Demand for my IP Clinic - Flash in the Pan or Straws in the Wind

By Steve Partridge, CC BY-SA 2.0,
https://commons.wikimedia.org/w/index.php?curid=9270036

Jane Lambert

I have been holding monthly IP clinics in Yorkshire since 2004.  I have therefore experienced the economic downturn which resulted from the banking crisis, the slow recovery, and the 20.4% slump in GDP which the Office for National Statistics announced yesterday (see GDP monthly estimate, UK: April 2020, 12 June 2020 ONS).  I have found attendance at my monthly IP clinic in Barnsley to be a pretty good bellwether of the state of the economy.

This week for the first time in months I had three enquiries.   As I explained in Barnsley IP Clinic 14 April 2020 I have had to offer these clinics online.  That enables me to see clients at a mutually convenient rather than a two-hour session at the Business Village in Wilthorpe.  I also hold a similar clinic at the Menai Science Park in Anglesey which is now online (see Online Support for Businesses in Wales 13 April 2020 NIPC Wales).  However, until this week I had received only one enquiry and that came from North Wales),

What is encouraging about this week's enquiries is that they were all about new business ventures.  Obviously, I can't disclose who they were or anything about their businesses but they were interested in legal protection for their brands and technology. The conversations on branding led to trade marks and the discussion on protecting technology led to patents and alternatives to patents.  I also mentioned trade mark and patent searches and how to obtain them, clinics at the Sheffield and Leeds Business and IP Centres run by CIPA and others, and how and where to find a patent or trade mark attorney.

All three clients were enthusiastic and motivated.  They were aware that they were going into business at a very bad time but they had researched their markets and were sure that their businesses would grow as the economy revives. Now I may be wrong about this but I think they will succeed. I also think there are others like them from the Shetlands to the Scillies.  A flash in the pan?  Perhaps!  But I think they are straws in the wind.  I say that because something very similar happened in about 2011 and 2012. There were dips of inactivity now and then but as the economy picked up so dud attendances at my clinic.

Now for a tip.  At my clinics and inventors' clubs, I am often asked about T & C.  These are about managing risk which is why terms and conditions designed for one business may not necessarily suit another.  They are meant to dovetail with following best practice and public liability and other insurance. 

Just outside Wakefield, there stand the ruins of a medieval castle which was also about managing risk.  There was a moat to keep out wild animals, sturdy vagabonds, and other undesirables.  That was enough to deter most threats to the castle and its inhabitants.  To fight off besieging armies there was a curtain wall from which defenders could fire arrows and pour boiling all or molten lead on their attackers.  If the wall was breached, there was a keep with thick walls where the defenders made their last stand as Macbeth tried to do against Macduff.

Terms and conditions are the last line of defence.  Contract terms cannot be used to exclude certain types of liability.  The first line of defence is best practice.  That equates to the moat.   The second line is insurance. That is like the curtain wall.  Terms and conditions can sometimes be used to regulate risks that cannot be insured against and where best practice fails.   They should, therefore, be drafted with the needs of the business in mind with the insurance policy and manual if best practice to hand.

Anyone wishing to discuss this article or any of the topics mentioned in it should call my clerk on +44(0)7986 948267 or send me a message through my contact page while this emergency continues, I shall gladly respond by phone, Zoom or email.

Barnsley IP Clinic 14 April 2020

By Badics - Own work, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=35492068

Jane Lambert

On the second Tuesday of every month, I hold an intellectual property clinic at Barnsley Business and Innovation Centre at Wilthorpe between 16:00 and 18:00.  The next one is due to take place on Tuesday, 14 April 2020.  Obviously, I can't visit the Centre and neither can those who require advice but there is no reason why the clinic cannot be conducted by phone or video link.

As I said in IP Services during the Emergency 23 March 2020 NIPC Inventors Club, IP is now more important than ever:

"If we are ever to stop Covid-19 in its tracks it will be through the efforts of universities and biotech and pharmaceutical companies around the world whose research will have to be funded. Much of that funding will come from the private sector which will require legal protection for the revenue streams from which it will recoup such investment."

Very much the same is true of the design and development of medical devices, personal protection equipment, infection tracking and logistics software and all the other contributions that will be required to counter the menace.

Much of that work will be done by small businesses and in some cases individuals.   As I also said in the article, those businesses will need the best possible advice on patenting, licensing and technology transfer too and they will need them on affordable terms.  I cannot carry all the answers in my head but I can introduce you to attorneys, design consultants, specialist accountants and solicitors and others who can help take your project forward,   I described all the services that I offer in Barnsley Pro Bono IP Clinic 12 Nov 2019 7 Nov 2018,

So if you want to attend my online clinic please, complete the Initial Advice and Sihnposting form as soon as possible.

TIPSY Dinner for Mr Justice Birss

Author General Tire Source Wikipedia General Tire 

Jane Lambert

Mr Justice Birss was the guest of honour at  The Intellectual Property Society of Yorkshire ("TIPSY") dinner at the DoubleTree by Hilton hotel at Granary Wharf in Leeds on 27 Feb 2020.  Once again it was organized by Mr Andrew Clay, a solicitor specializing in intellectual property law in Harrogate. The meal with its choice of three dishes for each course was excellent. I chose soup, salmon and crumble together with white and red wine, mineral water and coffee.

After dinner, Dick Waddington pf Appleyard Leeds introduced our guest and invited him to speak on the Assessment of Damages for IP Infringements.   Disarmingly the judge acknowledged that he had not chosen the most riveting topic for an after-dinner speech.  Having said that, his talk was as interesting and entertaining as any on the subject. The only hissing he received was when he mentioned his Scottish birth and Lancastrian education.  He had contemplated (but then thought better of) appearing in his old school tie which included red roses in its design. However, he revealed a Yorkshire connection in that his mother had moved to Ilkley.

The speaker began with a reminder that intellectual property infringement was a tort and that an award of damages in tort was supposed to put the injured party in the position he or she would have been had the wrong not been committed. Easy to say but not always easy to apply.  There were two qualifications to that rule

• An account of profits which is restitutionary or perhaps fiduciary in nature is available as an alternative to damages; and
• Damages for the misuse of confidential information is a remedy for a breach of an equitable duty rather than compensation for a tort.

Mr Justiice Birss reminded his audience of the House of Lords' decision in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd [1976] RPC 197, [1975] 1 WLR 819, [1975] 2 All ER 173, [1975] FSR 273 which considered different ways of assessing damages.  One way was to calculate the loss of sales.  Another was to compute the royalties that would be agreed by a willing licensor and a willing licensee bargaining at arms' length,  There were however difficulties with both approaches.  Litigants were very different from parties wanting to do business with each other and there are circumstances when a claimant would have incurred losses from sales of a non-infringing item even if there had been no infringement.

The judge discussed such cases as Wrotham Park v Parkside Homes  [1974] 1 WLR 798 and Attorney General v Blake [2001] Emp LR 329, [2000] EMLR 949, [2000] UKHL 45, [2001] 1 AC 268, [2000] 4 All ER 385, [2000] 3 WLR 625, [2001] IRLR 36, [2000] 2 All ER (Comm) 487, [2001] AC 268, [2001] IRLR 37 where the object was to impose a cost on the defendant for breaching a restrictive covenant or a duty of confidence rather than delivering compensation. He also considered  Morris-Garner & Anor v One Step (Support) Ltd. [2019] AC 649, [2018] WLR(D) 260, [2018] 3 All ER 659, [2018] 1 Lloyd's Rep 495, [2018] UKSC 20, [2018] 2 All ER (Comm) 769, [2018] IRLR 661, [2018] 2 WLR 1353.

Points that the judge mentioned briefly included alternative ways of computing FRAND royalties - extrapolation or comparables - the right of a successful claimant to request disclosure of a defendant's sales so that he can make an educated choice as to damages or an account of profits, assessing damages liberally and the innumeracy of many lawyers.  Only at the very end did the judge mention the Enforcement Directive and then only in passing.

Mr Justice Birss reminded the audience that small claims track IP cases could now be brought in Leeds and other major cities outside London and he urged his audience to use them.  If there was demand for IP litigation outside London the courts would arrange for multitrack cases to be heard there.  In the Q and A that followed, one questioner asked about punitive damages in IP, another mentioned a rumour that the UK planned to withdraw from the Unified Patent Court agreement while Mr Clay speculated on a claim for a battleship fitted with a tine whistle.  I raised my hand and gesticulated wildly but Dick Waddington did not see me.

It was a very good evening and I look forward to the next one which is likely to be in June with Michael Silverleaf QC as the guest speaker.   Anyone wishing to discuss this article or damages generally may call me on 020 7404 5252 or send me a message through my contact page.