Saturday, 24 October 2015

Why you need an IP Strategy - even if you don't export

Yesterday I attended the Daresbury Business Breakfast Networking Event at the Park Royal Hotel in Stretton. After the meeting Tony Brown and Sara Knowles of UK Trade and Investment gave a very interesting talk entitled UKTI Services - how to internationalise your business. I hope to get the slides for that talk and I shall make them available to you in this blog if I do.

During his talk Tony listed some of the questions that he he is often asked by small and medium enterprises. Three of them were on IP topics:
  1. What can I do to protect my business if I can't afford a global patent?
  2. How do I protect my brand internationally? and 
  3. How can I protect my software for US$35?
Tony's reply to the first question was protect what you can with trade marks and confidentiality. There were three patent and trade mark agents in the audience plus me and we all stuck our hands up at that point because we wanted to make clear that trade marks protect brands and not technology for which you need a patent. To be fair Tony acknowledged and clarified that point. His answer to the second question was to apply for a trade mark in key markets possibly through OHIM or the Madrid Protocol. The answer to the third question was that $35 was the cost of registering a copyright with the Library of Congress. I pointed out that the USA was party to the Berne Convention and that registration was required not for subsistence but for enforcement.

At that point Paul Treloar, Business Support Manager at Sci-Tech Daresbury, intervened to say that these are difficult legal issues for which businesses should take the appropriate professional advice. Realizing that not everybody can afford a patent or trade mark agent or specialist IP lawyer I mentioned the excellent materials available on the IPO, European Patent Office, OHIM (EU trade marks and designs registry) and WIPO (UN specialist agency for intellectual property) websites and the services of the Business and IP Centre of the British Library and its associated libraries in Manchester, Liverpool, Leeds, Sheffield and elsewhere.

It also prompted me to stress the need for an IP strategy which takes account of enforcement as well as registration of IP rights.  I have suggested the following simple one many times but it does bear repetition.
  1. When writing your business plan consider where your revenue is likely to come over the period for which you are planning.
  2. Consider the potential threats to those revenues streams. I don't mind betting a penny to a pound that most of them will be commercial like a competitor brings out a better product or the market for the product will become satiated.  Ripping off your idea or claiming an association with your brand is not the primary worry for most businesses though it does happen.
  3. Consider the counter measures to those threats. Again I would wager that most of these will be commercial like lower your prices or develop an improved model. Only in a few cases will you need legal protection for your brand, design, technology or work of art or literature.
  4. If you do need legal protection tailor that protection to meet the precise threat. You may have a brand new, earth shaking technology but if consumers are attracted to the shape of your product then it is the design that you need to protect with a national or EU design registration rather than a patent.
  5. Prioritize your protection to your principle markets and the countries in which your competitors operate. Very few businesses can afford or even need blanket protection in every market of the world.
  6. Consider how you will enforce your rights in each market. Don't assume that the authorities will prosecute infringers on your behalf. Not all infringements are criminal offences. Art 61 of the TRIPS agreement requires governments to provide criminal sanctions only for piracy and counterfeiting (copyright and trade mark infringement on an industrial scale) and although some countries such as ours do a little more adding bootlegging and most recently intentional copying of registered designs to the list of IP offences many other countries do not. Do not assume that a lawyer will act for you on a no win, no fee basis - at least not in this country now as success fees are no longer recoverable from your opponent. If you can't afford to fund an action out of your current account then you should consider some kind of IP insurance.
I have offered to train UKTI's advisors in these matters if they so wish and that offer extends to other organizations that advise and assist small and medium enterprises. If anyone wants to discuss this article or IP strategy in general, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Friday, 9 October 2015

Vaping a claim - Fontem v Ten Motives

In Easyair Ltd (t/a Openair) v Opal Telecom Ltd [2009] EWHC 339 (Ch) (2 March 2009),  Mr Justice Lewison, sitting in Manchester, said at paragraph [15] of his judgment
"it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it."
Patent cases often turn on a question of construction because the monopoly granted to a patentee is set out in a series of numbered paragraphs called "claims".

In Fontem Holdings 1BV and anther v Ten Motives Ltd and Others [2015] EWHC 2752 (Pat) (2 Oct 2015), another case from North West England, a Cheshire business which marketed and distributed e-cigarettes was sued by one of its competitors for patent infringement. The claimants alleged that two of the defendants' products fell within the claims of their patent.  The defendants applied for summary judgment under CPR Part 24 .  The action turned on the construction of claim 1 of the patent and the defendants invited the judge to construe it in their favour.

Mr Justice Norris refused to do so. Patents are addressed to "persons skilled in the art", that is to say persons with the skill and knowledge needed to make or use the invention and judges have to construe patents from the perspective of such persons. In order to do that they require expert evidence as to how a skilled addressee would read the patent. Expert witnesses can inform the judge whether any of the terms used in the patent has a special meaning, how the addressee would interpret the drawings and what technical knowledge would be expected of such persons.  Such evidence is often hotly disputed as it was in Fontem Holdings. Even though he referred to Easyair  in his judgment Mr Justice Norris did not think that he could construe claim 1 without such evidence. That is the crucial difference between the two cases.

In  How to read a patent 2 Aug 2013 IP London I explained how patents are presented and how they are to be read and understood.  For those who want more basic information I wrote "So what's a patent" on 6 Sept 2014 in IP East Midlands and What is a Patent? Why might I want one? How do I get one? on 19 March 2014 in IP South East. For those who want more detail I have discussed Fontem in Summary Judgment in Patent Cases: Fontem Holdings 1BV and Another v Ten Motives Ltd and Others 8 Oct 2015 NIPC Law.

Mr Justice Norris's decision in Fontem is important for another reason. The patent that he was asked to construe was a European patent, that is to say one issued by the European Patent Office in Munich as opposed to the UK patents which are issued by the Intellectual Property Office in Newport. European patents are usually granted simultaneously for several European countries one of which may be the UK. For the first 9 months after the grant of a European patent can be challenged in the European Patent Office by a procedure called "opposition" under art 99 of the European Patent Convention. After those 9 months have expired a European patent can only be challenged in the courts of the countries for which the European patent is granted.

If an opposition succeeds the European patent is revoked and any infringement proceedings that have been launched fail automatically. The only problem with opposition proceedings is that they can take a long time during which time the patent remains in force. Sometimes the courts will stay infringement cases until after the opposition proceedings have run their course.

There was an opposition in Fontem Holdings and the defendants applied for a stay of the infringement action in England until after the opposition proceedings in the European Patent Office had been resolved in case their summary judgment application failed.  The judge refused that application as well. In reaching his decision he weighed the interests of the parties in very much the same way as he would consider an interim injunction application and he decided that the balance of justice law in allowing the infringement action to continue. That is not to say that a stay will be refused in every case. Each case is to be decided on its own facts.

If anyone wants to discuss this case or patent law in general, he or she should call me on 0161 850 0080 or 020 7404 5252 during office hours, or send me a message through my contact form.

Saturday, 29 August 2015

Venturefest Manchester

There has been a Venturefest in York since 2005 and one in Oxford for even longer. Over the years there have been Venturefest events in Bristol, the East and West Midlands and other parts of the country. Last year there was the first in Manchester. On the 22 Sept 2015 the second Venturefest Manchester will take place at Lancashire County Cricket Club at Old Trafford.

As its name suggests Venturefest is a festival of enterprise. It brings together business, the professions, education and local government in an all day conference and exhibition. The event is organized by the Business Growth Hub and sponsored by InnovateUK and the Knowledge Transfer Network.

The event will begin with business breakfasts at 08:30 on life sciences, investment and graphene, a welcome from Mark Edwardson, the keynote speech from Sir Howard Bernstein and then parallel events in different rooms (see the Agenda).  One of those events will be the Innovation Showcase competition the winner of which will receive
"a unique package of business support worth up to £30,000 and including a year’s free space at the Sci-Tech Daresbury, support around accountancy, patents and legal issues and a range of marketing and PR services."
Exhibitors include Lancaster, Manchester and Salford universities, the Intellectual Property Office, UK Trade and Investment, local business angels, science parks and patent agents.

You can register for the event through the Business Growth Hub website. I shall be there and I shall look forward to meeting you.

Wednesday, 3 June 2015

An Introduction to Intellectual Property for Commercial Lawyers

Jane Lambert

These are the slides of a presentation that I gave to Manchester Trainee Solicitors Group at the Manchester Study Centre of BPP University on 29 April 2015. As I had been told that all the members of the audience would be law graduates but few (if any) would have any training or experience of intellectual property law I discussed the following topics:
  • Intellectual property and intellectual assets
  • International legal framework for IP
  • Institutions
  • Types of IP
  • Choosing the right kind of IP
  • Practical tips
  • Enforcement
  • Contracts relating to IP.
I circulated a handout to delegates which can be downloaded here.

Anyone who wishes to discuss this presentation or my article should call me on 020 7404 5252 during office hours or use my contact form.

Monday, 2 March 2015

Jean Wars - Lessons from G-Star Raw v Rhodi

Photo Wikipedia

In G-Star Raw CV v Rhodi Ltd and Others [2015] EWHC 216 (Ch) (6 Feb 2015) a group of companies in Preston and two of their directors were sued by one of Europe's leading denim fashion brands and designers of contemporary urban garments for unregistered design right infringement. Design right is an almost uniquely British intellectual property right that protects investment in product designs. It applies to the "shape or configuration (whether internal or external) of the whole or part of an article".  I have written an introduction to design right law in Unregistered Design Rights: Overview 18 Sept 2008 IP Yorkshire.

In this case the defendants were accused of importing into the UK and selling jeans that had been manufactured abroad that reproduced the claimant's "Arc Pant" designs knowing or having reason to believe that they were infringing articles. The case came on before Mr Richard Spearman QC sitting as a deputy judge of the High Court who decided against the first, second, fourth and fifth corporate defendants but not the company directors. I have written a short note on this case at Unregistered Design Rights: G-Star Raw v Rhodi 28 Feb 2015 NIPC Law.

Design right is one of a range of intellectual property rights of which the garment trade should be aware. Other rights include 
  • copyright which protects the artwork for fabric designs from copying for the life of the designer plus 70 years, 
  • registered designs and registered Community designs which confer monopolies of the appearance of new designs having individual character for up to 25 years, 
  • unregistered Community designs which confer 3 years protection from copying on designs that could be registered as registered or registered Community designs, 
  • registered trade marks and the law of passing off which protect brand names and logos.
It is particularly important for such businesses to know about registered and registered Community designs because it has been an offence since the 1 Oct 2014 to make a product exactly to a registered or registered Community design or with features that differ only in immaterial details from that design knowing or having reason to believe that the design is registered under s.35ZA of the Registered Designs Act 1949. This new offence is one of many changes to design law that were introduced by the Intellectual Property Act 1949 (see Reflections on the Intellectual Property Act 2014 7 June 2014 4-5 IP.

Just to the North of Manchester's Piccadilly station lies one of the largest concentrations of garment manufacturers, importers and distributors in the UK. The Liverpool law firm QualitySolicitors Jackson Canter has recently opened an office at 111 Piccadilly with a view to serving that industry. On 20 April 2015 between 16:00 and 18:00 QualitySolicitors Jackson Canter will hold a workshop at that office entitled Protecting your Brands and Designs: IP Advice for the Fashion Trade at which Alex Rozycki and I have been invited to speak.  

Alex is an expert on IP crime and he has also spoken on the subject to the Merseyside meeting of the Chartered Institute of Patent Attorneys. Our chambers are recognized for their expertise in IP law relating to fashion and luxury goods which is why Alex and I were invited to speak to IALCI (The international association of lawyers for the creative industries) at the St Pancras Pullman in London on 10 Feb 2015 and at seminars in London and Paris on the "Paradox of Fashion" organized by the Franco-British Lawyers Association. You can download my slides to the IALCI seminar from IALCI Seminar: Enforcing IPR in England and Wales 13 Feb 2015 4-5 IP. The other speaker at the event will be Mr Michael Sandys, Director and Head of Commercial at QualitySolicitors Jackson Canter.

This workshop will cover just about everything on IP that businesses in the garment trade need to know including in particular the changes to the law brought about by the IP Act which I discussed in detail in How the Intellectual Property Act 2014 changes British Registered Design Law  19 June 2014 and How the Intellectual Property Act 2014 will change British Unregistered Design Right Law 11 June 2014. This is a workshop that you really can't afford to miss. Admission is by invitation only and demand is likely to be brisk. If you want an invitation or indeed if you want to discuss any aspect of fashion law including Mr Spearman's judgment in G-Star Raw call me on 020 7404 5252 during regular office hours or fill in my contact form.

Monday, 29 December 2014

Ice Cream Van Case shows the Value of Design Registration

Royal Courts of Justice, London
Photo Wikipedia

The decision  of Mr Justice Arnold in  Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and others [2014] EWHC 4242 (Pat) (17 Dec 2014) shows the value of design registration. It costs relatively little and is very quick because there is no substantive examination unlike patents and trade mark registration. Unlike claims for unregistered design right infringement there is no need for the registered proprietor to prove copying or knowledge of the infringement on the part of the defendant. However, if copying and knowledge of the registration can be proved the infringer may now be prosecuted under s.35ZA of the Registered Designs Act 1949.

In the case that I just mentioned above a Crewe specialist vehicle converter successfully sued a company in Leeds and the individuals behind it for registered design, unregistered design right and trade mark infringement. I have set out the details in Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others 27 Dec 2014 NIPC Law.

The claimant converts commercial vehicles into ice cream vans. One of its models, the Whitby Mondial, wis based on the Mercedes Sprinter. The company registered the design of the Mondial under the Registered Designs Act 1949. Because all ice cream vans share a lot of common features and designers are constrained by technical, commercial, regulatory, cost and practical restraints the registration afforded a relatively narrow scope of protection but it was enough for the purposes of this litigation.

The judge found that the defendants had purchased one of the claimant's converted vans, made moulds from its parts and used those moulds to make a competing product called the Millennium. The copying was so blatant that the defendants even reproduced the claimant's trade mark.

Design registration is relatively straightforward and many businesses do it for themselves. You can find a lot of information on the Register a Design page of the Intellectual Property Office website. It is usually a good idea to instruct a patent or trade mark attorney to assist you. If you do not already have a patent or trade mark attorney you can search the databases of the Chartered Institute of Patent Attorneys or Institute of Trade Mark Attorneys through their websites. Alternatively, you can call my clerk Steve or George on 0161 850 0080 and he can give you the names of several with whom I or my colleagues have worked successfully in the past. Probably nobody is in a better position to judge whether an attorney knows his or her stuff than counsel for the reasons I explained in IP Services from Barristers 6 April 2013 4 to 5 IP.

If you want to discuss this case or design registration in general give me a call on 0161 850 0800 during office hours or use my contact form.

I wish all my readers a happy New Year.

Wednesday, 10 December 2014

Let's Take this Opportunity with Both Hands

Granada TV Studios, the Site for the Factory Arts Centre
Photo Wikipedia

There has been a lot of talk about "the Northern Powerhouse" lately.  In my article on the Northern Futures Summit in my IP Yorkshire blog I compiled a bibliography of articles that I and others have written about it. Now there is a commitment from HM Government to make it happen. On page 48 of his Autumn Statement, George Osborne, a local MP as well as Chancellor of the Exchequer, announced that HMG will invest over £7 billion in transport, science and technology and the arts and leisure to create a "Northern Powerhouse".

The transport investment will include upgrading the trans-Pennine rail system which may include a high speed railway ("HS3") and improvements to the Liverpool docks and across the Pennines. Bidders for the new rail franchisees will be required to increase capacity by 20% with new rolling stock and to improve station facilities.There will be similar improvements to road and rail connections in Yorkshire and the North East.

Investments in science and technology will include a centre for materials science based at Manchester University with satellites in Leeds, Liverpool and Sheffield, a Cognitive Computing Research Centre in Daresbury, a new National College for Onshore Oil and Gas in Blackpool and an Energy Security and Innovation Observing System at Thornton. The Chancellor gave details of these developments when he visited the Museum of Science and Technology on 8 Dec 2014 (see the press release "Chancellor puts science at heart of Northern Powerhouse" 8 Dec 2014).

Investments in the arts will include a Great Exhibition in the North to celebrate art, culture and design in the region, a massive new theatre and arts centre on the site of the Granada studios to be known as "The Factory Manchester" and various arts projects in all the Northern cities to commemorate the First World War. Of all the investments announced by the Government it is The Factory that has aroused most interest. On its website Manchester City Council wrote:
"The Factory Manchester will play an integral part in helping Manchester and the North of England provide a genuine cultural counterbalance to London, supporting the city and region's growth."
The Council estimates that the Factory Manchester will create 2,300 jobs and generate revenues of £134 million per year within 10 years.

This investment in communications, manufacturing, science, technology and the arts is bound to result in new businesses, designs, inventions and works of art and literature all of which will require legal protection. We shall continue to advise on the legal issues that may arise from time to time. Should anyone wish to discuss this article, the Northern Powerhouse or the Autumn Statement in general he or she should call me during office hours on 0161 850 0080 during office hours or click my contact form.

Further Reading