Barnsley Pro Bono IP Clinic 12 Nov 2019

Flowers from a happy client

Jane Lambert

Not all my clients send me flowers after a free 30-minute consultation at the Business Village at Wilthorpe in Barnsley but several have done so in the past.  This photo of me holding an unexpected bouquet from a more than satisfied client was taken at the Business Village's reception desk.

On the second Tuesday of every month between 16:00 and 18:00, I hold up to 4 free consultations of 30 minutes each with entrepreneurs, inventors and other creative people who require advice or assistance on IP law.

Enquiries can be of any kind.  For instance, an inventor of a new product may want to know whether it is patentable. I can't give him or her a complete answer in 30 minutes but I can tell the inventor the basic principles of patent law, advise about searches, how and where to apply, the likely costs in the Intellectual Property Office and European Patent Office and applications under the Patent Cooperation Treaty, the advantages of instructing a patent attorney and how they can be found and free or cost-effective business services through the Business and IP Centres at Leeds and Sheffield.

Sometimes the client needs services from another professional such as a product design consultant or a specialist insurance broker.  I can help point him or her in the right direction,  I have been running this clinic for the last 12 years and I have built up an enormous list of contacts in Yorkshire and beyond over that time.

My next clinic will take place on 12 Nov 2019 and I have slots between 17:00 and 17:30 and between 17:30 and 18:00.  If you want to take advantage of one of those slots fill in my Barnsley IP Clinic form and send it off as soon as possible.  I will give you an appointment as soon as I hear from you.  Alternatively, you can call the Business Village on 01226 249590 and ask to speak to Megan Winslow. If we can't fit you in this month we can offer you an appointment at the December clinic.

The Business Village is about a mile and a half from the centre of Barnsley and on several bus routes.  It is not far from the M1 and has plenty of free parking in the Village itself or in neighbouring streets. If you want to discuss this article or my service generally call me 020 7404 5252 during office hours or send me a message through my contact form. 

Small Claims Track IP Litigation in Leeds

Leeds Law Courts
© 2003 Jane Lambert: all rights reserved

Jane Lambert

One of the most interesting announcements of the new Intellectual Property Enterprise Court Guide is the decision to appoint from October 2019 district judges to hear small intellectual property claims in Leeds (see The New IPEC Guide 4 July 2019 NIPC News).

The cases that those district judges will be entitled to hear pursuant to CPR 63.27 will be claims for £10,000 or less for the infringement of intellectual property rights other than patents, registered and registered Community designs, semiconductor topographies and plant varieties. In Small IP Claims, I gave examples of cases that might be suitable for the small claims track and of others that would not.  The claimant must ask for the claim to be allocated to the small claims track in its particulars of claim and no objection should be raised by the defendant.   However, even if a case falls within the jurisdiction of the small claims track and the parties want it to stay there, the court may transfer it to the multitrack if it is likely to take more than a day to try or there is a difficult point of law or factual issue to decide.

Proceedings in the small claims track are governed by CPR Part 27 and the Part 27 Practice Direction as modified by CPR 63.27 and CPR 63.28 and paragraph 63.32 of the Part 63 Practice Direction.  Though successful claimants can obtain final injunctions and orders for delivery up of infringing materials as well as damages or accountable profits they cannot claim interim injunctions.  Liability and the amount of any damages or other pecuniary relief to be awarded are decided at the same time.  Directions are given automatically in accordance with Appendix B or C of the Part 27 Practice Direction after statements of case are exchanged and although the court has power under CPR 27.6 to hold preliminary hearings these are the exception rather than the rule. There is no provision for disclosure and the costs that may be recovered from an unsuccessful party are limited to court fees, £260 if an injunction is sought and a lawyer has been instructed, travelling expenses and loss of earnings up to £95 per witness and up to £750 in experts' fees.

The new IPEC guide indicates that those wishing to bring an IP case in the small claims track in Leeds should use the electronic filing system.

Anyone wishing to discuss this article or small claims track IP litigation generally should call me on 020 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.

Lunchtime Talk - "How can I protect my Business Idea?" Barnsley BIC 9 May 2017 12-15-13-15

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Jane Lambert

I have been holding free 30-minute consultations on intellectual property and related areas of the law at the Barnsley Business and Innovation Centre ("BBIC") between 10:00 and 12:00 on the second Tuesday of every month for the last 10 years and at other venues in the North of England for even longer. During that time, the question that I have been asked most frequently is "How can I protect my business idea?"

It is not an easy question to answer because it depends on the type of product and the nature of your business. A patent may afford the most extensive protection for a new product or process but if the costs of patenting, insuring and policing the are likely to outweigh the income likely to be generated from the invention you would be better off looking at other forms of legal protection.

To help start-ups and other small businesses work out the answer for themselves I shall be giving a talk entitled

How can I protect my Business Idea?

 at Barnsley BIC on 9 May 2017 between 12:15 and 13:15.

I will introduce you to all the tools in the legal toolbox such as patents, trade secrecy, unregistered design rights, trade marks et cetera.

I will tell you the advantages and disadvantages of each type of protection. For example, patents offer the most extensive protection but they are expensive to get, maintain and enforce, they are not always easy to get, they may be revoked after grant and you have to disclose to the world including your competitors how to make or use them.

I will explain how to get each type of IP and how much it will cost.

I will give you some useful tips about insurance, watch services and enforcement.

I will advise you on the different types of IP professional, where to find them, how to instruct them and how much they are likely to cost.

Finally, I will share a methodology for working out an IP strategy.

Space is likely to be limited so call Christine Mason on 01226 249590 or  George Scanlon on 020 7404 5252 to book your place.

The full address of BBIC is

Barnsley Business and Innovation Centre
Innovation Way
Barnsley
S75 1JL

Tel: 01226 249590

You will find full directions on the BBIC contact page. Usually, there is plenty of on-site and street parking. The BBIC is not far from the town centre from where there are good rail links to Huddersfield, Sheffield, Leeds, Wakefield, Doncaster and the rest of the country and well served by local buses.

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.