26 November 2008

IP Yorkshire - Specialists and Expertise

Here are the members of IP Yorkshire and their expertise: 






Advice on difficult points of intellectual property, technology, media and competition law, drafting complex commercial documents and advocacy before the IP Office courts, arbitrators and mediators on the legal protection of brands, design, technology and creative works

Jane Lambert

Patent Attorneys

Applications for patents for inventions, registered design and registered trade marks, challenges to other peoples’ registrations and representation before IP Office hearing officers and EPO and OHIM boards of appeal and general advice on intellectual property

Janet Bray

Barbara Cookson

Michael Harrison

Steve Gilholm

Trade Mark Attorneys

Applications for registered trade marks and designs, challenges to other peoples’ registrations ,representation before IP hearing officers and OHIM boards of appeal and general advice on trade marks, registered designs and other areas of intellectual property

Carin Burchell

Solicitors specializing in Intellectual Property and Technology Law

Advice and representation on infringement, invalidity and revocation proceedings before the courts, arbitrators and mediators, advice and negotiation of joint venture, licensing, outsourcing and other transactions and general legal advice.

James Love

Sara Ludlam

Kate Reid

-      Solicitors specializing  in Company and Commercial Law

Formation of companies, partnerships, shareholders agreement, investment arrangements including EIS

Umberto Vietri

Jane Sachedina

-     Solicitors specializing in Commercial Litigation

Commercial litigation, insolvency, shareholder and partnership disputes

Neil Lieberman

-     Solicitors specializing   in Employment Law

All aspects of employment law including contracts of employment, employment policies, disciplinary and redundancy procedures and employment tribunal.

Linda Davies

Product Design and Development

Concept generation, and development for product, graphic and packaging design, computer aided design, reverse engineering and value engineering.  Rapid prototyping and tooling.

Richard Hall

Tom Fripp


Innovation in engineering materials. Licensing, technology transfer and technical support.

Professor Ron Jones


Advice on joint ventures, manufacturing , licensing in and out of China

Rosemary Huang


Marketing strategy, sales campaigns, website development, market research and customer services

Gareth Morgan

Business Start-ups

Networking & introductions, business planning, financial planning, marketing & PR, administration & sales set up.

Jane Townsend

Accommodation and Virtual Office

Business and conference centre with 20 serviced offices, a busy business hub, national virtual office services and 3 conference spaces. Simple, low cost business infrastructure services allowing our customers to get on with their core business activities.

David Robertson Brown


25 November 2008

Update: Sheffield Inventors' Club, IP Clinics and Training

I shall be speaking on how the economic downturn will affect inventors at the Sheffield Inventors Club at Sheffield Central Library, Surrey Street, S1 1XZ on Monday 1 Dec at 18:00.   I have already given this talk in Leeds and Liverpool where it seemed to go down very well.

We are also pleased to announce a new IP clinic at Catcliffe near Rotherham on Tuesday 13 January 2009.   Many thanks to Professor Ron Jones and Wei Huang of Horizon Composites for hosting that event.    We shall also be marketing the Barnsley clinic very much harder.   More details of the clinics are on our website at www.nipc-clinics.co.uk.

Finally, we also have a website for NIPC Training at www.nipc-training.co.uk.   You will see that we offer advanced courses for specialist lawyers and patent and trade mark attorneys known as "the IP staff college" and introductory and intermediate courses for the general public and non-specialist lawyers known as "the IP academy".   Both sets of courses are accredited for CPD points by the SRA. We have never had a barrister on our courses but if any member of the Bar wants to turn up we shall seek ad hoc accreditaiton from the BSB so long as he or she gives us at least 2 weeks notice.

20 November 2008

Trade Marks: Sheffield, the Brand

It is not often that BBC local radio mentions intellectual property which is why the post on the "Made in Sheffield" trade mark on Radio Sheffield's website attracted my attention. 

The people behind "Made in Sheffield" appear to be these worthies.
I have found their design registration but not their trade mark on the IP Office website.

Incidentally the above-mentioned worthies did not show up at the top of a Google search for "made + in + Sheffield".   There seem to be some folk in Broomhall called MadeInSheffield Dot Com Ltd. who claim the made in Sheffield brand.   Do they know of each other's existence? Who was first? I wonder.

13 November 2008

Upcoming Events

Here are some events at which I am speaking that some of you may wish to attend:

19 Nov 2008    Barnsley Digital Media Centre "Women in Enterprise" I am giving a talk on IP, Trade marks and copyrights at 10:00 and offering pro bono advice on IP, media and technology law between 11:00 and 13:00

I shall also be chairing a meeting of the Leeds Inventors Club at Leeds Central Library between 18:00 and 20:00.

24 Nov 2008
I shall be speaking to Liverpool Inventors Club on "How the coming Economic Downturn will affect Inventors and what they an do about it" between 17:00 and 19:00 at Central Library William George Street.Liverpool.

5 Feb 2009   I shall be speaking and chairing a seminar on software patents in the UK and US and the consequences for the industry following Symian and Bilski with speakers from patent agents WP Thompson and hopefully the Intellect, IP Office, Kirwans and the NCC at Martins Buildings, Water Street Liverpool from 14:00 until 17:00 (2 1/2 hours CPD points from the SRA). (Cost £75 + VAT)

11 Feb 2009   I shall be chairing and speaking at a workshop on branding law with patent attorney Janet Bray at theElsie Whiteley Innovation Centre Halifax between 14:00 to 17:00 (2 1/2 hours CPD points from the SRA) Cost £50 + VAT.

23 April 2009   Brass from Gumption all day celebration of World IP Day with seminar, clinics, exhibition and much more at Gumption Centre Bradford.

If anybody has any other IP events in the North that he or she wishes to promote please let me know. I shall post it on the IP North West or IP Yorkshire calendar as the case may require.

Finally, I need to correct an error in the November IP North- West and IP Yorkshire newsletters which were mailed today.   I indicated that we already had BSB accreditation for our courses on 5 and 11 Feb 2009.   That was based on a misinterpretation of a statement on the BSB's website that seemed to suggest that all barristers' chambers and bar associations qualified automatically as CPD providers. I have checked with the BSB who point out that the courses would also have  to be approved by them in advance. We are confident that we would get their approval but we would have to pay them £45 for each course. As we want to keep overheads low we shall only pay that fee if another barrister gives us at least 14 days notice that he or she wants to attend one of those courses.   If any barrister or indeed anybody is disappointed, please accept my apologies.

9 November 2008

Tales from the Patent Clinic: The Whiz

Setting the Scene

George Streight-Mann is a chartered accountant with an interest in interior design and the decorative arts. Because of his interest in the decorative arts and design he has made many contacts in that field, including one highly talented individual called Fredric Woofer whom everyone calls "Whiz". Whiz has flair which George admires. George and Whiz find that they had several things in common. They are about the same age. They live in nearby villages. Their children attend the same primary school. George's wife occasionally meets Whiz's partner at the local supermarket or on the school run. They had both voted for New Labour in 1997. Both had repented of that choice after their new Labour MP had voted for invading Iraq and identity cards though George is thinking seriously of giving her another chance now that Tony Blair has left the scene.

George's wife invited Whiz and his partner to their home for dinner. Shortly afterwards Whiz invited them George and his wife to an exhibition of his work in the gallery of an excellent local business incubator. Through these meetings George and Whiz got to know and like each other better. One summer evening Whiz and George found themselves in the bar of "The Golden Cock", a very popular country style pub just above the town, discussing going into business together. It is not clear who first made the suggestion but, whoever it was, the other was very receptive to the idea. It seemed a business deal made in heaven. George knew a lot about running a business and raising money while Whiz had the creative spark and a lot of contacts. They decided to form a home furnishings company called Whiz Designs Ltd. George would manage the company and look after its finances while Whiz would design the products and sell them.

They decided that George should draw up a business plan. As several of his clients and connections had suffered from piracy and counterfeiting, George was conscious of the need to protect their investment in Whiz's creations. George was also conscious of the perils of going to law. One of his clients had been forced to stop trading after incurring enormous legal costs in a copyright action in which he was ultimately successful. The villains, who were scattered throughout the world, had no assets other than a few laptops and mobile phones. The client had gone to a well known local law firm because its commercial partner seemed to have done a reasonable job over his lease. Those solicitors had in turn consulted counsel from the local bar who had previously represented them successfully in a difficult sex discrimination case with lots of expert evidence before the employment tribunal. The result was that both litigator and advocate had been on a learning curve and they charged for their legal education by taking an inordinate time to research the law and procedure at each stage of the litigation albeit at a fraction of the hourly rate of the specialist City solicitors and Lincoln's Inn counsel that George had recommended.

The lesson that George had drawn was that IP infringement was one of the likely threats to any new business. They could take precautions against it such as filing trade marks and design registrations and insuring against the costs of enforcing those registrations. His advisor from Business Link Yorkshire had recommended the IP Yorkshire Clinics with a number of experts including a local patent attorney called Princess Burreh-Hamilton. George showed the article to Whiz and suggested that they should book a slot. Whiz was not too keen at first. He had no idea of what a patent attorney did but the description suggested some kind of lawyer. However, he changed his mind on seeing the photo of Dr. Burreh-Hamilton who looked quite appealing.

The Initial Advice

Although she resembled her photograph, Dr. Burreh-Hamilton was clearly a lady of business. She received them courteously and bade them sit down.

"Now what can I do for you?" she asked.

"Do you really want to know, darling?" Whiz quipped.

"I beg your pardon" she replied with a Medusa like glare.

"Do excuse us" interposed George. "We are settling up a company and we need to know about pay-tents..."

"Patents" suggested Dr. Burreh-Hamilton.


"Do you have an invention?"

"We've got plenty of designs" chipped in Whiz.

Dr. Burreh-Hamilton affected not to be amused and scowled: "Now, look, there are a lot of people waiting. Can we move on?"

"We were wondering what we should do about intellectual property. As I said we are going in to business together. Whiz, I mean Mr. Woofer, is a well known interior designer and my background is in financial services. I am drawing up a business plan for the company and I know the importance of brands and designs. I have clients who have got into all kinds of trouble for not registering their intellectual property rights with the Pay-tent ..."

"Patent Office – Anyway it's called the UK-IPO these days."

"I also know that pat tent litigation is very expensive and that we have to plan for it."

"Very sensible if I may say so" said Dr. Burreh-Hamilton. "Now I only have half an hour with you so all I can do in that time is to give you some general advice. If you want to do any more you will have to make an appointment through my secretary, and I am afraid there will probably be a charge for that."

"Fair enough Dr Burger, I mean Borough, Burrow, Bu....."

"Oh just call me Princess" she replied, hey eyes rolling to Heaven." I know it is difficult for some people. Well the first thing that I suggest is that you carry out an intellectual property audit."

Intellectual Property Audits

"I'm an accountant" said George, "Can I do it".

"Probably not" she replied. "An IP audit is not like an audit under the Companies Act 2006. Its purpose is to identify your intellectual assets. What gives or is likely to give your company a competitive edge? Do you own those assets? If you do, how are they protected? If you don't own them, are you entitled to use them? What provision can you make to enforce your rights?"

"Can you do it?" asked George

"Well yes. Any patent attorney or specialist lawyer can. I can also show you what to look for so you can do it yourself. But, as I have said, that's for another time."

Intellectual Asset Protection Strategies

"Well we would like you to patent and trade mark everything we have" said George. "And we intend to operate globally so we shall need global protection" added Whiz.

"Whoa," exclaimed Dr. Burreh-Hamilton, "have you any idea what that would cost you. Nobody protects everything, every way, everywhere. Not even big multinationals. Indeed, that is one of the reasons why they are multinationals. They understand the intellectual property system and exactly how it works. Their managers have lots of experience of protecting and enforcing their intellectual assets. They have teams of in-house lawyers and patent attorneys throughout the world. They also know where to get the best outside professional advice. They use their market power it to procure it at the best possible rate on the best possible terms. You need to take a leaf out of their book."

"It's refreshing to hear a patent attorney talking like that," mused George. "Do you know, what happened to a lovely couple who come to our inventors' club? The husband had invented a very ingenious device that had actually been marketed. He had consulted patent attorneys who had advised him on the law and told him that the belt and braces approach was to apply for a patent in all the countries in which he hoped to make or market his product. Belt and braces sounded good to him. Using a nest egg that he and his wife had set aside to buy, among other things, a caravan for their retirement, he instructed his attorney to apply for patents and designs just about everywhere he could think of. Having secured a very impressive portfolio of certificates from the European Patent Office, US Patent and Trademark Office, Japan Patent Office and several other countries, he hawked his invention around the industry looking for someone to take a licence form him. Eventually he did find a small company which made a test run but they found the product difficult to shift and in due course terminated the licence. The wife was devastated. I remember having a drink with the two of them in a local wine bar after the meeting. She told me with tears in her eyes on their plans for their retirement: the top-of-the-range model they had in mind, all the parts of the country they wanted to visit, and they had contemplated a trip to the Continent. But, instead, all they had to show for their life savings was a seemingly valueless pile of specifications."

"Mm, a cautionary tale if ever there was one" mused Dr. Burreh-Hamilton.

"But why didn't the patent attorney not stop them" responded George. "Surely they were acting irresponsibly."

"It's not really our job to second guess our clients" said Dr. Burreh-Hamilton. "We assume they know their business better than anyone, that they can afford the fees and that they can see some advantage. We can, of course, tell them about the costs and what they will achieve but we can't make business decisions for them. There are lots of other people who can help with that. Business Link, for example."

"Or even chartered accountants" added Whiz with a wry smile.

Crane, Scissors, Paper, Stone

"Yes but there are times when you do need a broad measure of protection" countered Dr. Burreh-Hamilton. "When I was at school we used to play a game called 'crane, scissors, paper, stone." It is a game between two players. The players shake hands three times. On the third shake they break and each player forms his or her hand into a shape such as a claw representing a crane, two outstretched fingers representing scissors, a flat palm representing paper or a clenched fist representing stone. If one chooses 'paper' and the other 'scissors' the player choosing scissors wins while the loser suffers a forfeit such as a slap on the wrists. Had the loser chosen 'stone' instead of paper, he or she would have won because stone blunts scissors. If the player who had chosen 'scissors' had chosen 'stone' instead the child choosing 'paper' would have won because 'paper' wraps up 'stone'. 'Cranes' trump everything except 'paper' because they can pick up everything except paper. However, 'cranes' are vulnerable to 'paper' because 'paper' can wrap a 'crane' up.

Inventors have to make similar snap decisions when deciding whether to apply for a patent at all, if so, where, how to enforce such patents, and so on. A patent may keep competing products out of a market but it is no use at all without the means of enforcing it. That is like 'scissors' cutting 'paper' but being blunted by 'stone'. Having legal protection and the means to sue are pointless if there is no demand for the invention. That is like 'paper' wrapping up stone. Strong demand will not last should competitors be free to come into the market. That is like 'scissors' and 'paper'. You see what I mean?"

"Yes but what can we do about it?"

"That's why I suggest you identify your competitive advantages first, list the possible threats in order of imminence and seriousness and consider the best means of averting them. Some of those means may be legal, some commercial. For instance, if your brand is threatened by lookalikes one possible response is to rely on trade mark law but another possibility is re-branding. Similarly with knock-offs of your products. You could sue for patent or design infringement or you could upgrade your product range. That's a decision for you. No patent attorney can ever make it for you.

The couple who had spent money they had set aside for a caravan on patenting would probably have thought twice about making that investment had they asked themselves the following questions:

The high cost of patenting has already been mentioned. Not even the largest companies can justify every possible type of legal protection for every one of their products in every country of the world. They have to be selective and they base their selections on estimates of likely revenues, identification of probable threats to those revenues and evaluation of the most effective means of meeting them. Those with far fewer resources and less experience of intellectual property have to do likewise. I suggest you apply this methodology when you write your business plan."

George nodded thoughtfully. Whiz looked out of the window wishing that he was somewhere else.

Funding Enforcement

"And another thing" Dr. Burreh-Hamilton continued, "if you do register a trade mark or a design you must get some IP indemnity insurance in place."

"What about no win no fee?" asked George, "Can't we wait until something happens and then go out and find a lawyer who will take the risk in return for a slice of the damages?"

"Not an option in the UK, I am afraid" replied Dr. Burreh-Hamilton. "American style contingency fee retainers are not allowed for litigation in this country. I know how the system works in America because I have an old school friend called Zainab who practises law there. It is possible for lawyers in England and Wales to accept instructions under a CFA ("conditional fee agreement") but those agreements are very different from contingency fee retainers even though they are also referred to commonly as "no win, no fee" agreements. A CFA allows a lawyer to receive a fee only if the litigation is successful. Unlike a contingency fee, the conditional fee is paid not out of the damages awarded to the successful party, but forms part of the costs that may be assessed by the court and recovered from the unsuccessful party in the usual way. The incentive for lawyers to accept instructions on this basis is that he or she may recover an uplift of up to 100% of the amount to which he would normally be entitled known as a "success fee." A party who enters a CFA remains liable for the other side's costs. If that party is a limited company it may be required to deposit or otherwise guarantee the payment of tens of thousands of pounds as security for those costs. There is often considerable investigatory and other preparatory work to be done before the lawyer can decide whether to enter a CFA for which he or she could charge his normal fee. Although there are some types of litigation such as personal injuries and debt recovery where CFAs work very well, I have another school friend who works those personal injuries solicitors who are always advertising on daytime TV and she does very well out of these agreements. But they are not well suited to IP litigation."

"What about after-the-event insurance?" Asked George.

"Again, not really an option for several reasons" she replied with the first hint of a sympathetic smile. "First, insurers will take these risks only if counsel is prepared to advise that there is a 65% or better chance of success. My solicitor friend tells me you can't even say there is a 65% chance of success with a slam dunk claim over a dishonoured cheque because there are always tons of things that can go wrong. Consequently, there are not many IP claims that meet those criteria. Secondly, premiums are very high, typically one third of the risk insured against. Thirdly, it is usually necessary to do a lot more investigatory and preparatory work for after-the-event insurance than they normally would and most lawyers would expect to be paid for that work.

Collecting Societies

If you were in entertainment or publishing you might have been able to join a 'collecting society'. These are societies or other bodies that represent groups of IP rights owners. Several of them such as the Performing Rights Society and the Mechanical Copyright Protection Society are almost household names in the UK because their stickers are to be seen in pubs and restaurants throughout the country. Such bodies grant licences to perform, reproduce or make some other use of the works of their members (often referred to as their "repertoire") in return for a single licence fee which is paid into a fund that is administered by the collecting society for distribution to its members after deduction of its administrative costs and other expenses. Users of a repertoire who fail to take the appropriate licence or whose use exceeds the terms of their licence are pursued through the courts in the usual way. Several collecting societies in the UK have reciprocal arrangements with collecting societies in other countries thereby enabling British IP owners to recover royalties for the use of their work abroad and foreign owners to recover royalties for use of their work here. Collecting societies exist for various copyright owners plus some musicians and other performers, but not for owners of other IP rights."

Trade Secret Management

While George and Whiz were digesting those words, another thought occurred to Dr. Burreh-Hamilton. "You know, gents", she said, "most of your investment in branding, design and any new inventions you may dream up will be protected by confidentiality. Indeed, all of it will in the early stage. If you want to discuss your ideas with anyone such as an investor, contractor or supplier you must do so in confidence."

"Oh I know all about that, Princess" interrupted George, "I've got this really super 4 page NDA that one of my clients uses. It covers everything, and I mean everything."

"Hmm", frowned Dr. Burreh-Hamilton, "well you have just admitted to infringing copyright."

"No I have changed the odd word here and there and, of course, the names and addresses of the parties are different,"protested George.

"Doesn't matter," replied Dr. Burreh-Hamilton. "By all accounts you have copied just about everything else and you only have to reproduce a 'substantial part' of an original work to infringe and substantiality depends on quality and not just quantity. A legal instrument such as a contract or terms of conditions of business is just as much a copyright work as a poem or novel. Indeed, it may well cost more to instruct a solicitor to draw up a 20 page lease than a work of fiction. Don't you think that the poor client who has paid a lot of money not to mention the poor draftsman who may have spent hours working on the job often late at night and under pressure has a right to feel miffed when folk rip off when someone copies the text of his handiwork without so much as a by your leave?"

"Yeah", but everyone does it" replied George. "There can't be any copyright in a lease or hire agreement which has very much the same sort of terms as every other similar instrument?"

"As for your point that 'everyone does it'" she argued, "you may as well say that everyone breaks the speed limit except when there is a speed camera about. It doesn't make speeding right – especially if a car's written off or someone gets hurt."

"Hmm" said George about to interrupt.

"And another thing, you may find when you employ staff that some of your stationery goes walkabout or they make personal calls or surf porn sites in office time or that they report sick because its a nice day and there is an important match on the telly. I am not sure that you will be sympathetic to the excuse that 'everyone does those things' if it costs you money."

"The other and perhaps more important point is that there is no guarantee that your client's confidentiality agreement would do you any good. Lawyers tailor agreements to suit their clients' specific needs just like tailors and dressmakers make clothes to measure for their customers. Just as my clothes would not fit much less suit you, a confidentiality agreement drawn up for someone else's specific purposes would probably not be right for you."

"Well what do you suggest? Solicitors charge so much these days."

"Well for that sort of thing you do not necessarily have to go to a solicitor. Sometimes barristers offer better value because they do not have such massive overheads as solicitors. What about my friend, Ayodele from the chambers who are organizing this clinic.

"Yes, I've thought about E – ey --yow...."

"Ayodele" snapped Dr. Burreh-Hamilton, "remember 'o' as in 'orange'. Are our names really so hard to pronounce? I mean just think of some of your names like Cholmondeley or Featherstonehaugh."

"Or even Fredric" suggested George, "What sort of name is that? I've heard of Frederick and Cedric but this is a sort of concoction.

"I wasn't going to say" continued Dr. Burreh-Hamilton with another rare smile. "But when you find a good lawyer just like when you find a good plumber or doctor you should take a note of their name, follow their cases, read their articles and attend their seminars."

George made a note. So did Whiz.

"Anyway, we are straying from the point. Confidentiality does not depend on any agreement but from the relationship between "confider", that is to say a person who confides confidential information, and "confidante" or person who receives it in confidence. It was set out by a very famous judge called Sir Robert Megarry in a case called Coco v A N Clark (Engineers) Ltd.

[1969] RPC 41. A person who receives valuable or sensitive secret information in confidence owes a duty known as "a duty of confidence" neither to disclose nor make use of that information for any purpose other than that for which the disclosure was made without the consent. Should the confidante threaten to do so, the confider is entitled to an injunction to restrain such unauthorized use or disclosure. The important point is that the confidante must have receives the information in confidence. That means that he or she must be aware that he or she is to treat the information as confidential. Often that will be obvious from the nature of the information or the circumstances of the disclosure but of you want to put the matter beyond doubt you should ask the confidante to sign a confidentiality agreement. Now I stress that that is not usually enough in itself. Precautions must be taken (and seen to be taken) to keep the information secret such as logging documents and disclosures, keeping materials under lock and key and extracting confidentiality agreements. Merely inserting a confidentiality clause into a contract of employment may not always be enough."

"Why is that?" asked George. "Surely if you put your name to something you are bound by it."

"Oh you'd be surprised how people try to wriggle out of those agreements and indeed often succeed," she retorted. "Some say that the information was not confidential or that they already knew it. Others say that the agreement was made a long time ago and didn't apply. Yet others say they never received the information at all. Still others argue that the agreement was in restraint of trade and hence unlawful."

"So are you saying that there is no point in having a confidentiality agreement at all?" asked George incredulously.

"I'm not saying that at all, George" she replied. "What I am saying is that you must design your confidentiality agreements to the specific confidential information handling system you put in place."

"What do you mean by that?"

"Well, I'll give you an example. When I worked in-house for a telecommunications equipment manufacturer we were working very closely with a consortium of banks to develop point-of-sale card readers. Their technical guys were always in our techies' offices and as it was quite impractical to patent or register a design for everything our staff had to disclose stuff to them in confidence. What I did was to devise a simple one page confidentiality agreement which identified the information, the parties, how it was to be disclosed, the purpose of the disclosure, whether any copies of documents could be made, when they had to be returned and so on. It was not written in very simple English – not legalese. It only took a minute or so to read the words. Nobody ever objected to signing that agreement.

It was executed in duplicate on NCR paper. The confider kept one copy and the confidante took the other. Each blank agreement had a unique serial number and I taught the secretaries to enter the details immediately into an index which recorded the number, date, parties, information disclosed, method of communication, use and return date. The agreement provided for confidantes to come back to us within a specified time if they disputed the confidentiality of the information, but none of them ever did.

I know this system works because I tested it with litigation. One of the staff of one of the banks left to set up his own competing business and we found out that he was using some of our confidential information for his own purposes. It was pretty hot stuff at the time and we had to stop him. So we instructed our lawyers to apply for an interim injunction to restrain him. The other side argued all the sort of things that I have just mentioned namely that their client had not received the information but we had his signed acknowledgement in black and white which we exhibited to our witness statement. They next tried to argue that the information was common knowledge. They might well have got away with that as the poor old judge had spent his entire career doing landlord and tenant and insolvency and had last probably decided to read law because he did not enjoy his maths or science at 'O' Level. Fortunately, our counsel had been science taught properly at the very same school that I had attended which had been founded by English missionaries in the 1840s and she led his lordship very gently through the technical evidence."

"Sounds as though you had good counsel. Who was he by the way?"

"She!" exclaimed Dr. Burreh-Hamilton. It was Lois Cole-Wilson of NIPC who did the case as it happens. I didn't instruct her by the way. Our solicitors did. But I was very pleased to work with someone I knew well. While I think of it, remember what I told you to do about keeping a dossier on lawyers. You can start your file with that case as evidence that she knows about confidentiality.

I might also add that Miss. Cole-Wilson was helped by the clause that required the confidante to challenge the confidentiality within a stated time and he didn't do that. That is what swung it for us with this judge."

Watch Service

"I see", said George. "What other tips do you have for us?"

"You want a lot for a free interview" Dr. Burreh-Hamilton replied. "Well you should look out for any patent, trade mark or design registration applications that may affect you."

"Why do we have to do that?"

"You have told me one cautionary tale. Let me tell you another, or rather two: one in respect of trade marks and the other designs.

A client had supplied local educational authorities with office equipment for several years under a rather catchy name and logo. He never bothered to register those signs as trade marks but built up his brand with solid sales and advertising. He was about to launch a new brochure and website for the forthcoming procurement when he received a letter of claim from solicitors representing one of his larger competitors demanding undertakings that he would cease to supply goods and services under their client's trade mark which it had registered a few weeks earlier. That trade mark was substantially the same as the sign under which he had marketed his goods for several years. I advised him that he could have opposed the application or at least made written submissions to the Registry as he had an "earlier right" under s.5 (4) of the Trade Marks Act 1994 and asked him whether he had done so. He replied that he had not done so because he had been unaware of his competitor's application. He added not unreasonably that he was a busy man who could not be expected to scour the Trade Marks Journal every week. I asked him whether he had ever heard of watch services such as Leeds Central Library's to which he replied that he had not. I advised that his earlier right under s.5 (4) continued and that he could rely on it to counterclaim for invalidity or indeed he could apply to the Registry for its invalidation now, but he replied that he had neither the means nor the resolve for litigation and that it would probably be easier and cheaper in the long run to choose another brand. Had the client been aware of the trade mark application he could have lodged observations under s.38 (3) without running any risks as to costs. There is a similar provision under s.21 of the Patents Act 1977.

The design case is similar. Some solicitors had written a long letter of claim to one of its client's former employees who had left the company's service a few months earlier to set up a competing business. The letter alleged that the competitor had infringed its design rights in the design of certain products. Patent attorneys for the competitor denied copying and added that the allegedly infringing design had actually been registered by their client under the Registered Designs Act 1949. This client decided to stand its ground and instructed me to apply to invalidate the design for want of novelty and individual character. The case has not been resolved yet and we are going to have to go to the Office for a hearing. He will only get some of his costs back because costs are in a fixed scale in the IPO tribunals."

Dr. Burreh-Hamilton's Pearls of Wisdom

"Look" said Dr. Burreh-Hamilton, "time is drawing on. I am going to summarize what I have just said. Please pay very close attention.

1.    Provide for IP Protection in the Business Plan

Since the principal asset of most if not all businesses are their brands, technology or design of their products consideration should be given to the protection and exploitation of those assets at the earliest possible stage. That is usually when a business plan is drawn up. It is nowadays quite common for businesses to include patenting or trade mark registration in their business plans if only to qualify for grants, loans or investment, but it is still far from common for them to consider IP enforcement and, more particularly, the funding of such enforcement. In view of the high cost of litigation, that can be fatal. Businesses and their professional advisors should always include intellectual property insurance or some other means of funding enforcement in their budgeting. It is also in the interests of bankers, business angels, venture capitalists and other lenders and investors to insist on such cover or other provision when contemplating loans, investment or other assistance. So, too, in many cases is such provision in the interests of licensees and distributors.

2.    Seek Professional Advice but remember that there is no "One-stop Shop"

Every inventor or entrepreneur is likely to require a number of different professionals at various times. These will include an accountant to supervise the bookkeeping, prepare accounts and tax returns and advise on general matters, a patent or trade mark agent to apply for a patent, trade mark or design registration, a solicitor for general legal business, a barrister for representation before courts or tribunals, drafting complex legal instruments and advice on difficult points of law, to mention just a few. All of these professionals offer services that are useful and sometimes indispensable.

However, it has to be understood that these professionals will advise only on their areas of expertise and not outside it. A patent agent, for instance, will advise on how to obtain optimum protection for his or her client's invention. It is not his or her job to consider whether such optimum protection is necessary or even desirable for the invention in hand. That is how the couple you mentioned earlier came to spend their nest egg on patents in Europe, the USA and Japan for an invention that is unlikely ever to be made or marketed. Other professionals such as accountants or business advisors might have considered such matters but only they were consulted on say drawing up a business plan.

Consequently, it has to be stressed that while there is some overlap between the services offered by some of those professionals there is not yet any such thing as a "one-stop shop" or single source for all professional services. That may change shortly as Part V of the Legal Services Bill provides for alternative business structures which could included multidisciplinary practices but for the moment professional men and women practise in specialist firms or as sole-practitioners. Members of one profession will often refer their clients to members of another – accountants to lawyers, for instance, and vice versa. Several firms of patent agents practise with law firms in the same building, in one or two cases under the same name. Solicitors and patent agents have traditionally consulted barristers on behalf of their clients.

Possible the nearest thing to a one-stop shop for the time being are the "clinics" and "workshops" like these hosted by IP Yorkshire and the patent libraries and inventors' clubs around the country. At these events a patent agent, lawyer, business advisor, patent librarian or other professional may be consulted free of charge. Particulars of our clinics in Yorkshire are posted from on our website and the Chartered Institute of Patent Attorney lists many more.

3.    Join or start an Inventors' Club

Patent clinics and workshops are just some of the services offered by inventors' clubs. Others arrange for talks by professionals, business angels and other speakers. Most have websites and many publish newsletters and journals. Most importantly, they provide a forum for inventors and their advisors to meet and share experiences. Often some of the best advice that I can give to a client is to see enquire whether there is an inventors' club in their area, to join it if there is such a club, or to start one of their own if there is not. Had Mr Aardvark, the client in my book, joined such a club he may well have found out about design registration and IP insurance at a time that he could have made use of that information. Were he to join such a club now, he could still pass on what he has learned from experience to someone who might otherwise have learned those lessons the hard way.

4.    Read as widely as possible

Finally, read, read and read again. There is a lot of good information on the internet. Good places to start are the websites of the UK-IPO, British Library, WIPO, EPO, OHIM and indeed websites of universities, law firms, patent attorneys and barristers. Several of those sites offer very good booklets, forms and model agreements which can be downloaded. For instance, one of the best, is "Confidentiality and Confidential Disclosure Agreements" from the IP Office website which contains a model confidentiality agreement that has been prepared by two friends and neighbours, Peter Bissell and Graham Barker. Peter and Graham have written "A Better Mousetrap: The Business of Invention" which is highly recommended for individual inventors and small businesses. It is available only from their website. Many patent agents and business advisors distribute it to their clients.


George and Whiz left their meeting with Dr. Burreh-Hamilton in a bit of a daze but they could recognize good advice when they received it. They instructed her again on a paying basis to carry out an IP audit and to help them draw up an enforcement strategy which we may talk about these on another occasion