Innovate Local: South Yorkshire

Penistone Line

Author Richard Harvey Licence CC BY-SA 2.0 UK Source Wikimedia

 

Jane Lambert

Yesterday I attended Innovate Local - South Yorkshire at Glide House in Attercliffe.  It was the fourth Innovate Local that I have attended.  The others were in Bradford, Halifax and Production Park which is somewhere near South Kirkby.  The Victoria Hotel and Dean Clough Mill were easy enough to find. Production Park was a pain but Glide House took the biscuit.  It does not appear on all maps and the few that show it fail to identify car parks and bus routes in the vicinity.

As there were 110 names on the delegate list, I doubted that I would find parking.  I therefore took the Penistone Line, which somehow survived Dr Beeching.  Between Honley and Dodworth, that line meanders through some of the loveliest landscapes in England.  As the train was not very fast and as my taxi driver had never heard of Glide House and could not find it or Terry Street on his satnav, I arrived after the event had started.  One friendly face I met outside the building belonged to Abdul-Basit Mohammed, whom I had met at several other UKRI events.  Another belonged to Jordan Meadows, who staffed the registration table and graciously accepted my apology for tardiness.

The morning session opened with talks by Kola Ladejobi (Knowledge Transfer Manager ‑ Local Partnerships Innovate UK Business Connect), Lee Viney (Regional Manager – Yorkshire & Humber and the North East Innovate UK), Abbie Miladinovic (Strategic Lead Investment Zone) and Martin Baker (Ideas & Innovation Director, Gripple Ltd). It continued with presentations from Richard Gardiner of Ferret Works, Andy Taylor, Team Leader (Yorkshire & Humber) Innovate UK Business Growth, Lisa Whalley (Client Relationship Manager, Sheffield Hallam University) and Ryan Sylvester(Lead Sector Specialist – Investment Zone Growth and Sector Development).

After a 30-minute coffee break, Paul O'Brien (CEO of Elaros), Zeezy Izenman (Founder and CEO Motion Health Ltd.), Ben White, Co-Founder of Rivelin Rail and Clare Lankester, Commercial Director of Fyous discussed their respective business innovation journeys.   Towards the end of the discussion, the moderator invited the inventors and entrepreneurs to reveal their "eureka moment".  I observed that in my experience of advising and assisting inventors, most technical advances resulted from a long process of experiments, observations and adjustments.  The man in the seat next but one to mine said that innovation was a response to a problem. I subsequently discovered that he had attended one of my initial advice and signposting clinics and that he had put my advice to good use.

The last session of the morning was on future thinking and featured Joseph Quinn of the South Yorkshire Mayoral Combined Authority, Claire Louise Green, Business Investment Manager of Rotherham MBC, Ben Hawley, Group Leader of  Enterprising Barnsley at Barnsley MBC and Alex Dochery, Investment Team Manager at Business Doncaster (City of Doncaster MDC).  That session covered the funding and support available from the mayoral combined authority and each of the boroughs.  I learned a lot from that discussion but was disappointed that nobody acknowledged the work of the South Yorkshire Business and IP Centre in Sheffield Central Library and each of the boroughs or the Business Village on Innovation Way in Barnsley. 

Attendees were treated to a buffet lunch of sandwiches, sausage rolls, pizzas and brownies with hot and cold drinks between 12:45 and 14:00.  I explored the stands and met some of the exhibitors. I recognized a few faces from the Inventors Club that I used to chair at Sheffield Central Library and the initial advice and signposting clinics that I ran at the Business Village and other locations.   As I was entering my taxi, one of them - a lady I know only as Olusola - recognized me and asked whether I still ran the clinics.  I was glad to tell her that I did.

After lunch, we had a choice between "Financing your business through Public and Private Funding", "Good Application Guide" and "Unlocking Growth Across Sectors with AI."  I chose the last and listened to an entertaining panel discussion between Emma Louise Staines, Founder of  ComplyAI, Mark Taylor Founder of Automated Analytics, Professor Wei Xing of Sheffield University and Dr Denis Newman-Grifis.  Earlier in the day, the Supreme Court had handed down its judgment in Emotional Perception AI Ltd v Comptroller General of Patents, Designs and Trade Marks [2026] UKSC 3 (11 Feb 2026) on whether it is possible to patent "a particular type of what may loosely be called artificial intelligence, specifically that which consists of, resides in, or is centred around, an artificial neural network".  I had hoped for an industry comment on the case, but the topic did not come up in discussion, and I did not get a chance to raise it.  However, the panel did discuss the menace of human biases in programming AI systems at Mark Taylor's instigation which was also interesting.

The last item on the agenda was another breakout session.  We were offered "Discover the Power of Innovation Through Knowledge Transfer Partnerships", "From Innovation to Impact: Commercialising Health Solutions in South Yorkshire" and "Innovate UK Business Growth and Global". I chose the second option, which was another panel discussion. The panellists were Richard Stubbs, Sarah Daniel, Rashmi Raju, Aaton Oliver Taylor and Professor Paul Dimitri. All had interesting things to say but only Sarah Daniel, who had established several rehabilitation clinics throughout Yorkshire, seemed to focus on commercializing health solutions in the county.

Attendees were invited to stay on until 17:00 for networking, and I noticed that there was a bar in Glide House.  As there is only one train an hour in each direction along the Penistone Line, I called a taxi and left for Meadowhall station. I had a good day and congratulate the organizers and speakers.   My only criticism is that a lot of organizations that help entrepreneurs, such as the Business and IP Centres and the Business Village, were absent.  I was surprised that I was the only intellectual property professional and I am not sure that there were any angel or private equity investors at the event.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page.

Sheffield IP Clinics

Sheffield Central Library

Author Chemical Engineer
Licence Creative Commons Attribution-Share Alike 4.0 International
Source Wikipedia, Sheffield Central Library

Jane Lambert

For over 11 years I have held an IP clinic in Barnsley on the second Tuesday of every month (see IP Yorkshire Clinics 17 Aug 2018).  I have now been invited by the Sheffield Business and IP Centre to hold a similar clinic at Sheffield Central Library in Surrey Street.

My first clinic will take place on Wednesday 10 April 2019 between 14:00 and 16:00.   It will be very much on the same lines as the Barnsley clinic. Up to 4 free consultations of 30 minutes each will be available at each session.

My clinics will supplement the CIPA's existing ones.  As I wrote in Whom you gonna call? IP Professionals and what they do 2 April 2019 NIPC Wales, each of the intellectual property professions has its strengths. My expertise lies in IP strategy. dispute avoidance and dispute resolution and commercialization and I shall focus on those matters.

Anyone wishing to book a slot should call Sarah Hogan, the Library and Information Officer, on 0114 273 4852 or email her on Sarah.Hogan@sheffield.gov.uk.  Anyone wishing to discuss this article may call me on 020 7404 55252 or send me a message through my contact form.

Sheffield Business and IP Centre: IP Rights and Brexit

IP Rights and Brexit from Jane Lambert

One of four things has to happen between now and the 29 of this month:

• The withdrawal agreement that art 50 (2) of the Treaty on European European Union required the EU and UK to negotiate and conclude may be approved by Parliament in which case we shall leave the EU on the 29 but EU law will remain in force until 31 Dec 2020 at the earliest;
• The Prime Ministers notice of intention to leave the EU may be revoked in which case everything will remain the same forever;
• The UK and remaining EU member states may agree to extend the 2-year notice period in accordance with art 50 (3) in which case everything will remain the same as it is now until the end of that further period; or
• Nothing may be done between now and the 29 of this month in which case the UK will leave the EU at 23:00 on the 29 and EU law will cease to apply.

We shall not learn which of those four will happen until 12 March at the earliest and perhaps not even then if the withdrawal agreement is voted down again.

My presentation to Sheffield Business and IP Centre at Sheffield Central Library on 6 March 2019 considered the consequences for IP of each of the four scenarios.  It analysed the IP provisions of the draft withdrawal agreement which will be implemented under draft secondary legislation pursuant to the European Union (Withdrawal) Act 2018 from midnight on 1 Jan 2021 at the latest if that agreement is approved by Parliament.   Such secondary legislation will come into effect at 23:00 on 29 March 2019 if the UK leaves the EU without a withdrawal agreement.  The legislation will not be needed at all if the 2017 notice is revoked.  Its implementation will be delayed until at least the end of the extension period if the 2-year notice is extended.

The presentation considers the future of the Unified Patent Court and the unitary patent.   If the 2017 notice is revoked the UPC Agreement could come into force with continued British participation so long as a challenge to the constitutionality of  German certification in the German Constitutional Court is defeated. If the notice period is extended or a withdrawal agreement is approved by Parliament continued British participation may be possible.   It is highly unlikely if the EU leaves without an agreement.

The draft secondary legislation provides for the conversion of EU trade marks and Community designs and plant varieties into corresponding national rights.  EU legislation on supplemental protection certificates and compulsory licences will be incorporated into national law.  But the Brussels Regulation and Lugano Convention could fall away without a withdrawal agreement and English and Welsh, Scottish and Northern Irish courts will lose the right to seek preliminary rulings on the interpretation of EU law from the Court of Justice of the European Union.

Should anyone wish to discuss this presentation or the effect of Brexit on IP rights generally, they should call me on 020 7404 5252 during office hours or send me a message through my contact form.  

Brexit Countdown: What you should have done to protect your IP and what you can still do

Sheffield Central Library

Author Chemical Engineer
Licence Creative Commons Attribution-Share Alike 4.0 International
Source Wikipedia, Sheffield Central Library

Jane Lambert

IP Rights and Brexit  Sheffield Business and IP Centra, Central Library, 6 March 2019 18:00

Because intellectual property protects investment in branding, design, technology and creative output, any change in the nature and extent of the legal protection is likely to impact on the businesses that rely on such protection.  Since EU trade marks, registered and unregistered Community designs, geographical indications and Community plant variety rights will cease to apply to the UK upon its departure from the EU, Brexit will have a substantial impact on all those businesses.

For that reason, I have been writing and speaking about the consequences of Brexit even before the 2016 referendum (see Were we to go - what would Brexit mean for IP? 26 Feb 2016 NIPC Law). I contributed the chapter on IP to Helen Tse's Doing Business after Brexit,  I have spoken about the topic at leading law schools (see Implications of Brexit on IP Law 19 Jan 2018). I have followed each and every turn of the Brexit negotiations in my Brexit blog in order to advise my clients accurately and comprehensively (see Brexit - Why do I follow the Art 50 (2) Negotiations when I am an IP Lawyer? 26 July 2018).

It might be thought that everything that can be said about IP and Brexit has been said but, unfortunately, that is not the case.  Unless the notification that the Prime Minister gave to the President of the Council on 29 March 2017 is revoked or the notice period is extended before the 29 March 2019 the UK leaves the EU at 23:00 on that day. The impact of this country's departure on business will depend on whether the country leaves on that date and, if it does, on whether it leaves with or without a withdrawal agreement. As I noted in my latest Brexit Briefing we still have no idea of the terms or even the effective date of our departure.

Ever since the withdrawal agreement negotiations began I have advised businesses to prepare for all eventualities including a no deal Brexit.  I have advised them to review their patent, trade mark and design registration portfolios and apply for national or as the case may be EU registrations to fill possible gaps in their legal protection,  I have advised them to read their licences, franchise, joint venture and other agreements and to draft or negotiate contract terms to fill any lacuna.   It may be too late to do some of those things but there is still much that businesses can do.

My talk will list all the issues businesses will encounter when protecting their brands, designs, technology or creative output and the possible countermeasures. By the end of my talk business owners and managers will have a much better idea of possible risks (and maybe even a few opportunities) and the steps they should take.

If you want to come, register here.  It's free but you do have to book. If you want to talk about this subject call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.

Initial Advice and Signposting

Crown copyright
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.

Accelerators and Incubators in the Sheffield City Region

Standard YouTube Licence 

Jane Lambert

Following on from my article on accelerators and incubators in the Leeds City Region, I am taking a look at the accelerators, incubators and co-working spaces in the Sheffield City Region that appear in Nesta's directory for the Department for Business, Energy and Industrial Strategy (see Business Incubators and Accelerators Directory 20 April 2017 NIPC News). As I said in my previous article, accelerators and incubators help to launch fledgeling businesses but while accelerators offer structured development and training with opportunities to attract funding for the most attractive businesses, incubators are more like serviced offices with mentoring and other forms of business and technical support included in the package. I found two accelerators from South Yorkshire in the directory, five incubators and one co-working space.

The accelerators from the City Region that are listed in the directory are as follows:

Name	Website	City
Dotforge	http://dotforge.com/	Sheffield
Y-Accelerator	http://yaccelerator.com	Rotherham

I mentioned Dotforge in my article on Leeds. Its premises in Sheffield are at the Electric Works close to the bus and rail stations and the city campus of Sheffield Hallam University. As I said in my previous article, Dotforge measures a business's social impact as well as its commercial viability. The accelerator offers mentoring and workshops as well as investment.

According to the "About us" page of its website, the "Y" in Y-Accelerator stands for "Yorkshire". It claims to be "the UK’s first Global Manufacturing accelerator programme, built around Sheffield City Region’s worldwide reputation for excellence in advanced manufacturing." The Y-Accelerator programme has been developed by the Rotherham Investment Development Office (RiDO) and TRoom, a South Korean manufacturing and distribution company which was formed for the purpose of developing trade links between East Asia and Europe. Y-Accelerator offers a range of programmes for pre-startups, startups and established companies of varying duration. It cooperates with a number of partners including Sheffield and Rotherham metropolitan district councils, Sheffield and Sheffield Hallam Universities, the local enterprise partnership and a firm of solicitors.

Another firm of solicitors has promoted one of the City Regions's five incubators and Sheffield and Sheffield Hallam also have their own hatcheries as do RiDO and Barnsley Business & Innovation Centres ("BBIC").

Name	Website	City
Barnsley BIC	http://www.bbic.co.uk/	Barnsley
RIDO Launchpad	http://www.rido.org.uk/business-advice/start-up-a-business-rotherham	Rotherham
Sheffield Hallam University Hatchery	https://students.shu.ac.uk/shuspacecontent/enterprise/hatchery	Sheffield
University of Sheffield Innovation	http://www.innovation.group.shef.ac.uk/	Sheffield
Wosskow Brown Foundation	http://www.wosskowbrownfoundation.org.uk	Sheffield

I have already discussed BBIC at Wilthorpe in my article on accelerators and incubators in Leeds. The reason I mention it again is that Barnsley finds itself in both Leeds and Sheffield City Regions. As I said in my previous article, I work closely with BBIC and am about to expand my activities with regular lunchtime workshops the first of which will be "How can I protect my business idea?" on 9 May 2017 (see Lunchtime Talk - "How can I protect my Business Idea?" Barnsley BIC 9 May 2017 12-15-13-15 21 April 2017).

RiDO offers a bespoke package of support for pre-start and early stage businesses through the Sheffield City Region Launchpad programme which includes regular workshop and one-to-one sessions with a business advisor. Sheffield's two universities provide office, lab space and technical and business support for new businesses.  Sheffield University's is known as USI (University of Sheffield Innovation). Sheffield Hallam's is known as The Hatchery. The Wosskow Brown Foundation was established by the Wossskow Brown law firm to support local business, charities and sports clubs. Its first initiative is the WB 100 which aims to assist 100 businesses, 100 charities or social enterprises and 100 individuals in grassroots sports through a formal programme and ad hoc support as they need it between 2015 and 2019. Its beneficiaries appear on the beneficiaries page of the foundation's website.

Nesta's researchers identified one co-working space, namely the Showroom and Workstation for businesses in the creative and digital sectors at Paternoster Square in Sheffield. The Showroom and Workstation offer a range of business support services and office space for businesses under 18 months old known as Studio 505. Hot desking, virtual office services and office rental services are also available.

Anyone who wants to discuss this article or startup support in general can call me on 020 7404 5252 during office hours or send me a message through my contact form, Readers may also be interested in my accelerators and incubators resources page on my Inventors Club blog.

Who owns Goodwill generated by an Employee or Partner?

1. City of Sheffield
2. Rotherham
3. Doncaster
4. Barnsley

Jane Lambert

Jay Bhayani is a well-known employment lawyer in Sheffield. When the Doncaster law firm Taylor Bracewell LLP wanted to set up an employment law department with an office in Sheffield they turned to Ms Bhayani to set one up. They agreed to make her a salaried partner and to practise from Sheffield in the name or style of "Bhayani Bracewell."

Ms Bhayani worked for the firm from 2011 until 2014 but then fell out with them. For a little while after she had left the firm they continued to practise from Sheffield in the Bhayani Bracewell name.  She sued them for passing off alleging that their continued use of the Bhayani Bracewell business name and certain other acts might lead people to believe that she was still working there. Taylor Bracewell replied that any goodwill that accrued to the Bhayani Bracewell name belonged to them and not to her.  They applied for judgment on the ground without a trial on the ground that Ms Bhayani had no real prospect of succeeding in her claim and there was no other compelling reason why the case should go to trial.

Taylor Bracewell's application came on before Judge Hacon in the Intellectual Property Enterprise Court ("IPEC") and his judgment is reported at Bhayani and Another v Taylor Bracewell LLP [2016] EWHC 3360 (IPEC) (22 Dec 2016). For anyone who is interested, I analysed the arguments and judgment in Case Note: Bhayani v Taylor Bracewell LLP - Goodwill generated by a Partner or Employee 19 Jan 2016.

Judge Hacon decided the point in favour of Taylor Bracewell.  After reviewing the case law he concluded that "in the general run, goodwill generated by the acts of an employee will be vested in the employer" and, similarly, "where an individual works in a partnership the goodwill generated by his acts will in the normal course vest in the partnership." However, he acknowledged that there were exceptions and considered what they might be and how they might arise. He concluded that an employee or partner acquires goodwill only in respect of activities outside the scope of the employer's or the partnership business. Applying that rule to the facts of the case before him. His Honour could find no reason why the general rules should not apply,

There were other issues in this case. The judge reviewed the principles by which the court can decide a case without a trial, the difference between reputation and goodwill for the purpose of an action for passing off and whether there was any scope for arguing that Taylor Bracewell's registration of the Bhayani Bracewell trade mark should be revoked on the ground that it was likely to mislead the public. Should anyone wish to consult me on any of those points, call me on 01484 599099 during office hours or send me a message through my contact form.

Sheffield Educational Charity's Trade Mark Case: NOCN v Open College Network Credit4Learning

In NOCN  v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC) (25 Sept 2015) NOCN which is based in Sheffield sued its former affiliate OCN Credit4Learning for trade mark infringement and passing off for using the following sign:

The Trade Marks

NOCN had registered the following signs as well as the letters OCN and NOCN as trade marks for accreditation and certification services:

The Arguments

NOCN argued that it was the only organization in the country that was entitled to use the initials OCN or the swoosh device in relation to vocational qualification and accreditation services.  OCN Credit4Learning replied that OCN was short for "Open College Network" and counterclaimed for invalidation of the registration of the letters "OCN" as a trade mark.

The Decision

The action and counterclaim came on before His Honour Judge Hacon who held that NOCN had no monopoly of the use of the letters OCN and declared the registration of those letters as a trade mark to be invalid. However, he found that OCN Credit4Learning's use of the dot device in a sort of V shape around the words "OCN Credit4Learning" was too similar to the swoosh device in NOCN's trade marks and found that such use amounted to trade mark infringement and passing off.

The Reasons for the Decision

The judge came to his decision because a trade mark is supposed to distinguish one supplier's goods or services from those of all others. OCN is simply an abbreviation for "open college network" of which there are several in the UK. Some of these are affiliated to NOCN while others are not. If NOCN were allowed a monopoly of the abbreviation it would make it difficult for other open college networks to carry on their business.

On the other hand the letters "OCN" combined with the swoosh device were capable of distinguishing NOCN's services from those of other organizations. The dots device when combined with the letters "OCN Credit4Learning" looked very like NOCN's registered trade marks. Its use might lead people to believe that OCN Credit4Learning was somehow connected with NOCN.

If anyone is interested in the legal issues I have discussed them at length in When one charity sues another - NOCN v Open College Network Credit4Learning 4 Oct 2015 NIPC Law.

The Postscript

In a postcript to his judgment, Judge Hacon said:

"I now know that between them the parties, both charities, have incurred well over £400,000 on fees in this litigation. A very strong recommendation to settle at the case management conference was not taken up. The laudable cause of encouraging adult education will presumably have to endure an equivalent cut in funding solely because this dispute was not resolved at an early stage. Such an outcome is much to be regretted."

The action and counterclaim were brought in the Intellectual Property Enterprise Court, the successor to the Patents County Court, which requires trials to be completed in 2 days and limits the costs that one party can recover from the other to a scale (see Jane Lambert New Patents County Court Rules NIPC Law 31 Oct 2010). However, nothing in the new rules prevents lawyers charging their clients more than the costs that they can recover on the scale and that seems to have happened in this case.

Alternatives to Litigation

There are alternatives to litigation which parties to a dispute are required to consider (see paragraphs 8 to 11 of the Practice Direction - Pre-Action Conduct and Protocols). These include direct negotiations, mediation, expert determination, early neutral evaluation, arbitration and proceedings in the Intellectual Property Office.

Most disputes are settled by direct negotiations between the parties or their legal advisers. If conducted in the right spirit with a proper exchange of information and documents they can be the fastest and cheapest way of resolving a dispute. The Practice Direction promotes such negotiations by requiring parties to exchange information and documents in their letters of claim and response and they can be penalized if they fail to do so.

If a dispute cannot be settled by direct negotiations the parties are required to consider alternatives. One of the reasons why direct negotiations do not always succeed is that the parties do not usually know each other's bottom line or interests. Another is that bitter emotions and recriminations can get in the way. Mediation addresses those problems. It is essentially a form of negotiation where the mediator makes it his or her business to understand the underlying issues and suggest solutions which may not have occurred to either party but with which both may live. I am a mediator specializing in IP disputes and I sit on the WIPO and Consensus Mediation Panels. The Intellectual Property Office also offers a very cost-effective mediation service for trade mark and other IP disputes.

Expert determination, early neutral evaluation and arbitration are all forms of adjudication, that is to say where the parties agree to refer their dispute to a trusted third party for determination. ICANN's Uniform Domain Name Dispute Resolution Policy for generic top level domain name disputes and the IPO's opinion service for patent disputes is an example of early neutral evaluation.  The terms upon which neutrals are retained will depend on the needs and wishes of the parties. Our panel of arbitrators can sit as experts, neutrals or arbitrators in any kind of dispute though I specialize in IP.

Although the Registrar of Trade Marks does not have jurisdiction in infringement disputes his hearing officers can hear revocation and invalidity disputes. Proceedings before a hearing officer are more informal than court proceedings and can often be disposed of without a hearing. Costs are awarded in IPO proceedings but these rarely exceed a few thousand pounds.

Further Information

Should anyone wish to discuss this article or trade mark law or passing off in general call me on 01484 599090 during office hours or use my contact form.

Sheffield Business and IP Centre Launch

Sheffield Central Library

Photo Wikipedia

In Enterprise and Libraries: a New National Network of Business & IP Support 6 Match 2013 Inventors Club I wrote about the launch in Portcullis House of a new network of PatLib libraries in the North and Midlands in association with the British Library. I reported in Business and IP Centre National Network 14 Oct 2013 that Leeds and Sheffield Central Libraries were part of that network and mentioned some of the activities of those libraries.

On Thursday I attended the official launch of the Sheffield Business and IP Centre. As this network is freceives funding from the Department for Communities and Local Government we had expected an appearance from The Rt Hon Eric Pickles MP but we learned the evening before that he was unable to make it. There were nevertheless speeches from quite a lot of other dignitaries including Laraine Manley, Executive Director of Sheffield City Council, Councillor Mazhar Iqbal, Roly Keating of the British Library and Brian Ashley of the Arts Council of England.

There was also a talk by Guy Jeremiah of Ohyo on his invention which turns out to be a collapsible water bottle coupled with a website and app for finding water fountains and other sources of water.  The default page shows a few fountains within walking distance of Endell Street in Central London but none at all for central Sheffield when I keyed in the postal code for Sheffield Central Library and the wevsite could not find Holmfirth at all on the map when I keyed in the postal code for my home address even though there is quite a famous one in our town which has features more than one in episodes of Last of the Summer Wine.

After the speeches there was an opportunity for networking over drinks and canapés.  I met Kalim Yaseen, a patent examiner who had given an excellent presentation  to the Sheffield Inventors Club on 6 Feb 2012 (see Straight from the Horse's Mouth:"Filing a UK patent application - process and procedures" 31 Jan 2012) and Roger Tipple who had spoken about Getting your Product to Market on 7 Oct 2013. I met Joyce Gray who runs the Sheffield centre and many of her colleagues. Joyce was struggling under a massive bouquet of flowers from the British Library which she richly deserved. I met three good friends from Leeds Central Library, Ged Donnan, Stef Stephenson and Andrea as well as a number of other old acquaintances from the Intellectual Property Office. I also made the acquaintance of Isabel Oswell, Head of Business & Research Audiences at The British Library and Dave Gimson, regional project manager of the British Library.

Surprisingly and somewhat disappointingly there were very few local inventors or entrepreneurs apart from Mr Jeremiah. Joyce Gray told me that she had invited some of the members of the Sheffield Inventors Club but if any turned up I did not recognize them. The one entrepreneur whom I did recognize was Mel Wong who has danced on national TV and has probably performed more grands battements than anyone else on the planet and is now setting up her own dance business. In his speech Roly Keating emphasized the importance of the creative sector for Sheffield and British Industry as a whole. I am sure that Mel will contribute to that sector considerably.

The Business and IP Centre is a great initiative and one that I welcomed and always supported but unless it collaborates with other networks it will never meet its potential. I was dismayed to learn that many of our guests from London were unaware of other groups such as Ideas Northwest or the Wessex Round Table of Inventors though Isabel heard of Richard Gallafent and Linda Oakley of Ideas 21. Nobody was aware that Ideas 21 once held meetings in Manchester. Nobody knew of the Liverpool Inventors Club or my IP clinics at Barnsley and Middlesex University. If public money is to be used to best advantage there has to be a lot more co-ordination and communication.

If anyone wants to talk about the Business and IP Centre launch or IP generally they should call me on 020 7404 5252 during office hours or use my contact form.

The Sheffield Devolution Agreement should mean more Business Support - but will it be the Right Kind?

Sheffield Town Hall

Photo Wikipedia

In his Autumn statement the Chancellor of the Exchequer announced investments of up to £7 billion to transform the great cities of the North of England into an economic powerhouse.  At paragraph 1.187 of his statement he wrote:

"Studies have shown that innovators and entrepreneurs are attracted to work in creative and cultural areas, which offer a high quality of life. Strong civic leadership is instrumental in enabling this. In addition, research by the OECD shows that cities around the world with fragmented governance structures have lower levels of productivity than those that do not."

 The Chancellor referred to HM government's devolution agreement with Greater Manchester Combined Authority agreement on 3 Nov 2014 in his statement and added that other city regions had come up with similar proposals.  One of the first of those city regions is Sheffield City Region which announced a devolution deal with with the government of 12 Dec 2014.

Details of the deal appear on the Sheffield City Council website. Under the deal a range of powers will be transferred to the Sheffield City Region Combined Authority and the Sheffield City Region Local Enterprise Partnership in relation to skills and training, employment, business support, transport, housing and future devolution.  The business support programme promises the following:

• "Sheffield City Region will align national and local business support through the LEP’s growth hub, so that businesses get a joined up service which meets their needs. The Government will work with SCR to develop a devolved approach to the delivery of business support from 2017 onwards, subject to the outcome of future spending reviews
• UKTI will become principle partner with Sheffield City Region’s Export Centre of Expertise and work closely with the LEP to encourage more businesses to export.
• Government and Sheffield City Region will work towards a solution that will allow the Yorkshire JEREMIE to continue on an interim basis."

Having set up and supported the Sheffield inventors Group and operated IP clinics in Barnsley and Rotherham over the last 10 years, I welcome the creation of a business growth hub in the city region. 

The announcement promises "a comprehensive suite of services that will be tailored to the bespoke needs of businesses."  One of those needs is independent expert advice on IP strategy, that is to say advice on the intellectual property rights that are needed to achieve a business's objectives. There are plenty of business advisers in South Yorkshire but few of them understand how to to use the bundle of laws that protect investment in branding, design, technology or creative works that we call "intellectual property". Similarly, there are patent and trade mark attorneys who can prosecute patent, trade mark and registered design applications but few of them can advise on the business needs of their clients,

I will continue to provide pro bono advice on IP strategy at the Barnsley Business Innovation Centre on the second Tuesday of the month between 10 and 12 and will carry on supporting the Sheffield Inventors. Should anyone wish to discuss this article, IP strategy, business support or the devolution agreement, call me on 01484 599090 during office hours or message me through my contact form. I might not be too pleased to be mithered on 25 Dec but I am available to business owners and their professional advisers at all other times. 

Merry Chrsitmas!