How can I protect my Idea for a New Service?

Author TeaLaiumens
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Jane Lambert

Intellectual property law developed in the 19th century when the first industrial revolution was in full swing. An invention was necessarily a new product or a process for making products. Until the Trade Marks (Amendment) Act 1984 it was not possible to register trade marks for services in the United Kingdom. I remember accompanying the late Hugh Laddie to the Patent Office in 1984 when I was legal adviser to VISA International for Europe, the Middle East and Africa on an appeal against an examiner's refusal to grant VISA a trade mark for printed matter on the grounds that it was a roundabout way of obtaining a service mark for travellers' cheques.

The economic picture has changed a lot since then. Services now account for nearly 80% of GDP in advanced countries like the UK, France and the USA. But the law does not cater for innovation in services even though a new financial service using blockchain technology such as a new virtual currency can be every bit as ingenious as a new drug or communications device. One of the reasons why the law lags behind technology is that the leading industrial countries agreed to protect the intellectual assets of each other's nationals on a reciprocal basis in the Paris and Berne Convention of 1882 and 1886 because reciprocity requires such legal protection in all participating states to be approximately the same.

So when a client comes to me with an idea for an innovative new service his or her options are limited. It may be possible to patent a product or process used in delivering a new service such as a drone or even in some circumstances a software implemented invention but it is not possible in any country to patent a service as such. Even in countries like the United States where there is no equivalent to the statutory exclusions in s.1 (2) of our Patents Act 1977 the protection of methods of doing business has rolled back since the decision of the Supreme Court in Bilski v. Kappos, 561 U.S. 593 (2010).

Generally I advise a client to keep his or her idea to him or herself until he or she is ready to launch. If the client needs to talk to a contractor, collaborator he or she should do so in confidence. Every disclosure in confidence should be acknowledged in writing by the confident, recorded by the confider, closely monitored and strictly enforced. After the launch the idea will be in the open for anyone to see and, of course, imitate. Nevertheless, the innovator may still derive some advantage from being the first to market the service. Any reputation or goodwill accruing to his or her business can now be protected by registering the brand under which it is supplied as a trade mark.  All forms, manuals and other stationery used in the business will be literary works in which copyright will subsist automatically, If properly coordinated and supplied under a brand, the client may have a business format that can be franchised.

In its early days any business will be vulnerable to legal action either to enforce such IP rights as it may own or to defend a claim for their invalidation or revocation.  Even in the Intellectual Property Enterprise Court litigation can be ruinously expensive. Some form of IP insurance is therefore essential if it is to retain its market advantage.

I shall be talking about how to protect a service and other matters at Barnsley Business and Innovation Centre at 12:15 on 9 May 2017. If you want to attend that event you can do so by registering here.

How can Leeds regain its Lustre?

Leeds Town Hall

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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