Brighton Business and IP Centre

Jubilee Library

Author Hassocks5489 Licence CCO 1.0 Source Wikipedia Jubilee Library

Jane Lambert

In Where to get free basic Information on Intellectual Property 18 Dec 2013 I mentioned the British Library Business and IP Centre.  The British Library is part of a nationwide network which provides entrepreneurs and SMEs across the UK with free access to databases, market research, journals, directories and reports worth thousands of pounds. Each of those centres maintains a programme of free and low-cost events and workshops on a range of topics including business planning, marketing and intellectual property.

The latest library to join the chain is the Jubilee Library on Jubilee Street in Brighton.  According to the British Library website, the Jubilee Library offers:

• Workshops, one to ones and events for start-ups, SMEs and inventors
• A dedicated space for people to come together and network
• Business information resources including market research intelligence, UK and global company data.

The library's website promises that the workshops will cover topics that matter to businesses such as intellectual property, market research, social media and digital growth. The sessions will be relaxed and interactive, and are either free or highly discounted.

The library promises networking events where participants can meet like-minded entrepreneurs, one-to-one advice and other activities. 

Contact the library by email on BIPC@brighton-hove.gov.uk, phone  01273 296984 or through twitter on @BIPCBtnHove,

Anyone wishing to discuss this article or IP generally may call me on 020 7404 5252 or send me a message through my contact form,

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.

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
Brexit
NIPC Inventors Club
Dispute Resolution
Database Right
Data Protection
Domain Name Disputes
FinTech
Licensing
Midlands Engine
Northern Powerhouse
Unitary Patent and Unified Patent Court
NIPC Gulf
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
Copyright
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
East Midlands
London
North West
Severn-Hafren (Bristol, Cardiff and Newport Conurbation)
West Midlands
Yorkshire

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.

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:

• IPO Opinions: Intellectual Property Act 2014: The New Law on Opinions 29 Oct 2014;
• IPO Mediation: The IPO's New Improved Mediation Service - will it make a difference? 7 Apr 2013; and
• Domain Name Dispute Resolution: Always consider the UDRP first 31 Aug 2005.

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.

Threats

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.

Injunctions

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.

The Furniture Industry and IP

High Wycombe

Map Wikipedia

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.

Patents
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.

Designs
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.

Copyright
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.

Enforcement
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.

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	Brighton Digital Festival Month of exhibitions, conferences and other events around Brighton
8 Sep 2014	Introduction to IP and Patent Law AssimilateIP 09:00 - 17:00	Holiday Inn, Winnersh, Reading,
29 Sep 2014	Update on Chinese IP Law and Pracice 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	Woking Means Business Exhibition and seminar 09:00 - 16:30	H.G. Wells Conference & Events Centre, Church Street East Woking, GU21 6HJ
22 Oct 2014	Kent 2020 Vistion All day exhibition and seminar	Kent Event Centre, Kent Showground , Detling Maidstone, ME14 3JF
24 Oct 2014	South East Business Show Exhibition 10:00 - 15:30	Copthorne Hotel, Effingham, Gatwick

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

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,

Our London IP Clinics

Jane Lambert

In "Where to get free basic Information on Intellectual Property" 18 Dec 2013 I mentioned the IP Clinics in London, Portsmouth and Southampton. Well there is now a fourth.  Our very own London IP clinics which takes place at 4-5 Gray's Inn Square between 15:00 and 17:00 on the last Wednesday of every month except August and December.

I have described those clinics in more detail in "IP Clinics with a Difference" 31 Dec 2013 in London IP. The important point is that our clinics are a bit different from some of those others because we are barristers and not patent or trade mark attorneys. In that article I wrote:

"We can advise you on IP generally, IP strategy, enforcement, responding to claims by third parties, licensing, joint ventures and so much more. Although we know about patent, trade mark or design registration we do not do that work ourselves. If it appears to us that you we may need a patent, trade mark, registered design or other professional's services, we would introduce you to one of the patent or trade mark attorneys or other professionals on our panel.
We can also advise you of some of the other resources that are available such as the Business and IP Centre of the British Library and the three inventors' clubs in London. We can guide you to some of the useful on-line materials that are published by the Intellectual Property Office, European Patent Office,World Intellectual Property Office, Chartered Institute of Patent Attorneys, Institute of Trade Mark Attorneys and, of course, ourselves."

If you would like a free 30 minute consultation with one of us  - which would otherwise cost you at least £250 + VAT - please call George on 020 7404 5252 or contact us through our booking form.

What is IP? Why do Folk want it? How do they get it? How to learn more?

Jane Lambert

What is IP?
Intellectual property ("IP") is the umbrella term for the bundle of laws that protect investment in intellectual assets.

OK! What are Intellectual Assets?
These are the things that give one business a competitive advantage over others. They can be grouped into four categories:

• Brands
• Designs
• Technology, and
• Creative works.

Why do Folk want IP?

If you have spent a fortune on developing a drug or making a film you do not want competitors to counterfeit your medicine or pirate your movie. You want the law to stop them and that is what IP does.  

However, intellectual asset owners do not have it all their way. Consumers and competitors also have interests. The law strikes a balance between those competing interests by limiting the duration, providing exceptions or otherwise restricting your exercise of IP rights ("IPR").

How do you acquire IP?

Some IPR come into being automatically.   Good examples are copyright and the right to bring an action for passing off.   Other IPR such as patents, trade marks or registered designs require registration at the Intellectual Property Office ("IPO") or some other national or intergovernmental IP office.

Tell me more about those IPR
A copyright is the exclusive right to copy, publish, rent, lend, communicate to the public, perform or adapt an original artistic, dramatic, literary or musical work, a broadcast, film or sound recording or typographical arrangement.   That is how the law protects creative output, that is to say the work of artists, authors, broadcasters, composers, computer programmers, film makers, publishers and recording artists.

Passing off is misrepresenting your goods or services as those of another supplier by adopting the same or similar name, trade mark, style of packaging or other presentation.   It is one of the ways the law protects brands.

Patents are monopolies of new inventions which can be either new products or processes.   They are one of several ways in which the law protects new technology.

Trade mark registration is another way of protecting brands.   A word, logo or other sign is registered as a trade mark for specified goods or services with the IPO.   Registration confers the exclusive right to market the specified goods or services under the mark.

A product design can be registered at the IPO if it is new and has individual character.   It is one of the ways the law protects ornamental as opposed to functional designs.

Remember that there are lots of other IPR and this is just an introduction to the IPR that we have discussed.

How can I find out more?
I gave an introductory talk on IP on the 26 June 2013 and you can download my slides and handout here. I am running follow up talks at 4-5 Gray's Inn in London between 16:00 and 18:00 on the following days:

• 25 Sept 2013 Branding law: trade marks, passing off, geographical indications, domain names etc;
• 30 Oct 2013  Creative output: copyrights, rights in performances and related rights; and
• 27 Nov 2013 Technology: patents, trade secrets, design rights, semiconductor topographies, plant breeders' rights etc.

If you want to catch the talk on branding law you have to move fast as we have only 3 places left but there is still room on the other two classes.

Getting in touch

If you have a specific enquiry call me on 020 7404 5252 or send me a message through my contact form. I can also be contacted through twitter,Facebook, G+, Linkedin and Xing.

Related Articles

Jane Lambert  "Introduction to Trade Marks" 9 Oct 2013
Jane Lambert  "Introduction to Design Law" 10 Oct 2013 London IP and Technology Law