Demand for my IP Clinic - Flash in the Pan or Straws in the Wind

By Steve Partridge, CC BY-SA 2.0,
https://commons.wikimedia.org/w/index.php?curid=9270036

Jane Lambert

I have been holding monthly IP clinics in Yorkshire since 2004.  I have therefore experienced the economic downturn which resulted from the banking crisis, the slow recovery, and the 20.4% slump in GDP which the Office for National Statistics announced yesterday (see GDP monthly estimate, UK: April 2020, 12 June 2020 ONS).  I have found attendance at my monthly IP clinic in Barnsley to be a pretty good bellwether of the state of the economy.

This week for the first time in months I had three enquiries.   As I explained in Barnsley IP Clinic 14 April 2020 I have had to offer these clinics online.  That enables me to see clients at a mutually convenient rather than a two-hour session at the Business Village in Wilthorpe.  I also hold a similar clinic at the Menai Science Park in Anglesey which is now online (see Online Support for Businesses in Wales 13 April 2020 NIPC Wales).  However, until this week I had received only one enquiry and that came from North Wales),

What is encouraging about this week's enquiries is that they were all about new business ventures.  Obviously, I can't disclose who they were or anything about their businesses but they were interested in legal protection for their brands and technology. The conversations on branding led to trade marks and the discussion on protecting technology led to patents and alternatives to patents.  I also mentioned trade mark and patent searches and how to obtain them, clinics at the Sheffield and Leeds Business and IP Centres run by CIPA and others, and how and where to find a patent or trade mark attorney.

All three clients were enthusiastic and motivated.  They were aware that they were going into business at a very bad time but they had researched their markets and were sure that their businesses would grow as the economy revives. Now I may be wrong about this but I think they will succeed. I also think there are others like them from the Shetlands to the Scillies.  A flash in the pan?  Perhaps!  But I think they are straws in the wind.  I say that because something very similar happened in about 2011 and 2012. There were dips of inactivity now and then but as the economy picked up so dud attendances at my clinic.

Now for a tip.  At my clinics and inventors' clubs, I am often asked about T & C.  These are about managing risk which is why terms and conditions designed for one business may not necessarily suit another.  They are meant to dovetail with following best practice and public liability and other insurance. 

Just outside Wakefield, there stand the ruins of a medieval castle which was also about managing risk.  There was a moat to keep out wild animals, sturdy vagabonds, and other undesirables.  That was enough to deter most threats to the castle and its inhabitants.  To fight off besieging armies there was a curtain wall from which defenders could fire arrows and pour boiling all or molten lead on their attackers.  If the wall was breached, there was a keep with thick walls where the defenders made their last stand as Macbeth tried to do against Macduff.

Terms and conditions are the last line of defence.  Contract terms cannot be used to exclude certain types of liability.  The first line of defence is best practice.  That equates to the moat.   The second line is insurance. That is like the curtain wall.  Terms and conditions can sometimes be used to regulate risks that cannot be insured against and where best practice fails.   They should, therefore, be drafted with the needs of the business in mind with the insurance policy and manual if best practice to hand.

Anyone wishing to discuss this article or any of the topics mentioned in it should call my clerk on +44(0)7986 948267 or send me a message through my contact page while this emergency continues, I shall gladly respond by phone, Zoom or email.

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 Specialist IP Services in Yorkshire for Free

Jane Lambert

Whether you are running your own business or just thinking of doing so, you need to know about intellectual property. There are two reasons for that.

First, the law on IP is very complex and there are a lot of urban myths and misinformation on what is and what is not permissible. Consequently, it is all too easy inadvertently to infringe someone else's IP. If you do, the consequences could be dire.  Some IP infringements are criminal offences the penalties for which have recently been increased, the costs of civil litigation are crippling and the remedies draconian

The other reason you should know about IP is that you will have spent a lot of time building a business or developing a product or service and you don't want other people to reap the benefit without your consent.

However, it takes a long time to qualify as a patent or trade mark attorney or specialist lawyer which is why high quality advice and representation do not come cheap.  Happily, there are ways you can save money.

I give up to 12 hours of my time every month to creatives, entrepreneurs, inventors or others who need specialist advice but can't afford my usual fees.  You can access my service simply by sending me a message on my contact form.

I can usually deal with most enquiries by email or telephone but there are some that require a referral to another professional advisor such as a patent or trade mark attorney, product design consultant, specialist insurance broker or a public library that is a member of the UK PatLib network.

If it appears to me that a client has an invention that might be patented or a design or trade mark that could be registered, I usually refer him or to one of the IP clinics operated by members of the Chartered Institute of Patent Attorneys (if there is one near the client's home or workplace) or to a local attorney who has agreed to offer the client up to 30 minutes of his or her time for free.

I also hold clinics in London and the North but I try not to replicate services that are available elsewhere.  As a barrister, I advise patent and trade mark attorneys on difficult points of law, draft complex legal instruments and represent clients in the Business and Property Courts and the Intellectual Property Office (see IP Services from Barristers 6 April 2013 NIPC News and What do Start-up Entrepreneurs need to look for in a Good IP Lawyer? 23 Aug 2017 NIPC News). The sort of matters that I reserve to myself in my own clinics includes IP Strategy, complex licensing and other transactions and dispute resolution.

Most of my clinics in Yorkshire take place at the Barnsley Business and Innovation Centre at Innovation Way in Wilthorpe on the second Tuesday of every month.

Supporting Enterprise, Innovation and Creativity in South Yorkshire

South Yorkshire

Author Nifanion
Licence Creative Common Attribution-Share Alike 3.0 Unported

Jane Lambert

You only have to look at the map to see the importance of the metropolitan county of South Yorkshire. Close to the Leeds-Bradford and Greater Manchester conurbations, not far from the North Sea and Atlantic ports with its own growing international airport, good rail and road links to London, Birmingham, Bristol, Cardiff, Edinburgh, Glasgow, Liverpool and Newcastle, one of the world's great research universities as well as many other fine universities, schools and colleges, excellent theatres and concert halls and famous sporting venues, there is no better place to found or expand a business than Barnsley, Doncaster, Rotherham or Sheffield.

To support those businesses Barnsley Business Innovation Centre holds regular intellectual property clinics with patent counsel. "What's so special about them?" I hear you say. "There are regular patent clinics with patent attorneys at Leeds and Sheffield." True! And they are excellent. But the sessions at Barnsley are with counsel. It is counsel who advise attorneys and solicitors on difficult points of law, draft complex legal instruments and, where necessary, represent them before judges and hearing officers in the IPO. It is from their ranks that the judges of the Patents Court, Chancery Division and Intellectual Property Enterprise Court are drawn (see my article IP Services from Barristers 6 April 2013 revised 16 May 2017 NIPC News).

What you get from a barrister is independence because they don't prosecute patent, trade mark or design applications and years of experience of the things that can go wrong since they are only consulted when a case is out of the ordinary and that is why they are relatively expensive. A 30-minute conference in London would cost many hundreds of pounds. What Barnsley BIC offers every month is a similar 30-minute slot in Barnsley with specialist counsel for nothing.

On the second Tuesday of every month, I am to be found at Barnsley between 16:00 and 18:00 and I shall see anybody who books in advance. The sort of questions I get are

• "I hope to set up a business in Barnsley in the next few weeks but I am not sure of the best way of protecting my brand, product or service?"
• "How can I find out whether this invention is patentable and if so how do I apply for a patent?"
• "I have just received this nasty letter from Sioux, Grabbit & Run. What should I do about it?" or
• "A company in China has offered to manufacture my product but how do I protect my business there?."

If you have any question on IP I shall be at the BIC on Tuesday 12 Sept, 10 Oct, 14 Nov or 12 Dec 2017 between 16:00 and 18:00. If you want to save yourself several hundred pounds in legal fees, you need only fill in this form or call Steve Marshall on 020 7404 5252 to reserve your slot.

As the last question "A company in China has offered to manufacture my product but how do I protect my business there?" arises frequently, we have been lucky enough to persuade Mr Tom Duke, our IP attaché in China to talk to our local entrepreneurs, inventors, creatives and their investors. Tom will give you a great start to protecting and licensing your brands, designs, technology and creative works in China so that you can invest in, export to, import from or otherwise make loads and loads of money in that increasingly important market. He will be at Barnsley BIC on 19 Sept 2017 at 14:30. 

Now if that time happens to clash with a round of golf, dental appointment or anything else that you can do another day or get a colleague to cover, ponder this. You can do all those things some other time but if you want Tom's contacts and information you will have to go to China for it and that's a lot further than Wilthorpe. So call Steve on 020 7404 5252 to book your place. You will find further information in Meet our IP Attaché 21 July 2017. You could save or earn yourself a whole heap of renminbi if you turn up.

If you want to discuss this article or IP in China, England or anywhere else, call me on 020 7404 5252 during office hours or send me a message through my contact form.

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.

Nesta's Inventor Prize

Jane Lambert

In "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy 24 Jan 2017 Inventors Club, I mentioned the government's commitment to:

"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."

To my great joy and surprise, the  government has already started to implement its commitment by advertising for new IP policy advisors for the North and Midlands (see Implementing the Industrial Strategy: IPO seeks new Business Support Policy Adviser 25 Jan 2017 IP North West) and by collaborating with Nesta to "pilot an ‘inventor’ prize that will inspire and harness the potential of the UK’s home-grown inventors and stimulate user-led innovation" (see Announcing the Inventor Prize 24 Jan 2017).

I was even more delighted by the compliment that Nesta paid to two Yorkshire inventors in that announcement:

"But we are also looking for everyday inventors that see a problem in their daily lives and have an idea for a way of solving it in a way that improves people’s lives. This is a search for a modern day Percy Shaw - a Yorkshireman who repaired roads in the 1930s and whose light bulb moment was the invention of the ‘cat’s eye’ that helps prevent car accidents at night. Or more recently Emily Cummins, who at 19 years old invented an award-winning solar evaporation refrigerator."

 Yorkshire may trail London, South East England, the South West, East of England, West Midlands, North West and Scotland in the number of patent applications but there is no denying the quality of inventions that emanate from this county.

I will do everything I can to support this initiative. One of the ways in which I can do that is through the Inventors Club, Through that website I shall try to offer a wide range of services. I can help with advice on intellectual property ("IP") and, in particular, with patents (see also my Patents FAQ and IP Glossary). To help inventors, entrepreneurs, their investors and professional advisors throughout the North West and the rest of the country I have expanded and improved my IP service (see Immediate IP First Aid Nationwide 25 Jan 2017.

If you have a new product and are wondering how best to protect it, if you are thinking of launching a new business and are thinking of registering a trade mark, if you have received a solicitor's letter accusing you of infringing someone's copyright, design, patent or trade mark, if you think someone is infringing one of your IP rights or you have any legal question relating to branding, design, technology or creative works, call me on 020 7404 5252 or send me a message through my contact form.

Forthcoming IP Related Events in Yorkshire

~

Yorkshire Puddings     Source  Wikipedia

The Intellectual Property Office has just updated its calendar of events.   The following are taking place in Yorkshire:

• 24  Sep 2013   The Business Growth Show between 8:00 and 15:00 at the John Charles Centre for Sports;
• 1 Oct 2013 "Get it right - first time" seminar on intellectual property, 09:00 - 12:00 Central Library,  Leeds, LS1 3AB;
• I Oct 2013  "Get it right - fist time" seminar on intellectual property, 14:00 - 17:00, Central Library, Surrey Street, Sheffield, S1 1XZ;
• 2 Oct 2013 "Brand Yorkshire" conference and exhibition, 09:00 to 17:00 at Pavilions in Harrogate.

Here are some more that I just happen to know about:

• Institute of Trade Mark Agents ("ITMA"), "The Guardians of the Orb: A case study on the protection of Harris Tweed, Certification Marks, Acts of Parliament and much more" by Colin Hulme, Burness Paull & Williamsons LLP at Walker Morris, 12 King Street, Leeds, LS1 2HL between 14:00 and 15:30 on 16 Sep 2013;
• Business of Ballet, 23 Sept 2013 between 07:30 and 10:00 at Quarry Hill, Leeds, LS2 7PA which I mentioned in  "Business of Ballet: Northern Ballet's bid to educate us Philistines" 28 July 2013 Terpsichore (my blog on ballet just to prove that I have a life outside the law); and
• Venturefest Yorkshire 13 Mach 2013 at York Racecourse.

Next, there are the regulars:

• Sheffield Inventors Group which meets on the first Monday of every month at Sheffield Central Library between 18:00 and 19:45.   Here are the speakers they have lined up for the Autumn: 2 Sept, Emma Digby, 7 Oct Roger Tipple and 4 Nov John Biddle, Call 0114 273 4736 or email information.library@sheffield.gov.uk; 
• Leeds Inventors Group which meets at Leeds Central Library, Leeds, LS1 3AB between 18:00 and 19:45 on the second Tuesday of the month; and 
• Imran Ali's :LSx which runs LSx Cafe, TED Global and Leeds Girl Geeks Dinner and many other events that seems to attract some of the most interesting people in Yorkshire..

Finally, there are the patent clinics run by the Chartered Institute of Patent Agents at Leeds and Sheffield Central Libraries and my clinic between 10:00 and 12:00 on the second Tuesday of every month at Barnsley Business and Innovation Centre.

If you want to know about IP events elsewhere in the UK check out the IPO, CIPA and ITMA websites. If anybody wants a speaker from our chambers for an IP related event please contact my clerk Stephen on 01484 599090 or fill in my contact form.