26 September 2019

Speaking to Entrepreneurs in Bansley


IP for Start-ups and other Small and Medium Enterprises from Jane Lambert

On Monday I delivered the above presentation at Barnsley's splendid new library at The Lightbox. The library is one of many facilities at a new shopping and entertainment complex known as The Glassworks.  I gave my talk in the meeting room that appears below.  The gist of my presentation can be gleaned from my slides.

Whenever I give a talk like this I stress the difference between intellectual property which is the collective name for a bundle of laws and the brands, designs, technology and creative works that those laws protect, namely intellectual assets. Too often the term intellectual property is used interchangeably for the legal protection and the subject of that protection, namely the inventions, books or distinctive signs.  I also stress that there are nearly always alternative ways of protecting an asset. For instance, an inventor can keep his invention under wraps until he is ready to exploit it (and even longer if it cannot easily be reverse-engineered) or he can disclose it to the world in exchange for a patent.  There are advantages and disadvantages of patent and trade secret protection.

I discuss the rights that require registration such as patents, trade marks, registered designs and plant breeders' rights and those that come into being automatically such as copyright, design right, rights in performances and the common right actions of breach of confidence and passing off.  As a lot of businesspeople have never heard of patent or trade mark agents or are not quite sure what they do, I explained the roles of each of the main IP professions, that is to say, patent and trade mark attorneys and specialist solicitors and counsel, how they are regulated and where they can be identified and instructed.

I continued my talk with a discussion of assignments, licensing and franchising.  I explained the difference between exclusive, sole and non-exclusive licences.  I spoke about IP strategy and suggested a simple one for a new business with limited funds.

I also mentioned enforcement. I told them that an intellectual property right can be regarded as a right to bring a lawsuit and that it is ultimately useless if it cannot be enforced.  That will cost money and I considered IP insurance and other funding mechanisms. I discussed some options such as the Intellectual Property Enterprise Court and its small claims track and some of the alternatives to litigation such as proceedings before hearing officers in the IPO, mediation, examiners' opinions on the validity and infringement of patents and the Uniform Domain Name Dispute Resolution Policy and Nominet's Dispute Resolution Service.

Finally, I mentioned my monthly pro bono clinics at rhw Business Village (formerly Barnsley Business and  Innovation Centre) at Wilthorpe on the second Tuesday of every month (see IP Yorkshire Clinics 17 Aug 2018).  I also recommended the services provided by the Business and IP Centres at Sheffield and Leeds Central Libraries.

I was asked a number of questions such as the significance of the © and ® signs and whether they were necessary for the subsistence of copyright or a registered trade mark. I was also asked about the "TM" sign and I quipped that the former librarian at Manchester Central Library had said that the sign stood for "totally meaningless". I said I wouldn't go quite that far and that it might warn of an intention to sue for passing off.  My audience was quite surprised to learn some statistics such as the number of European Patents that are sought from this country in comparison with other large industrial countries and the massive number of patent applications from China, Japan and South Korea. We had a very lively Q & A which might have continued for some time had the library staff not enquired whether we had homes to go to.

Anyone wishing to discuss this article should call me on 020 7404 5252 during office hours or send me a message through my contact page.

Author Jane Kamnert © 2018 Jane Elizabeth Kambert