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.

Thursday, 23 October 2014

The Furniture Industry and IP

High Wycombe

This is the first of a series of articles about the communities and industries of South East England and how IP relates to them.  This post focuses on High Wycombe and its neighbourhood which is best known for furniture making.   According to the Wycombe District Council website, furniture has been manufactured in the district since the 17th century. Despite competition from other parts of the UK and abroad furniture making in Wycombe is still going strong.

Legal Protection
The reason for the industry's success is its reputation for quality and design.  That reputation results from considerable investment in technology, product design and marketing for which the industry requires robust legal protection.  Investment in new technology is protected by patents which may be granted by the Intellectual Property Office ("IPO") in Newport or the European Patent Office ("EPO") in Munich. New designs may be protected by registration with the IPO as registered designs or the Office for Harmonization in the Internal Market ("OHIM") in Alicante as registered Community designs ("RCD"). Brands are protected by the registration of distinctive signs as "registered trade marks" with the IPO or as "Community trade marks" ("CTM") with OHIM.  Copyright is also important to the furniture industry as the artwork for fabrics and other surface decoration are artistic works and some items of furniture may be works of artistic craftsmanship.

A patent is the monopoly of a new invention. It confers the exclusive right to make, sell, import or use the invention.  An invention may be a product or a process.  Patents may be granted for the United Kingdom by the IPO or the EPO. It is not yet possible to get a patent for the whole European Union but it is already possible to apply to the EPO for patents (known as "European patents") for the same invention in up to 38 European countries and it should soon be possible to apply to the EPO for a European patent for (which will be known as a "unitary patent") for the territories of most of the countries of the EU including the UK.

There are at least 6 ways of protecting designs in the United Kingdom:
  • new designs having individual character may be registered with the IPO for the UK alone as registered designs under the Registered Designs Act 1949;
  • new designs having individual character can be registered with OHIM for the whole EU as RCD under the Community design regulation;
  • designs that could have been registered with the IPO as registered designs or registered with OHIM as RCD are protected from copying throughout the EU as unregistered Community designs ("UCD") by virtue of the Community design regulation;
  • original designs of aspects of shape or configuration of 3-dimensional articles are protected within the UK from copying by unregistered design right pursuant to Part III of the Copyright Designs and Patents Act 1988 ("CDPA");
  • the artwork for fabrics, floor and wall coverings and other surface decoration is protected from copying in the UK by copyright pursuant to Part I of the CDPA; and
  • works of artistic craftsmanship within the meaning of s.4 (1) (c) of the CDPA which might include some items of furniture are protected in the UK as original artistic works by Part 1 of that Act.
Registration of a design as a registered design or RCD confers the exclusive right to use the design and "use" for this purpose means "making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes." Designs may be registered as registered designs or RCDs for an initial term of 5 years which can be renewed for further 5 year terms up to a maximum of 25 years. Registration of a design with the IPO confers that monopoly for the UK alone. Registration with OHIM confers that monopoly throughout the EU including the UK. UCD subsists in a new design for 3 years from the date upon which the design was first made available to the public in the EU. Unregistered design right subsists for a total of 15 years unless articles made to the design are offered for sale or hire within the first 5 years of that term in which case design right subsists for 10 years from the end of the year in which such articles were first made available to the public. In the last 5 years of the term anyone in the world can apply to the design right owner for a licence to make articles to the design as of right. If the terms of such licence cannot be agreed they are determined by a hearing officer appointed by the the CEO or Comptroller of the IPO.

Artistic copyright subsists for the life of the person who created the design plus 70 years. However, s.52 of the CDPA limits the term of the copyright of any artistic work that was or could have been registered as a registered design or RCD to 25 years. S.52 has been repealed by s.74 (2) of the Enterprise and Regulatory Reform Act 2013 following the decision of the Court of Justice of the European Union in Case C168/09 Flos SpA v Semeraro Casa e Famiglia SpA [2011] ECDR 8, [2011] RPC 10, [2011] EUECJ C-168/09. The repeal has not yet taken effect and the government is consulting on when the repeal should take effect (see Jane Lambert "Flos putting us all through the Mill" 17 Oct 2014).

Trade Marks
A trade mark is a sign that can be represented graphically which is capable of distinguishing goods or services of one undertaking from those of others. Examples include words (including personal names), designs, letters, numerals or the shape of goods or their packaging. Signs are registered in relation to specified goods or services. Registration of a sign with the IPO as a registered trade mark confers the exclusive right to use that mark in the UK relation to the goods or services for which the mark is registered. Registration with OHIM confers the exclusive right to use that mark in relation to such goods or services throughout the EU. "Use" includes labelling, advertising and point of sale marketing.

The rights mentioned above may be enforced by civil proceedings of the courts of the country where an infringement is threatened or takes place.  Remedies include injunctions (orders of the court to do or refrain from doing specified acts punishable by fine or imprisonment if disobeyed), damages (compensation for loss or damage resulting from the infringement) or an account of profits (surrender of benefits of infringement) and costs. In England and Wales claims up to £500,000 may be brought in the Intellectual Property Enterprise Court ("IPEC") where trials are limited to 2 days and recoverable costs capped at £50,000. IPEC has a small claims track for trade mark and copyright claims up to £10,000 where recoverable costs are limited to a few hundred pounds. All other claims should be brought in the Chancery Division of the High Court. Patent and registered and RCD claims over are reserved to a special tribunal of the Chancery Division known as the Patents Court. Claims relating to the new unitary patent and eventually all European patents will be determined by a new Unified Patent Court consisting of a Court of First Instance and a Court of Appeal. The Court of First Instance will be based in Paris with a section in London and other chambers throughout the EU.

Criminal Proceedings
Piracy (copyright infringement on an industrial scale) and counterfeiting (trade mark infringement on an industrial scale) are offences in the UK and most other industrial countries. Since the 1 Oct 2014 intentional copying of a registered design or RCD has also been an offence in the UK. Prosecutions are brought by local authority trading standards officers or privately. It is not an offence to infringe a patent, unregistered design right or other intellectual property right in the UK.

Further Information
From time to time we hold workshops and publish guidance on issues that affect particular industries. Issues that we have identified as of particular interest to the furniture industry in High Wycombe and the rest of the UK are the unitary patent, the repeal of s.52 and the new offence of intentional copying. If there is sufficient interest we shall hold seminars in the town in conjunction with local patent and trade mark attorneys and solicitors. In the meantime, if anyone wants to discuss those issues or IP law in relation to furniture manufacturing and distribution generally he or she should call me on 020 7404 5252 or message me through my contact form.

Saturday, 6 September 2014

Forthcoming IP Events in South East England

Jane Lambert

Below is a list of events relating to IP in South East England of which I am aware. If anybody wants to add another event please message me through my contact form.

1-28 Sep 2014
Month of exhibitions, conferences and other events around Brighton

8 Sep 2014
AssimilateIP 09:00 - 17:00
Holiday Inn, Winnersh, Reading,
29 Sep 2014
Seminar operated by CIPA which is open to non-memnbers 12:30 - 17:30 (CPD points)
Worcester College, Walton St, Oxford, OX1 2HB
15 Oct 2014
Exhibition and seminar
09:00 - 16:30
H.G. Wells Conference & Events Centre, Church Street East
Woking, GU21 6HJ
22 Oct 2014
All day exhibition and seminar
Kent Event Centre, Kent Showground
, Detling

Maidstone, ME14 3JF
24 Oct 2014
Exhibition 10:00 - 15:30
Copthorne Hotel, Effingham, Gatwick

Monday, 25 August 2014

South East England leads the nation in R & D Tax Credit Claims

Jane Lambert

Last month I reported that South East England led the nation in patenting (see "South East leads the Nation in Patenting" 15 July 2014). Today I reported that companies in the South East lead the nation in the number of R & D tax credit claims in 2013 followed by companies with registered offices in London though the amount claimed from London based companies exceeded those claimed from companies in the South East (see "R & D Tax Credit Statistics" 25 Aug 2014 Patent Box and Tax Credit Blog). Companies with registered officers in the East of England which includes Cambridge and Essex came third. This confirms that R & D is concentrated in and around England which is unlikely to come as much if a surprise to anyone.

R & D tax credits are deductible allowances against corporation tax for research and development expenditure. If a company is not liable for tax in the year for which the claim is made it can apply for a cash payment from the Revenue. These allowances were introduced for small and medium enterprises in 2000 and extended to larger companies in 2002. They are remarkably generous and reward particularly when combined with other incentives such as the patent box.

Our chambers are almost unique in that our intellectual property specialists work under the same roof as Atlas Tax Chambers and share the same clerks. We can thus provide comprehensive IP and corporation tax advice to businesses that invest heavily in high technology. Should anyone wish to discuss this article or any of the topics referred to he or she should call us on 020 74404 5252 during office hours or contact our clerks through this form.

Further Reading

HMSO Research and Development (R&D) Relief for Corporation Tax
Jane Lambert R & D Tax Credit Statistics 25 Aug 2014 Patent Box and R & D Tax Credit Blog

Wednesday, 30 July 2014

Get your free intellectual property rights

Jane Lambert

Everyone knows that patents, trade marks and registered designs have to be registered, that applications for patents and trade marks are examined, that all those registrations can be challenged and that it all costs money. But there are some intellectual property rights ("IPR") that cost nothing and these should be considered when budgeting for the protection of intellectual assets.

Non-registrable Rights
These fall into two groups:

  • those created by a succession  of judicial decisions (sometimes called "common law") such as the right to enforce and obligation of confidence or bring an action for passing off; and 
  • those created by British or EU legislation such as copyright, design rights, database rights and unregistered Community designs.
Some rights are alternatives to registrable rights such as the obligation of confidence and patents.  Others supplement registrable rights such as the law of passing off and trade marks. I will consider each class of intellectual asset - that is to say, brands, design, technology and creative works - in turn,

Trade marks, business names, the get up of products, the layout and livery if business premises or other distinguishable signs can be protected by the law of passing off. The right to bring an action for passing off arises in the following circumstances:
  • consumers of a product or service associate a supplier or its products or services with a particular sign;
  • a competitor misleads such consumers by offering goods or services under a similar sign; and
  • the supplier loses sales or suffers some other kind of loss and damage.
The action of passing off can sometimes be used to protect signs that cannot be registered as trade marks but there are two drawbacks. The first is that the action can only be brought once consumers have begun to associate a business or its goods and services with a particular sign. That is not always easy for start-ups or other small businesses. The second drawback is that complainants have to gather a lot of evidence about their goodwill or reputation and the alleged misrepresentation before an action can be launched. Thus, a passing off action tends to be more complex and expensive than an action for trade mark infringement.

There are five ways in which designs can be protected in the UK:
  • new designs having individual character can be registered under the Registered Designs Act 1949;
  • new designs having individual character can be registered as registered Community designs under the Community Design Regulation;
  • designs that could be registered as registered designs or registered Community designs are protected from copying throughout the EU for up to 3 years as unregistered Community designs by the Community Design Regulation;
  • aspects of shape or configuration of the whole or part of an article can be protected from copying by unregistered design right for between 10 and 15 years under Part III of the Copyright Designs and Patents Act 1988; and
  • artwork for textiles, wall coverings and also surface decoration may be protected from copying as copyright works for the life of the author plus 70 years under Part I of the Copyright Designs and Patents Act 1988.
Registration of a design as a registered design confers a monopoly of  a design whereas the other rights confer protection only against copying. The significance of the distinction is that a monopoly may be infringed by making, selling, importing, exporting, using or stocking a product that looks like a registered design even even without copying. The other rights are infringed only where copying has occurred and that is not always easy to prove. 

Patents are monopolies that are granted for disclosing a new invention to the world. The law of confidence is the very opposite in that it can be used to keep technical information secret. An obligation of confidence arises when A ("the confider") discloses technical or other information that is not generally known the use or disclosure of which could harm the confider or benefit a third party ("confidential information") to B ("the confidante") expressly in confidence or in circumstances giving rise to an on obligation of confidence. The obligation continues for so long as the information remains secret. If is breached by using the information for a purpose other than the one for which it was disclosed or by passing it on to a third party without the confider's consent or other lawful excuse. The obligation subsists for so long as the information remains secret. One legitimate way of learning a business secret is by buying a product, taking it apart to see how it was made and reverse engineering it. There are however some products that cannot easily be reverse engineered such as food and drink. The recipes for chartreuse and Coca Cola have been kept secret for centuries.

Some new technologies such as computing and financial services cannot easily be protected by patents in the UK at any rate. The source code of a computer program is generally kept secret while the code itself (whether in digital impulses or human readable form is protected from unauthorized reproduction by copyright.

The casing and circuity of products with a short shelf life such as mobile phones, toys and consumer electronics can be protected from copying by unregistered design right.

An intellectual property right that can be used t protect compilations of data are database rights - that is to say the right to prevent unauthorized extraction and re-utilization of data held on databases.

Works of Art and Literature
Original artistic, dramatic, literary and musical works, broadcasts, films and sound recordings and published editions of typographical works can be protected from copying and other restricted acts for varying terms by Part I of the Copyright, Designs and Patents Act 1988.

Actors, dancers, musicians, singers and other performers can object to the unauthorized broadcasting, filming or taping of their performances by Part II of the Copyright, Designs and Patents Act 1988.

Publishers of an unpublished work in which copyright has expired are protected from unauthorized copying and other restricted acts by publication right.

The provisions relating to copyright, database right, publication rights and rights in performances are set out in an informal consolidation published by the Intellectual Property Office.

Intellectual Property Insurance
As with all IPR it is essential to consider how they will be enforced.   In the case of a new business that is best achieved by before-the-event insurance.

Further Information
Should anybody want to discuss this article or any of he topics mentioned or referred to call me on 020 7404 5252 during normal business hours. You can also contact me through my contact form or message me through FacebookG+Linkedintwitter or Xing.

Tuesday, 15 July 2014

South East leads the Nation in Patenting

The White Horse at Uffington
Source Wikipedia

Jane Lambert

According to the Intellectual Property Office Facts and Figures 2012-2013 2,822 applications were made to the Intellectual Property Office for British patents from South East England in 2013 and 437 patents were granted to applicants from that region in that year. That is better than any other region in the UK. London was second in the number of applications (2,588) and also in the number of grants (346). The East of England was third in the number of applications (1,802) and the South West in the number of grants (340). Great industrial areas like the West Midlands, North West, Yorkshire and the North East were well behind both in the number of applications (1,180, 1,259, 984 and 314) and grants (192, 204, 171 and 52) respectively.

The South East also did well in trade marks with 6,197 applications and 5,258 registrations in 2013 in which it came second only to London 12,669 applications and 10,583 registrations (the figure in the table for the East Midlands being an obvious mistake). In registered designs the region was second to London in the number of applications (1,153 for London and 1,066 for the South East) but top in the number of registrations (883 for South East England and 720 for London).

Our chambers support inventors, entrepreneurs and investors with our IP clinics at Middlesex University and our talks and publications.  If anyone wants to discuss his article or any patent, trade mark, design or other intellectual property matter he or she should call us on 020 7404 5252 or get in touch through my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.

Saturday, 12 July 2014

How to take proceedings in the IPEC Small Claims Track

Jane Lambert

IPEC stands for the Intellectual Property Enterprise Court. This is a specialist court within the Chancery Division of the High Court of Justice. It came into being on 1 Oct 2013 when it took over the functions of the Patents County Court after that court had been abolished by paragraph 30 (3) of Schedule 9 of the Crime and Courts Act 2013. Unlike the rest of the High Court it has a small claims track for certain types of intellectual property claim up to £10,000. The rest of this article will discuss this jurisdiction.

What Sort of Case Can be Brought in the IPEC Small Claims Track?
Just about any sort of intellectual property claim may be brought in the small claims track except one involving patents, registered or registered Community designs, semiconductor topographies or plant varieties so long as the claim does not exceed £10,000. Typical sort of cases would be claims for copyright infringement in photographs where the defendant has posted a photograph taken by the claimant to his website without the claimant's permission and simple trade mark cases or passing off cases where a small local shopkeeper or restaurateur adopts a name, logo or trading style similar to that of a well known brand. The small claims track could also resolve cases where a confidante fails to respect a non-disclosure agreement.

What Sort of Remedies are Available?
Everything! Injunctions, orders for delivery up and damages subject to two limitations. The first is that costs are limited to court fees, loss of earnings, travelling expenses, counsel or solicitors' fees up to £260 where an injunction is sought and experts' fees up to £750. The second is that the small claims track has no jurisdiction to award interim injunctions.

Who are the Judges?
There are three full time District Judges - Janet Lambert, Melissa Clarke and Charlotte Hart - and two deputy District Judges - Nicola Solomon and Richard Vary. They hear all trials and preliminary hearings.

Where does the Court sit?
The court is based in the Rolls Building in Fetter Lane with rest of the Chancery Division but hearings take place in the Royal Courts of Justice in The Strand. The court can sit elsewhere in England and Wales for the convenience of the parties and witnesses or in order to save costs.

Essential Reading
If you have never been anywhere near a court before you should download the following documents from HM Courts and Tribunal Service website and read them very carefully:

In addition there are two documents that apply specifically to IPEC:
This point is a good time to decide whether you really want to act for yourself or consult a lawyer or other professional. The advantage of calling in a lawyer or patent or trade mark attorney is that they can advise you of the strength of your case, do all the paperwork and go to court for you. The drawback is that lawyers and attorneys cost money and the most you can expect from the other side is £260 towards your costs and then only if you seek an injunction. You do not have to go to a specialist IP practitioner or even a lawyer but unless the person you consult knows at least some IP law you may well find that he or she can do the job no better than you.  You will find a lawyer specializing in IP from the IP Bar Association or the Intellectual Property Lawyers Association websites. Patent and trade mark attorneys are listed on the CIPA and ITMA sites respectively.

More Reading
If you do decide to act for yourself you should be aware that the civil courts in England and Wales are governed by the Civil Procedure Rules (CPR) which are divided into a number of Parts and supplemented by a series of Practice Directions (PD).  Individual rules are referred to by the initials CPR and then the number of the Part followed by the number of the rule.  Thus "CPR 63.17" is short for "rule 17 of Part 63 of the Civil Procedure Rules."    

CPR Part 27 governs proceedings in the small claims track generally and CPR Part 63 intellectual property proceedings including those in IPEC and IPEC's small claims track.  Before you do another thing read and digest the following Parts and Practice Directions:
It is also worth taking a glance at the other Parts so that you understand their structure and what they cover because the court and other side are likely to refer to them from time to time.

What to do first?
The first thing you do is write a letter before claim in accordance with paragraph 2 of Annex A to the PD - Pre-Action Conduct and send it to the other side. The recipient is supposed to acknowledge your letter in accordance with paragraph 3 within 14 days and to respond in full within 28. If the other side takes no notice of your letter you can issue your claim without further notice. However, in many if not most cases, someone from the other side will call you which may lead eventually to settlement negotiations. There are also various mediation and other ADR schemes to facilitate dispute resolution.

You should be aware that threatening certain people with certain types of IP proceedings can be risky. That us because the Copyright Designs and Patents Act 1988, Trade Marks Act 1994 and certain other statutes and statutory instruments provide a right of action against those who make groundless threats. The rationale behind this legislation is that IP proceedings can be horrendous - one great 19th century judge famously compared patent litigation to a killer flu virus - and the threat to bring such proceedings should not be made lightly.  If you want to know more about threats read my article "If you think someone has infringed your patent talk to a lawyer first" 11 July 2014 in the NIPC Inventors' Club blog.

The Claim Form
If the other side does not respond to your letter before claim or you are otherwise unable to resolve your claim you should download a claim form and notes on completing a claim form from HM Courts and Tribunal Service website. Study the notes very carefully and then fill in the form in accordance with the notes.

Particulars of Claim 
You will note that the claim form leaves space for Particulars of Claim.   Some claims are very simple and can be contained in that space.  Most intellectual property cases, however, are more complex and require several sheets of A4 paper to set out.  

The particulars of claim should identify your intellectual property right and explain how it has been infringed.  You must state your case in numbered paragraphs. If your claim is for infringement of copyright you should:

(1) identify the work in which you say copyright subsists
(2) explain how that copyright arises and how you own the copyright
(3) identify the alleged copy
(4) point out the similarities between your work and the alleged copy,
(5) explain thar the defendant had an opportunity to copy your work,
(6) set out the loss or damage that you have sustained as a result of the damage, and
(7) state the remedy you want and why you want it.

Your particulars of claim must also state that you have sent a letter before claim in accordance with Annex A of the PD - Pre-Action Conduct and that you want the action to proceed in the IPEC small claims track.

At the end of the numbered paragraphs you should write what is known as "the prayer".  That is the relief that you seek and it begins with the words "AND the Claimant claims" followed by an injunction, deliver up of infringing items, damages, interest and costs.

At the very end of the particulars you should fill in a statement of truth which states that you believe that the facts stated in the particulars of claim are true. If you are representing a company or other entity you should also state that you are duly authorized to sign the statement on behalf of the claimant. Make sure that everything in the statement is true to the best of your knowledge and belief.   If it is not you could be in contempt of court and punished with a fine or even prison.

There is also a statement of truth on the claim form. You must fill in that and sign  it too.

Issuing the Claim
Take or post your claim form and particulars of claim together with a copy for each defendant to the public counter of the Intellectual Property Enterprise Court at

The Rolls Building,
7 Rolls Building,
Fetter Lane,

You should then pay the appropriate fee which will depend on the amount of damages you are seeking and be sure to obtain a response pack for each defendant.   

Serving the Claim
It is your responsibility and not the court's to serve  each defendant with a copy of the claim form, particulars of claim and the response pack. Until you do that the proceedings cannot start and any judgment or order you get will be a nullity.   The safest course is to arrange for a process server to serve process on each defendant personally but process servers do cost money which you will not be able to recover from the other side if you win. Most claimants serve process by post or one of the other methods provided by CPR 6.3.

What Next?
If you have sent the other side a response pack they must acknowledge service and then file a defence with the court and send a copy to you. How long they get to file and serve their defence will depend on whether you have sent them a letter before claim that complies with Annex A of PD - Pre-Action Conduct. If you have they must reply in 42 days. If not they get 70 days. 

Often this is the point at which the defendant or his or her solicitor or other representative realizes that you are serious and will pick up the phone or write to you. if he or she spots a problem with your case your opponent will point it out to you in which case you have to decide whether to stop and maybe start again or proceed regardless. It is also possible that the defendant may propose terms of settlement or at least negotiations.

It is also possible for the defendant to counterclaim against you. He or she may think your trade mark is invalid or should be revoked in which case he or she will seek a declaration of invalidity or the revocation of your mark. He or may think you have made an actionable threat. But the defendant's counterclaim can arise over anything and be quite unconnected with IP.  The defendant will make his or her counterclaim in a document called defence and counterclaim.  If the other side does counterclaim his or her counterclaim will be treated in the same way as your claim against him or her. You will have to respond to it which is usually done in a document called a reply and defence to counterclaim. Things tend to get a bit complicated when there is a counterclaim and it is at that point that you should reconsider your previous decision not to seek legal advice.

Judgment in Default
If the defendant does not acknowledge service or file and serve a defence within the specified time you can apply to the court for judgment in default. But be careful. Everything depends on your serving each defendant with a copy of the claim form, particulars of claim and response pack.  If you slip up on any of those points any judgment that you get may be set aside without more ado however much you time and money you have spent to get this far.

Similarly, if you do not file a reply and defence to counterclaim in time and in the correct manner the other side can get a default judgment on the counterclaim against you.

Case Management
If the other side acknowledges service and files and serves a defence or a defence and counterclaim a district judge will read and consider your particulars of claim. their defence or defence and counterclaim and any reply or reply and defence to counterclaim from you.   

If the case is straightforward and the other side agrees to the case proceeding in the small claims track the district judge will give directions for the trial of your claim and any counterclaim without a hearing. These directions will be standard directions in accordance with Appendix B to the Small Claims Practice Direction or one or more special directions in accordance with Appendix C .

Preliminary Hearing
If the district judge is minded to: 
  • give special directions and wishes to make sure that all parties know what they have to do, 
  • strike out a claim or defence on the ground that it fails to disclose a cause of action or defence or 
  • give judgment on the ground that there is no real prospect of success 
he or she may order a preliminary hearing. This could take place in the judge#s room in the Royal Courts of Justice or in one of the court rooms.

Preparation for Trial
Make sure that you comply with all the district judge's directions within the time limits specified in his or her order. If you have any doubt as to what you have to do you should seek legal advice.

The Trial
This could take place in the district judge's room at the Royal Courts of Justice or in any of the court rooms. If both parties are legally represented the trial will take place like any other with an opening by the claimant's advocate, the calling of witnesses and their cross-examination and closing speeches from each side. The judge may deliver judgment extemporarily or reserve judgment. The judge has power to depart from the strict rules of evidence and proceed informally if one or more of the parties is unrepresented.

Appeals from a final decision lie to the Court of Appeal and appeals from an interim decision to the Enterprise Judge who is presently Judge Hacon.  Permission must be sought from the judge who made the order or from the appeal court.

Further Information
If you want to discuss this article or small claims track proceedings in IPEC generally feel free to call me on 020 7404 5252 during normal business hours. You can also contact me through my contact form or message me through Facebook, G+, Linkedin, twitter or Xing.

Wednesday, 23 April 2014

The IP Bill is about to become Law. Learn all about it.

Source Wikipedia

Jane Lambert

The Intellectual Property Bill has completed its passage through the Lords and Commons and awaits royal assent. Once the Clerk of the Parliaments utters the words "La Reyne le veult" the Bill becomes law. The Bill makes important changes to patent and design law and imposes a duty upon the Secretary of State for Business Innovation and Skills to deliver an annual report on how far the Intellectual Property Office and IP legislation generally have contributed to growth and innovation.

I have charted the progress of the Bill since it was introduced into the House of Lords by my fellow St Andrean Lord Younger just under a year ago (see Jane Lambert "The Intellectual Property Bill" 28 May 2013 NIPC Law) and I submitted evidence to the House as it passed through committee (see Intellectual Property Bill, Written evidence submitted by Jane Lambert (IP 04) 31 Jan 2014). Two days ago, I analysed the Bill's provisions in so far as they affect inventors (see Jane Lambert "How the IP Bill affects Inventors" 21 April 2014) and I am about to write a corresponding article on how the Bill is likely to affect designers.

This Bill has had a rougher passage than it need have had largely because of the government's determination to  criminalize registered design infringement notwithstanding advice to the contrary from the vast majority of intellectual property practitioners. Thankfully the original proposals have been watered down significantly so it is unlikely that there will be many prosecutions that could not have been brought under existing legislation but the fight over that provision delayed the reforms to design law that everyone welcomes such as an alternative appeals procedure from the Designs Registry, accession to the Hague, the extension of the IPO opinions service to designs and some important changes to unregistered designs law.

Despite the watering down of the provisions criminalizing design infringement the threat of prosecution is likely to result in more challenges to registered and registered Community designs whether in invalidation proceedings, threats applications and requests for opinions on validity (see my article "Clause 13 of the Intellectual Property Bill will probably go through. What next?" 20 Dec 2013 NIPC Law).

Our chambers will be responding to this with a series of training sessions the first of which will be a talk by my colleague Alex Rozycki and me on the Intellectual Property Bil at 4-5 Gray's Inn Square on 19 May 2014 between 16:00 and 18:00 (see "Learn how the IP Bill will affect you"  17 April 2014 NIPC Law). Alex specializes in the criminal aspects of IP law and will speak on how to defend a Crown and magistrates court proceedings and indeed how to bring a successful private prosecution under the new legislation.  I will be talking about every other aspect of the legislation. CPD points will be available and if you want to attend this talk call George on 020 7404 5252 or fill in our on-line form.

If the event in London is a success we shall repeat our talk in other parts of South East England. If you want to host our talk in your offices or at your local law society then call me on 020 7404 5252 or fill in my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing,

Wednesday, 19 March 2014

What is a Patent? Why might I want one? How do I get one?

Intellectual Property Office       Photo courtesy of the IPO

Jane Lambert

What is a Patent?

A patent is a monopoly of a new invention. The word invention is not defined by statute but it would seem to be either a new product or a new process.

If the invention is a product the monopoly is the exclusive right to manufacture, dispose or offer to dispose of, use import or keep the patented product. If the invention is a process the monopoly is the exclusive right to use the patented process including the disposal, offer to dispose of, use, importation or keeping of any product obtained directly by that process.

If anyone other than the owner of the patent ("the patentee") does any of those things without the licence (that is to say permission or consent) of the patentee, he or she is said to infringe the patent. Patentees can sue infringers for injunctions (orders of a judge not to infringe the patent on pain of imprisonment or fine for disobedience), damages (compensation) for the infringement or other remedies in the civil courts.

Why might I want a Patent?

If you have spent a lot of time or money on research and development you will probably want to get at least some of that back and if possible to make a little bit extra for your trouble. The problem is that we live in a free market and if your product or goods made by your process are in demand you can be pretty sure that someone will want to compete with you.

There are some things that you can do to protect yourself from such competition even without a patent. For instance, you can keep some vital information on making the product secret and there are laws in some countries including the UK that automatically prevent copying of designs. But if your product can be reverse engineered or if a similar product can be made without copying your design the only way you can prevent
such competition is by seeking a patent.

Without a patent it may be difficult to find investment, loans or other help in developing and marketing your invention. One of the first questions the dragons ask on Dragons Den is about intellectual property (see "What is IP? Why do Folk want it? How do they get it? How to learn more?" 20 Aug 2013).

Even if you do not want to make and sell your invention there may be somebody else in the world who does so it may be worth patenting an invention with a view to selling the patent or granting a licence under it.

But a word of warning! A patent is no lottery ticket. It is  worth something only if it helps you or some other person make money from it. And people will make money from a patent only if folk want to buy or use the invention and the patent is drafted sufficiently tightly to prevent others from making or using the invention.

Where do I get a Patent?

Patents are granted by national governments for individual countries or territories or groups of countries or territories. There us as yet no such thing as a world patent or even a European Union patent though there may soon be a patent for some but not all the member states of the EU which will be known as a unitary patent.

The agency that grants a patent is known as an intellectual property office or patent office. In the UK that is the Intellectual Property Office ("IPO") in Newport, A picture of the IPO appears above. The IPO also grants trade marks and registered designs for the UK and a few dependent territories.

The British government is party to an agreement with a number of other European countries to establish a European Patent Office ("EPO") in Munich and a number of other cities to examine applications for, and grant patents on behalf of, the contracting parties including the UK. Patents granted by the EPO are known as European patents and a European patent that applies to the UK is a European patent (UK).  European patents (UK) are treated for all intents and purposes as though they were patents granted by the IPO. The proposed unitary patent mentioned above will be a European patent for most but not all of the member states of the EU.

If you want a patent for a country outside Europe you need to apply to the patent office for the country or group of countries concerned. And you have got to make your application quickly because it you hang around your invention ceases to be new.  At one time inventors had to apply to every patent office in the world at more or less the same time which cost a lot of money and required a lot of work. Life was made somewhat easier by the Paris Convention which gave inventors a year from their first application to apply for patents in more than one country. It has been made easier again by the Patent Co-operation Treaty which allows you to apply to many countries simultaneously from the same application. There are some basic requirements that all countries demand such as novelty, inventiveness and utility. Your invention is examined for those qualities on behalf of all patent offices at the same time. If your invention passes that test the application is sent to individual patent offices to see whether your invention satisfies any further requirements under their local laws. If it does you get a patent for that country.

How do I get a Patent?

Requirements vary from country to country but all countries require inventors to submit a document known as a specification as part of the application to the relevant intellectual property or patent office.

The specification must include a description of the invention and a series of numbered paragraphs called claims.

The description normally identifies the problem that the invention seeks to resolve and often mentions previous attempts to resolve the problem. It then states how the invention addresses the issue and explains how to make or use the invention. That is very important because the inventor makes a deal with the public. In exchange for the monopoly of the invention the inventor must explain precisely how a person with the relevant skill and knowledge can make or use the invention. If the inventor fails to do that the patent is invalid and the monopoly may be revoked.

The claims set out the extent of the monopoly. They list the essential components of the invention known as features or integers. These also have to be drawn up carefully. If a claim is drafted too wide in that the inventor claims features to which he or she is not entitled that claim may be revoked. If the claim is too narrow a competitor will simply make something very like the invention which performs in very much same way.  The reason why claims are numbered is that the inventor sets out the monopoly in the widest terms that he or she can get away with in the first claim and then narrows it down in subsequent claims. A patent is said to have been infringed when a product that has the features of at least one claim is made, sold, offered for sale, imported, kept or used or a process with one of the features is used.

Once the application is filed the patent office examines the invention to see whether it really is new having regard to everything that has been invented or made known before ("the prior art"), whether the invention involves an inventive step or obvious when considering the prior art, whether it is useful and whether it satisfies other requirements of local law. A problem that often arises in the UK and other European countries is that computer programs as such cannot be patented whereas in the USA and many other countries they can. Often there is a debate as to whether a software implemented invention is just another computer program or whether it is an invention that resolves a technical problem. If all those tests are satisfied, then the patent is granted. If not the application may be rejected.

Can I apply for a patent myself?

Er y-e-e-e-e-e-s but I wouldn't recommend it. Applying for a patent is a tricky business and there is so much that can go wrong. It is much better to consult a patent attorney (also known as "patent agents"). They can get the specification right first time and if there is a problem with the application they can often resolve it in correspondence. If the examiner won't budge an attorney can represent you on appeal to a tribunal which in the UK IPO is an independent official known as "a hearing officer" who represents the Comptroller or chief executive of the IPO.

Those services come at a cost which can be a bit daunting if you are a new business. It is worth remembering that it takes a long time to train a patent attorney. Most have degrees in natural sciences, engineering or technology and many have doctorates in one of those subjects too. After they finish their university education they have to study intellectual property law and patent office practice and procedure and undergo a period of on the job training before they are in a position to draft patent specifications and navigate them through the intellectual property office.

Patent attorneys in this country belong to the Chartered Institute of Patent Attorneys ("CIPA") and are regulated by the IP Regulation Board ("IPReg"). There are similar bodies in other countries.

Where can I get more information?

A good starting point for general information is the Business and IP Centre of the British Library. They have a lot of materials including information on patenting, a good website, Linkedin group and Facebook page and they run workshops and seminars on IP including patents and provide other services. Some of those services are also available at Portsmouth and Southampton Central Libraries,

If you want to compare notes with other inventors you could attend a meeting of an inventors' club. There are three in London (Croydon, Kingston and the University of East London) and at least one (the Wessex Round Table of Inventors) in Southampton.

If you have a specific problem you could attend a patent clinic where you can meet a patent attorney, lawyer or other professional. We run patent clinics at Middlesex University on the last Thursday or every month and others are operated by CIPA and Ideas21. If you want an appointment at our clinic or discuss any other aspect of our article please call me on 020 7404 5252 or send me a message through my contact form, FacebookG+, Linkedin, twitter or xing.

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