How to Access Useful Cost-Effective IP Services in Yorkshire

Percy Shaw's Cats' Eyes - Possibly Yorkshire's most
famous invention

Author ELIOT2000
Source Wikipedia 

Jane Lambert

Our national prosperity depends on the competitiveness of British industry and that, in turn, depends on the propensity of our businesses to create and innovate.  Start ups and other small and medium enterprises ("SME") are among the most creative and innovative businesses in our economy.  They need to protect their investment in branding, creativity, design and innovation with intellectual property rights just as much as any other business but they do not appear to do so.  According to the European Patent Office, only 5,142 European patent applications originated from the UK in 2016 which is only 163 more than in 2007. In that time we have slipped from 7th place in the number of European patent applications to 9th having been overtaken by China and South Korea in our own backyard.

Soon after it entered office, the Coalition government commissioned Prof. Ian Hargreaves to review how the intellectual property framework supports growth and innovation and, in particular, "the cost and complexity to SMEs of accessing IP services to help them to protect and exploit IP". Hargreaves found 3 issues that impede SME in obtaining the support they needed:

• the complexity of available offerings; 
• a lack of broad-based, strategic business advice; and 
• the substantial costs involved in IP management.

He recommended that:

"The IPO should draw up plans to improve accessibility of the IP system to smaller companies who will benefit from it. This should involve access to lower cost providers of integrated IP legal and commercial advice."

Although the government accepted that and all Hargreaves's recommendations, not much has been done to implement it.  Arguably access to IP services is worse now than it was when Hargreaves delivered his report because Yorkshire Forward and Business Link Yorkshire which signposted entrepreneurs and other business owners to the appropriate services and often funded them was abolished shortly after Hargreaves delivered his report.

The gap left by Business Links and Yorkshire Forward has been partly filled by the PatLib Centres at the Leeds, Sheffield and Hull Central Libraries which have been re-branded as Business and IP Centres in association with the British Library and funded by Arts Council England.  According to the British Library website:

"The British Library Business & IP Centre National Network provides entrepreneurs and SMEs across the UK with free access to databases, market research, journals, directories and reports worth thousands of pounds. There is a programme of free and low-cost events and workshops on a range of topics including business planning, marketing and intellectual property."

The British Library also hosts Linkedin and Facebook groups which carry useful articles and discussion.

So what does an entrepreneur, inventor, business angel do now if he or she wants to access the sort of cost-effective integrated business advice that Prof Hargreaves recommended?  Well here are my tips.

Tip #1.   Find out as much as you can about IP generally before you seek professional advice.
A good starting point is the IPO section of the Government website.  Particularly useful pages are:

• What intellectual property is
• Protect your intellectual property
• Patenting your invention
• How copyright protects your work and
• Design right.

I also recommend the IPO's IP Basics animations such as What is Intellectual Property? which you will find on the IPO's YouTube channel. If you want to learn more about protecting your intellectual assets outside the UK, a good place to start is the Protecting your UK intellectual property abroad page on the IPO website. The IP BASICS: Should I protect my Intellectual Property overseas? video is also worth watching. You will also find useful information on the European Patent Officee, EU Intellectual Property Office and World Intellectual Property Office websites. Each of those sites will introduce you to other resources. You can get a very thorough grounding in IP law from those and other materials.

Tip #2   Attend a Workshop or Seminar

Each of the Business and IP Centres in Yorkshire holds workshops and other events on IP law. I give one at Barnsley Business and Innovation Centre ("BBIC") in conjunction with BarnsleyBiz Surgeries on the second Tuesday of every month between 17:45 and 18:30. The IPO also holds regular events which you will find on the IPO events calendar.

Tip #3  Attend an IP Clinic

These are free consultations with a patent or trade mark attorney or a special st lawyer that would otherwise cost you quite a lot of money. The Chartered Institute of Patent Attorneys holds clinics once a month at Leeds and Sheffield Central Libraries (see the IP Clinics page of the CIPA website) and I hold one on the second Tuesday of every month at Barnsley BIC between 16:00 and 17:45. If you want a 30 minute consultation with me call George on 020 7404 5252.

Tip #4  Get a Search before consulting an IP Professional

You can only get or keep a patent if your invention is new and not obvious having regard to what what is already known. You can find out what has been invented before and what was known by searching the prior art. That is essentially a search of the register of British, European and other patents.  Similarly, you can only register a trade mark or keep a trade mark registration if the same or similar mark has not been registered for the same or similar goods or services. You can find out whether such a mark has been registered by searching the British, EU and WIPO registers. Finally, you may lose any design registration that you may obtain if the similar designs have been registered before. Leeds and Sheffield Business and IP Centres will carry out searches for you for a very reasonable fee. Call 0113 378 6010 for further details.

Tip #5  Consult a Regulated Professional

There are a lot of people who offer advice and assistance on IP but not all are reliable. In particular, there are businesses or individuals who promise the earth, charge a hefty fee and then supply information which is either wrong or available from other service providers free of charge or for a much lower fee or fail to deliver altogether. You should be on the lookout for them and avoid them like the plague. 

There are, however, other advisers who follow a code of conduct enforced by a professional regulator which requires them among other things to insure against the consequences of negligent advice. These are patent and trade mark attorneys and specialist counsel and solicitors. 

Although there is considerable overlap in the work that members of each of those professions carry out, there are differences in training and experience that equip members of one profession to perform a particular task better than any of the others. For instance, patent attorneys have natural science, engineering or technology qualifications as well as legal ones and are trained to draft patent specifications in a way that  is clear enough and complete enough for the invention to be performed by a person skilled in the art and claims that afford the widest possible monopoly while remaining valid. Similarly, barristers are trained as advocates which equips them to present cases to judges and hearing officers. They are therefore well placed to advise on difficult points of law and draft complex legal instruments which they are often instructed to do by members of the other professions. All the judges of the Patents Court, Intellectual Property Enterprise Court and the rest of the Chancery Division practised at the Bar before their elevation to the bench (see Jane Lambert IP Services from Barristers 6 April 2013).

Patent attorneys are members of the Chartered Institute of Patent Attorneys whose website has a searchable databases of patent agencies. Trade maek attorneys belong to the Chartered Institute of Trade Mark Attorneys who also have a Find an Expert feature. Most barristers who specalize in IP law belong to the IP Bar Association  Many but by no means all law firms that specialize in IP are members of the Intellectual Property Lawyers Association.

Tip #6  Ensure Adequate Funding for Litigation

Enforcing or defending IP rights can be expensive even in IPEC and the IPO. Because of the length and uncertainties of litigation very few cases are undertaken on a "no win no fee" retainer, particularly as success fees and after-the-event insurance premiums are no longer recoverable under the Legal Aid, Sentencing and Punishment of Offenders Act 2012 (see Jane Lambert Intellectual Property Litigation - The Funding Options 10 April 2013 NIPC Law), It is therefore prudent for businesses to consider before-the-event insurance when they apply for patents, trade marks or registered designs or when they create a copyrught work or original design. For information on IP insurance, see IP Insurance, CIPA's paper 1 May 2016.

For fiurther information, call me during office hours on 020 7404 5252 or send me a message through my contact form.

Bradford Rising Stars: a local opportunity to implement Hargreaves

One of the recommendations of Prof. Ian Hargreaves in his review of intellectual property and growth published earlier in the year was for the IPO to draw up plans to improve accessibility of the IP system to smaller companies who will benefit from it. He added that this should involve access to lower cost providers of integrated IP legal and commercial advice.

I discussed this recommendation at some length in my article "Does Hargreaves say anything new?" (24 June 2011):

"The review recognized that SME want is an integrated source of advice which combines commercial and technical insight with legal expertise, helping them to commercialize, as well as protect, their IP. It also found that such advice is not always available from patent agents. That was just the sort of service that many – though, alas, by no means all - Business Link advisers used to provide. Hargreaves called upon the IPO to “draw up plans to improve accessibility of the IP system to smaller companies who will benefit from it”. The review added that “this should involve access to lower cost providers of integrated IP legal and commercial advice.” Again, these are worthy aspirations but there is a limit to what the IPO can do. The 13 PATlib libraries may be a better platform. Many such as Leeds, Sheffield and, of course, the British Library run IP clinics and inventors’ clubs. They also hold considerable collections of marketing and general business as well as legal materials which they make available to the general public. Unfortunately, our second city no longer offers the services of a specialist patent librarian and Liverpool library is closed for refurbishment."

The day before the IPO announced a package of measures to implement that recommendation I was at Bradford Chamber of Commerce meeting the Rising Stars team. The Rising Stars programme is a project funded by the European Regional Development Fund and Bradford City Council and administered by the Chamber to "help a select group of Bradford businesses to push ahead and grow." This help includes "a free, dedicated and personal advice service to entrepreneurs and established businesses within the Bradford area."

I was invited to meet the team because several had clients with intellectual property issues who had difficulty in obtaining affordable advice from patent and trade mark agents and reliable advice from anybody else. As Professor Hargreaves recognized at paragraph 9.9 of his review

"At present, long established IP legal advisors (for example, patent attorneys) seldom offer expertise on the commercial aspects of IP. Conversely, IP advisors with a business focus lack the detailed legal knowledge to assist SMEs in obtaining IPRs."

I had a very good discussion with the advisers. After explaining the difference between intellectual assets and intellectual property and the different types of legal protection that were available for brands, designs, technology and creative works, I outlined the services that were available for artists, designers and inventors and entrepreneurs and investors. I told them that these services were listed nationally and regionally on my Inventors Club website and updated regularly in my Inventors Club blog. I mentioned some of the services that I offer nationally through my NIPC Clinics and locally through my Third Thursday clinics at Gumption.

In Q & A I was asked precisely what I did and how my services differed from "pay-tent" attorneys and solicitors. After explaining as patiently as I could that the word for the monopoly of a new invention is pronounced "pat - tent" ("pat" as in grass at least as pronounced locally) and that "pay-tent" refers to the type of leather used for court shoes, I described the services offered by each of those professions. I explained how the relationship between patent and trade mark attorneys, solicitors and the patent bar was analogous to the relationship between general practitioners and consultant physicians and surgeons in medicine.

In answer to a question from Peter Briggs, who was determined to put this airy, fairy, uppity lady barrister in her place, as to when exactly he should send a client to me, I replied that I was a member of a referral profession and that in an ideal world clients should come to me through patent agents and solicitors. However, I added, I had noted that this was far from a perfect world and that by the time clients came to me it was often too late to help them. Sometimes they had spent all their money on applications for patents that they could not afford to renew let alone enforce or they had been to solicitors or other professional advisers on a learning curve who had tried to issue patent infringement claims in the local district registry or county court. That was why I had set up the clinics and inventors clubs to make sure that as many members of our local business community as possible get as much advice as possible at as early a stage as possible.

Mr. Briggs asked whether filling in the on-line form would oblige inventors to disclose their inventions. "No it wouldn't" I assured him. "It would simply enable me to find the best sort of help for them." I had a panel of experts with whom I had worked in the past and whom I could trust to do a good job at a reasonable rate:

• patent agents such as Michael Harrison, Alex Tomkinson and Tom Hutchinson;
• trade mark agents like Carin Burchill, Paul Dyson and Phil Cooper;
• US IP attorneys like Toni Tease and Doug Isenberg;
• specialist solicitors like Kate Reid and James Love;
• product design consultants like Richard Hall, John Biddleston and Alex Smith;
• brand consultants like Nick Burton

and all sorts of other specialists whose expertise runs from China to ceramics. "Well won't those folk charge" asked Mr. Briggs. "Only after they have identified the problem, decided whether they can help the client and quoted for the job" I replied.

The time at Bradford passed very quickly and, before we knew it, it was up. In an email to Carolyn Coleman who chaired the meeting I mentioned some of the other resources that I have not mentioned in this post such as my presentations on Slideshare, articles on J D Supra, blog on IP developments in the Gulf and, of course, my website.

Should anyone want to discuss this post or IP rights in general he or she should call me on 0113 320 3232 or use my contact form.