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.

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

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

There's More to South East England than London

South East England    Source Wikipedia

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Because of its proximity to the capital, South East England is often seen as the hinterland of London. That is not without justification because many in the region work in central London and many more visit London frequently for shopping and entertainment. Nevertheless, there are important towns and cities in the region such as Basingstoke, Brighton, Canterbury, Chichester, Dover, Guildford, Maidstone, Milton Keynes, Oxford, Portsmouth, Reading, Southampton and Winchester with distinct identities and dynamic local economies.  Our aim is to support businesses and their professional advisors in those communities

We shall do that in a number of ways.

First, through our conferences, seminars and publications (including this blog) we shall help educate those who create intellectual assets, such as artists, authors, designers, entrepreneurs and inventors, those who invest in them, such as angels and venture capitalists, and those who advise and represent those creators and investors such as accountants, lawyers, patent and trade mark attorneys in intellectual property law.  We shall offer speakers and materials for publication to businesses and institutions that already provide such education.   Thus, if a law firm, accountancy practice or inventors' club wants to talk about litigation in the small claims track of the Patents County Court or the Patent Box one of us and perhaps one of our colleagues from Atlas Tax Chambers or an accountancy practice, law firm or patent agency with which we work closely will speak.   Where nobody else is providing such education we shall do so ourselves.

Secondly, we shall provide high quality but affordable advice and representation on intellectual property and related areas of law.  We shall do all that we can to reduce costs without sacrificing quality.  For instance, we shall advise and take instructions by Skype, phone or email wherever possible.   Where a physical meeting makes sense we shall hold it at the client's or professional intermediary's premises rather than expect everybody to traipse into Gray's Inn unless there is some advantage in meeting in chambers either because it is the most convenient point or because we are going to court. We are helping to develop interactive technologies so that a lot of the work that is presently done in meetings can be done electronically,

Thirdly, over the years we have developed lots of connections with professionals such as specialist solicitors, patent attorneys and other experts in all parts of this country all and around the world.   Until 2004 the only way members of the public could consult counsel was by instructing a solicitor or patent or trade mark attorney first.  Now they can come directly to us.   If they have a professional intermediary we shall be glad to work with him or her.  If not, we shall introduce clients to somebody whom we know to have the skills, experience and other qualities that the case requires.

Fourthly, we shall develop our strengths.   There are already areas of intellectual property law that we believe we can do better than anybody else. We believe that we are the only set of chambers in the country with expertise in tax as well as IP law and our colleague, Anne Fairpo, is one of the authorities on IP and taxation.   We have already held one very successful seminar on the Patent Box on the 12 July and you can download those and other slides and handouts from our special Patent Box blog,   Traditionally our chambers have been known for their expertise in public law. Well there is a public law dimension to intellectual property where we are already among the leaders. A good example of this overlap is the use of bilateral investment treaties to seek redress for failure to protect intellectual assets.  Very timely in view of Eli Lilly's notice of intention to claim compensation from Canada for revocation of its Canadian patents and the interim decision in Philip Morris's claim against Australia in respect of its plain cigarette packaging legislation.  I have already written several articles on the topic for our own publications as well as a more detailed one for Sweet & Maxwell's European Intellectual Property Review (see Jane Lambert "Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection" 27 July 2013 NIPC Law).

We are aware that we are the new kids on the IP block, that we have some formidable competitors and that like Avis have to try harder. You have our assurance that we shall do just that.