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.

Tuesday, 30 December 2014

What an employee can and cannot do when no longer on your payroll

Jane Lambert

While an employee remains on your payroll he or she is bound by an implied obligation of good faith and fidelity to do his or her best for you. He or she is not allowed to discuss your affairs in public or work for a competitor. As Mr Justice Laddie said in Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] RPC 289, [1996] EWHC Patents 1, (1997) 20(3) IPD 20022, that has nothing to do with the law of confidence or trade secrecy.

However, the employee is not your slave. He or she is entitled to seek work elsewhere or even set himself or herself up in business in competition with you. If the employee leaves your employment he or she is likely to use skills, knowledge and experience gained in your employment. There is nothing wrong with that even if you have spent time and money training the employee. After all, you see nothing wring in recruiting someone who has been trained by somebody else do you. Nor is it disloyal of the employee to attend interviews or take preliminary steps to set up a competing business so long as he or she does that in his or her own time or with your permission. If he or she is any good the employee is likely to have made some contacts while working for you. There is no reason why he or she can't stay in touch and deal with those contacts after leaving your employment.

But there are limits. Just as an employee can't steal from you neither can he or she run off with your customer list or use or disclose secret and sensitive technical or commercial information relating to your business that he or she acquired in confidence. The law of confidence applies to a  departing employee just as it would to anyone else and if there is any danger of his or her breaching an obligation of confidence you can enforce it against the employee just as you could against anyone else.

However, confidential information does not usually stay confidential for ever. The time eventually comes when it becomes common knowledge in the industry. The law deals with that by allowing employers to insert garden leave or other non-compete clauses into their employees' contracts of employment to cover the period in which they are vulnerable. But these can't go on for ever or even for an excessive period. Such a clause restricts freedom to trade and it is a fundamental principle of English law that contracts in restraint of trade are not allowed unless they are reasonable for the protection of the parties and in the public interest. The recent decision of the Court of Appeal in Sunrise Brokers LLP v Rodgers [2014] EWCA Civ 1373, [2014] WLR(D) 442 is an example of a case in which such restrictopm were held to be reasonable and were enforced by injunction.

So what should an employer do? First he or she should take professional advice on the drafting or enforcing of garden leave or other provisions before a dispute arises. We can help with that and our clerks will be glad to put you in touch with counsel specializing in employment law if you call them on 020 7404 4242 or get in touch through their contact form. Secondly, you can remind employees of the importance of keeping your business and technical secrets secret and of their obligations of confidence in the course of their employment through training sessions, staff manuals, regular circulars and otherwise. Thirdly, if you have reason to believe that an employee is about to breach his or her obligation of confidence you have to act quickly. Once the information has been used or disclosed there is no point in seeking an injunction to restrain such use or disclosure. You may need to apply for a "without notice" injunction immediately and then follow it up with an application on notice as soon as possible afterwards. It is all a bit hectic and I am afraid it can be expensive but then doing nothing until it is too late can cost you a hell of a lot more.

If you need emergency advice or representation you can come to us through a solicitor or you can come to us direct under the public or licensed access rules. Once the emergency is over we can help you build a legal team. If you want to discuss this article or restraints of trade generally, call me on 020 7404 5252 or use my contact form.