Tuesday, 25 November 2008

News Update: Clinics and Training and Liverpool Inventors' Club

I made my presentation to the Liverpool Inventors' Club on the economic downturn and what inventors can do about it to a good turnout yesterday.  We welcomed a lot of new faces including Sean Thomas (whose picture appears to the left) and Guy Towlson of Marks and Clerk, David Ewing of D E Consultancy and inventor Ray Mullin as well as a lot of familiar faces.   

A copy of my slides appears on Slidershare which is also also on my LinkedIn profile. I know the slides are dated 15 Oct but it is essentially the same talk.

I shall be giving the same talk to the Sheffield inventors club on 1 Dec at 18:00.

We had a very lively discussion after my presentation.   There were 4 inventors who felt pretty disillusioned with the intellectual property system and were pretty gloomy as to their prospects in the downturn.   The rest of us (particularly the professionals in the audience) tried to cheer them up.   I did point out that there are advantages in starting a new business in a downturn if only because it should lift off on the upturn.  My talk coincided with the Chancellor's announcement of a "fiscal stimulus" and while the economies of Western Europe and North America may be in the doldrums there should still be opportunities for growth in the BRICs states and elsewhere.

The other thing to announce is that we have now uploaded our training website at www.nipc-training.co.uk.   We run two series of courses:
  • advanced courses for IP specialists known as the staff college;
  • introductory and intermediate courses for non-specialist lawyers and the general public known as the IP academy.
Both sets are accredited by the SRA fopr CPD points and we will seek ad hoc accreditation from the BSB should anyone from the Bar wish to attend.

Finally we run a series of IP clinics in Yorkshire which we are keen to extend to the North West.   To get some idea of what they are and what we do visit www.nipc-clinics.co.uk. If any IP specialist from the North West wants to help with any of these please let me know by filling the on-line patent request form.

Thursday, 20 November 2008

Business North West

I popped into Business North West at G-Mex earlier today. It was OK, I suppose, but with the pride of a native Mancunian I had hoped for something like Venturefest on steroids and it was nothing like that. Venturefest attracts most of the big law firms and patent agents in Yorkshire. The IP Office was at Business North West as were Ralli solicitors. Aaron are advertised as exhibitors on the show's website though I never found them. And that was about it from the law. I didn't spot any patent or trade mark agents there either as exhibitors or visitors. For a show that is supposed to be about branding, design, innovation, investment, the absence of most of the North West intellectual property community says a lot. Most of the other exhibitors were firms I had never heard of.

Some good speakers have been advertised.    Stephen Haines of Facebook might have been worth hearing but he was on at 08:30 which is ridiculously early unless you live or staying nearby since Manchester traffic is so bad that you have to allow at least an extra hour for traffic at that hour of the morning. They really do need a congesiton charge in that city but I saw vote no signs everywhere including Business North West's website. Max Clifford is taking the same slot on Thursday.   I would have heard him had be spoken at a reasonable time but he is not worth a 2 hour battle with traffic. G-Mex (or Manchester Central as they like to call it nowadays) is probably not the best venue for an event of this kind. The G-Mex car park was full when I called in and the Watson Street car park had a problem with its exit barriers which held me back a full 25 minutes.

There were a few stands that caught my attention. Top of my list was Crain's Manchester Business which has some good local business news. Armstrong Communications had some interesting technology and the Gaucho Grill was serving bife with wine from Mendoza.   Steve Kuncewicz had at least made an effort by displaying a one page glossy on IP on his firm's stand.   I am not sure that I agree with his assertion that 
"Against the background of the Credit Crucnch, the exploitation and protection of Intellectual Property Rights has never been more important and IP, IT and Media cases dominate the headlines every day."
Not the headlines of the papers I read, Steve.   When I went to the WIPO last month Francis Gurry reported a ownturn in Madrid applications and reported and feared a drop in PCT and Hague applications too.

Tomorrow was the day that I had intended to come but as I happened to have a free hour as a result of the last minute cancellation of the Enterprise Day at the Barnsley Digital Media Centre I thought I would have a quick look round.    I thank I saw just about everything in the 50 minutes that I was there.   Nothing that I saw has tempted me to come back.

Thursday, 13 November 2008

Upcoming Events

Here are some events at which I am speaking that some of you may wish to attend:

19 Nov 2008    Barnsley Digital Media Centre "Women in Enterprise" I am giving a talk on IP, Trade marks and copyrights at 10:00 and offering pro bono advice on IP, media and technology law between 11:00 and 13:00

I shall also be chairing a meeting of the Leeds Inventors Club at Leeds Central Library between 18:00 and 20:00.

24 Nov 2008
I shall be speaking to Liverpool Inventors Club on "How the coming Economic Downturn will affect Inventors and what they an do about it" between 17:00 and 19:00 at Central Library William George Street.Liverpool.

5 Feb 2009   I shall be speaking and chairing a seminar on software patents in the UK and US and the consequences for the industry following Symian and Bilski with speakers from patent agents WP Thompson and hopefully the Intellect, IP Office, Kirwans and the NCC at Martins Buildings, Water Street Liverpool from 14:00 until 17:00 (2 1/2 hours CPD points from the SRA). (Cost £75 + VAT)

11 Feb 2009   I shall be chairing and speaking at a workshop on branding law with patent attorney Janet Bray at the Elsie Whiteley Innovation Centre Halifax between 14:00 to 17:00 (2 1/2 hours CPD points from the SRA) Cost £50 + VAT.

23 April 2009   Brass from Gumption all day celebration of World IP Day with seminar, clinics, exhibition and much more at Gumption Centre Bradford.

If anybody has any other IP events in the North that he or she wishes to promote please let me know. I shall post it on the IP North West or IP Yorkshire calendar as the case may require.

Finally, I need to correct an error in the November IP North- West and IP Yorkshire newsletters which were mailed today.   I indicated that we already had BSB accreditation for our courses on 5 and 11 Feb 2009.   That was based on a misinterpretation of a statement on the BSB's website that seemed to suggest that all barristers' chambers and bar associations qualified automatically as CPD providers. I have checked with the BSB who point out that the courses would also have  to be approved by them in advance. We are confident that we would get their approval but we would have to pay them £45 for each course. As we want to keep overheads low we shall only pay that fee if another barrister gives us at least 14 days notice that he or she wants to attend one of those courses.   If any barrister or indeed anybody is disappointed, please accept my apologies.

Tuesday, 4 November 2008

Educating Samuel: No. 1 Added Matter


The talk on brand protection in tiddlywinks somehow attracted a good number of serious looking fresh faced young assistants and trainees from Addleshaws, DLA, Eversehds, Hammonds and so on Ito the LES meeting the other day, but there were a few familiar faces. Bob Stringer and Lucy Ball from Tebbits, Gary Grail and Will Furry from Callaghan Cannon, Sebastian Goat of Hannibals and Mr Samuel Pepys of Deweys (recently rebranded from Dewey, Screwem & Howe). Purchasers of my book "Enforcing Intellectual Property Rights" will be able to read about my con with Mr. Pepys where I rescue him from the likelihood of a threats action as well as a great deal more.
As it happened Mr. Pepys parked himself next to me when we assembled for dinner at La Pattumiera, the trendy new eating place which was the venue for our meeting.   After shaking hands and exchanging business cards with 2 weedy-looking, bespectacled technical assistants from Applecores sitting opposite us and studiously avoiding Sebastian whom he had known from a previous life Samuel turned to greet me and froze.
"Anything the matter, Sam?" I asked.
"Good Lord," replied Sam, "Are you who I think you are?"
I reminded myself that it had been a very long time since Sam last darkened the door of my chambers and that he had probably not been aware that I was transsexual and that I had changed my name since we last met.
"Who do you think I am?" I teased.
"Well you do remind me of a barrister I once instructed but - er - he, I mean she, I mean the barrister was different."
"Different in what way," I prompted.
"Well you've got more hair".
"And you've certainly got less" I replied. "Must be the cares of office since you got equity at Deweys."
"You knew about that?"
"Yes you told me. More than once in fact"
"Oh!" said Sam. And then he repeated himself.
Realizing that I would have a very tedious evening unless I made some conversation I asked him what he was doing nowadays.
"Well actually John ...."
"Jane" I corrected
"Well John I mean Jane, I happen to have a patent case."
"Oh really. Who's doing it for you?"
"Oh Nigel Smith as it happens. Do you know him."
"Oh yes" I replied. "You were instructing him when we last met. I seem to remember he got rather a buffeting from the V-C at Liverpool motion day."   I know motion day is now called "chancery interim applications day" but that's rather a mouthful.
"Well I do support the local bar. Mr. I mean Ms. Lambert."
"You mean you've done the rounds of the patent sets and run up all the credit you can in Lincoln's Inn," I said to myself, sottissime voce.
"Well I was wondering whether I could pick your brains, Jane, seeing as we've met again."
'Picking brains'  is solicitor speak for baksheesh advice. Often it is preceded with a tempting inducement like "I'm not yet in funds but just as soon as I am you'll be hearing from me."   Sam knows me better than to try that one on. However, curiosity as to the sort of scrape into which Sam had landed himself got the better of me.
"Course you can, Sam" I replied with a smile. "Fire away."
"Well we're for the claimants and Nigel says we have a slam dunk case and I think so too. But the other side won't make an offer. In fact they say our patent is invalid. They warn us that they will counterclaim for revocation under s.72 (1) (d) of the Patents Act 1977 if we issue proceedings. Nigel says that there is nothing to worry about and that Fowl & Fowl are bluffing. And I am sure he is right but I thought it wouldn't hurt to get another opinion."
"Especially if you don't have to pay for it", I thought.
"OK. Well what do you want to ask me exactly." 
"Well the patent agents told us that we ought to amend our patent before we tried to sue because an infringer could argue that there was too much old fashioned artwork or something....."
"I think that they probably said was your specification did not disclose your invention clearly enough and completely enough for it to be performed by a person skilled in the art", I suggested.
"Yes, I think they did as it happens, John"....
"Jane" I interrupted
"How did you guess that?"
"Well I didn't actually but s.14 (3) of the Act requires the specification of a patent application to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art."
"Who is this artist person Jo.... Jane?"
Oh there's a lot of case law, Samuel, going back over at least a century and it would take me far too long to go through it with you but just think of him or her as someone in the relevant industry with the skills, knowledge and experience to make the invention from the specification."
"But he can't do that, can he? At least not for 20 years. The patent is supposed to be a monopoly of the invention, isn't it. A bit like a copyright only you don't have to prove copying." He implored.
"So long as the patent is valid and subsisting" I corrected. "It's a deal between the inventor and the public whereby the inventor discloses to the world how to make or use his or her invention and the public gives him or her a conditional monopoly in return".
"H-m-m-m" purred Sam. I could definitely hear wheels turning and gears grinding in his brain. "I never thought of it like that."
"But the conditions for patentability are pretty onerous, Sam. If you want to consider the terms, I wrote a sort of spoof about them in my blog on 6 December 2007 called "The Bargain the Public makes with Inventors".
"Anyway getting back to the point, s.14 (2) of the Act sets out the requirements for a patent application of which the most relevant for present purposes is s.14 (2) (b):
'a specification containing a description of the invention, a claim or claims and any drawing referred to in the description or any claim.'
Now the claims are very important. They set out the boundary of the invention just like the habendum and plan define the boundaries of a plot of land in an unregistered conveyance.   Take a look at s.125 (1):
'For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.'"
I could hear more clicks in Sam's mind and saw a look of amazement.
"Goodness! Do you carry all that in your head?"
"Doesn't Nigel?" I asked.
"No, but he's a very good advocate. He looks very good in court."
"As if that mattered nowadays," I thought to myself.
"Oh well, I suppose he could do the same sort of party trick with bits of the Insolvency Act or whatever has replaced the Rent Acts", I suggested.   "Look, Sam, you really shouldn't monkey about with IP cases. If you don't want to0 come to me you should at least go to someone in the IP Bar Association."
"Just like I hear that you're telling your public access clients to go to firms that belong to the Intellectual Property Lawyers' Association."
"Or solicitors who have been trained in one of those firms or otherwise know what they are doing. I have referred clients to Kate Reid and James Love in Harrogate for instance or indeed to Michael Sandys of Liverpool on this Circuit." I continued.
"Anyway! Sam, we're straying again. The point is that a claim is supposed to:
'(a) define the matter for which the applicant
seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.'
Of these, the most important paragraph is probably (c). The claim must be supported by the description.   If it doesn't the inventor is claiming a monopoly for more than he or she is actually disclosing to the public."
"And that's a no-no?"
"Yes, that's a no, no, because the patent or monopoly is suppose to be an incentive for the disclosure of the invention. And that is why one of the grounds upon which the court or IP Office can revoke a patent is that 
'the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8(3), 12 or 37(4) above or as mentioned in section 15(9) above, in the earlier application, as filed.'
and another is that
'the protection conferred by the patent has been extended by an amendment which should not have been allowed.'
"Oh!" said Samuel clearly impressed, his mouth opening and shutting like a goldfish's. "Is there any case law",
"Yes as it happens," I replied. Two recent cases. One is European Central Bank v Document Security Systems [2008] EWCA Civ 192 and Vector Corporation v Glatt Air Techniques Inc [2007] EWCA Civ 805 whcih set out the principles. Also, Robin Jacob's judgment in Corus UK Ltd v Qual-Chem Ltd [2008] EWCA Civ 1177 which was decided only last month ties everything together.   I blogged it earlier this month (Patents: Corus UK Ltd. v Qual-Chem Ltd.).
"Oh, thanks very much, John"
"Jane" for goodness sake. Look, Sam, I'm wearing a skirt."
"Yes, I'm sorry but it takes a long time to get used to things that are new."
"You can say that again Sam" I sighed. "Anyway what did the other side object to?"
"Well one of the intricates."
"I think you mean, integers, Sam".
"Yes, that's right, whatever it is. Anyway the claim referred to a 'leg' as originally drafted and out patent agents advised us to change it to 'member' because the other side had something that was not quite a leg."
"Oh, and what did the specification actually teach?"
"Oh it wasn't an educational device. I think it was some kind of assembly."
"Sorry! I've confused you. What did the specification say? Did it talk about legs or members?"
"Legs" I think.
"Well I can see why you may have a problem I said but everything depends on how the patent is construed."
"Do we have a chance?"
"I dunno. Ask Nigel. After all you are paying him enough. I suggest next time you have an IP Case you make your peace with Ginger John and the other patent clerks and go to one of their governors.   Or indeed you could come to one of us."
For the rest of the meal we discussed Sam's summer holiday at his gite. His half term in the Lakes with his kids. His skiing holiday over Christmas.
"You certainly see, to take a lot of holidays" I observed.
"Life work balance, you know, Mr Lambert. I'm sure I've told you this before. Very important when you have a family."
"I'm sure it is Sam."
We also discussed his next car purchase, whether it was to be a Lotus or Porsche.
Just before I left La Pattumiera, I spotted Dr. Princess Burreh-Hamilton, a patent attorney from Leeds who had been to school with my tenant, Lois Cole-Wilson. She had very kindly agreed to staff an IP clinic for IP Yorkshire. Having read the "Heart of the Matter"   I'd picked up a few greetings in Krio. Having exchanged elaborate greetings about each other's health and well being I asked her how she got on at her first patent clinic.
"Not bad" she replied "I'll email you about it."
That email when it arrived was hilarious.   To catch that email when you will need to register with IP Yorkshire. You will also need to register here to be sure of catching Sam's lesson in intellectual property law, one that he learned from Lucy and not from me.