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 form, tweet me, write on my wall or get in touch through G+, Linkedin or Xing.

IP Litigation in Leeds - Past, Present and Future

Source Wikipedia 

Unlike Lancashire, Durham and Northumberland, Yorkshire did not have a palatinate court before the Courts Act 1971. Consequently no intellectual property or other chancery litigation could be conducted in Leeds until after the Durham and Lancaster Palatinates Courts had merged with the Chancery Division . After that merger, Judge Blackett-Ord and his deputies Judges Fitzhugh and O'Donoghue heard chancery business in Leeds as well as Liverpool, Manchester, Newcastle and Preston. Those judges did not spend all their time in the High Court. They also sat in the county courts and even in the Crown Court.

When Judge Blackett-Ord retired in 1987 the government of the day considered the abolition of the chancery jurisdiction in the North altogether.  Chancery practitioners in Leeds and Manchester under the leadership of my deputy head of chambers Peter Keenan and supported by James Allen and John Behrens (who were then the leading and indeed practically the only chancery practitioners in Leeds) produced alternative proposals to which I contributed the economics section. These were accepted by the Lord Chancellor who appointed Sir Richard Scott as Vice-Chancellor of the County Palatine of Lancaster. In that role Sir Richard sat on at least one interim applications (or motions) day and some of the more important trials in Leeds.

There had always been a number of building societies in West Yorkshire. The Building Societies Act 1986  allowed them to demutualize and become banks. As most of the other great cities of the North of England declined with the contraction of manufacturing Leeds found a new role as a financial centre. Those financial institutions and the businesses and professional practices that supported them required sophisticated legal advice on all aspects of commercial law locally. Local demand for commercial legal services catapulted firms like Booth & Co, Dibb Lupton, Hammond Suddards, Hepworth & Chadwick and Simpson Curtis into major international practices.

Several of those firms had excellent intellectual property and technology lawyers such as Richard Sutton and Simon Chalton at Dibb Luton and Dai Davis at Hepworth & Chadwick. They trained many other good IP lawyers in Leeds. While most of their work went to London some of it was remained in Leeds. As the only IP practitioner outside London at that time much of it came to me.

S.61 (1)  and paragraph 1 (i) of Schedule I to of the Senior Courts Act 1981 allocated intellectual property cases to the Chancery Division. S.6 (1) (a) of the Act established the Patents Court as part of the Chancery Division while s.62 (1) and assigned to it

"such proceedings relating to patents as are within the jurisdiction conferred on it by the Patents Act 1977, and such other proceedings relating to patents or other matters as may be prescribed."

S.287 (1) of the Copyright, Designs  and Patents Act 1988 enabled the Minister of Justice to

"designate any county court as a patents county court and confer on it jurisdiction (its “special jurisdiction”) to hear and determine such descriptions of proceedings—
(a) relating to patents or designs, or
(b) ancillary to, or arising out of the same subject matter as, proceedings relating to patents or designs,
as may be specified in the order."

Only the Edmonton and Central London County Courts have ever been designated as patents county courts and there has only been one county court for the whole of England and Wales at any one time.

CPR 63.2 (2) requires patents, registered and registered Community designs, semiconductor topography and plant varieties claims to be brought in the Patents Court and Patents County Courts. All other intellectual property cases must be brought in the Chancery Division (which of course sits in Leeds) and any county court where there is also a chancery district registry (which includes Leeds County Court) pursuant to CPR 63.13. 

Until 30 Sept 2010 the Patents County Court was almost as expensive as the Patents Court. In its report "The Enforcement of Patent Rights" of November 2003, IPAC (the Intellectual Property Advisory Committee) reported at page 50 that the average cost of an action in the Patents County Court was between £150,000 and £250,000. Where the claimant was in Yorkshire there were considerable cost savings in litigating in Leeds.

That advantage disappeared on 1 Oct 2010 with changes to CPR Parts 63 and 44 that expedited the procedure and limited the costs of litigation in the Patents County Court (see my article on the "New Patents County Court Rules" 31 Oct 2010 NIPC law). With the new small claims track for IP cases which was launched on 1 Oct 2012 there was even less incentive to litigate in Leeds (see Jane Lambert "The New Small IP Claims Jurisdiction" 5 March 2012).

However, this may change. The Patents County Court is now very busy with long waits for case management conferences and trial dates.   S.17 (1) of the Crime and Courts Act 2013 establishes a single County Court for England and Wales with national jurisdiction that can sit anywhere pursuant to Schedule 9. Paragraph 4 of the Patents Court Guide already provides that:

"If the parties so desire, for the purpose of saving time or costs, the Patents Court will sit out of London."

Paragraph 1.5 of the Patents County Court Guide contains a corresponding provision. There is no reason why the Minister of Justice should not appoint one or more circuit judges or recorders with experience of patents to hear IP cases in Leeds or indeed anywhere else in England or Wales for that matter. Similarly, there is no reason why a district judge should not be appointed to hear small IP claims in Leeds or other towns and cities.

Although I have now joined 4-5 Gray's Inn Square, I still live in Holmfirth, I can still be consulted at the Huddersfield Media Centre and I can still appear for you at short notice at the Leeds Combined Court Centre. Should you wish to discuss this post please  complete my contact form or by call me on 01484 599090 or 0113 320 3232..

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.

How Small Businesses in Yorkshire can protect their Intellectual Property

The Patents County Court Small Claims Track from Jane Lambert


I have spent most of my career at the intellectual property bar championing small and medium enterprises in the North of England.  Until very recently I would encourage their solicitors and patent and trade mark attorneys to issue proceedings in the Leeds or some other Chancery District Registry unless the claim related to patents, registered or registered Community designs, semiconductor topographies or plant breeders' rights.   The reason I did that is that is that the chancery judges in Leeds have been every bit as good as those in the Royal Courts of Justice - at least since Richard Scott was appointed Vice-Chancellor - and it is nearly always cheaper and more convenient for a business owner and his solicitors in Yorkshire to litigate in Leeds than traipse down to London.

Nearly all these cases were claims for injunctions and in almost every case the action was settled on undertakings or when the claimant obtained or was refused an interim injunction.   In very few of those settlements did the defendant agree to pay any damages at all to the claimant.   In the few cases where he or she did so agree, those damages seldom exceeded £5,000.   It is very rare for an intellectual property claim to go to trial and rarer still for there to be an account of profits or inquiry as to damages.   Indeed, I have had only one brief for an inquiry and that took place in London before Master Bragge.

It follows that many, if not most, of those cases could have been brought before the small claims track of the Patents County Court had it existed at the time.   That jurisdiction has power to grant injunctions and other relief in any intellectual property claim provided that the claim for damages is less than £5,000 except claims involving patents, registered or registered Community designs, semiconductor topographies and plant breeders rights which must still be brought in the Patents Court or the multitrack of the Patents County Court. Thus the small claims judges could hear claims by an inventor against a prospective licensee or investor for the breach of a non-disclosure agreement, an established trader against an upstart competitor who has adopted a similar trade name and labelling or a small manufacturer whose nifty merchandise has been knocked off.

The costs that can be recovered in the small claims track are very low:   up to £260 if counsel or solicitors have been instructed in relation to an injunction plus the costs of issuing proceedings which ranges between £35 and £120 depending on the amount of damages sought and compensation for travelling and loss of earnings for attending a hearing.   Accordingly, the risks are very low which means that intellectual property owners cannot be stymied by security for costs applications.   The procedure has been simplified in that there will be limited disclosure, the strict rules of evidence are relaxed, evidence need not be given on oath, cross-examination can be limited and anyone can represent a party at a hearing even if he or she is not qualified as a lawyer or patent or trade mark attorney.   Indeed, many cases are likely be disposed on on paper.

The Ministry of Justice has appointed no less than five district judges and deputy district judges to this new small claims track of a very high calibre, including the head of litigation of a mobile phone manufacturer, the legal adviser to the Society of Authors, a former partner of Linklaters and a former partner of Barlow Lyde & Gilbert (now Clyde & Co,).   Clearly, the Ministry expects the court to be busy and by the quality of its appointments it has shown that it means business.   As counsel I have great confidence in all of those judges.

So, how do you or your solicitors use this new tribunal?   I gave a brief guide in the above presentation to Sheffield Inventors Group on 1 October 2012 which you can download.   If you missed it I shall give the same presentation again to the Liverpool Inventors Club at the offices of QualitySolicitors Jackson & Canter at 88 Church Street in Liverpool on 29 October at 17:00.   If you want to attend you can book on-line or call Michael Sandys of QualitySolicitors Jackson & Canter on 0151 282 1700.   Admission is free but as space is limited you will need a ticket.

If you don't want to negotiate the M62 or the start of the Merseyside rush hour here is a step by step guide as to what to do:

1. Ask the other side nicely to stop whatever they are doing.   You need to send a letter before claim in accordance with Annex A of the Practice Direction - Pre-Action Conduct.  You must be careful how do that otherwise you could end up getting sued yourself for groundless threats as indeed could your solicitor if he does not know much about intellectual property. I kid you not.  I have given some guidance as to how that can be done in "IP Dispute Resolution in England and Wales: why sending a US style “Cease and Desist Letter” or old style “Letter before Action” may not be a good idea" JD Supra 13 Jan 2012 and I have even drafted a model letter before claim for a design right dispute.  You are likely to be better off getting a barrister, solicitor or patent or trade mark attorney to draft such a letter for you and I will do one for you or your solicitor for a fixed fee if you want to get in touch. You are likely to be even better off if you get a specialist solicitor to put it on her notepaper and, if you don't have a specialist solicitor in Yorkshire, Kate Reid of Pemberton Reid sends letters drafted by me on her stationery for an extra £100 + VAT.  I have arranged with solicitors and patent and trade mark agents in other parts of the country to offer similar deals to my clients.
2. Issue your claim form out of the Rolls Building    A claim form is what we used to call a writ and blank forms can be downloaded from HMCT Service website or obtained from the Court. You have to issue it out of the public counter of the Rolls Building off Fetter Lane in London and pay the fee that I mentioned above.   The claim form must be accompanied by particulars of claim which should set out your claim in detail.  In addition to specifying your right, how it has been infringed and the remedy you require you must say that you have complied with the Practice Direction - Pre-Action Conduct and that you want this case to proceed in the small claims track.   Again, this is tricky and you main need some help.   Again, I am happy to settle particulars of claim for a fixed fee if you would like to contact me,   You must then serve the claim form with the particulars of claim and a response that on the other side or get the court to do it for you.   It is very important that you serve all the paperwork or you case will stall and any order or relief that you may be granted will be set aside.
3. Wait for the other side to respond.   They have a fixed time to lodge their defence and any counterclaim against you the duration of which will depend on whether you complied with the Practice Direction.   If they don't lodge their defence in time you can apply to the court for judgment in default of defence which will probably require a hearing if you want an injunction.   If they do respond in time the court will give directions which may include fixing a date for a final or a preliminary hearing.   You must comply with all the directions of the court within the time specified if you want to get into or remain in the judge's good books.    
4. Attend the Hearing    Unless the judge has indicated that your case is suitable to be disposed of in writing and everyone has agreed you must attend the hearing which will take place in the Thomas Moore Building in the Royal Courts of Justice which is a few hundred yards from the Rolls Building.   The judges of the Patents and Patents County Court have said in their guide that they will sit in London for the convenience of the parties and to save costs but I have only known a few occasions when they have done so.   You should have enough notice of the hearing to book a saver ticket and a Travelodge so it is hardly going to break the bank if you go to London and you should get some of your dosh back if you win.   Also, you and your Mrs. (or hubby) can combine a trip to the court with a visit to some of the other attractions that the Smoke has to offer.

If you want to learn more about this small claims track there is loads of info including links to my other articles and other guidance at "Patents County Court - the New Small Claims Track Rules" 20 Sept 2012 in my IP/IT Update blog.   You can also give me a bell on   0113 320 3232 begin_of_the_skype_highlighting            0113 320 3232      end_of_the_skype_highlighting or send me a message through Facebook, Linkedin, Xing or twitter or indeed my contact form.

Talk to Halifax Law Society: Trade Marks and Passing Off

I have been asked to talk about trade marks, passing off, geographical indications and the legal protection of brands generally to Halifax Law Society at the White Swan Hotel in Halifax on Tuesday, 20 March 2012 between 13:30 and 15:30.


My talk will cover the following topics:

• Definitions: what is a brand and what is a trade mark;
• Common law protection of brands;
• Trade mark registration;
• TRIPS, Paris and Madrid;
• Trade mark directives;
• Trade Marks Act 1994;
• Community trade marks;
• Registration in the Trade Mark Registry and at OHIM;
• Objecting to a registration: third party observations, opposition, invalidity and revocation;
• Infringement proceedings in the Chancery Division and the Patents County Court;
• Passing off;
• Geographical Indications;
• Domain names; and
• Company Names Tribunal.

For further information, my contact at Halifax Law Society is Carol Stevenson of Finn Gledhill on 01422 330000 or enquiries@finngledhill.co.uk but the Halifax Law Society blog also invites enquiries to David Swarbrick (@dslippy) at dwarb@gmail.com on 0795 457 9992. I am also happy to be contacted on  0113 320 3232 or through my contact form and I shall pass on any enquiries to Carol or David. 

Finally, I wish you all a happy New Year.

Yorkshire needs a Patents County Court in the North

The Leeds City Region has the greatest concentration of professional and financial expertise in the UK outside London.

Great international law firms such as Addleshaw Goddard, DLA Piper, Hammonds and Pinsent Curtis have their roots in the region. So, too, do great patent agencies like Appleyard Lees and Harrison Goddard Foote. Having a population of nearly 3 million and 100,000 businesses the region needs an accessible and cost-effective local forum for the resolution of intellectual property disputes.

S.287 (1) of the Copyright Designs and Patents Act 1988 enables the Lord Chancellor and Secretary of State for Justice any county court as a patents county court and confer on it special jurisdiction to hear and determine patents and designs cases and ancillary matters. Yesterday, our sister blog IP North West carried an article "A Patents County Court for the North". We support that call. Ideally, we should like the Leeds County Court to be designated as a Patents County Court but a designation of any county court anywhere within the M62 corridor would be welcomed by businesses and intellectual property professionals throughout Yorkshire and the Humber.

As IP North West said, this is the best time to campaign for a Patents County Court for the North with the introduction of the new Patents County Rules, the publication of "The Blueprint for Technology" and the Hargreaves review into intellectual property. It also fits in well with another Coalition policy of kick starting local growth by providing the best possible conditions for business (see "Local Growth: realising every place's potential").

If you want to discuss this article or this campaign for a Patents County Court for the North, give us a ring on 0113 320 3232 or contact us through this form.