Trade Missions from Yorkshire to China, Germany, the Netherlands and the USA

Jane Lambert

Yesterday I received an email from DIT North West stating:

"Working closely with our colleagues in both Yorkshire & Humber and the North East, we have created a calendar of 16 trade missions, covering various markets, trade shows and exhibitions to support your business to win sales overseas."

The email contained details of trade missions to California, Amsterdam, Cologne, Dusseldorf, China and Boston between 24 Sept and 28 Nov 2017 for the healthcare, food and drink and other industries.

Should any of my readers in Yorkshire or the Humber wish to learn more about those missions, I have written a short article on them entitled Powerhouse Trade Missions in IP Northwest.  Readers will find in that article a link to the Eventbrite page which contains details of each of the missions with links to the each of the mission Eventbrite pages.

I wish anyone whom goes on any of those missions the very best of luck and would urge them to have regard for their trade secrets and designs. They may find the following extract useful:

"If you plan to go on any of those trade missions, be careful not to disclose anything that you might wish to patent, register as a design or otherwise keep under wraps except in confidence (see Duty of Confidence). However, there is a year's grace period for design registration in Britain and the rest of the EU (see Registered Designs and Registered Community Designs) and don't forget the international exhibition exception provided by s.2 (4) (c) of the Patents Act 1977. Make sure that any non-disclosure or confidentiality agreement is to be construed and enforced in accordance with English law. We are harmonizing our trade secret law across the EU with the Trade Secrets Directive which will come into effect o 9 June 2018 just before Britain flounces out of the EU but we are not there yet (see my article on The Trade Secrets Directive 7 July 2016 NIPC Law).

You must also be aware of the ease with which it is possible for IPR owners to get without notice injunctions just before international exhibitions in Germany and some other countries and serve the orders on the first day (see the penultimate paragraph of Pre-Action Correspondence: What to do if you get a Stroppy Letter ....... or worse 4 Aug 2017 NIPC Law). That nearly happened to one of my clients not long ago. The antedate in Germany is to get a German lawyer to file a Schutzschrift ("protective brief") with the court in which the application is likely to be made setting our reasons why such an order should not be granted. You should also take a look at the arbitration schemes that exist in Italy and Switzerland (see my article Resolving IP Disputes at Trade Fairs 1 June 2017)."

Should anybody wish to discuss any of these matters, call me on 020 7404 5252 during office hours or send me a message on my contact form.


Further Reading

Northern Powerhouse Index

What's happening to Yorkshire?

A Wooden Spoon

Author David Jackmanson
Source Wikipedia

Creative Commons Licence

Yorkshire and the Humber have a population of nearly 5.3 million according to the 2011 census which is 8.4% of the population of the UK and larger than the populations of Norway (5.2 million), the Irish Republic (4.6 million and New Zealand (4.2 million) but the region contributed only 6.5% of the nation's UK patent applications in 2014 (see page 7 of the IPO's Facts and Figures for 2013 and 2014). Whereas there was a slight increase in the number of UK patent applications from 14,946 in 2013 to 15,187 Yorkshire's share actually dropped from 983 in 2013 to 980 in 2014. Yorkshire was 7th in the number of patent applications trailing London (2,766), South-East England (2,701). East of England (1,938), South West (1,510), North West (1,239) and the West Midlands (1,144).

It is the same story in trade mark applications (2,872 compared to London's 14,308, the South East's 12,484, North West's 4,676, South West's 3,597, East of England's 3,415 and West Midland's 3,127) and registered design applications (310 compared to London's 1,120, South East England's 988, North West's 585, West Midland's 505, South West's 452, East of England's 389 and Scotland's 326) though to be fair the region's registered design applications increased from 69 in 2013 to 310 in 2014).

With some of the nation's greatest research universities at Leeds, Sheffield and York, a highly developed financial services industry including business angel networks and private equity investors, Business and IP Centres in Leeds and Sheffield and strong cultural institutions, Yorkshire and the Humber should do better. In the next few months we shall investigate why our region under-performs and what can be done about it. We shall consult local enterprise partnerships, local authorities, chambers of commerce, universities and professionals throughout the region to see where (if anywhere) we have been going wrong and what (if anything) can be done to put it right. In the New Year we plan a day long conference to coordinate our activities. If you want to be involved email me or call me during office hours on 01484 599090.

Hull Central Library joins PatLib

Hull

Photo Wikipedia

PatLib is a European network of some 320 patent information centres where members of the public can obtain information about patents and other intellectual property rights. There are 15 of those centres in the United Kingdom including three in Yorkshire. I write about the network in PatLib Libraries in the UK 28 Jan 2015 Inventors Club.

Hull Central Library is the latest to join the PatLib network. Its reference library holds an enormous collection of resources for business in print and on-line including an Enterprise Hub where workshops and seminars take place. The full range of services include:

• information on Intellectual Property (IP), copies of Intellectual Property Office (IPO) and European Patent Office (EPO) literature
• enquiry service
• assisted searching by appointment only
• fee based document supply
• referrals to other advice/service providers
• free public access to internet, IP information resources, business and company databases, market research databases
• patent clinics offering free appointments with IP advisrrs by appointment
• workshops and Seminars.

Information on  those services can be obtained from the reference library on (0)14 8222 3344.

These additional services have arrived at an opportune time. In her report for The Business Desk Humber LEP continues to drive growth for region of 30 Jan 2015 Ellie Newton-Syms wrote about the strong recovery of the Humber estuary based largely on investments in the energy industry. With falling oil prices this will be a challenging time even for the renewable sector and businesses will need to be agile to ride the challenge. Having access to the latest technical literature and expert advice has never been more important.

If anyone wants to discuss this article or IP generally call me on 01484 599090 or use my contact form.

How far (if at all) is it possible to protect Innovation in Financial Technology?

Head office of the Yorkshire Bank

Photo Wikipedia

Although only three British companies were listed in the 2013 FinTech 100 rankings compared to 10 from India and many more from the USA our government aspires to make this country the world leader in financial technology (see "Plan to make Britain global centre of financial innovation set out by government" 6 Aug 2014). With over 42,000 people employed in the financial services in 2012 Leeds hopes to develop a local financial technology industry. As part of the International Economic Conference that took place shortly before the start of the Tour de France, Pinsent Masons hosted a half day seminar called "At the Forefront of FinTech" to discuss the opportunities for fintech businesses in the City Region. On 16 July 2014 the dotForge accelerator announced plans to set up the first fintech accelerator outside London in Leeds ("New “fintech” accelerator for Leeds" 16 July 2014 Yorkshire Post).

In Fintech The UK’s unique environment for growth UK Trade and Investment listed several advantages for the UK:

"– the presence of a large and technologically sophisticated customer base
– London’s position as a world-leading centre for financial services
– good availability of business capital
– a supportive regulatory approach
– excellent financial services infrastructure, and
– London’s position as a global trading hub."

All that is very true but the UK does suffer one important disadvantage in relation to its global competitors which is that it is very difficult to protect investment in the development of financial technology in this country.

The problem is that s.1 (2) of the Patents Act 1977 declares that

"the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information......"

Much of the technology used in the financial services industry are computer programs. methods of doing business or the presentation of information. These exceptions are themselves subject to the following proviso:

"but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such."

Those words - particularly the last two - enable a skilful patent attorney occasionally to draft a specification for a software implemented invention that can be patented but that is not possible for all such inventions. Other countries that are party to the European Patent Convention which include all our EU competitors have similar statutory exclusions as their laws like ours have to correspond to art 52 (2) and (3) of the Convention; but there are no similar statutory exclusions in American, Chinese, Indian, Japanese or Korean patent legislation.

In his  speech at the launch of the new trade body for FinTech, 'Innovate Finance' 6 Aug 2014 the Chancellor of the Exchequer said:

"We’re introducing the right tax regime for this new industry.

• With major new incentives to encourage investment in start-ups

• Patent Box, so that if you invent in the UK you only pay 10% on those profits

• and now we will allow peer-to-peer lending in ISAs."

The exclusion of many software implemented inventions from patent protection renders nugatory at least one of the incentives to innovation that the Chancellor of the Exchequer announced in his. Without a patent nobody can take advantage of the patent box.

In Digital Opportunity A review of Intellectual Property and Growth Prof, Hargreaves advised the government to

"work to ensure patents are not extended into sectors, such as non-technical computer programs and business methods, which they do not currently cover, without clear evidence of benefit."

 HMG accepted that recommendation without demur in The Government Response to the Hargreaves  Review of Intellectual Property and Growth:

"The Government will resist extensions of patents into sectors which are currently excluded unless there is clear evidence of a benefit to innovation and growth from such extension."

There was no debate on the legal protection of financial technology during the passage of the Intellectual Property Bill through Parliament not even any detailed discussion of the topic during the extensive consultation on the implementation of Hargreaves' recommendations.

If they can't protect financial technology with patents then the new businesses that the Chancellor hopes to encourage including any that may be set up in Leeds will have to rely on other intellectual property rights. Traditionally software houses have relied on copyright and trade secrecy to protect their technology but that does not work terribly well with free open source software and decisions such as the judgment of the Court of Justice of the European Union in C-406/10 SAS Institute Inc v World Programming Ltd  [2012] WLR(D) 131, [2012] EUECJ C-406/10, [2013] BUS LR 941 do not help. That leaves trade marks that protect a business's brand but not its technology and the advantage of being first in the field.

In the USA there is extensive discussion on intellectual property protection of financial technology (see for example the slides for Wilmer Hale's webinar What Should Financial Institutions and FinTech Companies Be Doing?  6 March 2013 but I struggle to find similar discussion here. If I were a business angel or manager of a private equity fund I am not sure that I would be particularly happy with that.

Leeds Inventors Group: Patent Box and R & D Credits

The patent box is a tax concession to encourage businesses to invest in research and development in the UK which came into force on 1 April 2013.  As  one of the few sets of chambers with expertise in tax as well as intellectual property we have been touring the country with our good friends in BDO and Jackson & Canter.

We have already held one workshop on the patent box in Liverpool on 29 April 2013 at which Vince Walker and I gave talks. You can download our presentations from "The Patent Box Workshop: Liverpool Inventors Club" IP North West on 3 May 213.   

There will be a similar workshop at Leeds Inventors Group which will take place at Leeds Central Library, Calverley Street, Leeds, LS1 3AB on 8 May at 18:00.   My presentation will be very much the same as at Liverpool but the the main speaker will be Dan Brookes tax director of BDO's office in Leeds whose face appears above.

If you want to discuss the patent box or any aspect of patent law call us on  0113 320 3232, 01484 599090 or 020 7404 5252 or send a message through our contact form. You can also follow me on Facebook, Linkedin, twitter or Xing.