|Brighter Days in York?|
(c) 2016 Jane Lamber: all rights reserved
Last Thursday I was one of the speakers at the York meeting of the Chartered Institute of Patent Attorneys ("CIPA"). The other speakers were Louise Edwards of Mazars, David Bloom of Safeguard IP and Kalim Yasseen who is a patent examiner with the Intellectual Property Office. CIPA's president, Tony Rollins, chaired the meeting.
I spoke about IP Litigation after Brexit. Although we Brits tend to be seen as the awkward squad when it comes to the European project there has been one initiative upon which we have been commendably communautaire. That initiative has been a single European patent for all the member states of the European Union with a single court for the resolution of disputes relating to such patents. The reason why we have always supported that initiative is that patent enforcement litigation in the UK is the most expensive in Europe. The cost of enforcement probably has a lot to do with why the UK trails not just Germany and France in the number of European patent applications but also Switzerland with one eighth of our population and the Netherlands with one third. Something that I have been saying for most of the last 10 years (see Why IP Yorkshire 10 Sept 2008),
The Uniform Patent Court, which will probably come into being towards the end of this year or the beginning of next, would have put British industry on a level playing field with its continental competitors. Unfortunately, the chances are that we shall have to leave when we quit the EU. After we go it will be even more important to do something about reducing the cost of IP litigation in the UK. One solution will be to make better use of the Intellectual Property Enterprise Court ("IPEC") and, in particular, its small claims track. Another consequence of Brexit is that we shall be looking for new export markets outside Europe where the IP environment will be quite different. Not all those markets protect intellectual assets adequately and I suggest that the UK's bilateral investment treaties with 117 foreign states might help. I discussed all these items in greater detail in IP Litigation after Brexit 9 April 2017 IP North West).
Louise gave is a Patent Box Update in which she discussed the effects of the Finance Act 2016 and proposed Finance Bill and considered a number of case studies. She covered some of the rules on patent box relief contained in the 2016 Act and gave us some statistics on take-up. There were apparently 55 companies that took advantage of the scheme in North West England but rather more in Yorkshire. She mentioned the base erosion and profit shifting project of the OECD and how it will affect IP and in particular licensing and distribution. Finally, Louse spoke about three cases that were on her desk right now. One concerned an "ideas company" and its licensing activities. Another, a patentee who had found a new use for his (or her) invention. Finally, a "serial inventor" who insisted on holding onto his IP even though it was not at all tax efficient.
Louise illustrated her talk with bear traps, signposts to "opportunities" and gold nuggets of which there were many. She also had a short sighted computer literate bespectacled terrier under the caption "No tax tail wagging me!" A useful reminder that tax schemes with the primary purpose of avoiding tax will not be bought by HMRC or, for that matter, the courts.
David spoke about IP insurance which is a topic very dear to my heart. I have written quite a lot of articles about it over the years, the last being IP Insurance: CIPA's Paper 1 May 2017 NIPC Inventors' Club. In my view, there is no point in spending a lot of money on obtaining a patent unless you are prepared to enforce it. Despite IPEC and the UPC which I mentioned in my paper it still costs an arm and a leg to enforce an IP right in England. IP insurance can help with that and David said that the choice of insurance products was going up and the cost of premiums was going down. At one time, patent agents used to warn their clients not to waste their money on insurance. I am glad to say that I don't think they do that anything like as much nowadays. If I were a patent or trade mark attorney I would make all my clients aware of such things as IP insurance and watch services and point them in the direction of someone who could give them some dispassionate advice and information.
Kalim, whom I had met when he gave a super talk to the Sheffield inventors club entitled "Filing a UK patent application - process and procedures" on 6 Feb 2012, discussed changes to the Patents Rules 2007 some of which were coming into effect that very day (see Changes to Patents Rules on 1 October 2016 and 6 April 2017 1 Sept 2016 IPO website). These included "omnibus claims" - not an application for a patent for a new kind of charabanc but a basic repetition of the description in the specification - and the communication of patent renewal reminders. Some of these new rules such as the examiner's notification of intention to grant seem to me to be very useful and most have actually been in force since October.
Kalim also spoke about changes to the IPO's portion of the .gov.uk website which seems to reinstate some of the useful bits of the old professional pages section of the IPO's old website. One useful feature is password protected access to the examiner's file. Another is the updating of the Manual of Patent Practice.
Finally, Kalim gave us some tips on working with your examiner. He assured us that he and his colleagues were quite approachable and perfectly reasonable but there are some things that get their goats of which we should be aware. Fairly common sense things in my view.
The meeting took place in the Principal Hotel next to the station. It seems to have undergone considerable renovation and refurbishment. It was much smarter than it was when I last visited it. They laid on a hot and cold buffet with soft drinks for lunch, tea and coffee at half time and gallons of prosecco for those who did not have to drive. Patent seekers generously added some Welsh whisky, easter eggs and chocolate bunnies to the festivities and we were well away. As I was precluded from partaking in the whisky, I was tempted to mention Mr Justice Laddie's decision in Matthew Gloag and Son Ltd and Another v Welsh Distillers Ltd and Others: The Runes 27 Feb 1998 but thought better of it.