Initial Advice and Signposting

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Open Government Licence V1.0

Jane Lambert

On 9 Oct 2017, I wrote about How to Access Specialist IP Services in Yorkshire for Free.  Shortly after that article appeared I received a message through my contact form that began with the words:

"Hi Jane, I noticed some information that you posted on http://ipyorkshire.blogspot.co.uk/.I am looking for some advice and feel like I am trying to find my way in the dark."

I have every sympathy with that person. There is no shortage of intellectual property advisors in Yorkshire or anywhere else. The problem is knowing whom to approach and where to start.

That's where I can help. In my many years of practice at the intellectual property bar (most of which have been spent in the North of England) I have come across most of the patent and trade mark attorneys in Yorkshire as well as many of the solicitors who specialize in IP work. I also know many of the other professionals who can help you such as product development consultants and specialist IP insurance brokers. Having run patent clinics at one time or another in Barnsley, Bradford, Halifax, Huddersfield. Leeds, Rotherham and Sheffield and the Leeds and Sheffield inventors' clubs I have worked closely with the Business and Intellectual Property Centres at Leeds, Sheffield and Hull Central Libraries. They provide all sorts of useful services such as patent searching, lots of useful courses on such matters as basic intellectual property rights and business planning and most if not all of the technical and marketing resources that you are likely to need.I can introduce you to those services and resources.

Here is how I replied to the enquiry I mentioned above:

"The main free resources that exist in Yorkshire are the Business and IP Centres in Leeds, Sheffield and Hull, the IP clinics operated by the Chartered Institute of Patent Attorneys in various parts of the country including Leeds and Sheffield and my clinics at Barnsley Business and Innovation Centre which take place on the second Tuesday of every month between 16:30 and 18:00 (see Supporting Enterprise, Innovation and Creativity in South Yorkshire 7 Sept 2017 IP Yorkshire)."

I also gave some initial advice on IP strategy:

"The best way to identify the IP protection you need is to consider your business plan and ask yourself the following questions:

• What are likely to be my main sources of revenue during the period of the business plan?

• What are the main threats to those revenue streams? These are likely to be commercial like competing products or changing tastes and fashions but there may be legal threats like plagiarism.

• What are the main countermeasures that I can take against those threats? Most of those will be commercial such as reducing prices or developing new product ranges or markets but there may be some legal measures such as a patent for a vital new product or a design registration.

• Remember that there is often a choice of legal countermeasures. A new product, for example, can be kept under wraps for a while and disclosed in confidence only to those who need to see it or you can publish it to the world in exchange for a patent.

• Make sure you can fund an infringement claim or revocation action. That usually requires specialist IP insurance but there are other options."

I then addressed the specific issue and invited the enquirer to make an appointment to attend my next pro bono clinic in Barnsley on 14 Nov if he still had questions.

The first step is to fill in this form:

Now I don't know the answer to every intellectual property question but I can help with a lot of them (see "My Services in Yorkshire"). However, if I can't resolve a problem by myself the chances are that I know someone who can.

I will not charge for this initial advice or signposting though there may be a charge if you want to instruct me for any of my other services. There may also be a charge from any of the other professional service providers to whom I may refer you. If there is, I and all the other service providers will agree the charge or charging basis before starting work.

If you want to discuss this article call me on +44 (0)20 7404 5252 or send me a message through my contact page.

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.

Protecting and exploiting your IP assets in South America with a special focus on Brazil

MERCOSUR is an abbreviation for Mercado Común del Sur or Common Market of the South. It is a free trade zone in South America established by the Treaty of Asunción on 26 March 1991 between the governments of Argentina, Brazil, Paraguay and Uruguay. The founding members have been joined by Venezuela and Bolivia is in the process of acceding to the treaty. Most of the other countries of South America are associate members.

With a combined population of over 295 million in a land area of nearly 15 million square kilometres MERCOSUR is an important trading partner for the UK and other EU member states. To assist small and medium enterprises that wish to do business with the region the European Commission funds the MERCOSUR IPR SME Helpdesk. Like the other SME IPR Helpdesks this is a joint venture between universities and intellectual property offices in Europe and South America.

The Helpdesk offers a range of services including SME clinics and workshops. It is not every day that a clinic or workshop is held in the United Kingdom and it is even less common for one to be held in Yorkshire but on 6 March 2015 at 13:00 there will be a workshop in Hull on Protecting and exploiting your IP assets in South America with a special focus on Brazil. The workshop will take place at the World Trade Centre Hull & Humber, 48 Queen Street, Hull, HU1 1UU. Admission is free but it is necessary to register through Eventbrite in advance. I am grateful to Dr Alison Orr of Inngot Ltd., who will be speaking at the event, for drawing it to my attention.

Dr Orr will be speaking on Using your IP to Take off Internationally: Protecting and Exploiting Your Assets in International Collaborations. She will be followed by Alexandra Fezer of Steinbeis-Europa-Zentrum who will discuss the Helpdesk and its services. Hicham Abghay also of Steinbeis-Europa-Zentrum will speak on Latin American business co-operation. Hiago Busch of Baylos Abogados will give the main talk on Intellectual Property Rights in Latin America with a special focus on Brazil. That will cover 

• General Overview of IP in the MERCOSUR region and Chile 
• IP Protection Rules: Patents, Trademarks, Copyrights 
• IP Exploitation: Licensing, IP Valuation, Start-ups creation 
• IP Enforcement: Counterfeiting, IP Rights registration.

Latin America is an area in which we are particularly interested with the upcoming Olympic Games next year as sports law is one of our specialisms. If you are going to the workshop (or even of you are not) you should find our overview on the law of Brazil helpful,  If you want further information give me a call on 01484 599090 or use my contact form.

Hull Central Library joins PatLib

Hull

Photo Wikipedia

PatLib is a European network of some 320 patent information centres where members of the public can obtain information about patents and other intellectual property rights. There are 15 of those centres in the United Kingdom including three in Yorkshire. I write about the network in PatLib Libraries in the UK 28 Jan 2015 Inventors Club.

Hull Central Library is the latest to join the PatLib network. Its reference library holds an enormous collection of resources for business in print and on-line including an Enterprise Hub where workshops and seminars take place. The full range of services include:

• information on Intellectual Property (IP), copies of Intellectual Property Office (IPO) and European Patent Office (EPO) literature
• enquiry service
• assisted searching by appointment only
• fee based document supply
• referrals to other advice/service providers
• free public access to internet, IP information resources, business and company databases, market research databases
• patent clinics offering free appointments with IP advisrrs by appointment
• workshops and Seminars.

Information on  those services can be obtained from the reference library on (0)14 8222 3344.

These additional services have arrived at an opportune time. In her report for The Business Desk Humber LEP continues to drive growth for region of 30 Jan 2015 Ellie Newton-Syms wrote about the strong recovery of the Humber estuary based largely on investments in the energy industry. With falling oil prices this will be a challenging time even for the renewable sector and businesses will need to be agile to ride the challenge. Having access to the latest technical literature and expert advice has never been more important.

If anyone wants to discuss this article or IP generally call me on 01484 599090 or use my contact form.

Franchising - Hull Franchise Conference

Hull Fair

Author BetacommandBot Licence CC BY-SA 2.5  Source Wikipedia Commons

The Franchise Conference is coming to Hull on 25 Sept 2014. It has already been to Sheffield and you can find out what happened there on this YouTube video. The event is supported by Loven, who are appearing with us at our IP workshop and clinic at the Gravity Fields science festival in Grantham on 26 September 2014.

The keynote speaker will be Eric Ho, founder of the YoYo Group, and topics will include:

• Why businesses fail and how to avoid the traps 
• Does your Brand belong to you? 
• Branding & Marketing your business 
• The Legal Aspects of Franchising
• Optimise the Value of your business
• What does owning a franchise really mean?
• What will the banks be looking for from you?
• Questions & Answer session.

There will also be an exhibition,

The event will take place at 

The Royal Hotel
170 Ferensway
Hull
HU1 3UF.

You can book online by clicking here.

I've been interested in franchising for a long time. One of my first cases when I came to Bridge Street Chambers was on behalf of a franchisee whose business failed because he had been forced to pay over the odds for supplies from his franchiser. Everybody, including his solicitor and my clerk, thought he was going down but I had read a report of  R-161/84 Pronuptia de Paris GmbH v Pronuptia de Paris Irmgard Schillgallis [1986] ECR 353 in the Financial Times and thought I could do something for him. I was right and managed to negotiate quite a favourable settlement for him. Word got around, and I found myself representing two other franchisees of the same operation with similar results.

The law changed immediately after that decision, and now you have to be very careful before taking a franchise. As I said after a visit to "Which Franchise" on 2 Oct 2011 "Taking a franchise may be the best thing you ever do", but it could also be the worst. To help prospective franchisees, I published The franchise agreement: understanding what you are letting yourself in for. on JD Supra on 20 Jan 2012 and "Franchising - what can a franchisee do if things go wrong?".   

If you want to discuss anything in these articles, give me a ring on 020 7404 5252 during office hours or get in touch through my contact form.

Hull Digital

I have already mentioned my visit to Hull for the Screen Yorkshire Roadshow on 3 May (see "Screen Yorkshire Roadshow: £15m for TV, film, games and digital sectors" 4 May 2012). Shortly after that presentation I found my way to the Fudge Restaurant which hosted the May Meetup of the Hull Digital Developer Group.

Before I discuss the evening I should say a word about Hull Digital. It describes itself on the "About" page of its website as Hull and East Yorkshire’s Digital and Technology Community. Apparently it was launched in 2009 and has "an awesome mix of members" who write about:

• Local news, events and happenings in the online world
• Apps and the mobile space
• Clever devices / web-connected devices
• Anything about the web
• Broadband and connectivity
• Home and business computing
• Gadgets
• And many more great topics!.

The group was founded by Jon Moss of theappleofmyi who has apparently organized East Yorkshire's Digital Conference in 2009 with an impressive line up of speakers. Members of Hull Digital keep in touch through a Meetup Group. In addition the developers meetups Hull Digital holds regular "techy breakfasts" at the Fudge.  The next one for anyone who may be interested will be on 25 May 2012.

I heard two good presentations last week.   

• Marc Towler, a freelance PHP developer, whose presentation  "Open Source, the way forward?" was an excellent introduction and overview of open source software; and
• Adam Jennison, who is not actually a black and white cat but a systems administrator, developer and systems integrator for Hull City Council. Adam's talk was entitled "Restful APIs" and discussed how the local authority intends to make some of its data available to local developers.

Both talks were very interesting and though I am not a developer I look forward to returning for more.   

Screen Yorkshire Roadshow: £15m for TV, film, games and digital sectors

On Wednesday I received an email from Hull Digital about a talk to be given by Screen Yorkshire on a new £15m content fund for TV, film, games and digital sectors at the World Trade Centre in Hull. I have since discovered that was a stop on a roadshow by Chief Executive Sally Joynson and Head of Production Hugo Heppell.   It has already visited Bradford and Barnsley and will be at the Workstation Sheffield today.  It will also go to York on 8 May, Huddersfield on the 14 and Leeds on the 31. The talk is free and bookings are made through Eventrbrite.

The World Trade Centre in Hull is not quite the same landmark as its namesake had been in New York.  Not everybody in that city has heard of it and none of those who have had a clear idea of where it was. I drove to the address in Queen Street on the Eventrbrite print out only to be re-directed by the signposts and passers by to a desolate looking office block that would not have looked out of place in the German Democratic Republic known as "Humber Quays." Once I had penetrated the security of Humber Quays I was told by the porter that the WTC had been there but had moved out but neither he nor anyone else in that Lubyanka quite knew where.  Hull city centre is bisected by a dual carriageway so a journey of a few hundred yards from one end of the waterfront to another can take quite a long time - especially in the middle of the afternoon,   Once I had found my way back to Queen Street, I parked on a bit of waste ground that proclaimed itself as a car park only by its ticket machine and proceeded on heels past every building in the street - many of which were unoccupied - until I eventually found the modest façade of the WTC.  As a result of this perambulation I missed Sally's presentation altogether and caught only the last few slides of Hugo's.

However, the event was still well worth attending.   Screen Yorkshire is now the only regional agency to support film, television or interactive media in its area and it has done some very good work. Recent productions include Wuthering Heights, This is England 86 and  Red Riding.  Like everything else, public funding for film and TV has been cut since the change of government.   Save for the regional growth fund and Broadband Delivery UK there has been very little public money for anything.  So when I received Hull Digital's email about this £15 million cornucopia, my ears pricked up

Half of the money comes from Europe - more specifically the European Regional Development Fund channelled through the Department of Communities and Local Government - while the other half will come from unspecified other sources.   The scheme is known as the Yorkshire Content Fund and its object is "to address a gap in the market place by providing targeted co-investment finance into companies based in Yorkshire and the Humber producing creative content projects, and to develop innovative approaches to further investment in the digital and new media sector."   Funds under the scheme will be investments and not grants.   Those investments will be made in projects and companies across the whole range of digital media activity including film and television production, videogames, mobile content and ‘apps’, web-based and digital media products. However projects must be initiated by Yorkshire-based companies or by SMEs attracted into or started up in the county.  Further information on the scheme is available from an "Overview"  and expressions of interest can be registered through the following form.

After the presentation I asked Hugo whether funding under the scheme would take the form of a loan or equity investment. He replied that it would be neither but "quasi-equity".  When I pressed him as to what he meant by "quasi equity" he replied that it would be "a charge over the intellectual property".  As he had told someone else that Screen Yorkshire would retain a stake in a licensable character until it had been bought out, I asked Hugo whether that would mean that Screen Yorkshire would expect an assignment of copyrights or rights over performances to which he replied that it would mean that Screen Yorkshire would take a charge over the revenues.  

It is clear that anybody thinking of taking advantage of this scheme whether as a content producer (film maker, developer or otherwise) or as an investor - will require specialist professional advice.   If anyone wants to discuss it with me further, he or she can contact me through my contact form, Facebook, Linkedin, Xing or twitter or call me on 0113 320 3232 .

Right Funds 4U Hull 13 April 2011

Having a bright idea is one thing. Taking it to market is quite another. In most cases a road to market requires money and unless you are rich you have to seek it from someone else.

For many would-be tycoons, this is an insuperable obstacle largely because they do not understand basic concepts such as the difference between lending and investment or long term assets and working capital.

This is why the Connect Yorkshire seminar "Right Funds 4U" which took place at the Hull Office of Rollits LLP on 13 April 2011 was so useful. Four speakers:

• Paul Forth of NatWest Bank
• Barrie Hensby from Finance Yorkshire
• Steve McEwen from Beer & Partners, and
• Andy Jewitt from Sadofskys

spoke about bank lending, venture capital, angel investment and grant funding respectively. Also present were Susanne Gilbert from YABA and Alan Clegg from Business Link Yorkshire.

Paul Forth started by asserting that banks are still in the business of lending, In his presentation he introduced the audience to the difference between debt and equity. He then outlined the sources of finance such as friends and family, business angels, private equity, the stock market and commercial banks. He talked about leasing and asset finance, factoring and invoice discounting and the enterprise guarantee scheme. He then discussed what financiers are looking for namely management and staff, products and services, markets and marketing and vision and strategy. He also flagged up what financiers are particularly wary of such as forecasts based on published as opposed to primary research and wildly optimistic sales figures. Finally, he told us what makes his bank stand out from the crowd.

For my money, the most interesting speaker was Barrie Hensby, one of the investment

direcctors of Finance Yorkshire. Finance Yorkshire offers a variety of financial products: seed corn, loans and equity. Barrie outlined those services and Finance Yorkshire's portfolio. He then introduced the audience to the concept of venture capital and how to get it. He explained what a suitable

investment would look like and gave us a couple of case studies. You can call Barrie on 01226 323737 or email him on barrieh@finance-yorkshire.com.

Barrie was followed by Steve McEwan of Beer & Partners and he was very entertaining. He made us hold hands for no particular reason and then asked us to raise our hands if we wanted to make loadsamoney. But there was a lot of substance in his talk. He explained what was me ant by angel finance, who business angels are, what they want, where to find them and how to attract them. Finally, Steve introduced Andrew Wilson, the network's regional development for Yorkshire.

The last speaker was Andy Jewitt and he had the most difficult slot partly because it was about grant funding which is in short supply but also because it stood in the way of the refreshments. Strangely enough, Andy omitted to mention J4B which is a great database of grant funding.

Connect Yorkshire, which is a not-for-profit company that helps businesses in Yorkshire and the Humber get the funding that they need, has advertised another Right Funds 4U event in Knaresborough on 21 June 2011. Also worth exploring is The Investment Readiness Bootcamp in Sheffield on 19 and 26 May 2011. According to my mate, Steve Knowles, who teaches the course, its real value lies in the the tips on business plan writing and coaching in pitching to investors.

Finally, those who didn't attend the session can find an introduction to funding, an overview and info on grants, loans, community development finance institutions, angel funding and private equity funding on my Inventors Club website. Anyone who wants to discuss any of these topics further should call me on 0800 862 0055 or through our contact form.