CPD Event - "The Intellectual Property Act 2014 - What it means for you and your clients" Leeds 15 Oct 2014

Jane Lambert

On 14 May 2014 the Intellectual Property Bill received royal assent and became an Act. It implements several of Prof Hargreaves's recommendations including implementation of the Council Agreement on the Unified Patent Court, accession to the Hague Agreement and enhancement of the examiner's opinion service for patents and its extension to designs. More controversially it creates for the first time an offence of intentionally copying a registered or registered Community design.  My colleague Alex Rozycki and I gave a presentation on the new Act on the 19 May 2014. I also write my Reflections on the Intellectual Property Act 2014 in our IP and Tech law blog as well as detailed analyses on the effect of the Act on patent, registered designs and unregistered design right law.

There have been two important developments since them. The first is that Lady Neville-Rolfe, the Minister for Intellectual Property, has signed The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 which brings many of the key provisions of the Act into force on 1 Oct 2014. The second (and potentially the more important) is the consultation on the Unified Patent Court which has just closed.

I shall be discussing those developments and much more besides in a talk that I am giving at the Leeds Business and IP Centre on the 15 Oct 2014 at 18:00 as part of Leeds Business Week. This is an in-depth seminar which should be of interest to specialist IP lawyers and patent and trade mark attorneys for which we plan to give SRA, BSB and, if it can be arranged in time, IPReg points. However, it will also be useful for business owners and managers of all descriptions in all industries as well as artists, designers, inventors and investors in start-ups and other high tech businesses.

Space is limited but you can reserve your place now by calling my clerk, George, on 01484 599090 or 020 7404 5252 or sending him a message through his contact form. I look forward to seeing you there.

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.

Enforcing Your Intellectual Property Rights without Going Bust

How to Enforce your Intellectual Property Rights without Going Bust from Jane Lambert

In my very first post, "Why IP Yorkshire", 10 Sept 2008 I noted that although Team GB may have done very well at the Beijing Olympics our inventors and entrepreneurs are nothing like as successful in the European patent application stakes. We trailed a poor 7th in the number of European patent applications lagging not only behind the economic super-powers, the USA and Japan, but also France and Germany with similar populations and GDP and even trail the Netherlands and Switzerland with a third and an eighth of our population respectively. 

The reason of our lacklustre performance was that start-ups and other small businesses, that are the mainspring of innovation in the UK as in most of our competitors, make much less use of the intellectual property system than their equivalents in other countries and that was largely because the cost of obtaining and enforcing intellectual property protection in the UK was considerably higher than in our competitors.

The costs of enforcing intellectual property rights was identified as a problem by both Gowers (Gowers Review of Intellectual Property, TSO 2006) and Hargreaves (Digital Opportunity A Review of Intellectual Property and Growth) to which Sir Richard Arnold and Sir Rupert Jackson have proposed solutions (see Intellectual Property Court Users’Committee Working Group’s Final Report on Proposals for Reform of the Patents County Court 31 July 2009 and Review of Civil Litigation Costs: Final Report Dec 2009).

Arnold proposed case management reforms that limit the issues that can be heard, the evidence that can be led, the duration of trials and this the recoverable costs of the litigation which I discussed at some length in New Patents County Court Rules 31 Oct 2010. Jackson proposed a new small claims track for the Patents County Court which I discussed in a series of articles which are listed at Patents County Court - the New Small Claims Track Rules 20 Sept 2012. The Patents County Court was abolished with effect from the 30 Sept 2013 and replaced with a new Intellectual Property Enterprise Court ("IPEC") which is part of the Chancery Division on 1 Oct 2013.

On the 15 Jan 2014 I gave a talk on these initiatives to reduce the cost of dispute resolution to Leeds Inventors Group. I mentioned the Intellectual Property Office opinions service which we discussed in Leeds as soon as the service was launched (see "IP Centre of Excellence: Patent Office Opinions"  26 Nov 2006) as well as mutitrack and small claims litigation in IPEC. in his report Hargreaves had urged HM government to press for a single European patent known as a "unified patent" to be granted for all the EU member states except Spain and Italy as though they were a single country. That has now been agreed and disputes under the unified patent will be referred to a special court for all the contracting countries. Under that agreement that court will be based in Paris and will have branches in London and Germany. I summarized the arrangements that have been made so far in my talk.

Should anybody wish to discuss this talk or indeed any matter relating to IP he or she should call me during normal office hours on 01484 599090 or message me through my contact form. You can also tweet me. write on my wall or contact me through G+, Linkedin or Xing.