Friday, 4 April 2014

New IP Clinics in Hendon and Bradford

Jane Lambert

Before the economic downturn I used to hold monthly IP clinics in  Barnsley, Bradford, Halifax, Huddersfield, Leeds, Rotherham, York and the Wirral. These were very busy and I used to see between 20 and 30 entrepreneurs, inventors or other creative folk every month. A number of those persons succeeded and they created many new jobs.

Glyde House Bradford
When the downturn came, demand for those clinics disappeared almost overnight.  I do not know whether that was because banks were more reluctant to lend or because fewer people wanted to take the risk of setting up new businesses.  Only one clinic kept going throughout those years and that was the one at the Barnsley Business Innovation Centre on the second Tuesday of every month between 10:00 and 12:00.

Middlesex University
Now that the economy has started to pick up I have decided to revive my Bradford clinic at Glyde House on the third Thursday between 14:00 and 16:00 and launch a new one at Middlesex University Law School in Hendon on the last Tuesday between 12:00 and 14:00.   At each of those centres I give up to 4 consultations in slots of 30 minutes each. Typical questions are "I have thought of this idea for a business but how do I stop people from copying my idea once I start trading?" or "I have received this letter before claim from such and such solicitors. What do I do about it?"

Often I can give a complete answer but sometimes I have to refer the client to some other service which again is usually provided free or for a very small charge. For instance, he or she may need to know whether there have been any similar inventions in which case I may introduce him or her to Ged and Stef at Leeds Business and IP Centre and arrange a prior art search. If the client needs a professional service I may refer him or her to a patent or trade mark attorney, specialist solicitor, product development consultant or other service provider depending on the need.

Consultations are entirely free but must be booked in advance.

If you want to see me in Barnsley Business and Innovation Centre on Tuesday the 8 April (or the second Tuesday of any other month) between 10:00 and 12:00 click here or call George on 020 7404 5252 to make an appointment.

If you want to see me in Glyde House on Thursday the 17 April (or the third Thursday of any other month) between 14:00 and 16:00) click here or call George on 020 7404 5252.

If you want to see me at Middlesex University Law School in Hendon on Tuesday the 29 April 2014 (or the last Tuesday of any other month between 14:00 and 16:00) click here or call George on 0202 7404 5252.

Further Reading

Jane Lambert "Our London IP Clinics" 8 Jan 2014 IP South East
Jane Lambert "IP Clinics with a Difference" 31 Dec 2013 London IP and Tech
Jane Lambert "Accolade for IP Yorkshire in the Flood Report" 15 Jan 2009 IP Yorkshire
Jane Lambert  "Trade Marks: No Names, No Pack Drill but here is a Success Story that shows how the Panel works"  12 Sep 2008 IP Yorks

Saturday, 28 December 2013

Our IP and Technology Dispute Resolution Team

Jane Lambert

In his Final Report in his Chancery Modernization Review Lord Justice Briggs recommended a closer focus on ADR at case management conferences ("CMC") and, in particular, that "case management should be seen to be directed toward dispute resolution, rather than merely preparation for a full trial which is unlikely to take place." He specifically recommended requirements for parties to address the timing, type of and impediments to ADR in an expanded questionnaire before the first CMC and for the court at the first CMC to give detailed consideration to assisting the parties in the choice and timing of ADR.

Traditionally, ADR has been seen as an alternative to litigation rather than a set of options to facilitate the speedy and cost-effective resolution of a dispute. It is perhaps one of the consequences of the decision in Scott v. Avery, (1856) 5 H.L.Cas. 811. In fact, mediation, early neutral evaluation and all the other methods of dispute resolution including even arbitration have always been available to the parties to a dispute at every stage from the letter before claim to the allocation of the costs of a final appeal.  The implementation of Lord Justice Briggs's recommendation will oblige the parties and the judge or master to consider all those options from the first CMC to the disposal of the case. By the same token it should not be forgotten by those who have agreed to resolve their disputes by arbitration and indeed arbitrators that there is nothing to prevent the parties from using mediation or other methods of dispute resolution to facilitate settlement.

When I was practising alone in Huddersfield I set up specialist IP and technology arbitration and mediation services known as NIPCArb and NIPC-Mediation. Both of those schemes were moderately successful. In particular, we operated "Safe Harbor" dispute resolution schemes for several US companies.  Since 11 Feb 2013 when I accepted an invitation to join 4-5 Gray's Inn Square, I have been working with my colleagues and clerks to bring those services to London.

Thomas Dillon
Our chambers have always been strong in commercial arbitration and mediation but it is only recently that we have developed expertise in intellectual property and technology.  Just before Christmas we announced the launch of a new specialist ADR service that includes Thomas Dillon and Professor Louis Harms as well as me. Mr Dillon and I are members of the WIPO arbitration and mediation panels while Prof. Harms sits on the panel of the Arbitration Foundation of Southern Africa and was until recently the Deputy President of the Supreme Court of Appeal of South Africa.  We are all available for UK and international arbitrations and Mr. Dillon and I are also accredited mediators.

Although we are all happy to resolve any kind of dispute we each have our special interests and expertise.  I am interested in computer supply. technology transfer and patent and know-how licensing disputes. Having been a senior in-house legal advisor and Vice-President of the Motion Picture Association of America, Mr Dillon developed considerable expertise interest in film, TV and entertainment law.  As an appeal court judge of a country whose legal system combines elements of English and Roman law, Prof. Harms is ideally placed to determine disputes between parties in common law and civil law countries. In particular, as South Africa is a rapidly developing economy he will be in a better position than most to determine disputes between parties in advanced and developing nations (see "Visit by Professor Louis Harms" 12 Sept 2013).

The service is managed by George Scanlan, our First Junior Clerk, and for the time being we shall use the old NIPC Arbitration and Mediation Rules. Also, the old NIPC terms, conditions and charges will continue to apply. I am, however, working on new sets of arbitration and mediation rules in consultation with my colleagues. Should you like us to resolve your dispute by mediation, arbitration or some other form of ADR you will need an agreement to that effect with the other side.  You will find sample mediation clauses before a dispute arises, guidance on mediation after a dispute has arisen and sample arbitration agreements and clauses by clicking these links.

Should you require additional information or assistance, call George on +44 (0)20 7404 5252 during normal business hours or send him a message through his contact form. You can also also tweet me, write on my wall or send me a message through G+, Linkedin or Xing. As this is likely to be my last post before the 31 Dec 2013 I should like to wish all my readers a happy and prosperous New Year.

Friday, 29 November 2013

How the Law protects Investment in Technology

I presented the final talk in my introduction to IP on Wednesday.  Like the Introduction and the talks on Branding and Creative Output I focussed on the different ways the law can protect investment in an intellectual asset.

Until recently technology was connected with manufacturing which probably explains why patents protect new products and processes. The European Patent Convention, which is celebrating its 40th anniversary this year, specifically excludes from the definition of patentable inventions programs for computers, methods of doing business and the presentation of information. Yet much of the British economy is now based on those activities.   For that reason I discussed not simply patents and trade secrets but also the different legal tools for protecting investment in software, data analysis, web 2.0 services and so on such as copyright, database right, design right and plant breeders' rights.

You will find my slides here:

How the Law protects Investment in Technology - Trade secrets, Patents, Copyright, Database Right, Design Right, Semiconductor Topographies and Plant Varieties from Jane Lambert

If you want to discuss this presentation or anything else on this topic, you may call me on  020 7404 5252 during normal business hours or get in touch through my contact form.

Friday, 1 November 2013

Introduction to the Law relating to Creative Output: Copyright, Related Rights and Designs

Jane Lambert

Over the last few months I have been leading a series of seminars on basic intellectual property law. I presented an introduction and overview on 26 June 2013 and you can download the slides and handout from "Introduction to Intellectual Property" on 1 July 2013. On the 25 Sept 2013 I spoke about branding, that is to say passing off, trade mark registration, geographical indications and domain names. You will find my slides and handout at "Introduction to the Law relating to Branding: Passing off, Trade Marks, Geographical Indications and Domain Names" 4 Oct 2013. On the 27 of this month I shall be talking about patents, confidentiality. semiconductor topographies, plant varieties and database right and you can book for that seminar (which is the final in the series) on our Evenrbrite page.

On Wednesday the 30 Oct 2013 I presented a seminar on creative output, that is to say copyright, related rights and designs.  You can download the slides for that presentation below:

Creative Output from Jane Lambert
I also handed out some notes which you will find below.

Intellectual property is the legal protection of intellectual assets and the intellectual assets that I discussed in this talk were works of art and literature and design.  I discussed the two together for two reasons.   First, a design - particularly an ornamental or decorative design - often incorporates an artistic work.  Secondly, copyright was the way in which industrial designs were protected in the UK until 31 July 1989. Indeed, the same law applied in many other Commonwealth common law countries as well as the Republic of Ireland.

The law relating to copyrights and registered and unregistered design  was overhauled and codified by the Copyright, Designs and Patents Act 1988 ("CDPA") which came into force on 1 Aug 1989. As well as updating the law of copyright, the Act introduced two new intellectual property rights:

  • Rights in performances which confer on actors, dancers, musicians, singers and other performers as well as upon their broadcasters, film or recording studios  right to object to broadcasting, filming or taping of their performances without consent; and
  • Unregistered design rights which confer upon designers or those who commission a design the exclusive right to make articles to an original design.
The CDPA also overhauled the Registered Designs Act 1949 which provided for the registration of new designs with eye appeal.

The CDPA came into force just before the internet and other digital technologies that enable any number of perfect copies of films, music and other copyright works anywhere in the world instantly. Legislatures and the courts have tried to keep pace with these technologies and there have been three important international agreements, namely the WIPO Copyright and Performances and Phonograms Treaties and TRIPs which have required parties to those agreements to revise their copyright and related laws. In the EU these changes have been implemented by a series of directives which have required wholesale amendment of the CDPA.

The other big changes of the last few years have been the harmonization of registered design law by the European design directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs) which led to yet another overhaul of the Registered Designs Act 1949 and the Community design regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1)) which provided for registered Community and unregistered Community designs.

If you want to discuss this article or these slides and handout please call me on 020 7404 5252 during office hours or use my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing. Have a great weekend all.

Friday, 4 October 2013

Introduction to the Law relating to Branding: Passing off, Trade Marks, Geographical Indications and Domain Names

Jane Lambert

On the 25 Sept 2013 I led a seminar on the law relating to branding at 4-5 Gray's Inn Square.

This was part of an introductory course on IP law which started with the Introduction to IP Law on 26 June 2913. The slides and notes from that talk can be read and downloaded from my post "Introduction to IP Law" on 1 July 2013.

Although I gave my talk without slides I have produced a set for the benefit of those who were not there and you can read and download them here:
Introduction to brands from Jane Lambert

I also gave each attendee a set of notes and a memory stick which you will find here:

Introduction to the law relating to branding from Jane Lambert

The next talks in the series will be on Creative Output - Copyright and Related Rights which will take place at 4-5 Gray's Inn Square on 30 Oct 2013 between 16:00 and 18:00 and Technology - Patents, Trade Secrets, Design Rights, Plant Varieties etc on 27 Nov 2013 between 16:00 and 18:00 at the same venue.

Those talks will be the foundation for more advanced workshops and seminars that we shall give later.  If you want to discuss anything in the slides or notes, do not hesitate to call me on 020 7404 5252 during normal business hours or message me through my contact form.

Saturday, 14 September 2013

Microsoft Xbox One: Regulatory puzzles in a converging marketplace

On Thursday, 12 September 2013, the Royal Television Society's Cambridge Conference heard Nancy Tellem, Microsoft's Entertainment & Digital Media President, explain the thinking behind the Microsoft Xbox One console, due for release on 22 November 2013. Xbox One is a "state of the art gaming console, a new generation TV and movie system, and a whole lot more". Gaming, internet browsing, Skype telephony and watching films and television all take place through a single set-top box. Users can rapidly switch between uses or enjoy them simultaneously, using vocal or gestural controls. 

When I asked Nancy Tellem, who started her career as an attorney, where she expected Xbox One to be regulated, and whether as television or video game or both, she engagingly confessed that she "would have to get back to me". 

As the European Commission observed in its April 2013 Green Paper on convergence in audiovisual services, we are experiencing an "on-going transformation of the audiovisual media landscape, characterised by a steady increase in the convergence of media services and the way in which these services are consumed and delivered". Different set-top boxes and interfaces are vying to become the dominant gatekeeper to the digital household. Microsoft's new product seeks to do so by offering an immersive, highly interactive experience, breaking down the border between gaming and filmed entertainment. Microsoft proposes a truly interactive form of television. Understandably, they are beginning with a live action version of a popular game, Halo, created in partnership with Steven Spielberg.

Now, it is not clear precisely how interactivity will be integrated into these live action dramas, but it is obvious that elements of gaming will be part of the user experience. In the UK, the sale of computer games is regulated by the Video Recordings Act 1984 (as amended in 1994 and re-enacted in 2010). However, this does not cover streamed content, as there has to be a supply of a disc or other storage device before the Act bites. Similarly, the Video Recording (Labelling) Regulations 2012 apply only to physical carriers. While PEGI Online, a voluntary scheme for rating online games, is made available by the Interactive Software Federation of Europe, this important category of gaming is essentially unregulated (save by the law of obscenity). Xbox One will make the regulatory gap more troubling to policy-makers and parents alike.

However, the Audiovisual Media Services Directive 2010/13/EU, as implemented by Regulations in 2009 as part 4A of the Communications Act 2003 (further amended in2010), envisages that EU Member States will regulate on-demand services which are "television-like". As the Xbox One service will involve "the provision of programmes the form and content of which are comparable to the form and content of programmes normally included in television programme services" (section 368(1)(a), 2003 Act), it seems likely (subject to the crucial jurisdictional question) that Microsoft will be subject to regulation by the Authority for Television on Demand and, in relation to advertising associated with its on-demand services, the Advertising Standards Association. Among the many requirements of the 2003 Act is this: "If an on-demand programme service contains material which might seriously impair the physical, mental or moral development of persons under the age of eighteen, the material must be made available in a manner which secures that such persons will not normally see or hear it" (s. 268E(2)). The Directive requires Member States not only to prevent advertising for tobacco products, control product placement, discourage discrimination and so forth, but also to require such services to promote "the production of and access to European works".

So the question is: in what circumstances would the UK have jurisdiction over Microsoft's Xbox One service? To (over)simplify a complex set of provisions, an EU Member State will regulate where the operator is substantially established in that state (either by having its head office there or, where the head office is in another Member State, maintaining a significant part of its relevant workforce there) or uplinks to a satellite from or uses satellite capacity appertaining to that Member State (unlikely to be relevant to Xbox One). 

Although Microsoft has staff working on this service in the UK, they might choose to deliver the service wholly from the US. Would that put them in the clear? Largely. However, the Xbox One service seems to be a "television licensable content service" within section 232 of the 2003 Act. Under section 329 of the 2003 Act, Ofcom can ask the Secretary of State to proscribe a foreign service that is "unacceptable" on grounds that it repeatedly contains matter which offends against taste or decency, or is likely to encourage or to incite the commission of crime, lead to disorder, or be offensive to public feeling. If an order is made, the service may not be included in a cable package - which might be a problem for Microsoft in sub-distributing their service, if that was what they hoped to do. So in practice in the event of concern on Ofcom's part as to the content of the Xbox one service, Microsoft would in fact find itself subject to regulatory pressure.

Be that as it may, the reality is that regulation of streamed services must surely come, even if they emanate from the US. As Professor Joel Reidenberg has argued for some years, it is clear that cyberspace will eventually be subject to regulation, even (or especially) in democratic countries. Recently the British Prime Minister, David Cameron, pushed ISPs to provide better protection for children. As technology and commercial innovation break down the borders between traditional product categories, the process of assimilation of the online to the offline world will accelerate. Xbox One seems to be a new challenge to those product definitions, and if it succeeds, regulatory change must be likely.
Thomas Dillon          
4-5 Gray's Inn Square

Thursday, 12 September 2013

Visit by Professor Louis Harms

Source Wikipedia

Jane Lambert

One of our most distinguished members is Professor Louis Harms. Professor Harms was until recently the Deputy President of the Supreme Court of Appeal of South Africa which is the highest court of that country for all but constitutional matters. He is a distinguished intellectual property lawyer and holds professorships at several universities. His career is summarized in "A Singular Colleague",  an article that appeared in the December 2011 edition of the Advocate published by the South African Bar Council.

Having retired from the South African Supreme Court, Professor Harms practises as an arbitrator and he heads a panel of specialist intellectual property arbitrators and mediators from these chambers which I shall discuss in a future article.  He will be in chambers on the 25 Sept and has kindly offered to give a special lecture entitled "The principle of self-interest rightly understood' to an invited audience.  I shall also review that talk in this blog.

Professor Harms will visit England in the same month as the publication by Dr. Rob Davies MP, the South African Minister of Trade and Industry, of a Draft National Policy on Intellectual Property.  As South Africa is one of the so-called CIVETS (a group of rapidly industrializing countries immediately behind Brazil, Russia, India and China) with a population of 53 million in a land area of 1.2 million square kilometres, highly developed industries and agriculture, enormous natural resources and a GDP of US$375 billion, any statement of policy by its government demands attention.

Although others appear to have welcomed the draft policy (see Linda Daniels "New Draft South African IP Policy Receives Initial Positive Reactions" IP Watch 9 Sept 2013) I have to say that I found it confusing.  It appears to suggest that the Companies and Intellectual Property Commission (the South African patent office) grants patents for inventions that do not merit such protection (so-called "weak patents") although it gives no evidence that that is the case.  Intrigued by that suggestion I looked at the South African Patents Act 1978 which seems remarkably similar to, and possibly modelled upon, our own. S.34 of that Act provides for examination and 61 for revocation of invalid patents. The Patent Regulations 1979 which implement the Act contain the same sort of provisions as our Patent Rules.  Appreciating that what appears on paper may not necessarily be the same as what happens in practice I visited the website of the South African Institute of Intellectual Property Law (the professional association of patent and trade mark attorneys who are lawyers in South Africa and patent and trade mark agents who are like patent attorneys here) and the sites of some of the Institute's member firms some of which were impressive. Unless I am very much mistaken there does not seem to be any lack of expertise in intellectual property law in South Africa.   So I have to confess that I really do not understand the Minister's point there.

I was similarly confused by the reference to "undisclosed information" as provided by art 39 of TRIPS as "data protection." In her talk to the IP Bar Association a few weeks ago Professor Aplin of King's College had equated undisclosed information with trade secrets and other confidential information ("IP Bar Association Garden Party" 24 July NIPC Law) which is what I had always considered it to be.  Data protection, at least in this country, is akin to privacy and the proper handling of information likely to identify living individuals.  The point that the Minister seems to make is that rules preventing disclosure of trade secrets and other confidential information should not be used by drugs companies to prohibit the release of the results of clinical trials to generic medicine manufacturers which is, of course, a fair one (see "The Bolar Exemption" on the IPO website).

Dr Davies is also against bilateral investment treaties which is understandable (see my article "Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection" 27 July 2013 NIPC Law to understand why) and patent law harmonization which is not.   To co-ordinate IP policy across government departments is a laudable objective but I have to say that a great country like South Africa that has suffered so much from Apartheid deserves better than what is on offer.

Of course, Professor Harms cannot be held responsible for the policies of his government any more than we can for ours, but as he is South African and, more to the point, as he will be here I will therefore ask him some very searching questions on the protection of intellectual assets (particularly those of my British clients) in his country.

Patent attorney Barbara Cookson of Filemot Technology Law Ltd writes:
"On South Africa, the reason the policy says that they grant weak patents is that there is no examination system at present so they just rubberstamp them and it one of the countries where you can get a patent really fast. The agents try to make money by delaying grant for 12 months and trying to persuade applicants to accept a review of the specification or make amendments to conform to amendments agreed in countries where the patent has been examined. It is a good idea for them to introduce an examination system. I would expect the profession to welcome it. Some of the public health issues in the policy look a little more worrying and I am sure the generic and drugs businesses will have a lot to say about those."