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.

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.

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, Facebook, G+, Linkedin, twitter or xing.

Related Articles

6 Sep 2014	Jane Lambert So what’s a patent?	IP East Midlands
2 Aug 2013	Jane Lambert How to read a Patent	IP London

Introduction to Trade Marks

Trade marks everywhere! But how to get one?    Photo Wikipedia

Jane Lambert

In "What is IP? Why do Folk want it? How do they get it? How to learn more?"  20 Aug 2013 I explained that

• IP (intellectual property) is the umbrella term for the bundle of laws that protect investment in intellectual assets,
• intellectual assets are things such as brands, design and technology that give one business a competitive advantage over other, 
• some IP rights ("IPR") such as copyrights and related rights and the right to bring a claim for passing off arise automatically while others such as registered trade marks have to be applied for.

Here I discuss trade marks, whether it is necessary to register a trade mark, where to register a trade mark, legislation, whether you need professional representation, costs, enforcement, revocation and invalidation and make some suggestions for further reading.

What is a Trade Mark?

The definition in s 1 (1) of the Trade Marks Act 1994 is "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

Gobbledegook! 

Even for lawyers. 

Last Friday the highest court in England and Wales handed down judgment in two appeals on what constitutes a "sign" and what is meant by "capable of being represented graphically". One of them concerned chocolate so I analysed it for my patent attorney and specialist clients in "The Colour Purple - Société Des Produits Nestlé S.A. v Cadbury UK Ltd." 4 Oct NIPC Law.

Basically a "sign" can be more or less anything that can be seen or sensed and the Trade Marks Act 1994  gives a few examples: "words (including personal names), designs, letters, numerals or the shape of goods or their packaging."  

The words "capable of being represented graphically" mean that it must be possible to describe the trade mark in words, numbers or some other way. The case I mentioned discussed that point.

"Undertaking" is a high faluting Eurocrat term for a business or enterprise. Not necessarily to do with funerals though undertakers do have trade marks just like any other business. Last year I advised in a trade mark dispute between two firms of funeral directors.

The words "capable of distinguishing goods or services" are important. The sign must identify the goods or services of a business.  It can't do that if the mark is or could be used by everybody in the trade.   For example, "Bread" won't do for a bakery because all bakers bake bread but maybe the image of a loaf coupled with the baker's name might. Unless of course the baker is called Mr. Baker.  Also, a trade mark can't exist in a vacuum.  It must relate to the goods and services of a business.

So in everyday language a trade mark means any name, logo or other sign that can be described in writing which identifies a business's goods or services in the market place.

Registration

Trade marks may be registered or unregistered.

If a mark is registered the owner of the registered mark has the exclusive right to use the mark for the goods or services for which it is registered. "Use" for that purpose includes placing the mark on goods or their packaging and advertising, importing or exporting goods or services under the mark.

A mark that is unregistered may still be protected in the United Kingdom by the law of passing off.  That is a judge made law that forbids traders from leading the public to believe that their goods or services as those of another trader by, for example, using the same or similar trade mark or style of packaging.  In many other legal systems there is a similar doctrine known as the law of "unfair competition".

Why bother to register a Trade Mark if it can be protected by the Law of Passing off?

There are two important advantages of registration.

The first is that it is a lot cheaper and easier to prove trade mark infringement than passing off.  In an action  for passing off a claimant has to prove that his or her trade mark is recognized in the market place which is usually done by producing sales figures, advertising and marketing expenditure and samples of advertising which can be expensive and time consuming to assemble.  Then he or she has to show that the defendant has misled or mislead the public by the use of the same or similar trade mark or in some other way. If the defendant disputes that the public has been misled the claimant may have to call witnesses who have been misled or even commission market surveys.  Finally, the claimant has to show that he or she has suffered loss or damage as a result of the defendant's activity such as loss of sales.  In an action for trade mark infringement the claimant has only to point to his or her registration and produce evidence of the defendant's use of the same or similar mark.

The second important advantage of registration is that the exclusive right is backdated to his or her application. The owner of a registered mark who is known as "the registered proprietor" does not have to prove that he or she has started to use the mark in the first 5 years after that application whereas in an action for passing off the owner does for he or she cannot otherwise prove that he or she is known in the market.

Registration of a trade mark does not affect the right to bring a claim for passing off.  The two rights are different though there is a lot of overlap. There are circumstances where it is possible for a claim for passing off to succeed and a claim for trade mark infringement to fail and vice versa.   Often a claim for trade mark infringement and passing off are brought in the same action.

Where to register a Trade Mark

If you want a trade mark for the UK alone you should apply to the Intellectual Property Office ("IPO") in Newport.

If you want to register a mark for the whole European Union including the UK you should apply to OHIM (Office of Harmonization in the Internal Market (Trade Marks and Designs)) in Alicante.

If you need a trade mark for any other country you should apply to the intellectual property office for the country or group of countries concerned.  The World Intellectual Property Organization (the UN agency for intellectual property) publishes a directory of intellectual property offices.  If you want to apply for trade marks in several countries at the same time the British government is party to an international agreement known as the Madrid Protocol that allows you to do so.

Applicable Laws

The basic legislation for the UK is the Trade Marks Act 1994 which has been amended several times.  The IPO publishes a useful unofficial consolidation of the latest version of the Act.  The Act is implemented by The Trade Mark Rules 2008.

In order to create a level playing field for businesses throughout the EU the national governments and European Parliament have adopted Directive 2008/95/EC known as the Trade Marks Directive which requires all national trade mark laws to be substantially the same.  Our Act and Rules have to comply with that directive.

Trade marks granted by OHIM are known as Community trade marks ("CTMs") and the legislation providing for CTMs is called the Community trade mark or CTM regulation (Regulation (EC) 207/2009). The basic provisions of the CTM regulation are very similar to the Trade Marks Directive.

Professional Representation

It is not compulsory to instruct a professional representative to apply for a trade mark and many business people have registered trade marks without any difficulty.  Applications in the UK and many other countries can be made on-line and the IPO, OHIM, WIPO and national intellectual property offices provides lots of useful information.

However, I would nevertheless strongly advise business owners and managers to consider seeking professional advice.   Their priority is to launch or manage their businesses and the time they spend on looking up the law, making searches and drafting and filing an application has to be taken into account. Trade mark attorneys have spent many years studying and practising trade mark law and know it inside out. They can make searches, form judgments as to what signs will or will not be accepted for registration and draft specifications and file them in a fraction of the time that it would take most businessmen or women to do the same and attirneys are much more likely to be right first time. They are also regulated by the Intellectual Property Regulation Board ("IPReg") and are insured against professional negligence.   The few hundred pounds that a trade mark attorney would charge for such work is likely to be money well spent.

The professional body for trade mark attorneys (who are also called "trade mark agents") is The Institute of Trade Mark Attorneys ("ITMA").  ITMA has a searchable database of trade mark attorneys with their websites and contact details.  Also, we have worked with many trade mark agents throughout the UK over many years and if you want a recommendation our clerks will gladly give you 2 or 3 names of firms who have done a good job in the past.  Call them on 020 7404 5252 during normal office hours or use their contact form.

How much will it cost?

If you make your own application on-line for a range of goods or services in the same class in the UK the IPO will charge you £170.

Goods and services are grouped in classes according to a treaty known as the Nice Agreement. If you want to register your mark for goods and services in more than one class the IPO will charge you £50 for each additional class.

To those basic filing fees you must add attorneys' or other professionals' fees or your own time for carrying out searches, drafting specifications and filing the application.   It is worth shopping around but it should be possible to find an attorney who is prepared to do all those things including on-line filing for around £500 plus VAT.

If the IPO or a third party objects to, or opposes, your application you may have to argue your case before an official known as "a hearing officer". An unsuccessful party made be ordered to pay some costs to the successful party but these are usually a fraction of the amount the successful party will have incurred in presenting a case to the hearing officer.  These costs could amount to several or even tens of thousands of pounds depending on the nature of the case and the representation. There is also the possibility of an appeal to the court or an independent lawyer known as "the Appointed Person."

If your application is successful and you are granted a trade mark you may have to sue infringers in the Chancery Division or a county court which could cost you tens or even hundreds of thousands of pounds. Unless you have, or your business has, plenty of resources you should consider taking out insurance against the cost of suing third parties and indeed the cost of third parties suing you for revocation or invalidation of your mark.

There are of course different costs for searches of, applications to, and proceedings in OHIM and foreign intellectual property offices. Information about those costs can be obtained from their websites or from your trade mark attorney.

Enforcement

You must sue for infringement of a British or Community trade mark in the High Court or in a county court that is attached to a chancery district registry.  As there are no chancery district registries in South East England your nearest court is the High Court of Justice in London.

If you claim is relatively straightforward, you seek damages limited to £500,000 and the case can be disposed of at a trial lasting no more than 2 days you can bring your claim in the Intellectual Property Enterprise Court ("IPEC").  On 1 Oct 2013 IPEC replaced a specialist jurisdiction of the Central London County Court known as the Patents County Court and has inherited most of its rules and practice.   If you sue in IPEC you will usually be allowed to recover more than £50,000 in costs from the other side if you win but, by the same token, they cannot recover more than £50,000 from you.

The IPEC also has a small claims track for injunctions and claims for up to £10,000 where recoverable costs (and the risk of adverse costs) are limited to a few hundred pounds.  I have written a lot of articles and given a presentation on the small claims track which are listed in "Patents County Court - the New Small Claims Track Rules" 20 Sep 2012 NIPC Law.  I shall also give a talk on the small claims track to ITMA over the internet on 12 Nov 2013 between 12:00 and 13:00.

If your claim falls outside IPEC's jurisdiction you have to sue in the Chancery Division.  There your liability for costs and that of the other side is unlimited.

As trade mark law is not straightforward be use to instruct litigators and counsel with expertise in IP law.   Though there are plenty of other good law firms with knowledge and experience of IP you are assured of such expertise if you instruct solicitors who are members of the Intellectual Property Lawyers Association. There are also a number of patent and trade mark attorneys who are accredited to conduct litigation in the High Court.

Similarly, if you instruct counsel or a solicitor or a patent or trade mark attorney advocate make sure that he or she has the necessary expertise.  Most barristers specializing in IP law are members of the Intellectual Property Bar Association.

If you try to enforce your rights without a specialist lawyer you could find yourself in serious trouble. For instance, s.21 of the Trade Marks Act 1994 provides a right of action against persons who threaten others with trade mark infringement proceedings without justification. Anybody making such threats can be sued for declarations, injunctions, damages and costs which can amount to many thousands of pounds.

Revocation and Invalidation

You should be aware that your trade mark can be taken away from you after it has been granted for a number of reasons.  For example, it may be revoked if you never use it or suspend your use for up to 5 years for no good reason. You could also lose it if becomes the common name in the trade for a product or service for which it is registered.  It may be that a judge or the IPO decides that you should never have been granted the trade mark in the first place in which case the court or IPO will invalidate your registration.

Applications for revocation or invalidation of a registered trade mark may be made to the IPO or court. You should not be surprised if a defendant to an infringement action counterclaims against you for revocation or invalidation of your registration.

"Trade Marks" or "Trademarks"

"Trademark" is the American spelling and "trade mark" is the spelling used in the UK, EU and much of the Commonwealth.  However, nobody in the UK will complain too much if you use the US spelling here.

Further Information

I gave a presentation on the law of branding which covered trade mark law and passing off on 25 Sept 2013. You can download myt slides and notes which provide links and make suggestions for further reading from Slideshare.

This article plus my presentation will be a foundation for further talks and articles on different aspects of trade mark law.

If you have any questions about this article or trade mark law generally, call me on 020 7404 5252 during office hours or use my contact form.