Thursday, 30 July 2015

IP Insurance for Business Conference

Jane Lambert

On 2 July 2015 the Intellectual Property Office held a conference on IP insurance for business at the offices of the Association of British Insurers in Gresham Street. As I have written a lot of articles about IP insurance over the last 10 years I attended the conference with my colleague Ruhi Sethi. Many of the great and the good in intellectual property were there including Mr Justice Arnold, the senior patents judge and Andrea Brewster, president of the Chartered Institute of Patent Attorneys.

Although the title of the conference was IP Insurance for Business its subject matter was very much wider, As you can see from the slides, only David Bloom of Safeguard IP and Dids Macdonld of ACID actually discussed IP insurance. I found Macdonld's speech particularly interesting in that she gave some details of an insurance scheme for ACID members which she had set up with Sybaris Legal and IP. That's the sort of deal I should like to negotiate for private inventors.

Mr Justice Arnold discussed different methods of dispute resolution. Dave Hopkins, Business Engagement Manager for the Intellectual Property Office, spoke about the services available from the IPO, Andrea Brewster proposed a triage scheme for advising small businesses on IP. Jeffrey Heasman argued for plain language in commercial contracts and insurance policies. Pippa Hall gave us lots of IP statistics. Nigel Swycher of Aistemos offered some tips on developing an IP strategy. Andrew Hildebrand mentioned mediation. Janis Makarewich-Hall gave us a progress report on the Unified Patent Court.

Those who attended the conference received a handout which included the following FAQ on IP insurance.

I would have preferred a more focussed agenda with discussions on alternative funding options like after-the-event insurance and litigation funding. It was good to talk abut alternative methods of dispute resolution but a trick was missed by not discussing the advantages of obtaining an examiner's opinion on the validity or infringement of a patent for £200 before contemplating proceedings, A favourable opinion may encourage an insurer to offer after-the-event cover or a litigation funder to bank roll an action, Finally, I was disappointed that nobody mentioned the Bar Council's Legal Costs Finance scheme which I discussed in Legal Cost Finance - Another Response to Sky Rocketing Court Fees 10 March 2015. They will help with the initial stages such as obtaining counsel's opinion or an application to the IPO for an examiner's opinion.

There were very few IP lawyers at the conference. Ruhi and I were the only members of the Bar and I spotted just a handful of law forms on the delegate list, Liz Ward of Vurtuoso Legal in Leeds was there but I spotted nobody from Bird & Bird, Bristows or Wragge Lawrence Graham. More importantly, there were not many patent agencies on the delegate list. As patent and trade mark attorneys prosecute patent, trade mark and design registration applications their co-operation i crucial if businesses are to take out IP cover.

Apparently, initial feedback was favourable which is good to hear. It was a good start to educating business on the advantages of IP insurance but a more focussed discussion could have been even better. Should anyone wish to discuss this article or IP insurance in general they should call me on 020 7404 5252 during office hours or use my contact form.

Friday, 22 May 2015

IP Mediation

Jane Lambert

Mediation can best be described as "chaired" or "facilitated" negotiation. It works because negotiations proceed through an intermediary known as "a mediator" who is often privy to information that neither party would disclose to the other. To show how mediation works I have uploaded two case histories: one on the resolution of a computer supply dispute and the other a trade mark opposition (see also Mediating Disputes from the Trade Marks Registry 1 Sept 2005 NIPC Law).

Both the courts and the Intellectual Property Office ("IPO") hearing officers expect parties to consider mediation or some other form of alternative dispute resolution before issuing proceedings. Both have power to penalize parties who fail to do so by, for example, disallowing costs that they would normally have awarded to the successful party or awarding more costs than they would otherwise have ordered the unsuccessful party to pay.

The IPO has recently updated its guidance to Intellectual Property Mediation. According to the guidance most types of IP dispute are appropriate for mediation.though it lists a few that are now. They include:
  • trade mark disputes concerning the distinctiveness of the mark
  • trade mark opposition and invalidation proceedings on absolute grounds. and
  • disputes involving IPO decisions e.g. refusal of a patent application or request for extension of time.
According to the guidance the benefits of negotiation to business are as follows:
  • "flexible - it is quicker and cheaper than litigation with a flexibility to allow parties to discuss issues outside the legal arguments (this could be particularly useful in cross-broader disputes)
  • less distraction - as mediation resolves disputes quicker than litigation, businesses will spend less time and energy away from their business activities
  • broader discussions - unlike a judge, the mediator will allow both parties to have their say in a less confrontational situation to gain a better understanding of each other’s positions and their differences and to explore all aspects of the dispute
  • creative solutions - a mediator does not impose a judgement, but rather will help the parties to reach creative compromises which they may or may not chose to make legally binding
  • opportunities - mediation offers the opportunity to maintain existing commercial relationships as well as the chance to forge new ones
  • no additional delays - in helping the parties focus on the real issues, mediation can save time even if the dispute eventually moves into litigation
  • no additional expense - mediation should not create additional expense as it can resolve the dispute with only a skeleton of the issues and legal representatives do not need to be present
  • reality check - a mediator can help all parties think through the consequences of not settling the dispute and the risks of litigation
  • high success rate - mediation has a high success rate. The large majority of mediations reach an agreement on the day and other disputes reach resolution subsequently as a direct result of the mediation process
  • reputation intact - whatever the outcome is, it will remain private (preserving business reputations) unlike a court judgement which will be published on the internet."
The IPO runs a specialist IP mediation service and I have participated in an IPO mediation as counsel (see Practice: Mediation in the IPO 2 Oct 2009 NIPC Law). The service was not used much for many years and the IPO considered terminating the service (see The End of Mediation? 4 June 2012 NIPC Law). Fortunately, it was relaunched (see The IPO's New Improved Mediation Service - will it make a difference? 7 April 2013 NIPC Law). The IPO also lists other mediation service providers and I am glad to say that I am on the list.

A dispute can be referred to mediation only with the agreement of all parties. The best time to get such an agreement is before a dispute arises. Methods of resolving any disputes that may arise should be discussed when parties are negotiating their agreement or businesses are drawing up heir terms and conditions. This is the wording suggested by the WIPO:
"Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language]."
If a dispute has already begun you will need a mediation agreement even if mediation has been ordered or recommended strongly by the court. Again, this is the WIPO' suggestion:
"We, the undersigned parties, hereby agree to submit to mediation in accordance with the WIPO Mediation Rules the following dispute:
[brief description of the dispute]
The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language]."
We have three mediators in chambers who specialize in IP law. They are Anthony Connerty, Thomas Dillon and me. If you would like to discuss our services whether as mediators or as counsel with experience of IP mediation, please call us on +44 (0)20 7404 5252 during regular office hours. If you want to talk about this article or about IP or mediation in general you can get in touch through me contact form.

Thursday, 12 March 2015

Why Bother with IP?

Upon seeing the above presentation one of my Yorkshire clients sent me the following rant:
"Hello Jane,
I have just finished watching your Enforcing IPR talk.
Very impressive.
The UK law is so dysfunctional and financially prohibitive — serving only the financial elite.
I have to say, having listened to it, it reinforces what I have been saying to you for some time ...
Why bother with IPR?
I mean, why bother with protecting IPR if it is just not within financial reach to defend it?
ADR could be the beneficiary of such prohibitive costs, but not really.

For example, if one entity is more financially endowed than the other it actually is a strategy to threaten the other side with the court system, if only because they know it will bankrupt the other side.
The courts no longer represent fairness, or right over wrong.
The UK law is so dysfunctional and financially prohibitive — serving only the financial elite.
I feel quite depressed to be honest!
Kind regards"
There's a lot of truth in what my client said and I gave that talk before the cost of issuing a claim form for an injunction and unspecified damages soared by 421%.

Has anybody got any words of comfort?

Tuesday, 10 March 2015

Legal Cost Finance - Another Response to Sky Rocketing Court Fees

Jane Lambert

Yesterday the Ministry of Justice increased fees for issuing proceedings to 5% of the value of the claim for claims over £10,000 with a cap of £10,000 for claims of £200,000 or over.  For some claims that it is a whopping 622% increase in fees.  The statutory instrument that effects those increases is The Civil Proceedings and Family Proceedings Fees (Amendment) Order 2015 which is available only in draft on the website.

For entrepreneurs, designers and inventors this fees increase is very bad news because most IP infringement claims are for injunctions and unspecified damages. As I explained in Why "IP Yorkshire?" 10 Sept 2008  there is a correlation between patenting and the cost of enforcement. That is why this country consistently trails not only France and Germany in the number of European  patent applications but also the Netherlands with a third of our population and Switzerland with one eighth. It was because of that correlation that the government reformed the Patents County Court (the predecessor of the Intellectual Property Enterprise Court) in 2010 (see New Patents County Court Rules 31 Oct 2010) and introduced the small claims track (see Patents County Court - the New Small Claims Track Rules 20 Sept 2012). This swingeing increase threatens to undo all the good that has been achieved over the last 5 years.

Happily there are things that can be done about it and I suggested some of them in How to enforce your IP claim after court fees sky rocket 7 March 2015 NIPC Inventors Club. These include making more use of

  • the small claims track by limiting damaging claims to £10,000, 
  • Intellectual Property Office tribunals and opinions service, 
  • established ADR schemes such as ICANN's Uniform Domain Name Dispute Resolution Policy and Nominet's Dispute Resolution Service for domain name disputes where they exist
as well as inserting arbitration and other dispute resolution clauses into licences and other agreements and taking out before-the-event insurance.

Today I can suggest another option which is payment by instalments through Legal Cost Finance ("LCF").  LCF is described by the Bar Council as "an innovative financial boutique that provides a payment solution tailored for the legal services market" which has entered a service partnership with the Bar. According to the Bar Council
"LCF provides an FCA regulated service to arrange ‘payment plans’ for consumers of barrister services on the basis of third-party credit agreements. This offers clients greater convenience, affordability and access to justice. In practice, LCF provides clients with the option of paying for legal services by instalments over extended periods, while ensuring lawyers enjoy full payments of their bills on time."
One advantage of this source of funding for clients is that it is not limited to litigation but is available for any type of legal service including non-contentious work.

On its home page LCF describes itself as an escrow partner of BARCO which is
"a third party company, owned and operated by the Bar Council, which manages the funds required to facilitate on-going legal services provided by lawyers in England and Wales."
It exists because barristers are prohibited from handling client funds under Rule C73 of the Code of Conduct in the BSB Handbook. In other words it performs the functions of a client account in a law firm thus expanding the scope of public access and litigation services provided by barristers.

In its Terms of Business LCF explains:
"As a condition of your ‘payment plan’, you hereby agree to deposit and maintain the funds in a designated Client Account as directed by us."
It continues:
"Clients who instruct barristers directly (pursuant to the Public Access Scheme) and need to make advance payments (on account) in respect of their legal case requirements, shall use BARCO (Bar Council’s escrow account service) for such purposes subject to BARCO’s Standard Framework Agreement."
In its news page LCF quotes the headline of an article about LCF in The Barrister magazine:
"Barristers risk losing their Public Access advantage – Unless essential steps are taken"
It continues:
"If barristers can provide a unique selling proposition by not only offering clients more affordable access to justice, but also easier payment terms, the public access trophy will be theirs for the taking.”
While I for one am very cautious about going into court without an experienced litigator behind me there are some cases and many circumstances where direct access is possible and in the best interests of the client. Also, it is very clear from other pages of LCF's website that it off its services to law firms and other authorized litigators. I shall certainly explore the use of LCF as I already do with before-the-event insurers and litigation funders (see Intellectual Property Litigation - the Funding Options 10 April 2013 NIPC Law).

If anyone wants to discuss this article or IP litigation in general he or she should not hesitate to contact me on 020 7404 5252 during normal office hours or use my contact form.

Friday, 13 February 2015

IALCI Seminar: Enforcing IPR in England and Wales

Jane Lambert

IALCI stands for The international association of lawyers for the creative industries. It was founded in March 2013, during Paris fashion week to provide useful and up-to-date business and legal know-how and solutions to the creative industries.  Its main goal is to enhance the collective knowledge of the creative industries, by organising seminars, webinars and Massive Open Online Courses (MOOCS), talks, google hangouts, podcasts, TV programmes about, and by publishing articles, newsletters, blogs and books on, business and legal topics of critical importance to the creative industries and entertainment sector.

One of those seminars took place on Tuesday, 10 Feb 2015 on the law of luxury goods series: intellectual property – how to protect, manage and monetize the know-how and intangible capital of luxury and fashion brands. Alexander Rozycki and I spoke at that seminar.  My presentation, which appears above, was one of three talks on enforcing intellectual property rights ("IPR") in Europe. The others were by Holger Alt of von Boetticher in Berlin who spoke on enforcing IPR in Germany and Annabelle Gauberti of Crefovi.

Holger and I had already worked together the previous weeks on behalf of a small Yorkshire company to pre-empt an ex parte injunction application in  Germany. If anybody wishes to discuss my presentation, the seminar or enforcement of IPR generally, call me on 020 7404 5252 or use my contact form.

Friday, 2 January 2015

Putting IP at the Heart of Your Business Plan

European Patent Office, Munich
Photo Wikipedia

Jane Lambert

Many new businesses are started at this time of the year.  Unless it is a tech start-up little thought is likely to be given to intellectual property ("IP") by entrepreneurs and small business owners when drawing up their business plans. That is a mistake because the competitive advantages earned from designing good looking new products, innovation or establishing a reputation for good service can be entrenched by law. It is a particularly British phenomenon fostered partly by lack of awareness of IP law by many business owners and their professional advisers and partly because IP rights were until recently very expensive to enforce. Their competitors in continental Europe, Asia and North America are much more likely to incorporate IP into their business planning.

Develop an IP Strategy First

One of the reasons why British business owners and their advisers are wary of IP is that a lot of money has been wasted on patents that will never be worked or on trade mark or design registrations in countries where they will never trade. A lot of that waste could be avoided by doing the following exercise.
(1)  Identify the likely income streams over the period of your business plan: these may be sales, payments for services, grants, subsidies - any kind of revenue;
(2)  Consider the threats to those income streams over that period - most of those threats will be commercial such as competition from other businesses and changing customer behaviour but a few could result from copying your products or riding on your reputation;
(3) Develop responses to those threats - as most of those threats will be commercial so will your responses such as reducing prices and developing new products but such threats as plagiarism and free riding may require a legal response;
(4) Tailor your response to suit the threat and your resources - there is often more than one form of legal protection such as keeping your new product under wraps and relying on the law of confidence to keep it secret rather than seeking patent protection so consider all the options before you actually spend money on searches and applications.

Make sure that you can fund Enforcement 

All litigation is expensive and IP litigation particularly so but the cost has come down spectacularly over the last 5 years with the new rules for IPEC (formerly the Patents County Court), the launch of the small claims track and alternative methods of resolving IP disputes such as IPO examiners' opinions and expert determination of domain name disputes. Enforcement costs are likely to fall still further with the unitary patent and the Unified Patent Court. There have also been entrants into the IP insurance market which means that cover against the cost of litigation is more affordable. Explore all those options for defending or enforcing your rights when you apply for your patent, trade mark or registered design.

Subscribe to a Watch Service

A watch service scours the websites and journals of the Intellectual Property Office and foreign patent offices and sometimes the technical literature for patent, registered design and trade mark applications and other developments that are likely to affect your own IP portfolio so that you can mount an early challenge if need be. Most patent and trade mark attorneys will be able to advise you on the available services.  There is also a very good service from the Business and IP Centre at Leeds Central Library.

Further Information

If you want to discuss this article or IP protection in general call me on 020 7404 5252 during office hours or get in touch through my contact form.