Bringing or Defending a Small IP Claim in Leeds

Author Rich Tea Licence CC  BY-SA 2.0 DEED  Source Wikimedia Commons

 

Jane Lambert

Nearly 10 years ago I wrote How to Bring or Defend a Small Intellectual Property Claim in the Intellectual Property Enterprise Court in NIPC London. I wrote it with litigants in person in mind though I thought it would also be useful to lawyers who do not specialize in intellectual property and patent and trade mark attorneys who do not litigate regularly in the civil courts. It was intended to supplement A Guide to Bringing and Defending a Small Claim by the Civil Justice Council and A Guide to the Patents County Court Small Claims Track which has been replaced by the Guide to the Intellectual Property Enterprise Court Small Claims Track ("the Guide").

Much of that article remains true though there have been a number of developments since then.  The UK has left the European Union which means that IPEC is no longer a Community designs or EU trade mark court. Disputes over unregistered Community designs or EU trade marks that have arisen since 31 Dec 2020 are no longer within the IPEC Small Claims Track's jurisdiction.  The Leeds District Registry and the District Registries of several other major cities have been integrated with the courts in the Rolls Building in London to establish the Business and Property Courts (see my article Launch of a Judicial Super Highway? 12 July 2017 IP Northwest).  As a consequence of that integration it has been possible to bring certain types of small intellectual property claims in Leeds for most of the last 5 years (see Jane Lambert Small Claims Track IP Litigation in Leeds 10 July 2019).  According to Annex A of the Guide small IP claims in Leeds come before District Judge Prest KC.  Since 3 July 2023 most small IP claims litigation has been conducted in the North because Manchester Civil Justice Centre is now the new home of the IPEC Small Claims Track (see Jane Lambert IPEC Small Claims to be managed in Manchester 9 June 2023 IP Northwest).

The sections of How to Bring or Defend a Small Intellectual Property Claim in the Intellectual Property Enterprise Court that continue to apply are those headed "Do you need a Lawyer?" and "Have you got a Case?"  In addition to the pro bono services listed in section 6 of the Guide, I would add IP Pro Bono which is now part of Lawworks, Advocate which was formerly known as "Bar Pro Bono" and my own "Initial Advice and Signposting" clinic which I run in conjunction with Barnsley Business Village.  

It is still necessary for claimants to write a "letter before claim" unless there are very good reasons not to do so but the practice direction referred to in the section headed "Pre-Action Correspondence" has been revoked and replaced with the Practice Direction - Pre-Action Conduct and Protocols (see my article What to do about the new Practice Direction - Pre-Action Conduct 6 May 2015 NIPC Law).  Guidance on the steps to be taken by parties to intellectual property disputes is no to be found in para 6 of the Practice Direction.

The first paragraph of the section headed "Starting the Claim" has to be modified since the Manchester Civil Justice Centre and not the Rolls Building is now the home of the IPEC Small Claims Track and a small IP claim can now be issued out of the Business and Property Courts in Birmingham, Bristol, Cardiff, Liverpool, Manchester and Newcastle as well as Leeds.   If you want a case study of an IP case in one of those other cities, see Small Claims Track IP Litigation in Bristol 24 Feb 2022 NIPC Severn-Hafren.

I would repeat everything else I said in my previous article.  Anyone who wishes to discuss this topic should call me during normal business hours on 020 7404 5252 or send me a message through my contact form.

How can Leeds regain its Lustre?

Leeds Town Hall

Source Wikipedia

"Has Leeds lost its Lustre" asks The Lawyer today with the red rose above the white. Though Leeds remains an important legal centre the answer would appear to be "yes". As Catrin Griffiths wrote in "Outflanked in this War of the Roses" 21 July 2014 The Lawyer:

"Firms don’t readily offer up turnover figures split out by region, but headcount figures can tell you a lot of what’s been going on behind the scenes. The Lawyer’s data shows that the Leeds Big Six – Addleshaw Goddard, DLA Piper, Eversheds, Pinsent Masons, Squire Sanders Patton Boggs (legacy Hammonds) and Walker Morris – have all markedly reduced their headcounts in the past five years. DLA Piper refuses to give official headcount figures, but we understand it has also seen a drop of around 10 per cent in staff numbers. The biggest resizing has been at Eversheds, which has reduced its total staff numbers by a full third."

Asking "Whatever happened to Leeds" in "Out-of-London is the new London" 16 June 2014  The Lawyer Ms Griffiths noted

"Fifteen years ago it was a legal powerhouse that helped spawn DLA Piper, Eversheds, Pinsent Masons, Hammonds (now Squire Sanders) and Addleshaw Goddard. But as Manchester’s star has risen, so Leeds’ has fallen ...."

This article considers why that decline has occurred and what if anything can be done about it.

The law firms that Ms Griffiths mentioned grew quickly in the 1990s in response to a massive increase in works as a result of demutualization of building societies and a surge in consumer credit. The banking crisis put paid to both with the result that Leeds's GVA contracted sharply. According to The Lawyer it fell by nearly 6% between 2008 and 2009 while Manchester's actually grew slightly reflecting its regeneration and encouragement of new industries. The result, as Ms Griffiths concluded, is that:

"The Manchester brand has the advantage of a regenerated city, international airport, leading higher education institutions, future high-speed rail, a creative culture hub, BBC Salford (which for anyone living south of Birmingham means Manchester) and a couple of minor football teams."

In short, Manchester is doing better because it has a bigger population and a more diverse economy.

Manchester could do even better (and Leeds very much better) if their respective economic hinterlands were bigger. In "Creating a Northern Counterweight to London is good for the Nation" 5 April 2014 IP North West I referred to World Bank research that doubling a city's size increases its productivity by 3 to 8% and Evan Davis's contention that "if the population of Manchester could be quadrupled it would be between 6 and 16% richer than it is now."

Source Wikipedia

In fact, Manchester and Leeds and also Sheffield and Liverpool are located in an almost continuous built up area that stretches from Wetherby to the Wirral much in the way that Greater Los Angeles stretches from Ventura to San Bernardino in the East and Mission Viejo in the South. As in the North of England the communities of Southern California are separated by large areas of open countryside many of which are state or regional parks. Just as the Pennines separate the Leeds and Sheffield city regions from Greater Manchester and Merseyside the Santa Monica and San Gabriel mountains separate the towns and cities of the Pacific Coast from those in the San Fernando Valley.

The big difference between Southern California and the North of England is that the former thinks of itself as a cohesive and integrated whole whereas the latter does not. The sense of identity is not the result of local government unification - there are four counties and many municipalities in Greater Los Angeles - or massive infrastructure investment - there is nothing like the HS3 that the Chancellor of the Excehequer proposed a few weeks ago - indeed public transport in Southern California was appalling until a few years ago. It is entirely cultural and the thing that stops those of us in South and West Yorkshire, Greater Manchester and Merseyside from acknowledging that we already live and work in a conurbation of 7 million people and exploiting the economic opportunities of such a market for every type of goods and services (including in particular legal services) is our mindset.

This myopia was brought home to me at the Leeds economic conference at the beginning of this month (see "Power. Performance. Potential. Leeds Economic Conference" 5 July 2014 IP North West). The conference was opened by the Deputy Prime Minister who on this occasion spoke a lot of sense:

"It’s time for us to put aside outdated local rivalries. As we’ve seen with the Local Enterprise Partnerships in Leeds, Sheffield and Manchester, united we’re stronger."

He made the point that "Northern cities like Leeds aren't just competing with other locations in the south, east or west of England" but also have to rank against global cities like Frankfurt, Lyon, Bangalore and Chengdu for incoming investment. Clegg argued that "Leeds, along with Sheffield and Manchester, can and should form part of a northern hub, driving economic investment and growth across the north of England."

"Together, they can offer investors access to flexible, highly-skilled work forces, world-class universities with cutting-edge research expertise, a strong industrial base and clusters of innovative businesses in high-growth sectors such as precision manufacturing, creative and professional services, healthcare, retail and green industries."

Unfortunately, Clegg was followed by the leaders of Leeds and Wakefield city councils and the Chief Executive of York who really should have known better indulging in what can only be described as Manchester bashing:

"I wasn't going to mention Manchester" said one, "They're only better at self-promotion" said another. "We've hot a bigger economy £55 billion as opposed to £51 million" chimed a third to the general acclamation of the crowd."

I had come to that conference expecting to be buoyed up. After all we were there to celebrate the start of the Tour de France, one of the world's biggest sporting events, from the United Kingdom. I left the Carriageworks Theatre feeling thoroughly downbeat. So long as that sort of thinking prevails, Leeds, its business community and its professional services sector including its law firms will continue to wither on the vine. If on the other hand Leeds and in particular its professional services sector acknowledged that they were already part of a massive economic region and helped to develop it they could recover some of the dynamism that they displayed in the 1990s.

One problem with developing a sense of identity for the region is that it does not have a name. Again, perhaps, we can look to LA for inspiration. An alternative name for Greater Los Angeles is "The Southland". How about "Northland" for South and West Yorkshire, Greater Manchester and Merseyside?

Integreatplus's Learning Lunch: Refab Space and FabLab

There was definitely a touch of Spring in the air today as I followed the Don to Sheffield. According to my car's thermometer the temperature hit 18 degrees Celsius at one point which is almost unheard of for February in Yorkshire.

The early taste of Spring was a good backdrop for Integreat Plus's Learning Lunch which was the reason for my journey. The topic was "What are these Fablabs". The speakers were James Wallbank, chief executive officer of Access Space, and the Manufacturing Institute's Eddie Kirkby.  They had a good audience which included academics like Prof. Paul Atkinson of Sheffield Hallam University, product designers like Dan Taylor of Click Industrial Design, architects from SKINN (Shalesmoor, Kelham Island and Neepsend Network) not to mention a respectable delegation from the local authority.

James's presentation was particularly timely as Access Space had been listed as number 2 in NESTA and The Guardian's list of 50 New Radicals (see Geoff Mulgan's article in The Guardian on 18 Feb 2012). James spoke about the work of Access Space which brings together learners from all kinds of backgrounds and gives them hands on experience of computing through working on recycled hardware and open source software. The project has inspired similar centres around the world and there are now 100 across Europe and Latin America.   Access Space's latest project is the Refab-Space which will be a fabrication laboratory for Sheffield.

Manchester, of course, already has a FabLab and Eddie Kirkby is one of its prime movers.  I first met him at the breakfast meeting in Daresbury and was bowled over by the project (see "FabLab Manchester" in my IP North-West blog of 18 July 2011).  The two things that appeal to me about FabLab are that it places an important new technology within reach of ordinary people and its technologies bring manufacturing back to Britain.  Eddie gave some heartening news about the success of FabLab. It had attracted twice as many users as it had expected and it was paying its way commercially. More FabLabs were on the way.   Keighley in Spring 2012.  Northern Ireland some time later this year.  West of Scotland shortly after that and another centre in the North West.

The commercial success of FabLab prompted me to ask a question that had been discussed in a number of forums as to whether FabLab was taking bread out of product design and development consultants' mouths.   "Too bad if it is" was the general view, "They have to develop new business models or take the consequences."  Eddie pointed out it was too late to do anything about it because open source design software was already available.  Professor Atkinson recalled that graphic designers made similar objections to desk top publishing 20 years ago but it did not hurt them in the end as they simply changed their business models.  The product designers in the audience agreed.  The ghost of Ned Ludd was well and truly laid to rest.

For those who missed the presentations, there will be an opportunity to catch James Wallbank at Sheffield Inventors Group on 5 March 2012 at 18:00.  He will be the guest speaker at the Group's next meeting at Sheffield Central Library, Surrey Street, S1 1XZ.  He will talk about how the Refab Space can help inventors.  The talk is free but let Lynne Hichcliffe know that you are coming because it is likely to be popular.  The last meeting was packed.  Email her or give her a tinkle on 0114 273 4736.

 If you fancy a jaunt across the Pennines, Haydn Insley of the Manchester FabLab will be guest speaker at Liverpool Inventors Club next Monday (see "Liverpool Inventors Club Re-launch - Fabulous FabLab" Inventors Club 28 Jan 2012).  The meeting will take place on Monday, 27 Feb 2012 at 18:00 at the offices of QualitySolicitors Jackson & Canter at 88 Church Street, Liverpool L1 3AY.

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

A FabLab for Keighley?

"FabLab" is an abbreviation for fabrication laboratory. It is described in Wikipedia as "a small-scale workshop offering (personal) digital fabrication." It is typically equipped with a range of computer controlled tools that cover several different length scales and various materials, with the aim of making "almost anything". There are FabLabs across the world from Southern Ghana to Northern Norway including one in Manchester that I mentioned in my IP North West blog yesterday ("FabLab Manchester: Introduction to Intellectual Property" IP North West 8 Nov 2011).

Jane Keats gave a presentation that focused on FabLabs entitled "Factories of the Future" to Leeds and Sheffield inventors clubs on 21 Sept and 3 Oct 2011 (see "Jane Keats on 'Factories of the Future'" in my Inventors Club blog of 7 Nov 2011 and "LIG 21st Sept 11 Fablabs - Factories of the Future? Jane Keats" in the Leeds inventors Group blog). Also, the Keighley News reported that a mobile FabLab would be set up in Keighley on 8 Sept 2011 to coincide with the British Science Festival (see "Chance to go and explore Universe", Keighley News 8 Sept 2011).

In her talk Jane mentioned the possibility of a permanent FabLab in Keighley there are at last signs that that may be happening. Much of the equipment for the Keighley site was purchased some months ago and is now being stored at FabLab Manchester. Now the post of CEO for the "Centre for Manufacturing Excellence" at an annual salary of £45,000. The job advertisement notes that:

"The CME will also operate a Fab Lab. A Fab Lab is a digital fabrication laboratory, originating from MIT in the States around ten years ago to “empower individuals rather than institutions to be able to make almost anything”.Fab Labs are a facility for rapid prototyping and assistance with product development. Labs also provide educational and training workshops for schools, colleges and open access to the community.


The CEO on appointment will initially establish a smooth and effectively operating Fab Lab, exploiting different markets to generate revenue to sustain the Fab Lab operations.The Fab Lab will attract commercial clients, sole inventors, schools, colleges and a diverse community."

I drew these developments to the attention of Councillor Mehboob Khan, leader of Kirklees metropolitan borough council and deputy chair of the Leeds City Region local enterprise partnership at the LEP Summit in September. Councillor David Ridgway, another Kirklees Councillor has also offered his support.

The job description for the Keighley FabLab stipulates that the successful candidate will have "an understanding of intellectual property rights". That is to be welcomed though he or she and the interview panel should be aware that additive manufacturing technologies present particularly complex. As a starter, however, they would do worse than begin with the presentations that patent agent Tom Hutchinson, specialist solicitor Michael Sandys and I gave to FabLab Manchester on 12 Oct 2011.

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