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.

CIPA York Meeting

Brighter Days in York?

(c) 2016 Jane Lamber: all rights reserved

Last Thursday I was one of the speakers at the York meeting of the Chartered Institute of Patent Attorneys ("CIPA"). The other speakers were Louise Edwards of Mazars, David Bloom of Safeguard IP and Kalim Yasseen who is a patent examiner with the Intellectual Property Office. CIPA's president, Tony Rollins, chaired the meeting.

I spoke about IP Litigation after Brexit.  Although we Brits tend to be seen as the awkward squad when it comes to the European project there has been one initiative upon which we have been commendably communautaire. That initiative has been a single European patent for all the member states of the European Union with a single court for the resolution of disputes relating to such patents. The reason why we have always supported that initiative is that patent enforcement litigation in the UK is the most expensive in Europe. The cost of enforcement probably has a lot to do with why the UK trails not just Germany and France in the number of European patent applications but also Switzerland with one eighth of our population and the Netherlands with one third. Something that I have been saying for most of the last 10 years (see Why IP Yorkshire 10 Sept 2008),

The Uniform Patent Court, which will probably come into being towards the end of this year or the beginning of next, would have put British industry on a level playing field with its continental competitors. Unfortunately, the chances are that we shall have to leave when we quit the EU. After we go it will be even more important to do something about reducing the cost of IP litigation in the UK. One solution will be to make better use of the Intellectual Property Enterprise Court ("IPEC") and, in particular, its small claims track. Another consequence of Brexit is that we shall be looking for new export markets outside Europe where the IP environment will be quite different. Not all those markets protect intellectual assets adequately and I suggest that the UK's bilateral investment treaties with 117 foreign states might help. I discussed all these items in greater detail in IP Litigation after Brexit 9 April 2017 IP North West).

Louise gave is a Patent Box Update in which she discussed the effects of the Finance Act 2016 and proposed Finance Bill and considered a number of case studies. She covered some of the rules on patent box relief contained in the 2016 Act and gave us some statistics on take-up. There were apparently 55 companies that took advantage of the scheme in North West England but rather more in Yorkshire. She mentioned the base erosion and profit shifting project of the OECD and how it will affect IP and in particular licensing and distribution. Finally, Louse spoke about three cases that were on her desk right now. One concerned an "ideas company" and its licensing activities. Another, a patentee who had found a new use for his (or her) invention. Finally, a "serial inventor" who insisted on holding onto his IP even though it was not at all tax efficient.

Louise illustrated her talk with bear traps, signposts to "opportunities" and gold nuggets of which there were many. She also had a short sighted computer literate bespectacled terrier under the caption "No tax tail wagging me!" A useful reminder that tax schemes with the primary purpose of avoiding tax will not be bought by HMRC or, for that matter, the courts.

David spoke about IP insurance which is a topic very dear to my heart. I have written quite a lot of articles about it over the years, the last being IP Insurance: CIPA's Paper 1 May 2017 NIPC Inventors' Club. In my view, there is no point in spending a lot of money on obtaining a patent unless you are prepared to enforce it. Despite IPEC and the UPC which I mentioned in my paper it still costs an arm and a leg to enforce an IP right in England. IP insurance can help with that and David said that the choice of insurance products was going up and the cost of premiums was going down. At one time, patent agents used to warn their clients not to waste their money on insurance. I am glad to say that I don't think they do that anything like as much nowadays. If I were a patent or trade mark attorney I would make all my clients aware of such things as IP insurance and watch services and point them in the direction of someone who could give them some dispassionate advice and information.

Kalim, whom I had met when he gave a super talk to the Sheffield inventors club entitled "Filing a UK patent application - process and procedures" on 6 Feb 2012, discussed changes to the Patents Rules 2007 some of which were coming into effect that very day (see Changes to Patents Rules on 1 October 2016 and 6 April 2017 1 Sept 2016 IPO website). These included "omnibus claims" - not an application for a patent for a new kind of charabanc but a basic repetition of the description in the specification - and the communication of patent renewal reminders. Some of these new rules such as the examiner's notification of intention to grant seem to me to be very useful and most have actually been in force since October.

Kalim also spoke about changes to the IPO's portion of the .gov.uk website which seems to reinstate some of the useful bits of the old professional pages section of the IPO's old website. One useful feature is password protected access to the examiner's file. Another is the updating of the Manual of Patent Practice.

Finally, Kalim gave us some tips on working with your examiner. He assured us that he and his colleagues were quite approachable and perfectly reasonable but there are some things that get their goats of which we should be aware. Fairly common sense things in my view.

The meeting took place in the Principal Hotel next to the station. It seems to have undergone considerable renovation and refurbishment. It was much smarter than it was when I last visited it. They laid on a hot and cold buffet with soft drinks for lunch, tea and coffee at half time and gallons of prosecco for those who did not have to drive. Patent seekers generously added some Welsh whisky, easter eggs and chocolate bunnies to the festivities and we were well away. As I was precluded from partaking in the whisky, I was tempted to mention Mr Justice Laddie's decision in Matthew Gloag and Son Ltd and Another v Welsh Distillers Ltd and Others: The Runes 27 Feb 1998 but thought better of it.

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.

Rise & Design in Huddersfield

Jane Lambert

"It is not every office that has a 3D printer chugging away in reception" I thought to myself as I passed through the entrance of the 3M Buckley Innovation Centre in Huddersfield. I was there at the opening in 2012 (see Launch of Huddersfield University's 3M Buckley Innovation Centre 27 Sept 2012). Despite my offer "to help on behalf of my network of patent and trade mark attorneys, solicitors, product design consultants, angels, financial institutions and other contacts with talks, clinics and any other way I can" they had not been in touch with them nor they with me.

The reason I came back was a Rise & Design networking meeting arranged by Design Network North at the Centre between 08:30 and 12:00 on Friday, 20 Jan 2016. The theme of the meeting was "The Power of Collaboration". The event consisted of presentations by:

• Richard Hall of pd-m and Dr Pete Culmer of the University of Leeds;
• Amanda Scacchetti, Innovation Director at Mamas & Papas, and
• Patrick Burke of Paxman Coolers Ltd and Ertu Enver and Chris Sorbie of Huddersfield University.

There were short pitches by various members of the audience and a quick news update by Terry McStea, network manager of Design Network North.

Pete Culmer had already described his collaboration with Richard Hall on his LinkedIn page:

"Richard and his team at Pd-m were commissioned to work with our Surgical Technologies research group on the commercialization of a medical device here are the University of Leeds.

We needed Pd-m’s expertise in converting a research-level concept into an innovative, realisable and manufacturable product which we could present to commercial partners for a license deal.

The project required Richard and his team to work closely with a multidisciplinary team including academic researchers at the university, surgeons at Leeds Teaching Hospitals and commercial partners.

Pd-m were instrumental in helping to deliver a robust prototype for evaluation in a product live trial at the project’s culmination, ensuring that it was a success.

In summary, Richard and his team are a professional innovation consultancy and I can highly recommend them."

 Amanda Scacchetti spoke about developing a market for her company's reconditioned pushchairs which she described as tantamount to a start-up.  She spoke about the coordination of technical and marketing staff within the business, the market research that was undertaken, the financial planning and the not-inconsiderable risks that were taken in the early days. She mentioned the emotional attachment that families develop for their children's pushchairs and how some actually conducted farewell rituals as though they were seeing off a member of the family.  She reported that the scheme has been a success and has actually boosted sales of new accessories.

The last presentation was on the development of a cap for cooling the scalp of patients undergoing chemotherapy by academics of the University of Huddersfield for Paxman Coolers Ltd. The purpose of the cap is to protect hair follicles from chemotherapy drugs by cooling the scalp to a temperature that impedes blood flows. The device is in use in hospitals around the world and patients wearing the cap report relatively little hair loss. Apparently it took several iterations with different tools and materials to perfect the product and several samples of the device were demonstrated to us.  Patrick Burke proudly told us that his company had two UK and two "world patents" for the cap.  Had there been time for questions I would have asked him about Paxman's IP strategy, in particular, the countries in which patents were sought, whether any of the applications had been granted and how they would fund the defence of a revocation claim or an infringement action given the cost of IP litigation in this and other common law jurisdictions. Sadly, there was no time and they left the meeting before I could make my way over to them.

There was, however, time for me to greet Richard Hall whom I have known for many years and with whom I have collaborated occasionally.  It was good to renew my acquaintance with Ian Rowland of Grant Thornton and to meet his colleague, Emily. I also renewed acquaintances with Adrian Sewell who has started to practise as Tandem Patents just outside Keighley and introduced myself to Phil Stephenson of Bailey Walsh. Other folk I met after the talks included Robin Tones of RTC, Gill Watson of Kirklees Council and Leeds LEP, Jason Roebuck of Fizical Design and Tim Stern of AME.

Both the 3M Buckley Innovation Centre and Design Networth North announced some interesting networking meetings which I shall tru to attend in future.

Who owns Goodwill generated by an Employee or Partner?

1. City of Sheffield
2. Rotherham
3. Doncaster
4. Barnsley

Jane Lambert

Jay Bhayani is a well-known employment lawyer in Sheffield. When the Doncaster law firm Taylor Bracewell LLP wanted to set up an employment law department with an office in Sheffield they turned to Ms Bhayani to set one up. They agreed to make her a salaried partner and to practise from Sheffield in the name or style of "Bhayani Bracewell."

Ms Bhayani worked for the firm from 2011 until 2014 but then fell out with them. For a little while after she had left the firm they continued to practise from Sheffield in the Bhayani Bracewell name.  She sued them for passing off alleging that their continued use of the Bhayani Bracewell business name and certain other acts might lead people to believe that she was still working there. Taylor Bracewell replied that any goodwill that accrued to the Bhayani Bracewell name belonged to them and not to her.  They applied for judgment on the ground without a trial on the ground that Ms Bhayani had no real prospect of succeeding in her claim and there was no other compelling reason why the case should go to trial.

Taylor Bracewell's application came on before Judge Hacon in the Intellectual Property Enterprise Court ("IPEC") and his judgment is reported at Bhayani and Another v Taylor Bracewell LLP [2016] EWHC 3360 (IPEC) (22 Dec 2016). For anyone who is interested, I analysed the arguments and judgment in Case Note: Bhayani v Taylor Bracewell LLP - Goodwill generated by a Partner or Employee 19 Jan 2016.

Judge Hacon decided the point in favour of Taylor Bracewell.  After reviewing the case law he concluded that "in the general run, goodwill generated by the acts of an employee will be vested in the employer" and, similarly, "where an individual works in a partnership the goodwill generated by his acts will in the normal course vest in the partnership." However, he acknowledged that there were exceptions and considered what they might be and how they might arise. He concluded that an employee or partner acquires goodwill only in respect of activities outside the scope of the employer's or the partnership business. Applying that rule to the facts of the case before him. His Honour could find no reason why the general rules should not apply,

There were other issues in this case. The judge reviewed the principles by which the court can decide a case without a trial, the difference between reputation and goodwill for the purpose of an action for passing off and whether there was any scope for arguing that Taylor Bracewell's registration of the Bhayani Bracewell trade mark should be revoked on the ground that it was likely to mislead the public. Should anyone wish to consult me on any of those points, call me on 01484 599099 during office hours or send me a message through my contact form.

Leeds Innovation District

Yesterday the Executive Board of Leeds City Council, which is the principal decision making organ of the local authority, approved a report by Tom Bridges to

"Support the formation of a partnership between Leeds City Council, University of Leeds, Leeds Beckett University and Leeds Teaching Hospitals Trusts; to further develop the concept of an innovation district for Leeds."

You can watch the speeches by Councillor Blake, leader of the Council, and Councillor Carter, leader of the Conservatives, on the local authority's webcast player.

The report describes the innovation district as "a catalyst for productive, sustainable and inclusive economic development." It hopes that it will enable creation and growth of firms, inward investment by enabling businesses, entrepreneurs, universities clinicians and government leaders collaborate across sectors, organizations and disciplines, expand job and educational opportunities for people and inspire young people around the range of potential career paths in the modern economy.

The report refers to the concept of innovation districts developed by the Brookings Institute (see Bruce Katz and Julie Wagner The Rise of Innovation Districts, A New Geography of Innovation in America). According to those authors:

"Innovation districts constitute the ultimate mash up of entrepreneurs and educational institutions, start-ups and schools, mixed-use development and medical innovations, bike-sharing and bankable investments—all connected by transit, powered by clean energy, wired for digital technology, and fueled by caffeine."

Mr Bridges's report considers two examples of innovation districts, one in Boston and the other around King's Cross in London.  It is worth pointing out that Katz and Wagner referred to many more and actually identified three possible models for innovation districts.

Mr Bridges lists the city's assets as:

• two universities; 
• Leeds General Infirmary (one of largest teaching hospitals in Europe); 
• leading art and music colleges; 
• the UK’s largest financial and business services sector outside London; 
• a fast growing digital sector; 
• the UK’s only global internet node outside London; 
• a successful retail core; 
• major cultural attractions (the only city centre outside London that is home to major opera, theatre and dance companies); and 
• the busiest railway station in the north of England.

It refers to other investments in  the city such as the Victoria Gate shopping centre and the arrival of the high speed rail and observes that an innovation centre

"provides an opportunity for further expansion on land freed up by consolidating hospital and local government functions on a smaller geographic footprint. More importantly it can help ensure the city makes the most of its existing leading-edge facilities and functions in this part of the city, as well as major new developments such as the University Innovation and Enterprise Centre."

It then proposals a timetable for further work together with a recommendation for the necessary funding.

I shall follow this proposal closely as it develops. If anyone wants to discuss this article or innovation in Yorkshire generally he or she should call me on 01484 599090 during office hours or contact me through this form.

Ten Top Tips for Yorkshire Inventors

Probably the most famous Yorkshire inventor is Percy Shaw who invented cat's eyes. Shaw patented his invention and set up a company to manufacture it. After a slow start his company manufactured over a million road studs a year. He ran a Rolls Royce and received an OBE in 1965 (see Reflecting Roadstuds Ltd.'s History page). Not every inventor can be as successful as Percy Shaw but his life story shows how it is possible for a man of very humble origins and limited education to exploit a bright idea spectacularly well.

Here are some tips on how to do it.

Tip No. 1 - Make sure you own the invention

Although the inventor is primarily the person who is entitled to an invention there are some who take priority over him or her. Employers, for example, if the inventor is employed in an R & D department or in some other job in which he or she might be expected to come up with an invention. Product design consultants are another group of people who would not normally claim an invention that they had helped to develop. This was not a problem for Percy Shore because he was self-employed contractor when he made his invention. Check your contract of employment and contact me or some other professional advisor if in doubt.

Tip No. 2 - Keep quite bout the invention until you are ready to exploit it 

You know the good old Yorkshire song that begins "Hear all, see all, say nowt". It makes very good sense for inventors. Patents confer monopolies which can be granted only for inventions that are new. "New" for this purpose means something that is not part of the "state of the art", that is to say the sum of human knowledge at the date of application for a patent. If you go blabbing about your invention it ceases by definition to be new and, thus, not patentable. Not only that it makes it very difficult to protect the invention in some other way such as the law of confidence. Best to keep your trap shut at all times except when talking to people who might help you protect your invention such as lawyers or patent attorneys, design or develop it such as product designers and development consultants and, of course, potential partners or investors who will help you make and market it.

Tip No. 3 - If you do need to discuss your invention do so in confidence

That brings me onto Tip No 3 that if you do need to discuss your invention with anyone do so in confidence.
An obligation of confidence is a duty not to disclose or misuse or disclose information that has been disclosed in confidence without the discloser's permission or other lawful excuse. Such an obligation arises automatically in some cases such as when you consult a lawyer or patent attorney. In other cases it is sensible to get the other party to sign a confidentiality or non-disclosure agreement. Such an agreement should specify the information precisely. It should require the other party to keep the information under wraps except when in use. It should state the purpose of any disclosure, whether the information can be shared with anyone else, whether documents  can be copied and when they are to be returned.   It is then up to you to police and enforce the conditions of the disclosure. I gave a presentation to the Leeds Inventors Club on confidentiality on 14 June 2006 and have written several articles on the subject such as Confidential Information on 12 Nov 2006 in my Inventors' Club blog. Though they were published 10 years ago the law has not changed much. If you need further information on the topic  do get in touch with me.

Tip No. 4 - Be particularly careful when approaching potential licensees

A lot of people write unsolicited letters to manufacturers or retailers whom they believe could be interested in the invention in the hope that they will develop it, put it into production, market it and pay them some money for their idea. That is nearly always a mistake. In most cases the letter ends in the bin and nothing more is heard from the manufacturer or retailer except a short acknowledgement. The reason for that is that many businesses have more than enough ideas that never see the light of day from their own R & D or marketing staff and they would risk a strike or at the least a lot of resentment by such employees where they to run with an idea from outside the business without good reason. Moreover, if the unsolicited idea is taken up the recipient is under no duty to pay the person who had the idea any money or even to give him or her any recognition unless the recipient receives the idea in confidence or the person who had the idea applies for a patent. There are, of course, exceptions. The NHS has set up a number of innovation hubs such as Medipex to develop its employees' inventions and a few companies such as Procter & Gamble and Boots invite submissions from members of the public but even then you should take care and seek professional advice if in any doubt. That was not a problem for Percy Shaw who set up a company to manufacture his own road studs. For many inventors, that is the best way forward.

Tip No 5 - Treat invention promotion companies with caution

Invention promotion companies are businesses that offer to evaluate an invention and bring it to market. They advertise widely in the press and on the internet.  There are some reputable companies such as the NHS hubs that I mentioned above and I am aware of one not-for-profit enterprise that has been formed by an inventors' club in Lancashire but many are not. The Intellectual Property Office warns in Seeking intellectual property advice:

"Some unreliable firms promise to evaluate your invention for a fee of a few hundred pounds. They then tell you that your invention has great market potential. They may offer to promote your invention to manufacturers if you pay a fee of several thousand pounds up front. Once you have paid up, they may do little or nothing for you."

Very few invention promotion companies offer information or services that are not available free of charge or for a modest fee elsewhere.

Tip No. 6 - Use the Business and IP Centres

One of those resources is the Business and IP Centre at the British Library in London which supports business owners, entrepreneurs and inventors with a comprehensive collection of databases and publications for free, as well as attend practical workshops, one-to-one advice sessions and inspiring talks. The Centre has a Facebook page, Linkedin group and twitter account.. There are also Business and IP Centres in Leeds Central Library which also holds a regular patent clinic, enterprise club and inventors' group and Sheffield Central Library which has Mr Roger Tipple, an innovator in residence, as well as inventors' club and patent clinic. I should add that I set up and chaired the Leeds and Sheffield inventors' clubs for many years and that that I also hold patent clinics at the Business Innovation Centre in Barnsley on the second Tuesday of every month.

Tip No. 7 - Think about the IP protection you need when drawing up your business plan

Patents are expensive to acquire, maintain and enforce and may not be what you need. In  order to obtain a patent you have to teach those with the relevant knowledge and skills ("skilled addressees") how to make or use the invention after the patent has expired, lapsed or been revoked. As patents are territorial anyone with such knowledge and skills outside the UK can make or use the invention unless you seek a patent for his or her country too. There are often better ways in which you can use your money. A good exercise when writing your business plan is to:
(1) identify the income streams for your business over the planning period;
(2) consider the threats to those income streams over that time;
(3) think about possible counter-measures to those threats most of which are going to be careful;
(4) if some of those counter-measures are going to be require an intellectual property right choose the one that is most likely to protect the income stream; and
(5) ensure that you have the funding to enforce your intellectual property right.

Tip 8 - Consider IP insurance

IP litigation is still expensive and most legal indemnity policies exclude it. However there are some brokers who specialize in such cover and can give you a very competitive quotation. You can also get policies to protect you against revocation or invalidity claims or actions by third parties for the infringement of their rights.

Tip 9 - Consider all funding options

For many years banks were the first and last port of call for inventors but it has now become increasingly difficult to raise money from them. There are now other options. You can raise capital through business angels, venture capitalists and crowd funding. You can raise working capital or other short term loans community development financial institutions such as the Business Enterprise Fund and peer-to-peer lenders.

Tip 10 - Take professional advice 

Professional fees can be expensive but you've heard the expression about spoiling the ship for a ha'p'orth of tar. If you need legal or other professional advice get in touch with me on 020 7404 5252 or through my message form and I will point you in the right direction.