30 July 2013

Forthcoming IP Related Events in Yorkshire

Yorkshire Puddings     Source  Wikipedia

The Intellectual Property Office has just updated its calendar of events.   The following are taking place in Yorkshire:
Here are some more that I just happen to know about:
Next, there are the regulars:
Finally, there are the patent clinics run by the Chartered Institute of Patent Agents at Leeds and Sheffield Central Libraries and my clinic between 10:00 and 12:00 on the second Tuesday of every month at Barnsley Business and Innovation Centre.

If you want to know about IP events elsewhere in the UK check out the IPO, CIPA and ITMA websites. If anybody wants a speaker from our chambers for an IP related event please contact my clerk Stephen on 01484 599090 or fill in my contact form.

10 July 2013

Practising the Dark Arts in Leeds and Sheffield - roll up to be enlightened

Leeds Inventors Group

A patent is granted for inventions that are new and involve an inventive step.   An invention may be new to you and to everyone else you know but if someone somewhere in the world dreamed it up before you, you don't get your patent. If by some chance you do get a patent and your invention turns out not to have been new you stand to lose your patent despite the fortune you may have paid in professional, official and renewal fees to get it. So searching should be important to every inventor.

Searching should also be important to anyone who may be accused of infringing the patent. If he or she finds that the invention has been anticipated or that it was obvious then the patent would be invalid. And if the patent is invalid there is nothing to infringe.

Searching for patents is a dark art practised by patent agents, librarians examiners and others at midnight on moonless nights in Armley cemetery with their familiar (an immortal cat called Ginger who is himself something of an inventor) after dancing anti-clockwise round a computer in a pentagon.

However, two of them have broken ranks.  Ged and Stef will share their secrets with you at a Patent Searching Workshop at 18:00 this evening at Leeds Central Library. There are still one or two places left so if you want to find out about this topic then now's your chance. You can register for the event through Eventbrite and I hope that at least some of my instructing solicitors will do just that.

Sheffield Inventors Group has already had its July meeting - a fascinating talk by Pat Ross of Creative Genie on identifying your USP. Another dark art perhaps.   You can find my write-up at "Identifying your USP - the Overlap between Design and Invention" 9 July 2013 Inventors Club

IP Litigation in Leeds - Past, Present and Future

Source Wikipedia 

Unlike Lancashire, Durham and Northumberland, Yorkshire did not have a palatinate court before the Courts Act 1971. Consequently no intellectual property or other chancery litigation could be conducted in Leeds until after the Durham and Lancaster Palatinates Courts had merged with the Chancery Division . After that merger, Judge Blackett-Ord and his deputies Judges Fitzhugh and O'Donoghue heard chancery business in Leeds as well as Liverpool, Manchester, Newcastle and Preston. Those judges did not spend all their time in the High Court. They also sat in the county courts and even in the Crown Court.

When Judge Blackett-Ord retired in 1987 the government of the day considered the abolition of the chancery jurisdiction in the North altogether.  Chancery practitioners in Leeds and Manchester under the leadership of my deputy head of chambers Peter Keenan and supported by James Allen and John Behrens (who were then the leading and indeed practically the only chancery practitioners in Leeds) produced alternative proposals to which I contributed the economics section. These were accepted by the Lord Chancellor who appointed Sir Richard Scott as Vice-Chancellor of the County Palatine of Lancaster. In that role Sir Richard sat on at least one interim applications (or motions) day and some of the more important trials in Leeds.

There had always been a number of building societies in West Yorkshire. The Building Societies Act 1986  allowed them to demutualize and become banks. As most of the other great cities of the North of England declined with the contraction of manufacturing Leeds found a new role as a financial centre. Those financial institutions and the businesses and professional practices that supported them required sophisticated legal advice on all aspects of commercial law locally. Local demand for commercial legal services catapulted firms like Booth & Co, Dibb Lupton, Hammond Suddards, Hepworth & Chadwick and Simpson Curtis into major international practices.

Several of those firms had excellent intellectual property and technology lawyers such as Richard Sutton and Simon Chalton at Dibb Luton and Dai Davis at Hepworth & Chadwick. They trained many other good IP lawyers in Leeds. While most of their work went to London some of it was remained in Leeds. As the only IP practitioner outside London at that time much of it came to me.

S.61 (1)  and paragraph 1 (i) of Schedule I to of the Senior Courts Act 1981 allocated intellectual property cases to the Chancery Division. S.6 (1) (a) of the Act established the Patents Court as part of the Chancery Division while s.62 (1) and assigned to it
"such proceedings relating to patents as are within the jurisdiction conferred on it by the Patents Act 1977, and such other proceedings relating to patents or other matters as may be prescribed."
S.287 (1) of the Copyright, Designs  and Patents Act 1988 enabled the Minister of Justice to
"designate any county court as a patents county court and confer on it jurisdiction (its “special jurisdiction”) to hear and determine such descriptions of proceedings—
(a) relating to patents or designs, or
(b) ancillary to, or arising out of the same subject matter as, proceedings relating to patents or designs,
as may be specified in the order."
Only the Edmonton and Central London County Courts have ever been designated as patents county courts and there has only been one county court for the whole of England and Wales at any one time.

CPR 63.2 (2) requires patents, registered and registered Community designs, semiconductor topography and plant varieties claims to be brought in the Patents Court and Patents County Courts. All other intellectual property cases must be brought in the Chancery Division (which of course sits in Leeds) and any county court where there is also a chancery district registry (which includes Leeds County Court) pursuant to CPR 63.13. 

Until 30 Sept 2010 the Patents County Court was almost as expensive as the Patents Court. In its report "The Enforcement of Patent Rights" of November 2003, IPAC (the Intellectual Property Advisory Committee) reported at page 50 that the average cost of an action in the Patents County Court was between £150,000 and £250,000. Where the claimant was in Yorkshire there were considerable cost savings in litigating in Leeds.

That advantage disappeared on 1 Oct 2010 with changes to CPR Parts 63 and 44 that expedited the procedure and limited the costs of litigation in the Patents County Court (see my article on the "New Patents County Court Rules" 31 Oct 2010 NIPC law). With the new small claims track for IP cases which was launched on 1 Oct 2012 there was even less incentive to litigate in Leeds (see Jane Lambert "The New Small IP Claims Jurisdiction" 5 March 2012).

However, this may change. The Patents County Court is now very busy with long waits for case management conferences and trial dates.   S.17 (1) of the Crime and Courts Act 2013 establishes a single County Court for England and Wales with national jurisdiction that can sit anywhere pursuant to Schedule 9. Paragraph 4 of the Patents Court Guide already provides that:
"If the parties so desire, for the purpose of saving time or costs, the Patents Court will sit out of London."
Paragraph 1.5 of the Patents County Court Guide contains a corresponding provision. There is no reason why the Minister of Justice should not appoint one or more circuit judges or recorders with experience of patents to hear IP cases in Leeds or indeed anywhere else in England or Wales for that matter. Similarly, there is no reason why a district judge should not be appointed to hear small IP claims in Leeds or other towns and cities.

Although I have now joined 4-5 Gray's Inn Square, I still live in Holmfirth, I can still be consulted at the Huddersfield Media Centre and I can still appear for you at short notice at the Leeds Combined Court Centre. Should you wish to discuss this post please  complete my contact form or by call me on 01484 599090 or 0113 320 3232..