Wednesday, 31 October 2018

China IP Roadshow comes to Guildford

Tom Duke

Jane Lambert

Tom Duke is our IP attaché to the Peoples' Republic of China and the Hong Kong Special Administrative Region. China and Hong are not only large and growing markets for British goods and services they also offer enormous opportunities to British investors. Particularly with the One Belt, One Road project and other initiatives which I discussed in The Shanghai Cooperation Organization 9 Sept 2017 NIPC Brexit.

As is the case everywhere, investments in branding, design, technology and creativity have to be protected in China and Hong Kong from counterfeiting and plagiarism. As a member of the World Trade Organization China has to adhere to the TRIPS agreement which sets minimum standards for the protection of intellectual assets. China has comprehensive and up to date intellectual property laws and courts presided over by specialist judges who are increasingly astute to IP infringement. It is often forgotten that more patent applications are filed from China than any other country in the world.

From time to time Mr Duke tours the UK to discuss IP protection in China with local business leaders. Last year he visited the North of England and Scotland and I chaired his visits to Leeds and Barnsley. Those meetings were very successful and have led to longstanding relationships and successful transactions (see Meet our IP Attaché in China 21 July 2017 IP Yorkshire).

Mr Duke is about to return to the UK and will give a talk at the University of Surrey on 5 Nov 2018. The title of his talk is Succeeding in China: How to Mitigate Intellectual Property Risk. Admission is free but you must register through Eventbrite.

Anyone wishing to discuss this article or IP in China generally should call me on 020 7404 5252 or send me a message through my contact page.

Tuesday, 21 November 2017

Partnering for Prosperity: A new deal for the Cambridge- Milton Keynes-Oxford Arc.

The National Infrastructure Commission is an executive agency of the Treasury. It consists of a chair, a deputy chair and 9 commissioners. It offers impartial, expert advice and recommendations to the government on economic infrastructure which includes energy, transport, water (drainage sewerage and flood management) and digital communications. Its objectives are to support sustainable economic growth across all regions of the UK and improve competitiveness and the quality of life,

In March 2016 the Commission was asked to consider how to maximize the potential of a corridor running between Cambridge and Oxford via Milton Keynes "as a single, knowledge-intensive cluster that competes on a global stage, protecting the area’s high-quality environment, and securing the homes and jobs that the area needs." It delivered an interim report in November 2016 which identified lack of adequate and affordable housing as a major impediment to growth and recommended investment in new housing, job creation and better transport.

In its final report, Partnering for Prosperity: A new deal for the Cambridge- Milton Keynes-Oxford Arc. which was published on 17 Nov 2017, the Commission urged the government to make the corridor a national priority. It proposed new road and rail links between the towns and cities  in the arc and massive house building and job creation including new town development on a scale last seen in the 1950s and 1960s.

The report highlighted some of the area's strengths:
  • Cambridge generates 19 times more patents than the national average;
  • productivity in Milton Keynes is 25% more than the national average;
  • Northampton has more business startups per 10,000 inhabitants than any other city except London; and
  • Oxford is a leading hub for bioscience, medical tech and physical sciences.
Better road and rail links and new housing are essential to maintaining and building on those strengths.

Anyone wishing to discuss the legal implications of these proposals should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Wednesday, 4 October 2017

Learn about IP in Brighton or Berkshire

Jane Lambert

Business expos and conferences take place tomorrow in different parts of the region:  The Brighton Business Expo 2017 at Brighton Racecourse between 10:00 and 16:00 and the Reading Expo at Green Park between 09:30 and 15:00. The IPO will exhibit at both and will present a free workshop on protecting your IP at Reading between 12:00 and 12:30.

There is a popular misconception that IP is only for the big boys such as multinational companies, major research universities. Nothing could be further from the truth though it is certainly the case that big businesses and institutions make far more use of the IP system and are more able to use it to their advantage. But it is important for small businesses to protect and mark money from their investments in branding, design, technology and creativity.

If you are running, or just thinking of running, your own business, you need to learn about IP. If you are in Reading you could make a start by attending the IPO's workshop. In either venue, you would do well to visit the IPO's stand.  After that, you could visit the British Library's Business and IP website as well as its UK Entrepreneur Network on Linkedin and its Facebook page. The Centre has a lot of publications on IP in print and online which you can consult at its offices in St Pancras when you are next in London. You could also attend one of the talks held at the Centre some of which are free and none of which are expensive.

You may also find articles, case notes or other materials of interest on this blog and some of the other blogs to which it is connected. You can access the others by clicking "Home" which leads to the home page of NIPC Law. There you will find a lot of articles on detailed points of IP law which would probably be of most interest to solicitors, patent and trade mark agents and other IP professionals. If you click the four-bar device in the top left-hand corner you will find menus for

NIPC Branding
NIPC Inventors Club
Dispute Resolution
Database Right
Data Protection
Domain Name Disputes
Midlands Engine
Northern Powerhouse
Unitary Patent and Unified Patent Court
What is Intellectual Property Strategy?

in the first division;

What is Intellectual Property?
IP Glossary
What is a patent?
Trade Marks
Registered Designs
Registered Community Designs
Unregistered Community Designs
Unregistered Design Right
Rights in Performances
Database Right
Duty of Confidence
Passing off
Plant Breeders' Rights
Geographical Indications
Technology Law
Entertainment and Media
Competition Law

in the second; and "Regions" in the third:

East Midlands
North West
Severn-Hafren (Bristol, Cardiff and Newport Conurbation)
West Midlands

In addition, I give up to 12 hours of my time for pro bono (that is to say free) legal services every month with a one hour limit to each person or business every year which can include a face to face meeting in  London or the North of England.  If you want to take advantage of that service, call me on 020 7404 5252 or send me a message through my contact form.

Wednesday, 19 April 2017

Venturefest Oxford Registration Open

Jane Lambert

Venturefests are described as
"local innovation eco-systems [coming] together through a number of local events around the country, working closely with Innovate UK, the Knowledge Transfer Network and other national partners to strengthen connectivity between these innovators, investors and entrepreneurs" (see What is Venturefest?)
There are now Venturefests throughout the country but the very first took place in Oxford in 1999.

The next Venturefest Oxford will take place at The King's Centre, Osney Mead, Oxford OX2 OES on 21 June 2017 and early bird registration is now open There is an interesting programme of speakers including a presentation by Philip Webber of Dehns on Your IP post-Brexit: What effect will leaving the EU have on your IP? in the Vale Room between 15:00 and 15:45. The theme of this year's Venturefest Oxford will be The Challenges of a Business: From Start-Up to Scale-Up which is included by popular request from last year. Discussions on this topic will run from 09:30 - 11:30 in the Vale Room. All the other usual events such as Innovation Showcase and Pitching for Success will be there plus an exhibition with stands from the city's two universities, the local enterprise partnership, the Intellectual Property Office and several patent and trade mark agencies.

I plan to attend Venturefest Oxford and if anyone would like to meet me there please give me a call on 020 7404 5252 or send me a message through my contact form.

Thursday, 7 January 2016

Wessex Round Table of Inventors

The Solent from Space
Source Wikipedia

As more patents were granted to South-East England than to any other region in 2014 according to the table on page 7 of the IPO's Facts and Figures for 2013 and 2014 it is not surprising that there are a fair number of inventors' clubs in that region. I am aware of at least five:  Croydon Round Table of Inventors, Kent Inventors Forum, Kingston Round Table of Inventors, Rural Inventors Club and the Wessex Round Table of Inventors.

The last of those clubs is probably the one that is best known to inventors around the country because of its impressive collection of links to inventors' resources and other inventors clubs and national inventors' associations.  The Round Table meets on the second Wednesday of every month between 18:00 and 21:30 in Room HC019 of the Herbert Collins Building at Southampton Solent University. The first two meetings of the new year will take place on 16 Jan and 10 Feb and the first speakers will be  Iain Thomas of Southampton Solent University who will talk about ‘A Hierarchy of Composites’ giving an overview of different kinds of composite materials and Clare Wright and Richard Poate of TÜV SÜD Product Ser, vice who will outline some techniques for environmental testing of products (see the Forthcoming Events page).

Looking around the site, the Round Table seems to have entertained some impressive presentations in the past, they present annual technology innovation awards and the members seem to have generated a substantial portfolio of inventions. Membership is free for students and £30 per year for everyone else (see Joining the WRTI).

Thursday, 6 August 2015

Disputes over Ownership of Inventions

Jane Lambert

According to the Intellectual Property Office at least 30 disputes are referred to its tribunals every year over who should own or be entitled to apply for a British or foreign patent or be named as an inventor (see the table on page 50 of the IPO;s Facts and figures for 2013 and 2014 calendar years). Disputes over ownership are known as entitlement disputes and disputes who should be named as inventors as inventorship disputes. Often entitlement and inventorship disputes arise between the same parties and are resolved in the same proceedings.


S.7 (3) of the Patents Act 1977 defines an "inventor" as "the actual deviser of the invention." If more than one person devised the invention they are each "joint inventors."  The reason why it is important to identify the inventor is that the inventor or joint inventor is the person or persons primarily entitled to apply for a patent for the invention under s.7 (2) (a). The only person entitled to apply for a patent in preference to the inventor or joint inventors is the inventor's employer if he, she or they devised the invention in the course of their duties or a third party such as a product design consultancy's client if he or she agreed with the consultancy that he or she rather than the inventor or inventor's employer should be entitled to apply for patents for any inventions that might be devised.

The Comptroller's Jurisdiction

The head of the Intellectual Property Office (who is  referred to as "the Comptroller-General of Patents, Designs and Trade Marks" or simply "comptroller" in s.130 (1) of the Patents Act) has power under s.8 to decide who is entitled to apply for a British patent at any time before the patent is granted.  The comptroller also has power under s.12 to decide who is entitled to apply for a foreign patent at any time before grant. If a UK patent has been granted, the comptroller has power under s.37 to determine who should be entitled to the patent. Finally, the comptroller may decide who may be named as an inventor under s.13 of the Act. The comptroller no longer exercises those powers personally. Instead, they are exercised on the comptroller's behalf by officials known as "hearing officers" who conduct proceedings in accordance with the Patents Rules 2007 and practices that have been codified into a series of Tribunal Practice Notices.

Proceedings before Hearing Officers

Proceedings before hearing officers are intended to be much less formal and expensive than proceedings before judges but they follow similar lines. Their decisions have to be based on the law and evidence which means that each side has the right to present evidence and test that of its opponent and to submit arguments to the hearing officer. If the parties agree the hearing officer may decide the case on the documents without a hearing.  If one or more of the parties request a hearing it can take place at the Intellectual Property Office's premises in London or Newport or at some other centre around the country, In the last 5 years I have represented parties to entitlement disputes at Concept House in Newport, Manchester Immigration and Asylum Chamber, Leeds Magistrates Court and the Radisson Blu Hotel in Glasgow.


The practice and procedure are made as easy to follow as possible to enable parties to represent themselves. They can also appear by counsel (barristers or advocates in Scotland), solicitors or their patent attorneys. Parties who instruct lawyers or patent attorneys can claim a contribution to their fees from the other side if they are successful but that is never more than a modest proportion of their costs unless the other side has behaved particularly unreasonably.

Pre-Action Correspondence

As proceedings before hearing officers usually take at least a year to resolve and cost many thousands of pounds towards which the successful party can expect only a modest contribution it is obviously in the interests of all sides to resolve their dispute by agreement if they possibly can. Disputes arise or are protracted because the parties do not have access to all relevant information and documents. The first step is to put the complainant's case to the other side as cogently as possible in a letter before claim. The other side should identify the parts of the case that it accepts and those that it does not. At the very least that should narrow the scope of the dispute and save time and costs.


As often as not such exchange of correspondence is enough to settle the dispute either because one side accepts the case of the other or because the parties begin to negotiate. Usually, the parties can conduct their negotiations without any outside help but occasionally they need a facilitator. Facilitated negotiation is another name for mediation. Both the IPO and WIPO offer specialist mediation services as do we (see IP Mediation 22 May 2015 4 to 5 IP),

Starting Proceedings

If the dispute cannot be resolved by negotiation or mediation a party may start proceedings by completing Form 2 and lodging it together with a remittance of £50 and a statement of grounds with the Intellectual Property Office. The statement of grounds is the equivalent of particulars of claim in litigation must include a concise statement of the facts and grounds on which the claimant relies and the remedy that he or she seeks verified by a statement of truth. Once the Office is satisfied that the application is in order it sends it to the other side who must respond with a counter-statement. That is the equivalent of a defence in litigation and must state:
(a) which of the allegations in the statement of grounds the defendant denies;
(b) which of the allegations he or she is unable to admit or deny, but which he or she requires the claimant to prove; and
(c) state which of the allegations he or she admits.
The counter-statement must also be verified by a statement of truth.


Often negotiations start or re-start at this stage but if they do not resolve the natter the claimant must file Patents Form 4 and pay £350. The Office usually gives directions for the filing of evidence which usually takes the form of a witness statement though it can still be a statutory declaration or affidavit. This the parties' opportunity to set out their case in full.  The witness statements together with any documents that may be exhibited to them stand as a party's evidence in chief at the hearing.


Once the evidence is filed the Office fixes a date for the hearing.  A few days before the hearing the parties exchange skeleton arguments and lodge copies of their skeletons with the hearing officer.

The hearing room is set up like a courtroom with the hearing officer on a dais and desks for the parties and their representatives.

Everyone present rises as the hearing officer enters the room.  He or she is addressed as "sir" or "madam" throughout the hearing.

The party with the burden of proof opens the case to the tribunal. Usually, he or she makes sure that the hearing officer and the other parties have the same bundles of documents and that the skeletons have been filed. He or she outlines the issues that are to be decided and how he or she intends to prove them. He or she then calls his or her witnesses. He or she refers them to their witness statements and establishes that they are happy for the statements to stand as their evidence in chief.  He or she then sits down and allows the other side to test his or her evidence by cross-examination. Sometimes the witness raises an issue that requires supplemental questions in re-examination.   After all that parties' witnesses have been called and examined the party tells the hearing officer that his or her case is complete.

The other side responds by calling his or her witnesses and offering them for cross-examination.

At the end of his or her case, the defendant makes oral submissions on the evidence and the conclusions to be drawn to the judge. These are answered by the other parties.

There is usually several weeks delay between the hearing and the delivery of the hearing officer's decision.


Those who are dissatisfied with a hearing officer's decision can appeal to the Patents Court as of right.

Further Information
The Intellectual Property Office publishes a useful booklet entitled Patents: Deciding Disputes which can be downloaded from its website. Readers can also call me on 020 7404 5252 or send me a message through my contact form.

Wednesday, 17 December 2014

Representing yourself in Intellectual Property cases

Jane Lambert

Since the Access to Justice Act 1999 came into force more and more people have had to go to court without a lawyer.  Those who represent themselves in court are known as "litigants in person". The following guides have been produced for such  persons:  A Handbook for Litigants in Person published by the Judicial Studies Board and A Guide to Representing Yourself in Court ("the Guide") by the Bar Council.

Intellectual Property
Those guides are very useful and should be read by litigants in person in any type of case. However, they do not cover intellectual property ("IP") proceedings which is a pity because IP has rules and practices that differ from other types of dispute resolution. The purpose of this article is to supplement both publications and, in particular, the Guide. This article covers intellectual property proceedings in the civil courts and Intellectual Property Office ("IPO") tribunals. It does not cover proceedings in the European Patent Office ("EPO") or the Office for Harmonization in the Internal Market ("OHIM").

How to use this Article
Use this article in conjunction with the Guide. When I mention sections and paragraph I am referring to sections and paragraphs in the Guide. Treat this article as though it were an addendum to Section 4.  The disclaimer on the inside cover which is headed "Disclosure" (probably a misprint) applies equally to this article.

Section 1: How to find free or affordable help with your legal problem

Free legal advice and representation
Specialist legal advice on IP can be obtained from IP clinics run by the Chartered Institute of Patent Attorneys ("CIPA") and other bodies. Our chambers have run monthly clinics in London in conjunction with Middlesex University which we hope to resume in the New Year. We also run a regular clinic on the second Tuesday of every month in Barnsley. If you want to attend one of our clinics call George Scanlan on 020 7404 5252 during regular office hours or use our contact form. For more information on basic advice and information on IP in South East England, please read "Where to get free basic Information on Intellectual Property" 18 Dec 2014.

Paying for legal services
It is unlikely that any household policy will cover advice on IP. In fact, most legal indemnity policies for businesses specifically exclude IP. If you want cover against the costs of enforcing your own IP rights or resisting a claim against you for the revocation or invalidation of your own IP rights or the infringement of a third party's you will need special before-the-event IP insurance. There are only a handful of specialist brokers who provide such cover and I have listed some of them in IP Insurance Five Years On 23 Oct 2010 Inventors' Club blog and Intellectual Property Litigation - the Funding Options 10 Apr 2013 NIPC Law. Professional opinion does differ on the value of IP insurance but in my view it is well worth it.

Who can provide legal advice and representation?
In addition to barristers, solicitors and legal executives mentioned in the Guide, you can also consult patent attorneys (also known as "patent agents") and trade mark attorneys (also known as "trade mark agents"). For more information read my articles IP Professionals - who does what 5 Sept 2013 IP London and IP Services from Barristers 6 Apr 2013 4-5 IP. If you consult a barrister or a solicitor make sure that he or she is a specialist in IP or technology law for not all of them are. Most specialist counsel are members of the IP Bar Association and many specialist law firms are members of the IP Lawyers Association. If you want to sort out the IP sheep from the goats read How to spot an IP blagger at 30 paces 23 Feb 2009 IP North West.

If you can, settle outside court
There are three specialist alternative dispute resolution services ("ADR") for IP disputes of which you should be aware:
  • IPO opinions on patents and registered and unregistered design rights;
  • IPO's mediation service for IP disputes; and
  • the Uniform Domain Name Dispute Resolution Policy for generic top level domain names and equivalent services for country code top level domain name disputes such as Nominet's Dispute Resolution Service for .uk domains.
You may find the following articles useful:
Is ‘no win, no fee’ right for you?
It will be very difficult if not impossible for you to find a lawyer who is prepared to take an IP case on a "no win no fee" retainer. There are several reasons for that which I explained in Intellectual Property Litigation - the Funding Options 10 Apr 2013 NIPC Law and No Win No Fee 14 Jul 2011 NIPC website. Read my case notes on Henderson v All Around the World Recordings Ltd (Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd 4 May 2013 NIPC Law and Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 5 Nov 2014 to see what can go wrong.

Section 2, Part 2: Starting and defending a claim

‘Letter before claim’
It is very important to send a letter before claim in any type of action unless there is a good reason why you should not but it is particularly important for proceedings in the multitrack and small claims track of the Intellectual Property Enterprise Court ("IPEC") because CPR 63.20 (2) requires you to state in your particulars of claim whether you have complied with paragraph 7.1 (1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct). If you fail to do so the defendant has up to 70 days to file a defence under CPR 63.22 (3).

In addition to the Practice Direction - Pre-Action Conduct you will find the Code of Practice for Pre-action Conduct in Intellectual Property Disputes useful for completing your letter before claim.

One of the special features of intellectual property litigation is that you can be sued for threatening to sue for patent, registered and Community design, registered and Community trade mark and unregistered design right infringement without justification. You must therefore be very careful how you write your letter before claim.

You should remember this rule if you are threatened with patent, registered or unregistered design or trade mark infringement by a third party. Remember that the claim can lie not just against the party making the threats but also against its solicitor, patent or trade mark attorney. For more information see my article Threats Action Updates 26 Jan 2006 NIPC Law.

This is one of the occasions when it would be prudent to seek specialist advice from a barrister or solicitor specializing in IP or a patent or trade mark attorney.

Starting a claim – which court?
Some IP claims must be brought in the civil courts. Others must be brought in the IPO. Some can be brought in either. 

Claims for the infringement of most IP rights, breach of confidence, passing off and actions for groundless threats must be brought in court.

Claims to determine who is entitled to a patent or patent application, licences and supplementary protection certificates have to be brought in the IPO. So, too, do trade mark oppositions.

Claims for revocation and amendment of patents and declarations of non-infringement and counterclaims for invalidation of trade marks and registered designs can be brought in either the courts or the IPO.

Courts that hear IP cases
IP cases must be heard in the Chancery Division of the High Court of Justice or one of the county courts that is attached to a Chancery District Registry (that is to say, the Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold county courts). 

Within the Chancery Division there are two specialist courts, namely the Patents Court and the IPEC. IPEC has a small claims track for claims up to £10,000. The Chancery Division sits in London, Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold.  

For more information on practice in the Chancery Division see the latest Chancery Guide

Patent, Registered Designs, Semiconductor Topographies and Plant Breeders' Rights
Claims for patent, registered or registered Community design, semiconductor topography and plant breeders' rights infringement have to be brought in the Patents Court or IPEC. If the claim is for  £500,000 or less and can be tried in no more than 2 days the case can be brought in IPEC. Otherwise it must be brought in the Patents Court. See the Patents Court Guide for more information on the Patents Court and the Intellectual Property Enterprise Court Guide for more information on IPEC. My article New Patents County Court Rules 31 Oct 2010 NIPC Law may still be useful.

Other IP Claims
All other IP claims can be brought in IPEC, the Chancery Division and the Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold county courts. As with patents, if the claim is for £500,000 or less and the trial can be heard in not more than 2 days it can be brought in IPEC. The procedure in IPEC differs from that of the rest of the Chancery Division and costs are capped at £50,000 for trials and £25,000 for accounts of profits and inquiries as to damages.  

IP claims other than patent, registered or registered Community designs, semiconductor topography or plant breeders' rights under £10,000 can be brought in the small claims track of IPEC. Recoverable costs in the small claims track are limited to just a few hundred pounds. For more information on the small claims track, see the Guide to the Intellectual Property Enterprise Court Small Claims Track and my article How to take proceedings in the IPEC Small Claims Track 12 July 2014.

IPO Tribunals
There are separate tribunals within the IPO for patent, registered design and trade mark proceedings. Cases are decided by officials known as "hearing officers" who are addressed as "sir" or "madam" as the case may be. Costs are usually awarded on a scale annexed to Tribunal Practice Notice 2/2000 unless a party has behaved badly in which case a hearing officer may award costs off the scale.

European Patents
Claims relating to European patent applications and oppositions to European patents must be brought in the EPO. 

Community Trade Marks and Designs
Oppositions to Community trade marks have to proceed in OHIM while claims for the invalidation or revocation of Community trade marks can be brought in OHIM or Community trade mark courts which include the Chancery Division and chancery county courts. Similarly, applications for the invalidation of registered Community designs can be brought in OHIM or Community design courts including the Patents Court and IPEC.

In  many cases an IP owner requires an injunction to restrain an infringement between the issue of proceedings and trial. Such injunctions are known as "interim injunctions" to distinguish them from injunctions after trial which are known as "perpetual injunctions". Applications for interim injunctions are determined by a Chancery interim applications judge. For more information on interim injunction applications see Litigation choices - should I apply for an interim injunction or should I not? 29 Oct 2014 IP East and the Judiciary's Interim Applications in the Chancery Division: A Guide for Litigants in Person.

Further Information
ff you wat to discuss this subject further, give me a ring on 020 7404 5252 during office hours or message me through my contact form.