|National Galleries of Scotland|
Author Finlay McWalter
Creative Commons Licence
On 15 April 2016 I was invited to speak to t he Scottish meeting of the Chartered Institute of Patent Attorneys at the Scottish National Gallery in Edinburgh on Preparing for the Unitary Patent and the UPC. I was one of four speakers. The others were:
- Catriona M Hammer who spoke on Portfolio Strategy for Start-Ups, Spin-Outs and Other Small Businesses;
- David Bloom of Safeguard IP who spoke on Intellectual Property Insurance Solutions; and
- Eleanor Wade of the Intellectual Property Office whose talk was entitled Updates form IPO.
Over 50 patent attorneys and other IP professionals attended the meeting which was chaired by Andrea Brewster.
I enjoyed all the presentations but I found Catriona's particularly interesting as I specialize in advising and representing start-ups and other SME. She has spent most of her career in industry and describes herself on Linkedin as an "IP Consultant, focusing on IP Strategy, portfolio reviews, IP transactions and contentious matters" rather than as a patent attorney even though she is the immediate past president of the CIPA.
Catriona explained that every strategy had to complement the company's business plan and take account of the needs of investors who look for:
- a rational strategy for utilizing registered and unregistered intellectual property rights;
- a clear chain of title to each of those rights; and
- freedom to operate.
Every business has to be selective as to what it seeks to protect. Filings that are no longer of interest to the business should be dropped. Protection should be appropriate for the product and market and should cover not just products already on the market but also those being developed. All forms of legal protection should be considered - not just patents - and systems should be devised for identifying potential IP assets and protecting trade secrets. Businesses should be aware of what they own and what is licensed. Contracts with universities and other partners should make clear who would be entitled to patent any inventions that may be developed as should contracts of employment with key staff. Businesses should also look out for potential conflicts with third parties and deal with them before disputes arise.
There was a lot of discussion as to whether patent attorneys were always the right people to carry out those assessments as they will not necessarily be conversant with every aspect of a client's business. I raised the example of a painter/decorator who spent his life savings on patents and design registrations around the world for an invention that was unlikely ever to be worked. Catriona replied that sort of problem was commonplace 10 years ago but most patent attorneys would be more cautious in advising such clients nowadays.
David Bloom introduced himself as a patent solicitor with over 15 years experience of advising clients on registration, exploitation and protection of IP. He had set up Safeguard IP in 2014 as the UK's only dedicated IP insurance broker. He started that business because the volume of IP litigation was increasing, dispute resolution remained hugely expensive even with the Intellectual Property Enterprise Court and IP claims were difficult to fund. The IPO had issued guidance on the benefits of IP insurance in Intellectual Property Insurance on 22 Jan 2016. He also referred to Andrew Reith's post IP insurance: the heavyweight in your corner of 28 Jan 2016 to the IPO blog. David took the audience through the types of policy that are available, the losses that they cover, the cost of such cover which he estimated to be between 1 and 3% of the sum insured not counting excesses and co-insurance, the usual exclusions and benefits. He concluded that the IP insurance market is developing rapidly and availability is improving and that before-the-event cover provides the best method for transferring the significant cost risk.
In the Q and A that followed David's presentation, Andrea mentioned the report on insurance that the CIPA had published and which could be downloaded from its website. I have written a short article about that report in IP Insurance: CIPA's Paper 1 May 2016 NIPC Inventors Club blog.
There was a short tea break after which I was invited to speak. I will upload my slides and notes to Slideshare shortly and I have written extensively on the unitary patent and the Unified Patent Court in Preparing for the Unified Patent Court 23 Jan 2016 NIPC Blog and the articles mentioned in the bibliography at the end of my article. The delegates' packs included a printout of an interview that I gave to the Kluwer Patent Blog entitled ‘A Brexit will not necessarily delay the start of the Unitary Patent system’ 5 April 2016.
Eleanor's presentation covered a lot of topics. Starting with backlogs she said that the IPO was recruiting and training more examiners who should make a difference. Turning to the IPO's space on the British government's website she mentioned the new Manual of Patent Practice and on-line design registration faciity that are already available and the "View Patent Cases" facility which was being trialled. She then took us on a brief tour of the IPO's space on the government website and showed how it could be searched and integrated conveniently with other services. Finally, she guided us through the new Manual, design registration and View Patent Cases facilities.
Drinks and some exceptionally tasty and interesting nibbles were served outside the auditorium. I met a lot of interesting attorneys and other IP professionals some of whom offered some very interesting services. One of these was Lean IP operated by Dr Jim Adams of Glasgow. I have been interested in the ideas of Eric Ries and his book The Lean Startup for some time and have blogged about them in Lean Startup 6 May 2012. Jim's firm is a lean start-up and he applies Ries's ideas in the services that he offers to his clients.
Ar various times during the meeting Andrea mentioned the IP Inclusive initiative which aims to improve equality, diversity and inclusivity in IP. It has a simple charter which sets out practices that I am glad to say my chambers have always followed and although I will make it my business to see that those principles are applied in IP I can call on the support of our very able chambers equalities and diversity officer to see that they are applied generally. I have just signed up to the charter and I will encourage the other members of my set who practise IP law to do the same. I am very glad to see that 3 New Square and 11 South Square as well as the CIPA, ITMA and many patent and trade mark attorneys and specialist law firms have already signed.
At the very end of the meeting Andrea said that she had noticed that I tweet occasionally about ballet and told me that she had trained to a very high level and that she was actually qualified to teach ballet. I told her that I had started to attend classes at Northern Ballet Academy in September 2013 (see Realizing a Dream 12 Sept 2013 Terpsichore) and that I still do class whenever I can. I mentioned that I knew of one patent attorney, Debbie Slater, and one IP solicitor, Helen Newman, who share our interest in dance. A few days after the Edinburgh meeting I met Sir Peter Wright in Budapest (see My Trip to Hungary 21 April 2016 Terpsichore). In our conversation I explained how ballet facilitates nimbleness of mind as well as in body which helps me do my job as an IP barrister better. A few days after that it was World Intellectual Property Day which was an opportunity to point out the overlap between IP and dance (see Happy World Intellectual Property Day 26 April 2016).