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Jane Lambert
Intellectual property law developed in the 19th century when the first industrial revolution was in full swing. An invention was necessarily a new product or a process for making products. Until the Trade Marks (Amendment) Act 1984 it was not possible to register trade marks for services in the United Kingdom. I remember accompanying the late Hugh Laddie to the Patent Office in 1984 when I was legal adviser to VISA International for Europe, the Middle East and Africa on an appeal against an examiner's refusal to grant VISA a trade mark for printed matter on the grounds that it was a roundabout way of obtaining a service mark for travellers' cheques.
The economic picture has changed a lot since then. Services now account for nearly 80% of GDP in advanced countries like the UK, France and the USA. But the law does not cater for innovation in services even though a new financial service using blockchain technology such as a new virtual currency can be every bit as ingenious as a new drug or communications device. One of the reasons why the law lags behind technology is that the leading industrial countries agreed to protect the intellectual assets of each other's nationals on a reciprocal basis in the Paris and Berne Convention of 1882 and 1886 because reciprocity requires such legal protection in all participating states to be approximately the same.
So when a client comes to me with an idea for an innovative new service his or her options are limited. It may be possible to patent a product or process used in delivering a new service such as a drone or even in some circumstances a software implemented invention but it is not possible in any country to patent a service as such. Even in countries like the United States where there is no equivalent to the statutory exclusions in s.1 (2) of our Patents Act 1977 the protection of methods of doing business has rolled back since the decision of the Supreme Court in Bilski v. Kappos, 561 U.S. 593 (2010).
Generally I advise a client to keep his or her idea to him or herself until he or she is ready to launch. If the client needs to talk to a contractor, collaborator he or she should do so in confidence. Every disclosure in confidence should be acknowledged in writing by the confident, recorded by the confider, closely monitored and strictly enforced. After the launch the idea will be in the open for anyone to see and, of course, imitate. Nevertheless, the innovator may still derive some advantage from being the first to market the service. Any reputation or goodwill accruing to his or her business can now be protected by registering the brand under which it is supplied as a trade mark. All forms, manuals and other stationery used in the business will be literary works in which copyright will subsist automatically, If properly coordinated and supplied under a brand, the client may have a business format that can be franchised.
In its early days any business will be vulnerable to legal action either to enforce such IP rights as it may own or to defend a claim for their invalidation or revocation. Even in the Intellectual Property Enterprise Court litigation can be ruinously expensive. Some form of IP insurance is therefore essential if it is to retain its market advantage.
I shall be talking about how to protect a service and other matters at Barnsley Business and Innovation Centre at 12:15 on 9 May 2017. If you want to attend that event you can do so by registering here.
