterprises from Jane Lambert

On Monday I delivered the above presentation at Barnsley's splendid new library at The Lightbox. The library is one of many facilities at a new shopping and entertainment complex known as The Glassworks.  I gave my talk in the meeting room that appears below.  The gist of my presentation can be gleaned from my slides.

Whenever I give a talk like this I stress the difference between intellectual property which is the collective name for a bundle of laws and the brands, designs, technology and creative works that those laws protect, namely intellectual assets. Too often the term intellectual property is used interchangeably for the legal protection and the subject of that protection, namely the inventions, books or distinctive signs.  I also stress that there are nearly always alternative ways of protecting an asset. For instance, an inventor can keep his invention under wraps until he is ready to exploit it (and even longer if it cannot easily be reverse-engineered) or he can disclose it to the world in exchange for a patent.  There are advantages and disadvantages of patent and trade secret protection.

I discuss the rights that require registration such as patents, trade marks, registered designs and plant breeders' rights and those that come into being automatically such as copyright, design right, rights in performances and the common right actions of breach of confidence and passing off.  As a lot of businesspeople have never heard of patent or trade mark agents or are not quite sure what they do, I explained the roles of each of the main IP professions, that is to say, patent and trade mark attorneys and specialist solicitors and counsel, how they are regulated and where they can be identified and instructed.

I continued my talk with a discussion of assignments, licensing and franchising.  I explained the difference between exclusive, sole and non-exclusive licences.  I spoke about IP strategy and suggested a simple one for a new business with limited funds.

I also mentioned enforcement. I told them that an intellectual property right can be regarded as a right to bring a lawsuit and that it is ultimately useless if it cannot be enforced.  That will cost money and I considered IP insurance and other funding mechanisms. I discussed some options such as the Intellectual Property Enterprise Court and its small claims track and some of the alternatives to litigation such as proceedings before hearing officers in the IPO, mediation, examiners' opinions on the validity and infringement of patents and the Uniform Domain Name Dispute Resolution Policy and Nominet's Dispute Resolution Service.

Finally, I mentioned my monthly pro bono clinics at rhw Business Village (formerly Barnsley Business and  Innovation Centre) at Wilthorpe on the second Tuesday of every month (see IP Yorkshire Clinics 17 Aug 2018).  I also recommended the services provided by the Business and IP Centres at Sheffield and Leeds Central Libraries.

I was asked a number of questions such as the significance of the © and ® signs and whether they were necessary for the subsistence of copyright or a registered trade mark. I was also asked about the "TM" sign and I quipped that the former librarian at Manchester Central Library had said that the sign stood for "totally meaningless". I said I wouldn't go quite that far and that it might warn of an intention to sue for passing off.  My audience was quite surprised to learn some statistics such as the number of European Patents that are sought from this country in comparison with other large industrial countries and the massive number of patent applications from China, Japan and South Korea. We had a very lively Q & A which might have continued for some time had the library staff not enquired whether we had homes to go to.

Anyone wishing to discuss this article should call me on 020 7404 5252 during office hours or send me a message through my contact page.

Author Jane Kamnert © 2018 Jane Elizabeth Kambert

16 July 2019

The Library @ The Lightbox - "Everything you need to know about IP for Small Businesses but did not know what, whom, where or how to ask"


Standard YouTube Licence Jane Lambert

The Library @ The Lightbox is an important resource for entrepreneurs and other innovative and creative people in Barnsley which opened in The Glassworks last Saturday.  Its facilities include a ground floor sharing space for up to 45 people with a large 86” Tango screen.

I have been invited to give a talk in that sharing space on Monday, 22 July 2019 between 17:30 and 18:30.  The title of my talk will be "Everything you need to know about IP for Small Businesses"  It will cover everything a startup or other small business needs to know about protecting its investment in branding, design, technology and creativity.

On branding, I will cover not only registered trade marks and passing off but less obvious protection such as database rights in market research and customer service records which is the basis of a business's goodwill.

On design, I will discuss both decorative design which is protected by design registration and in some cases copyright but also functional design which is covered by unregistered design right and sometimes semiconductor topographies.

On technology, I will mention not only patents but also trade secrets (including the new Directive), unregistered design rights, copyright and database right for programs and data, unregistered design rights and plant varieties.

In relation to creativity, I will talk about copyright and rights in performances.

On enforcement, I will consider litigation options (the Patents Court, Intellectual Property Enterprise Court multitrack and small claims track, the IPO's tribunals. the Chancery Division and County Court) and alternatives to litigation such as ICANN's UDRP and Nominet's DRS for domain name disputes, IPO examiners opinions on the validity or infringement of patents and mediation).

I shall explore funding options such as before and after the event insurance.

I will tell attendees where they can get more information such as the British Library and Leeds and Sheffield Central Library Business and IP Centres. For those who want to consult a specialist lawyer or patent or trade mark attorney, I shall speak about my own pro bono clinics at the Barnsley Business Village and Sheffield Central Library as well as the Chartered Institute of Patent Attorneys' at Leeds, Sheffield and elsewhere.

This is a must for anyone who owns or contemplates setting up a small business.  The next time I am likely to deliver a similar talk will be in London and the conference organizer charge £645 + VAT for such events. Should anyone wish to discuss this article or any topic mentioned or referred it in it, call me on 020 7404 5252 during office hours or send me a message through my contact form. 

10 July 2019

Small Claims Track IP Litigation in Leeds

Leeds Law Courts
© 2003 Jane Lambert: all rights reserved




















Jane Lambert

One of the most interesting announcements of the new Intellectual Property Enterprise Court Guide is the decision to appoint from October 2019 district judges to hear small intellectual property claims in Leeds (see The New IPEC Guide 4 July 2019 NIPC News).

The cases that those district judges will be entitled to hear pursuant to CPR 63.27 will be claims for £10,000 or less for the infringement of intellectual property rights other than patentsregistered and registered Community designssemiconductor topographies and plant varieties. In Small IP ClaimsI gave examples of cases that might be suitable for the small claims track and of others that would not.  The claimant must ask for the claim to be allocated to the small claims track in its particulars of claim and no objection should be raised by the defendant.   However, even if a case falls within the jurisdiction of the small claims track and the parties want it to stay there, the court may transfer it to the multitrack if it is likely to take more than a day to try or there is a difficult point of law or factual issue to decide.

Proceedings in the small claims track are governed by CPR Part 27 and the Part 27 Practice Direction as modified by CPR 63.27 and CPR 63.28 and paragraph 63.32 of the Part 63 Practice Direction.  Though successful claimants can obtain final injunctions and orders for delivery up of infringing materials as well as damages or accountable profits they cannot claim interim injunctions.  Liability and the amount of any damages or other pecuniary relief to be awarded are decided at the same time.  Directions are given automatically in accordance with Appendix B or of the Part 27 Practice Direction after statements of case are exchanged and although the court has power under CPR 27.6 to hold preliminary hearings these are the exception rather than the rule. There is no provision for disclosure and the costs that may be recovered from an unsuccessful party are limited to court fees, £260 if an injunction is sought and a lawyer has been instructed, travelling expenses and loss of earnings up to £95 per witness and up to £750 in experts' fees.

The new IPEC guide indicates that those wishing to bring an IP case in the small claims track in Leeds should use the electronic filing system.

Anyone wishing to discuss this article or small claims track IP litigation generally should call me on 020 7404 5252 or send me a message through my contact page.

3 April 2019

Sheffield IP Clinics

Sheffield Central Library


















Jane Lambert

For over 11 years I have held an IP clinic in Barnsley on the second Tuesday of every month (see IP Yorkshire Clinics 17 Aug 2018).  I have now been invited by the Sheffield Business and IP Centre to hold a similar clinic at Sheffield Central Library in Surrey Street.

My first clinic will take place on Wednesday 10 April 2019 between 14:00 and 16:00.   It will be very much on the same lines as the Barnsley clinic. Up to 4 free consultations of 30 minutes each will be available at each session.

My clinics will supplement the CIPA's existing ones.  As I wrote in Whom you gonna call? IP Professionals and what they do 2 April 2019 NIPC Wales, each of the intellectual property professions has its strengths. My expertise lies in IP strategy. dispute avoidance and dispute resolution and commercialization and I shall focus on those matters.

Anyone wishing to book a slot should call Sarah Hogan, the Library and Information Officer, on 0114 273 4852 or email her on Sarah.Hogan@sheffield.gov.uk.  Anyone wishing to discuss this article may call me on 020 7404 55252 or send me a message through my contact form.

8 March 2019

Sheffield Business and IP Centre: IP Rights and Brexit


IP Rights and Brexit from Jane Lambert

One of four things has to happen between now and the 29 of this month:
  • The withdrawal agreement that art 50 (2) of the Treaty on European European Union required the EU and UK to negotiate and conclude may be approved by Parliament in which case we shall leave the EU on the 29 but EU law will remain in force until 31 Dec 2020 at the earliest;
  • The Prime Ministers notice of intention to leave the EU may be revoked in which case everything will remain the same forever;
  • The UK and remaining EU member states may agree to extend the 2-year notice period in accordance with art 50 (3) in which case everything will remain the same as it is now until the end of that further period; or
  • Nothing may be done between now and the 29 of this month in which case the UK will leave the EU at 23:00 on the 29 and EU law will cease to apply.
We shall not learn which of those four will happen until 12 March at the earliest and perhaps not even then if the withdrawal agreement is voted down again.

My presentation to Sheffield Business and IP Centre at Sheffield Central Library on 6 March 2019 considered the consequences for IP of each of the four scenarios.  It analysed the IP provisions of the draft withdrawal agreement which will be implemented under draft secondary legislation pursuant to the European Union (Withdrawal) Act 2018 from midnight on 1 Jan 2021 at the latest if that agreement is approved by Parliament.   Such secondary legislation will come into effect at 23:00 on 29 March 2019 if the UK leaves the EU without a withdrawal agreement.  The legislation will not be needed at all if the 2017 notice is revoked.  Its implementation will be delayed until at least the end of the extension period if the 2-year notice is extended.

The presentation considers the future of the Unified Patent Court and the unitary patent.   If the 2017 notice is revoked the UPC Agreement could come into force with continued British participation so long as a challenge to the constitutionality of  German certification in the German Constitutional Court is defeated. If the notice period is extended or a withdrawal agreement is approved by Parliament continued British participation may be possible.   It is highly unlikely if the EU leaves without an agreement.

The draft secondary legislation provides for the conversion of EU trade marks and Community designs and plant varieties into corresponding national rights.  EU legislation on supplemental protection certificates and compulsory licences will be incorporated into national law.  But the Brussels Regulation and Lugano Convention could fall away without a withdrawal agreement and English and Welsh, Scottish and Northern Irish courts will lose the right to seek preliminary rulings on the interpretation of EU law from the Court of Justice of the European Union.

Should anyone wish to discuss this presentation or the effect of Brexit on IP rights generally, they should call me on 020 7404 5252 during office hours or send me a message through my contact form.  

8 February 2019

Brexit Countdown: What you should have done to protect your IP and what you can still do

Sheffield Central Library






















Jane Lambert

IP Rights and Brexit  Sheffield Business and IP Centra, Central Library, 6 March 2019 18:00

Because intellectual property protects investment in branding, design, technology and creative output, any change in the nature and extent of the legal protection is likely to impact on the businesses that rely on such protection.  Since EU trade marks, registered and unregistered Community designs, geographical indications and Community plant variety rights will cease to apply to the UK upon its departure from the EU, Brexit will have a substantial impact on all those businesses.

For that reason, I have been writing and speaking about the consequences of Brexit even before the 2016 referendum (see Were we to go - what would Brexit mean for IP? 26 Feb 2016 NIPC Law). I contributed the chapter on IP to Helen Tse's Doing Business after BrexitI have spoken about the topic at leading law schools (see Implications of Brexit on IP Law 19 Jan 2018). I have followed each and every turn of the Brexit negotiations in my Brexit blog in order to advise my clients accurately and comprehensively (see Brexit - Why do I follow the Art 50 (2) Negotiations when I am an IP Lawyer? 26 July 2018).

It might be thought that everything that can be said about IP and Brexit has been said but, unfortunately, that is not the case.  Unless the notification that the Prime Minister gave to the President of the Council on 29 March 2017 is revoked or the notice period is extended before the 29 March 2019 the UK leaves the EU at 23:00 on that day. The impact of this country's departure on business will depend on whether the country leaves on that date and, if it does, on whether it leaves with or without a withdrawal agreement. As I noted in my latest Brexit Briefing we still have no idea of the terms or even the effective date of our departure.

Ever since the withdrawal agreement negotiations began I have advised businesses to prepare for all eventualities including a no deal Brexit.  I have advised them to review their patent, trade mark and design registration portfolios and apply for national or as the case may be EU registrations to fill possible gaps in their legal protection,  I have advised them to read their licences, franchise, joint venture and other agreements and to draft or negotiate contract terms to fill any lacuna.   It may be too late to do some of those things but there is still much that businesses can do.

My talk will list all the issues businesses will encounter when protecting their brands, designs, technology or creative output and the possible countermeasures. By the end of my talk business owners and managers will have a much better idea of possible risks (and maybe even a few opportunities) and the steps they should take.

If you want to come, register here.  It's free but you do have to book. If you want to talk about this subject call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.