Thursday, 11 September 2014

Forthcoming Presentations

26 Sept 2014
14:00 – 17:00
Making Sure you make Money from your Brands and Ideas and not other People
Workshop and clinic with speakers from 4-5 Gray’s Inn Square, Loven IP and the Intellectual Property Office CPD BSB and SRA
Grantham College, Stonebridge Road, Grantham, NG31 9AP

29 Sept 2014
16:00 – 18:00
Intellectual Property Ac 2014 – What it means to you and your clients
In-depth seminar led by Jane Lambert, CPD BSB and SRA
QualitySolicitors Jackson & Canter, 88 Church Street, Liverpool, L1 3AY
15 Oct 2014
18:00 – 19:45
The Intellectual Property Act 2014 - What it means for you and your clients
In-depth seminar led by Jane Lambert, CPD BSB and SRA
Business and IP Centre. Central Library, Calverley Street, LS1 3AB

Monday, 1 September 2014

Grantham Science Festival - there is a practical side to science

A putative descendant of Sir Isaac Newton's apple tree

Jane Lambert

Baroness Thatcher may be Grantham's most famous (or, depending on your politics infamous) daughter but Sir Isaac Newton was indisputably its greatest son. Although Thatcher was by no means in the same league as Newton she was also a scientist. To celebrate its scientific heritage and in particular Newton's theory of gravitation Grantham is holding a science and arts festival known as Gravity Fields between the 24 and 28 Sept 2014.

There will be all everything from rocket science for 2 to 5 year olds to building quantum computers with Professor Danny Segal of Imperial College in the Science Festival and Douglas Hollick's Goldberg Variations to Chasing the Eclipse a new ballet by Chantry Dance Company, the only professional dance company in Lincolnshire.

Now science, the arts and technology are the hallmarks of civilization but people will only invest in them only if their inventions, brands, designs and works of art and literature are safeguarded from the counterfeiters, freeloaders and pirates. That's where intellectual property comes in.  Intellectual property is the collective name for the bundle of laws that protect intellectual assets. That is to say patents for inventions, trade mark registration for brands, copyrights for works of art and literature and so on.

Now this area of this law is not easy but it affects in one way or another just about every business in just about every industrial sector and in ways that may not be expected. For instance, just everything that you write whether a computer program or an appreciation of Shelley is a work of literature in which copyright can subsist.  The loyal customer base that you generate by consistently giving good service is goodwill that attaches to your trade name or logo.

Now as our contribution to Gravity Fields we and our friends in the Intellectual Property Office and Loven IP will present a workshop on those issues at 2 pm on Friday 26 Sept 2014 at Grantham College. This workshop is free but booking is essential as space is limited. After the workshop we shall hold one to one consultations with those with specific issues on any of the topics that we cover. You can book your place by clicking here or the post below.

An Introduction to Intellectual Property, Grantham, 26 Sept 2014

Saturday, 9 August 2014

Sponsoring the Performing Arts - the Legal Considerations

'Dream Dance' workshop from Rae Piper on Vimeo

As part of the Lincoln Inspired Festival 2014, the Chantry Dance Company delivered a workshop in which the participants were guided in creating their own modern ballet piece based on the subject of dreams. The piece seen in the video was created by the dancers in just 2 hours! You can read all about it in "Chantry Dance Company's Sandman and Dream Dance" 10 May 2014 Terpsichore. As I noted in Chantry Dance Summer School 2 Aug 2014 the company does great educational and outreach work bringing dance into prisons and care homes as well as theatres. Ballet Cymru does great work with Gloucester Dance (see "'Stuck in the Mud' doesn't mean you're stuck" 25 June 2014 Terpsichore). Valuable educational and outreach work is also done by Northern Ballet and Scottish Ballet.

Much of this work depends on sponsorship by businesses and individuals and companies in the performing arts are making efforts to attract such funding. Last September, for instance, Northern Ballet held a breakfast meeting for business leaders and professionals in Leeds (see "The Things I do for my Art: Northern Ballet's Breakfast Meeting" 23 Sept 2013 Terpsichore), On 26 Aug 2014 Chantry Dance will hold their Making Connections event for business leaders in Grantham.

So if you are minded to sponsor Chantry Dance or some other company in the performing arts what do you get for your money. Well first there is the warm glow of doing something that is good in itself - though that does not pay staff wages or corporation tax. Rather more bankable is the approbation of your customers and industry. A feeling that one good turn deserves another which may result in higher revenues. Then there is the advertising to a captive audience if your business name or corporate logo appears in programmes and on advertisements, tee-shirts and other merchandise. If you are in food or drink maybe your snacks or beverages are promoted in the theatre bar. Possibly the production or theatre is named after your company. Now that could be very effective marketing.

If you want to sponsor a company, theatre or event it is essential to secure your branding.  If you have not already done so seek advice on registering a trade mark for all the goods and services that you intend to sell in the UK or other country where the sponsored event is to take place. Sometimes it is not possible to register a sign as a trade mark because it cannot distinguish your goods or services from those of your competitors or for some other good reason. If that is the case there may be other intellectual property rights upon which you can rely such as a design registration, copyright in the artwork or simply the goodwill or reputation that accrues to your sign in the market place. For more information on the topic see my "Introduction to Trade Marks" 9 Oct 2013 IP South East).

It is also essential to make sure that the company or other organizer that you are sponsoring can enter and be bound by a sponsorship agreement.  Ask to see the company or other organizer's memorandum and articles of association. Remember that if it is a registered charity there are likely to be restrictions on the business that it can carry on. Be sure to carry out the same sort of credit and other background checks that you would make of a new supplier.

Sponsorship agreements will vary considerably but make sure that any event that you are to sponsor will take place and seek indemnities, guarantees or insurance in case it does not. Set down the conditions upon which your trade mark or designs are to be reproduced stipulating, wherever possible, the quality of the printing, paper or textile on which the sign is to be reproduced. You may also wish to impose conditions on the hygiene and appearance of the retail outlets, particularly where food and drink are to be dispensed. Last but not least you want to satisfy yourself as to the health and safety of the venue. Nothing could do your brand more harm that appearing in a stifling, uncomfortable or dangerous auditorium.

Despite everybody's best efforts it is inevitable that disputes will occasionally arise and it is important that these are resolved discreetly, cost-effectively and as amicably as possible. The courts are not the best forums for the resolution of sponsorship disputes because of the resulting publicity. Mediation followed by arbitration are the best way of keeping such disputes private and resolving them quickly.

It goes without saying that both sponsor and spondee should seek high quality, specialist professional advice before entering a sponsorship agreement.  Members of out chambers can offer advice on tax, charities and company law as well as intellectual property to all parties in such transactions. If anybody wishes to discuss this article or any other issue relating to sponsorship, entertainment or sports law he or she should not hesitate to call me on 020 7404 5252 during normal office hours or complete my contact form. I am also on twitter, Facebook, Linkedin, G+and Xing.

Thursday, 24 July 2014

How to keep out of court

Lord Esher: "better have his patent infringed .... than have a dispute about a patent."
Source Wikipedia

Jane Lambert

In Ungar v Sugg (1899) 9 RPC 117 Lord Esher MR said:
"A man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined."
Clearly, there has to be a better way and indeed there is but you have to think and plan ahead.

The key to keeping out of court is to anticipate and defuse potential disputes before they arise. The best way to do that is to commission regular intellectual property audits from your lawyers or patent or trade mark attorneys.

An IP audit identifies the intellectual assets that you use in your business - that is to say, your brands, designs, technology and works of art and literature (which includes computer software and databases, catalogues and users' manuals as well as poetry and painting) - and finds out who owns them.

If you or your business own an asset the auditor considers whether it is protected by law. If it is not protected adequately a good auditor will present you with options. For instance, if your R and D staff have invented a new product you may wish to apply for a patent which means disclosing it to the world in return for a monopoly of the product's manufacture, marketing and use or keeping it secret and relying on the law of confidence to prevent unauthorized use or disclosure by those who know about it. If you want to allow others to use your intellectual assets the auditor will review your licences and other agreements and suggest ways in which they can be improved.

If it turns out that you do not own an intellectual asset that you use in your business the auditor will review the licence under which you use the asset to ensure that your use falls within it. If it does not he or she will help you comply with your licence, negotiate a new licence or propose yet another solution.

One of the points that your lawyers or attorneys should raise in any licensing deal is dispute resolution. Should a dispute arise between you and your licensor, licensee, customer or supplier do you really want to go to court with all the expense, delays and publicity that litigation involves or would you prefer to try negotiation followed by mediation and arbitration before neutrals of your own choice should negotiation fail. There are drawbacks to arbitration and mediation. It can sometimes take longer and be more expensive and there are limited rights of appeal. However, the process takes place in private; it is controlled by the parties; and there is a much better chance of preserving a business relationship when the dispute is resolved.

Whichever method of dispute resolution you choose it is likely to cost money. You should therefore give some thought to funding. If you run a small business you should consider before-the-event IP insurance. It is still more expensive than general legal indemnity insurance though premiums are coming down.  Before-the-event insurance is always considerably cheaper than after-the-event insurance and the costs are coming down.  To learn more about this type of cover my article "IP Insurance Five Years On" 23 Oct 2010 Inventors Club is as good a starting point as any.

If despite these precautions you find still find yourself having to face down a third party you must be careful to frame your opening letter to the other side or response in accordance with Annex A of the Practice Direction-Pre-Action Conduct. Paragraph 8 of that Practice Direction requires parties to consider alternative dispute resolution ("ADR"). Two forms of ADR that are provided by the Intellectual Property Office: mediation in either London or Newport and examiners' opinions on the validity and infringement of patents under s.74A and s.74B of the Patents Act 1977. From October 2014 the opinions service will cover other types of patent dispute as well as registered designs and design rights (see Jane Lambert "How the Intellectual Property Act 2014 will change British Unregistered Design Right Law" 11 June 2014 JD Supra and "How the Intellectual Property Act 2014 changes British Registered Design Law" 19 June 2014 JD Supra). In negotiating with the other side always be mindful of the groundless threats provisions in the Patents, Registered Designs and Copyright, Designs and Patents Acts (see Jane Lambert "If you think someone has infringed your patent talk to a lawyer first" 11 July 2014 Inventors' Club).

We can help you keep out of court as well as represent you in court or tribunal. We can carry out an IP audit, review your licences and other agreements. negotiate on your behalf. We can draft letters before claim and response in accordance with Annex A. We can appear for you at arbitration, mediation and other ADR proceedings. If you need an arbitrator or mediator Joe Dalby and I are on the World Intellectual Property Organization panel of neutrals. Thomas Dillon has specialist expertise in film and TV disputes and Louis Harms in international arbitrations.

If anybody wants to discuss this article or any instance where a threat has been made he or she should not hesitate to call me on 020 7404 5252 during normal office hours or complete my contact form. I am also on twitter, Facebook, Linkedin, G+ and Xing.

Saturday, 7 June 2014

Reflections on the Intellectual Property Act 2014

Jane Lambert

The Intellectual Property Bill received royal assent on the 14 May, just over a year after it was introduced into the House of Lords and is now an Act. It is a very short statute consisting of 24 sections divided into Four Parts together with a Schedule. It enables the Secretary of State to implement the Council Agreement on the Unified Patent Court and the Hague Agreement, expands the scope of the Intellectual Property patents opinion service and establishes an opinions service for designs and provides for appeals from hearing officers in designs matters to be heard by an Appointed Person as in trade marks. It also tidies up s.213 of the Copyright, Designs and Patents Act 1988, the Registered Designs Act 1949 and the Patents Act 1977. For a detailed analysis of the legislation, see my article The Intellectual Property Bill 28 May 2013 NIPC Law and the presentation by Alex Roxycki and me.

The Bill's only controversial provision was clause 13 which created a new criminal offence of intentionally copying registered or registered Community design. That provision horrified patent lawyers as exactly the same arguments as were made for extending criminal liability to registered design infringement - namely the cost of civil proceedings and the complexity of the law - could be made by private inventors and their champions for bringing the criminal law into patents.  On the other hand, clause 13 did not go far enough for the design lobby which agitated for extending sanctions for unregistered design infringement throughout the passage of the Bill. In the end clause 13 proceeded more or less in the form in which it was introduced with a few minor amendments. Those were practically the only amendments to the Bill.

The avowed objective of the legislation was to implement Professor Hargreaves's recommendations in Digital Opportunity A Review of Intellectual Property and Growth that required primary legislation. In fact, most of those recommendations concerned copyright but Hargreaves did urge the UK to
"attach the highest immediate priority to achieving a unified EU patent court and EU patent system, which promises significant economic benefits to UK business"
and to 
"take a leading role in promoting international efforts to cut backlogs and manage the boom in patent applications by further extending 'work sharing' with patent offices in other countries."
Hargreaves did not recommend criminal liability for registered design infringement or indeed make any recommendation in relation to designs other than carrying out research because he found that the role of IP in supporting the design industry had been neglected.

As it happens, the Intellectual Property Office had already commissioned research on the economics of design rights before Hargreaves had reported. That research showed that the design sector was already large and thriving under the existing legal framework with total expenditure on design of around £33.5 billion in 2008. It would have been reasonable for the government to have concluded that as the system was not broken there was nothing to fix. Instead, the IPO canvassed designers with a Call for Evidence that more or less invited complaint of the existing procedure for registering designs and enforcing design registrations. Not surprisingly, the IPO received complaints (as it would had it canvassed individual members of the nation's inventors clubs) which prompted the IPO to suggest criminal sanctions for registered design infringement (see Consultation on the Reform of the UK Designs Legal Framework 24 July 2012). In carrying out this exercise the Government and IPO seem to have lost sight of Hargreaves's first recommendation that "Government should ensure that development of the IP System is driven as far as possible by objective evidence."

In drawing up its legislative proposals, the government acknowledged in its response to the consultation (The Consultation on the Reform of the UK Designs Legal Framework Government Response - April 2013) that there was a limit to how far it could reform design law:
"the substantive provisions of the EU registered right, international design designating the EU and the EU unregistered right are outside our competence to amend or repeal, as is much of the UK registered design. All of the latter are based on EU legislation, and there is currently not the will, or prospect, of reform of the latter in the near future. As for the Semiconductor Topography Right, it’s clearly rather esoteric and no-one is calling for its amendment or repeal and – even if they were – it is also based on an EU directive,"
Consequently, the changes to the law achieved by the Act are restricted to unregistered design right and those parts of our registered design law that do not emanate from the Designs directive.

So how will the Intellectual Property Act 2014 affect practitioners and their clients?

First and most obviously, designers and those who commission designs need to review and possibly amend their standard contracts and terms of business to take account of s.2 of the Act with regard to unregistered design right and s.6 with regard to registered designs. My colleagues in 4-5 Gray's Inn Square and I will be glad to carry out such a review.

There is unlikely to be a dramatic increase in national registered design applications as a result of the simplification of design law or the introduction of criminal sanctions for intentional copying. The 3 years protection from copying provided by the Community Design Regulation for unregistered Community designs will continue to be good enough for the fashion, toy, novelties, consumer electronics, mobile telephony and similar industries. White goods, furniture, luxury goods, motor and other manufacturers that require longer protection tend to produce and market goods on a European or global scale and are thus more likely to register their designs with OHIM for the whole EU rather than with the design registries of individual member states. There may be a small increase in applications through the Hague System, especially as more countries accede to that Agreement.

On the other hand, there is likely to be a surge in threats actions and applications to the Patents and Intellectual Property Enterprise Courts or the Intellectual Property Office for declarations of invalidity by businesses and individuals who are, or fear that they may be, threatened with prosecution for intentional copying of a registered design. The launch of a designs opinions service will make it even cheaper and easier to challenge registrations.  So, too, will the possibility of an appeal from the hearing officer to the Appointed Person under s.10. Ironically registered design proprietors who might have hoped to offload the cost of registered design enforcement on to trading standards officers may spend at least as much as they save in defending such proceedings.

Moreover, by providing a right of prior use where non had existed before, s.7 of the Act limits significantly the monopoly provided by design registration.  On balance, that section probably takes away as much from the design sector as it gives by introducing the criminal law into designs, extending the opinions service and appeals to the Appointed Person to designs and accession to Hague.  If the intention was to help to promote innovation and encourage investment in design the net effect of the Act is likely to be neutral and possibly even negative.

The main benefits of the legislation are likely to result from Part 2 of the Act and particularly s.17 which enables the Secretary of State to make regulations to implement the Unified Patent Court Agreement and s.18 that allows the Intellectual Property Office to share information about patent applications with overseas patent offices. At paragraph 3.14 of his review Professor Hargreaves wrote that
"Removal of inter EU country barriers in IP could increase UK national income by over £2 billion a year by 2020."
The Court will help significantly to remove those barriers. Indeed, it is likely to contribute to UK national income in other ways in that art 7 (2) of the Agreement provides for one of the sections of the central division of the Court of First Instance to be based in London. At paragraph 6.10 of his review Professor Hargreaves observed:
"Patent backlogs can generate a spiral of ill effects. They impose costs by increasing the uncertainty of business decisions, impeding competition or giving a patent applicant an unfair advantage in negotiations. Backlogs may also cause more firms to protect their inventions outside the patent system, entailing a loss in the dissemination of economically important knowledge.  Unexamined patent applications, which may be rejected, add to transaction costs on third parties clearing their products and services to ensure they are not infringing patents. Increased pressure on patent offices to examine the large numbers of applications and reduce these backlogs may lead to the grant of even more low quality patents, worsening the costs of uncertainty. This can then precipitate a further downward cycle of increased rates of defensive or “strategic” filing of applications (as firms seek to bolster their own patent portfolios to aid in negotiations), more allegations of infringement and eventually additional litigation. Incorrectly granted patents incur the social costs arising from patent protection without providing the benefit of incentivising true innovation."
A practical way of reducing those backlogs is to allow national patent offices to share information about patent applications and s.18 enables the British patent office to do just that. Other useful reforms of patent law include the extension of the scope of the patents opinions service and enabling the Comptroller to revoke invalid patents under s.16 and the removal of information about research from the Freedom of Information Act 2000 by virtue of s.20.

Though often overlooked the most far-reaching provision of this Act may be the duty imposed by s.21 (1) on the Secretary of State to report on the extent to which
  • the activities of the Intellectual Property Office have contributed to the promotion of innovation and of economic growth in the United Kingdom; and
  • legislation relating to intellectual property has been effective in facilitating innovation and economic growth in the UK.
It will be interesting to see what the Secretary of State has to say with regard to the Intellectual Property Act 2014.

Further Reading

Simon Crossley and Selina Hinchcliffe "What impact will the Intellectual Property Act 2014 have on your business?" 8 July 2014
Selina Hinchcliffe "TMT legal update: What impact will the Intellectual Property Act 2014 have on your business?"
Intellectual Property Office Business guidance on changes to the law on designs 30 June 2914
Jane Lambert "CPD Event - "The Intellectual Property Act 2014 - What it means to you and your clients" Leeds 15 Oct 2014" IP Yorkshire 6 Sept 2014
Jane Lambert "The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014" NIPC Law 6 Sept 2014
Jane Lambert "How the Intellectual Property Act 2014 changes British Patent Law" 21 June 2014
Jane Lambert "How the Intellectual Property Act 2014 changes British Registered Design Law" 19 June 2014
Jane Lambert  "How the Intellectual Property Act 2014 will change British Unregistered Design Right Law"  11 June 2014
Jane Lambert and Alexander Rozycki "The Intellectual Property Act 2014" 19 May 2014 Presentation
Jane Lambert "Unified Patent Court Consultation" 25 June 2014
Jane Lambert "How the IP Bill affects Inventors" 21 April 2014
Jane Lambert "Clause 13 of the Intellectual Property Bill will probably go through. What next?" 20 Dec 2013
Jane Lambert "The Intellectual Property Bill" 26 May 2013

Friday, 25 April 2014

Happy World Intellectual Property Day

National Media Museum, Bradford    Source Wikipedia

Jane Lambert

Tomorrow is World Intellectual Property Day. I wish all my readers a happy World Intellectual Property Day.   Folk may think that that is an odd greeting. But is it?  When someone is ill don't you wish him a speedy recovery? What is more likely to accelerate his recovery than the medicine or medical device that may have cost millions to develop.  The fruits of that investment are protected by the patents, trade marks and other rights that prevent competitors from taking advantage of the research and development work known collectively as "intellectual property".   Intellectual property is the glue that holds investment in branding, design, technology and creative works together.  So the greeting "Happy World Intellectual Property Day" is a kind of celebration of the world's advances in science, technology, the arts and literature.

Every year there is a different theme is chosen for World Intellectual Property Day.  This year it is "Movies – A Global Passion".  Film is an area in which we have specialist expertise.   My colleague Thomas Dillon was Assistant General Counsel and Vice President of the Motion Picture Association of America. He is now a member of the WIPO Arbitration and Mediation Center‘s List of Mediators and Arbitrators and the WIPO Film and Media Panel of Neutrals.

Film making in the UK began in Holmfirth, the small Pennine town near Hudderfield where I happen to live. The company that produced those early films was Bamforth & Co. Ltd. whose films are preserved in the Yorkshire Film Archive.  Here are:

A man in a bearskin was the sort of thing I was expecting in Christopher Wheeldon's Winter Tale on 12 April 2014 but sadly did not get (see "Royal Ballet 'The Winter's Tale'" 14 Apr 2014 Terpsichore). The history of British cinema and TV is preserved wonderfully by the National Media Museum in Bradford (a picture of which appears above).

Films are protected by an array of intellectual property rights at all stages of their development. First, the outline of the plot is likely to be an original, literary work that is protected by copyright. The screenplay is also protected  by copyright as a dramatic work. Similarly, musical copyright is likely to subsist in the score for the soundtrack.  Rights in performances are likely to subsist in each of the actor's performances.  Film copyright is likely to subsist in the film itself including the soundtrack. When the film is released the studio will almost register trade marks in each of the countries where the film is to be distributed.  

The relevant copyright law for the UK is to be found in Part I of the Copyright, Designs and Patents Act 1988 and rights in performances in Part II.  Corresponding international agreements are arts 9 and 14 of the Agreement of Trade-related Aspects of Intellectual Property Rights, the Berne and Rome Conventions, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.

Further Reading
Jane Lambert "World Intellectual Property Day in the Gulf" 22 Apr 2014 
Anon "World IP Day" 25 Apr 2014 IPO