Enforcing Your Intellectual Property Rights without Going Bust

How to Enforce your Intellectual Property Rights without Going Bust from Jane Lambert

In my very first post, "Why IP Yorkshire", 10 Sept 2008 I noted that although Team GB may have done very well at the Beijing Olympics our inventors and entrepreneurs are nothing like as successful in the European patent application stakes. We trailed a poor 7th in the number of European patent applications lagging not only behind the economic super-powers, the USA and Japan, but also France and Germany with similar populations and GDP and even trail the Netherlands and Switzerland with a third and an eighth of our population respectively. 

The reason of our lacklustre performance was that start-ups and other small businesses, that are the mainspring of innovation in the UK as in most of our competitors, make much less use of the intellectual property system than their equivalents in other countries and that was largely because the cost of obtaining and enforcing intellectual property protection in the UK was considerably higher than in our competitors.

The costs of enforcing intellectual property rights was identified as a problem by both Gowers (Gowers Review of Intellectual Property, TSO 2006) and Hargreaves (Digital Opportunity A Review of Intellectual Property and Growth) to which Sir Richard Arnold and Sir Rupert Jackson have proposed solutions (see Intellectual Property Court Users’Committee Working Group’s Final Report on Proposals for Reform of the Patents County Court 31 July 2009 and Review of Civil Litigation Costs: Final Report Dec 2009).

Arnold proposed case management reforms that limit the issues that can be heard, the evidence that can be led, the duration of trials and this the recoverable costs of the litigation which I discussed at some length in New Patents County Court Rules 31 Oct 2010. Jackson proposed a new small claims track for the Patents County Court which I discussed in a series of articles which are listed at Patents County Court - the New Small Claims Track Rules 20 Sept 2012. The Patents County Court was abolished with effect from the 30 Sept 2013 and replaced with a new Intellectual Property Enterprise Court ("IPEC") which is part of the Chancery Division on 1 Oct 2013.

On the 15 Jan 2014 I gave a talk on these initiatives to reduce the cost of dispute resolution to Leeds Inventors Group. I mentioned the Intellectual Property Office opinions service which we discussed in Leeds as soon as the service was launched (see "IP Centre of Excellence: Patent Office Opinions"  26 Nov 2006) as well as mutitrack and small claims litigation in IPEC. in his report Hargreaves had urged HM government to press for a single European patent known as a "unified patent" to be granted for all the EU member states except Spain and Italy as though they were a single country. That has now been agreed and disputes under the unified patent will be referred to a special court for all the contracting countries. Under that agreement that court will be based in Paris and will have branches in London and Germany. I summarized the arrangements that have been made so far in my talk.

Should anybody wish to discuss this talk or indeed any matter relating to IP he or she should call me during normal office hours on 01484 599090 or message me through my contact form. You can also tweet me. write on my wall or contact me through G+, Linkedin or Xing.

Enforcing a Confidentialty Agreement in the Small Claims Track

Although business advisers, patent attorneys, solicitors and are very eager to tell you about confidentiality or non-disclosure agreements ("NDA") and, of course, to charge you for drawing one up, they are much less likely to tell you what happens if your confidante who could be your collaborator, investor, licensee or even your employee breaches the agreement.  The courts will grant injunctions to enforce obligations of confidence but these can take time to get and cost a lot of money.  The fact is that unless you can enforce it a confidentiality agreement it is not worth the paper it is typed on and the rogues are aware of that.

Until the new Patents County Court rules came into force on 1 Oct 2010 clients were advised that their own costs of applying to the Chancery interim applications judge for an interim injunction would be £15,000, that it could take months to obtain if the other side opposed the application, that they might not get their order and that they should b prepared to pay the other side's costs which could be at least as great as their own if they did not.   For most start-ups and small and medium enterprises this was intolerable and word got around that NDA and indeed intellectual property generally was about as useful as a chocolate fire guard.

I tried to solve the problem by inserting an arbitration clause into my non-disclosure agreements and by setting up an arbitration service with rules that enabled the arbitrator to grant interim injunctions that could be enforced with periodic payments like the continental astreinte.   Rule 2 (e) provided that unless the Parties agree expressly to the contrary:

"The Tribunal may compel compliance with any orders it may make under s,48 (5) of the Act by awarding periodic payments from a Party in breach to an injured Party from the date of such order until the date of compliance."

Do you know what? Not a single person made use of that service.   I don't know why.   Probably, it was because small business people rely on their solicitors and litigation solicitors, who are incredibly busy people if they are any good, tend to think in the short term and do what they did last time.

Whatever!  It became much quicker and cheaper to enforce intellectual property rights after the 1 Oct 2010 when recoverable costs were capped at £50,000, applications had to be made in writing and trials were fixed for one or at most two days.   

However, even £50,000 is a fair old sum for a start-up which is why the government launched a small claims track for IP in the Patents County Court.   I wrote about it in "How Small Businesses in Yorkshire can protect their Intellectual Property" on 14 Oct 2012 and gave a presentation on the new jurisdiction to the Sheffield inventors club on 1 Oct 2012.   The new small claims track does not cover everything - in particular, it does not cover patents and registered designs - but it does cover breach of confidence cases.   You can't get an interim injunction from the court but you can get a final one which has the advantage that you do not have to give a cross-undertaking as to damages.   And for the time being it can be quite quick with district judges giving automatic case management directions immediately after the exchange of statements of case for final hearings two months afterwards.   Costs are limited to just a few hundred pounds and then only if you need a solicitor.

I spoke about the new small claims track to the Leeds Inventors Group on the 13 Feb 2013.  There had been snow earlier that evening and the traffic was terrible which meant that I arrived very late but there was a young lady in the audience from Walker Morris called  Emily Baeza-Chavez who later contacted me to ask about the fixed fee service that my chambers run for the small claims track in Lancashire.   There we have teamed up with patent agents HutchinsonIP and JWK Solicitors to offer an all in advocacy and litigation service for £1,2000 + VAT and we are open to similar deals with solicitors and patent agents on this side of the Pennines (see "The Patents County Court Small Claims Track" IP North West 6 March 2013).

I got a chance to revisit the subject in Sheffield on 4 March 2013. The advertised speaker dropped out at the last moment because he was afflicted with one of the bugs that are doing the rounds so I stepped in with my "All you need to know about confidentiality" presentation which I had previously given to the Leeds and Manchester clubs.   When it came to enforcement I talked about the new small claims track and how it meant that an inventor could enforce an obligation of confidence or indeed most other intellectual property rights cheaply and with minimal risk.

The new small claims track court really does shift the balance of power towards the small business and private inventor and it really would be worth your while to find out more about it.   You can now contact me on 020 7404 5252 as well as on 0113 320 3232 or you can send me a message through Facebook, Linkedin, Xing or twitter or indeed my contact form.

FabLab Airedale: Introductory Offer and Visit

FabLab Airedale is open at last. We had been looking forward to it for months just as children look forward to Father Christmas (see "A FabLab for Keighley" 9 Nov 2011 and "FabLabs for Yorkshire: Progress Report" 16 Jan 2012).  Now I have actually seen it.   I visited it on 20 April 2012 and was given a grand tour by the manager, James Kitson (see my report "Keighley FabLab opens for Business" in my Inventors Club blog of 1 May 2012).

I also met Jane Bilous, the Masterplan Delivery Officer of the Airedale Partnership, while I was there and Jane, James and I discussed a number of ways in which we could co-operate.   The first of these will be a visit by the Leeds Inventors Group on 16 May 2012 between 18:00 and 19:45 (see "16th May Leeds Inventors Group -visit to Fablab Airedale" in the Leeds Inventors Group blog of 30 April 2012).   As there will not be a meeting of the Sheffield Inventors Group in May because the first Monday falls on a public holiday, inventors from Sheffield are also invited.   It will be the first opportunity for members of the two Yorkshire clubs to meet.  Places however are limited so you must call Ged or Stef of Leeds Central Library on 0113 247 8266 to book your place.

Other projects that we discussed were an introductory seminar on IP like the ones we gave to FabLab Manchester on 12 Oct 2011 (see "FabLab Manchester: Introduction to Intellectual Property" IP North West 8 Nov 2012) and Freerange Artists in Carlisle on 8 March 2012 (see "Introducing IP to Freerange Artists in Carlisle" IP North West 10 March 2012), a funding workshop with business angels, bankers, community development finance institutions and venture capitalists and maybe an inventors' academy in conjunction with the Manchester FabLab, Carlisle's Freerange and the Sheffield Refab Space.

For a limited period, businesses in the metropolitan district of Bradford can receive up to one day's free machinery time and technical support from the FabLab staff which could include rapid prototyping, 3D printing or other consultancy. Since commercial design agencies charge a lot of money for those services, this could be quite a saving.   Call 01535 606703 or email info@fablabairedale.org  to register your interest.

If anybody has any questions or comments about this post or FabLabs generally, he or she can contact me through my contact form,, Facebook, Linkedin, Xing or twitter or call me on 0113 320 3232 .