5 April 2014

Holding your Own - How to stop others from ripping you off if you are a Private Inventor

Sheffield Central Library, Monday 7 April 2014 18:00 - 19:45

On Monday 7 April 2014 at 18:00 I shall deliver a talk to Sheffield Inventors Group at the Business and IP Centre of Sheffield Central Library on how to stop others from ripping you off if you are a private inventor.

Until very recently the blunt answer to the question "How can I stop others from ripping me off?" was "You can't". That was because the cost of proceedings in the Patents Court or even the Patents County Court was prohibitive. Litigation in common law countries such as England and the United States has always been more expensive than in civil law countries like France, Germany and the Netherlands.  Moreover, in England the losing party usually has to pay the winning party's costs whereas in the USA it does not.  Moreover, lawyers in the USA have always been allowed to accept instructions upon the promise of a share in any damages that may be awarded whereas until recently English lawyers were not. All of those factors combined to make England one of the most expensive and hazardous jurisdictions for individuals or small or medium enterprises ("SME") to enforce their intellectual property rights ("IPR") in the world,

Up to 2002 that did not matter so much because legal aid was available for IP claims as it was for most civil proceedings. In April of that year paragraph 1 (h) of Schedule 2 to the Access to Justice Act 1999 came into effect which abolished public funding for matters arising out of the carrying on of a business.  Word quickly spread that enforcing a patent or other IPR was too expensive and too risky for all but wealthy individuals and big companies and organizations.  Consequently, fewer and fewer individuals and SME bothered with patent applications with the result that the country of Newton and Faraday now trails not only Germany and France but even the Netherlands with one third of our population and Switzerland with one eighth in the number of applications to the European Patent Office (see "Why IP Yorkshire" 10 Sep 2008).

Since I wrote that article there have been a number of changes that make it cheaper and easier for individuals and SME to protect themselves. First, the costs that a successful party can recover from the other side  in the Patents County Court were capped at £50,000 on 1 Oct 2010 (see "New Patents County Court Rules" 31 Oct 2010 NIPC Law). Secondly, a new small claims track in the Patents County Court was launched on 1 Oct 2012 for claims up to £10,000 (see "Patents County Court - The New Small Claims Track Rules" 20 Sept 2012 NIPC Law). I gave a talk on this new jurisdiction to the Sheffield Inventors Group in "How Small Businesses in Yorkshire can protect their Intellectual Property" 14 Oct 2012. The Patents County Court was abolished on 30 Sept 2013 but it was replaced by the Intellectual Property Enterprise Court ("IPEC") which operates in exactly the same way and with the same rules as its predecessor. Thirdly, new insurance and funding options are now available which reduce the cost and risk of litigation (see "Intellectual Property Litigation - the Funding Options" 10 April 2013 NIPC Law). Finally, HM Government has entered an agreement with most of its EU partners to set up a Unified Patents Court which will hear disputes over unitary patents (European patents treating the territories of the contracting states as though they were one country) (see "Unified Patent Court Comes One Step Closer" 17 Aug 2013 NIPC Law).

In my talk on Monday I shall discuss:

  • the Institutions: the Intellectual Property Office, European Patent Office, Chancery Division, Patents Court and IPEC;
  • the Legislation: the Patents Act 1977 and other IP statutes, the European Patent Convention, Part 63;
  • Practice: Patents Court, Chancery and IPEC Guides;
  • Claims for breach of confidence: How to bring proceedings in IPEC's small claims track;
  • Entitlement Proceedings
  • Infringement Proceedings in IPEC and the Patents Court
  • Threats Actions
  • Revocation Actions
  • Insurance
  • Unified Patent Court.
I shall explain each of these concepts and steps in everyday non-technical language with links to other materials and I shall later post the slides to this website. 

I do hope to see as many readers as possible on Monday but if you can't make it and want to discuss any of these points don't be afraid to give me a ring on 020 7404 5252 during office hours or send me a message through my contact formtweet me, write on my wall or get in touch through G+, Linkedin or Xing.