5 April 2014

Holding your Own - How to stop others from ripping you off if you are a Private Inventor

Sheffield Central Library, Monday 7 April 2014 18:00 - 19:45

On Monday 7 April 2014 at 18:00 I shall deliver a talk to Sheffield Inventors Group at the Business and IP Centre of Sheffield Central Library on how to stop others from ripping you off if you are a private inventor.

Until very recently the blunt answer to the question "How can I stop others from ripping me off?" was "You can't". That was because the cost of proceedings in the Patents Court or even the Patents County Court was prohibitive. Litigation in common law countries such as England and the United States has always been more expensive than in civil law countries like France, Germany and the Netherlands.  Moreover, in England the losing party usually has to pay the winning party's costs whereas in the USA it does not.  Moreover, lawyers in the USA have always been allowed to accept instructions upon the promise of a share in any damages that may be awarded whereas until recently English lawyers were not. All of those factors combined to make England one of the most expensive and hazardous jurisdictions for individuals or small or medium enterprises ("SME") to enforce their intellectual property rights ("IPR") in the world,

Up to 2002 that did not matter so much because legal aid was available for IP claims as it was for most civil proceedings. In April of that year paragraph 1 (h) of Schedule 2 to the Access to Justice Act 1999 came into effect which abolished public funding for matters arising out of the carrying on of a business.  Word quickly spread that enforcing a patent or other IPR was too expensive and too risky for all but wealthy individuals and big companies and organizations.  Consequently, fewer and fewer individuals and SME bothered with patent applications with the result that the country of Newton and Faraday now trails not only Germany and France but even the Netherlands with one third of our population and Switzerland with one eighth in the number of applications to the European Patent Office (see "Why IP Yorkshire" 10 Sep 2008).

Since I wrote that article there have been a number of changes that make it cheaper and easier for individuals and SME to protect themselves. First, the costs that a successful party can recover from the other side  in the Patents County Court were capped at £50,000 on 1 Oct 2010 (see "New Patents County Court Rules" 31 Oct 2010 NIPC Law). Secondly, a new small claims track in the Patents County Court was launched on 1 Oct 2012 for claims up to £10,000 (see "Patents County Court - The New Small Claims Track Rules" 20 Sept 2012 NIPC Law). I gave a talk on this new jurisdiction to the Sheffield Inventors Group in "How Small Businesses in Yorkshire can protect their Intellectual Property" 14 Oct 2012. The Patents County Court was abolished on 30 Sept 2013 but it was replaced by the Intellectual Property Enterprise Court ("IPEC") which operates in exactly the same way and with the same rules as its predecessor. Thirdly, new insurance and funding options are now available which reduce the cost and risk of litigation (see "Intellectual Property Litigation - the Funding Options" 10 April 2013 NIPC Law). Finally, HM Government has entered an agreement with most of its EU partners to set up a Unified Patents Court which will hear disputes over unitary patents (European patents treating the territories of the contracting states as though they were one country) (see "Unified Patent Court Comes One Step Closer" 17 Aug 2013 NIPC Law).

In my talk on Monday I shall discuss:

  • the Institutions: the Intellectual Property Office, European Patent Office, Chancery Division, Patents Court and IPEC;
  • the Legislation: the Patents Act 1977 and other IP statutes, the European Patent Convention, Part 63;
  • Practice: Patents Court, Chancery and IPEC Guides;
  • Claims for breach of confidence: How to bring proceedings in IPEC's small claims track;
  • Entitlement Proceedings
  • Infringement Proceedings in IPEC and the Patents Court
  • Threats Actions
  • Revocation Actions
  • Insurance
  • Unified Patent Court.
I shall explain each of these concepts and steps in everyday non-technical language with links to other materials and I shall later post the slides to this website. 

I do hope to see as many readers as possible on Monday but if you can't make it and want to discuss any of these points don't be afraid to give me a ring on 020 7404 5252 during office hours or send me a message through my contact formtweet me, write on my wall or get in touch through G+, Linkedin or Xing.

22 February 2014

Enforcing Your Intellectual Property Rights without Going Bust

How to Enforce your Intellectual Property Rights without Going Bust from Jane Lambert

In my very first post, "Why IP Yorkshire", 10 Sept 2008 I noted that although Team GB may have done very well at the Beijing Olympics our inventors and entrepreneurs are nothing like as successful in the European patent application stakes. We trailed a poor 7th in the number of European patent applications lagging not only behind the economic super-powers, the USA and Japan, but also France and Germany with similar populations and GDP and even trail the Netherlands and Switzerland with a third and an eighth of our population respectively. 

The reason of our lacklustre performance was that start-ups and other small businesses, that are the mainspring of innovation in the UK as in most of our competitors, make much less use of the intellectual property system than their equivalents in other countries and that was largely because the cost of obtaining and enforcing intellectual property protection in the UK was considerably higher than in our competitors.

The costs of enforcing intellectual property rights was identified as a problem by both Gowers (Gowers Review of Intellectual Property, TSO 2006) and Hargreaves (Digital Opportunity A Review of Intellectual Property and Growth) to which Sir Richard Arnold and Sir Rupert Jackson have proposed solutions (see Intellectual Property Court Users’Committee Working Group’s Final Report on Proposals for Reform of the Patents County Court 31 July 2009 and Review of Civil Litigation Costs: Final Report Dec 2009).

Arnold proposed case management reforms that limit the issues that can be heard, the evidence that can be led, the duration of trials and this the recoverable costs of the litigation which I discussed at some length in New Patents County Court Rules 31 Oct 2010. Jackson proposed a new small claims track for the Patents County Court which I discussed in a series of articles which are listed at Patents County Court - the New Small Claims Track Rules 20 Sept 2012. The Patents County Court was abolished with effect from the 30 Sept 2013 and replaced with a new Intellectual Property Enterprise Court ("IPEC") which is part of the Chancery Division on 1 Oct 2013.

On the 15 Jan 2014 I gave a talk on these initiatives to reduce the cost of dispute resolution to Leeds Inventors Group. I mentioned the Intellectual Property Office opinions service which we discussed in Leeds as soon as the service was launched (see "IP Centre of Excellence: Patent Office Opinions"  26 Nov 2006) as well as mutitrack and small claims litigation in IPEC. in his report Hargreaves had urged HM government to press for a single European patent known as a "unified patent" to be granted for all the EU member states except Spain and Italy as though they were a single country. That has now been agreed and disputes under the unified patent will be referred to a special court for all the contracting countries. Under that agreement that court will be based in Paris and will have branches in London and Germany. I summarized the arrangements that have been made so far in my talk.

Should anybody wish to discuss this talk or indeed any matter relating to IP he or she should call me during normal office hours on 01484 599090 or message me through my contact form. You can also tweet me. write on my wall or contact me through G+, Linkedin or Xing.

1 December 2013

Design Right and Registered Designs: Utopia Tableware v BBP Marketing

This was a claim for registered design and unregistered design right infringement in the new Intellectual Property Enterprise Court ("IPEC"). Both the claimant Utopia Tableware Ltd of Chesterfield and the first defendant BBP Marketing Ltd of Mirfield supplied glasses. At the start of the litigation Utopia applied for and won an interim injunction (see Utopia Tableware v BBP Marketing [2013] EWPCC 15 (21 Jan 2013)). However, the evidence on which it relied was found to have been concocted and Birss J referred the matter to the Attorney General under CPR 81.18 so that he could consider committal proceedings (see Utopia Tableware Ltd v BBP Marketing Ltd and Another [2013] EWPCC 28 (30 May 2013)). The action came on for trial before Mr Recorder Campbell on 24 Sept 2013 and he delivered judgment on 12 Nov 2013 (see Utopia Tableware Ltd v BBP Marketing Ltd and Another [2013] EWHC 3483 (IPEC) (12 Nov 2013)).

The Registered Design
Utopia had registered the following design with the Designs Registry under registration number 4021276 pursuant to the Registered Designs Act 1949:

The Design Right
The design document in which the design was recorded appears below.

Infringing Articles
The following photograph shows the glasses sold by each of the parties.  Utopia's appears to the left and BBP's to the right.

The Issues
The defendants admitted that they had copied the exterior dimensions of the claimant's design but not its interior measurements nor the wall thickness since their glasses were made out of polycarbonate rather than glass.  Having admitted copying of the exterior dimensions the defendants could hardly deny copying of the unregistered design or claim that their glass produced on an informed user a different overall impression from the registered design. Their defence was that the claimant's design was commonplace and lacked individual character.

Mr Recorder Campbell found for Utopia on both points.

As for the "commonplace defence" the judge directed himself at paragraph [58] to identify the relevant design field for the purposes of the Act.  He decided at [69] that it was beer glasses.  Comparing
"The shape of the profile of the outer surfaces of the Claimant's Vessel, that profile in particular including, above a waisted section, an elongated tulip shaped section which tapers inwardly as it approaches the rim of the Claimant's Vessel,"
to similarly shaped glasses distributed by Amstel, Carlsberg and Peroni to promote their beers he concluded that that feature was not commonplace though other features were. As design right can subsist in any aspect of the design of part of an article the Recorder found that that was enough for design right to subsist.

Relying on Judge Birss QC's decision in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012) which I discussed in  Apple v Samsung - compare and contrast 28 Aug 2012 NIPC law the Recorder identified the "informed user" as a beer drinker, held that the designer of a waisted glass had limited design freedom and compared Utopia's glass to the Amstel, Carlsberg and Peroni glasses. Having regard to those factors he concluded that the design did have individual character and was therefore valid.

He therefore held that both Utopia's design  right and the registered had been infringed.

Despite the submissions of Sir Robin Jacob, the leading scholars on intellectual property law, the Intellectual Property Bar Association and many others the government seems hell bent on its proposal to criminalize registered design right infringement. Had that proposal been law it is possible that the executives of two well established and highly regarded local companies would have been prosecuted, This question whether the registered design had individual character was difficult enough for an experienced intellectual property practitioner to resolve. It is hard to imagine lay justices and juries attempting a similar careful analysis. In a case such as this where the claimant's witnesses had acted particularly badly a conviction would have been intolerable.

22 October 2013

Northern Ballet wins the Achievement in Marketing Category of the UK Theatre Awards

The performing arts are an important industry in the UK. According to the report Private Investment in Culture 2007/08 published by the Arts & Business section of Business in the Community culture was worth £7.7 billion to the UK economy in 2007.  It may reasonably be assumed to be worth somewhat more now. Northern Ballet is astute as to the value of the arts to business and hosted a breakfast meeting for businessmen and women on the 23 Sept 2013 which attracted patent attorney Debbie Slater from Urquhart-Dykes & Lord as well as me (see Jane Lambert "The Things I do for my Art: Northern Ballet's Breakfast Meeting" 23 Sept 2013 Terpsichore).

During Q & A at the meeting the company's chief executive officer Mark Skipper said that while there was once a time when patronage of the arts was an act of philanthropy it was now one of mutual self-interest.  The reason for that response is that performing arts companies are brands in their own right.  In the case of Northern Ballet this was recognized yesterday by their winning the marketing category at the 2013 UK Theatre awards (see the company's press release "Northern Ballet scoops national marketing award"  21 Oct 2013).  Northern Ballet was granted that award for the success of its communications campaign for Northern Ballet’s tour of The Great Gatsby.
"More than 50,000 people watched a performance of The Great Gatsby in 9 venues throughout the UK including a sell-out run at Sadler’s Wells Theatre. The campaign generated in excess of £1.2 million of ticket sales exceeding financial target by £150,000."
Incidentally, I saw that ballet when it opened in Leeds and reviewed it in "Life follows Art: the Great Gatsby" 8 March 2013 Terpsichore.

Our host at the breakfast meeting was Laraine Penson, Northern Ballet's Director of Communications.  She collected the award on behalf of her company at a luncheon at The Guildhall yesterday.  At the ceremony she said:
"The arts are full of creative communications professionals who are working very hard in a competitive market and difficult economy. I accept this award on behalf of the communications team at Northern Ballet. This award recognises the achievements of the whole company because if the production and performance didn’t meet the audiences expectations all our work would be for nothing.”
The press release notes that Northern Ballet has been shortlisted for the cultural category of the Welcome to Yorkshire "White Rose Awards". As everyone knows one can't wish an actor good luck. You say "Break a leg!" instead. But you can't really say that to a dancer.  My ballet teacher tells me that the balletic equivalent is "chookas" though others say "toi-toi".  Let's wish Northern Ballet both.  As I experienced recently, for only the second time in my lifetime, an institution from our region is capable of true artistic greatness (see "Realizing Another Dream" 15 Sept 2013).

Further Reading
David Wilson "Pythagoras and PliĆ©s – Mathematical Beauty" 5 March 2011 Dave Tries Ballet
Jane Lambert "Cracking Nuts - Copyright in Choreography" 24 Nov 2011 IP Northwest
Jane Lambert "Ballet and Intellectual Property - my Excuse for reviewing 'Beauty and the Beast'" 31 Dec 2011 IP Yorkshire
Jane Lambert "Northern Ballet's Ondine" 14 Sept 2012 IP Yorkshire
Jane Lambert "From Bar to Barre" 20 March 2013 Terpsichore
Jane Lambert "Intellectual Property and Ballet" 20 April 2013 Terpsichore

14 October 2013

Business and IP Centre National Network

Sheffield Central Library

Leeds and Sheffield Central Libraries are part of The Business & IP Centre national network.  This is a collaboration between the British Library, the Intellectual Property Office and Birmingham, Leeds, Liverpool, Manchester. Newcastle and Sheffield PATLib or patent information centres. I blogged about the launch of the network in "Enterprise and Libraries: a New National Network of Business & IP Support" 8 March 2013 NIPC Inventors Club.

As I said in that article, the establishment of those centres is part of a two-prong strategy to replace the regional development agencies with local enterprise partnerships and local Business Link offices with libraries.  In its press release "Enterprising Libraries: ten library projects receive Arts Council funding to support the development of local businesses" 3 Oct 2013, the Arts Council explained that
"Enterprising Libraries supports local economic growth by turning libraries into spaces for the development of business ideas, providing coaching, advice, meeting spaces and IT support for local businesses and entrepreneurs."
Funding for the project is provided by the Arts Council, British Library and the Department for Communities and Local Government.

Sheffield has already appointed Roger Tipple as an innovator in residence and he addressed the Sheffield Inventors Group last week.  I mentioned one of the topics that he discussed in his talk in "Another Look at Crowd Funding" 13 Oct 2013 NIPC Inventors Club.  Maria Lampert of the British Library will give two talks on intellectual property on the 6 Nov between 09:30 and 11:30 and 12:30 and 14:30 respectively.

30 August 2013

Geographical Indications - "If it's outside Yorkshire it's not worth ..................!"

The first day of August is Yorkshire day. Originally it commemorated the battle of Minden 1759 at which the 51st Regiment of Foot distinguished itself but it is now a celebration of all things Yorkshire. My home town of Holmfirth celebrated the day with all sorts of events as you can see from the Holmfirth Yorkshire Day Facebook page. I think that there were more Yorkshire flags around town for Yorkshire day than there were union flags for the royal wedding or even HM's diamond jubilee.

And why not. Yorkshire is a grand place, isn't it.  In the words of the Yorkshire Airlines sketch "If it's outside Yorkshire it's not worth bloody visiting. And the same goes for food and drink, right.  So how can you make sure that what you eat and sup actually originate from God's own county.

Well art 22 (2) of TRIPS requires members of the World Trade Organization to "provide the legal means for interested parties to prevent:
(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967)."

For the purposes of this article geographical indications are defined by art 22 (1) as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin."

Traditionally the UK has protected geographical indications by the registration of collective and certification marks under s.49 and s.50 of the Trade Marks Act 1994 and the law of passing off (see Bollinger v Costa Brava Wine Co Ltd [1960] Ch 262, Vine Products Ltd v Mackenzie & Co Ltd [1969] RPC 1, John Walker & Sons Ltd v Henry Ost & Co Ltd [1970] 1 WLR 917 and Taittinger v Allbev Ltd [1993] FSR 641). These are now reinforced by Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ 14.12.2012 L343/1).

This regulation provides three types of protection:
  • Protected designation of origin ("PDO") which covers agricultural products and foodstuffs that are produced, processed and prepared in a given geographical area using recognised know-how;

  • Protected geographical indication ("PGI") which covers agricultural products and foodstuffs closely linked to the geographical area where at least one of the stages of production, processing or preparation takes place in the area; and

  • Traditional speciality guaranteed ("TSG"} which highlights traditional character, either in the composition or means of production.

Art 13 (3) of the Regulation requires  member states to take appropriate administrative and judicial steps to prevent or stop the unlawful use of PDI and PGI that are produced or marketed in their territories. 

Applications for registration of a product are made to the competent authority of any of the member states which in the case of the UK means the Regional and Local Food Team, Food and Family Group at the Department for Environment, Food and Rural Affairs ("DEFRA"), Area 8E, 9 Millbank, Nobel House 
17 Smith Square, London SW1P 3JR. Tel: 020 7238 6623 Fax: 020 7238 5728. The application then proceeds according to the following schematic:

So what Yorkshire goodies have achieved protected status under any of those schemes? Not a lot as it happens.  Swaledale and Swaledale ewes cheese and Yorkshire forced rhubarb so far though an application has just been published for Wensleydale cheese.

Geographical indications will be one of the topics I will discuss in my seminar on Branding - Trade Marks, Passing off, Domain Names, Geographical Indications in London on 25 Sept for which there are still a very small number of places. If you want to discuss how to achieve PDO, PGI or TSG status for your local produce or indeed to object to someone else's application for such status contact my  my clerk Stephen on 01484 599090 or fill in my contact form.  You can also follow me on twitter, Facebook, G+, Linkedin and Xing.