Friday, 2 September 2016

An Example of how Patenting can work

Electron Micrograph of the Zika Virus
Author Cynthia Goldsmith, Centre for Disease Control and Prevention
Licensed by US government
Source Wikipedia 




























Jane Lambert

In Patent or No Patent 28 Aug 2016 NIPC Inventors Club I warned of the risks and costs of patenting, discussed alternatives to patents and suggested a simple methodology by which companies could identify the type of legal protection for their intellectual assets (intellectual property) would be right for their businesses. There are, however, circumstances when only a patent will do and although those are much more likely to arise in the case of big companies there are still instances when a patent can assist a small one or even an individual inventor with a bright idea.

I was slowly coming to at 06:15 this morning when I heard an interview on BBC Radio 4's Today programme with an entrepreneur called Peter Laing who claimed to have developed a new response not just to the zika virus but also to dengue fever as well. Laing was asked how the technology was developed and he replied largely in his head. He added that he had a patent for the basic idea. He also talked about his company's business strategy which was to license the technology to multinationals like GSK and Xanofi with the manufacturing capacity and distribution channels to market a vaccine for zika and dengue.

That interview got me out of bed with a start and I started googling. I discovered an article by Andrew McConaghie in Phamaphorum entitled Single vaccine against Zika and Dengue to be developed 18 Aug 2016 which seemed broadly consistent with the item on Today.  That led me in turn to the website of a company at the St John's Innovation Centre in Cambridge called Excivion Ltd. and to one Peter Laing its CEO. I also made an Espacenet search against Peter Laing and found several entries where he was named as an inventor.

Now this is not an endorsement of Dr Laing or Excivion Ltd. I have no more inkling than anyone else whether this business strategy or technology will succeed. This article is not to be read as an investment tip or even a work of journalism. I am a patent lawyer and not an investment analyst or a journalist. My point is simply that patenting can work for very new and fairly small companies including start-ups even in advanced technologies and this could be an example.

It is important to note that Dr Laing has an exceptionally strong academic record having read biochemistry and carried out research at the University of Bath and after holding postdoctoral appointments in New Zealand, Bristol and the USA and teaching at the University of Nottingham. He has also had a very impressive business career holding senior appointments in research and development and setting up a successful consultancy. Not every private inventor has those sort of credentials.

It also appears from the home, about, intellectual property, news and media and consultancy pages of its website that Excivion has integrated its IP strategy into its business plan as I suggested in Why every business plan should take account of intellectual property 3 April 2016 NIPC News.  That is another important ingredient of success.

I urge any readers who are thinking of going into business to exploit a new technology to follow this company (as it will) to see what can be learned from its success or failures. Naturally I hope it will be very successful and I wish Dr Laing and his colleagues well with their venture But if for any reason it does not work there will be lessons to be learned that could be even more important than a success story.

Tuesday, 26 July 2016

IP and Brexit: The Arts




Jane Lambert

This is the latest in my series of articles on IP and Brexit.  I set out the general position in What Sort of IP Framework do we need after Brexit and what are we likely to get?  3 July 2016 NIPC Law. As the effect of Brexit is likely to vary considerably from industry to industry I have considered the position of each economic sector.  So far I have covered fashion, software and private inventors.

In this article I consider the effect on the arts. I have published it in IP East because few regions have benefited more from investment in the arts than this one as I have mentioned more than once in this blog (see Why IP East 21 April 2014, Business Sustainability and Intellectual Property - how to make the Most of a Useful Essex Initiative 6 May 2014 and National College for the Creative and Cultural Industries 7 Dec 2014).  Thurrock, the district that has attracted much of that investment, was incidentally one of the local authorities that voted most heavily for Brexit: 79,916 people representing 72.72% of the electorate voted to leave the EU which was way above the national average (see EU referendum: full results and analysis The Guardian).

The arts will be one of the sectors least affected by changes in the low resulting from our withdrawal from the EU. Its work consists of literary and artistic works which fall into two categories:

  • Works in permanent form such as broadcasts, drawings, films, musical scores, novels, paintings, plays, poems, sculptures and sound recordings; and
  • Performances by actors, dancers, musicians, singers and others.
investment in creating, publishing and marketing works in permanent form is protected by copyright. Investment in performances is protected by a new intellectual property right known as rights in performances that came into being with the enactment of the Copyright, Designs and Patents Act 1988. Our law of copyright is codified by Part I of that Act and our law on rights in performances by Part II.

Now unlike designs, trade marks, plant varieties and to a lesser extent patents there has been no attempt to create an EU or Community copyright law. There have been a lot of EU directives that have been implemented by secondary legislation (see the Related Laws section on the Copyright Acts and related laws web page on the Gov.UK website) but many of these have been adopted to give effect to the EU member states' obligations under multilateral treaties to which HM government would probably have adhered whether the UK remained in the EU or not. Occasionally there have been disputes in several of the member states including Britain over the construction of those directives that have required a reference to the Court of Justice of the European Union but these have been far less common in copyright than in say trade marks.

After Brexit the directives will cease to bind the UK but the legislation that implements those directives will remain in force as it was made by or under an Act of Parliament. The one big change is that points of law arising from such legislation will cease to be referred to the Court of Justice. However, decisions of the Court of Justice on the interpretation of the directives are likely to have persuasive authority after we leave the EU. In her speech to the British group of the Union of European Practitioners in Intellectual Property on National and International-level concerns and developments regarding the IP landscape 30 June 2016 the Minister for IP promised that the UK would continue to lead in international IP discussions. One consequence of that is that we shall have to continue to implement changes in the multilateral IP treaties and when doing so it will be sensible to pay heed to what is happening in the rest of Europe.

There will be some sections of the arts that will be affected more by the disappearance of European trade marks and designs than others. The film industry, for example, depends heavily on brands but dance hardly at all (see my article Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers 13 March 2014 Terpsichore). There will be some effect on merchandising and I have discussed these in IP and Brexit: the Fashion Industry (10 July 2016 4-5 IP).  

I shall discuss this topic as well as other IP issues arising out of Brexit at a seminar in Liverpool to be organized by Guy Williams Layton on 14 Sept 2016 and in London at 4-5 Gray's Inn Square on 15 Sept 2016. Both seminars are likely to be very popular and places will go very quickly. If you want to attend call me during office hours on 020 7404 5252 or send me a message through my contact form.

Wednesday, 4 May 2016

Plant Breeders' Rights

Wheat
Author User Bluermoose
Source Wikipedia
Creative Commons Licence






















Jane Lambert


As the world comes to terms with a changing climate and a rapidly increasing population the development of new drought, disease and pest resistant and higher yielding crops is vital.  The development of a new plant variety requires considerable investment which is protected in the UK by the Plant Varieties Act 1997. This Act establishes intellectual property rights known as "plant breeders' rights" that may subsist in varieties of plant genera and species. Holders of those rights are entitled
"to prevent anyone doing any of the following acts as respects the propagating material of the protected variety without his authority, namely—
(a) production or reproduction (multiplication),
(b) conditioning for the purpose of propagation,
(c) offering for sale,
(d) selling or other marketing,
(e) exporting,
(f) importing,
(g) stocking for any of the purposes mentioned in paragraphs (a) to (f) above, and
(h) any other act prescribed for the purposes of this provision."
Anyone who does any of those acts in relation to a protected variety without the holder's licence may be sued in the Patents Court or Intellectual Property Enterprise Court for an injunction, damages or other relief.

The body responsible for granting those rights is the Plant Variety Rights Office which is located in Cambridge:
Plant Variety Rights Office
Animal and Plant Health Agency
Eastbrook
Shaftesbury Road
Cambridge
CB2 8DR
Tel: +44 (0) 208 026 5993
Fax: +44 (0) 208 415 2504
Email: pvs.helpdesk@apha.gsi.gov.uk
In order to qualify for such rights a variety must be:
  • distinct (that is to say it must have different characteristics to other plants of the same species);
  • uniform (all plants of the variety must share the same characteristics); and
  • stable (it must remain unchanged after ‘repeated propagation’, whether from seeds, cuttings, bulbs or other plant parts).
If those rights are granted they subsist for 30 years from the date of grant in the case of potatoes, trees and vines or 25 years in the case of anything else.

New plant varieties may also be protected throughout the EU by Community plant variety rights which are granted by the Community Plant Variety Office under the Council Regulation (EC) 2100/94 of 27 July 1994 on Community plant variety rights (OJ  L 227 , 01/09/1994 P.1-30) but national plant breeders' rights may not be enjoyed concurrently with Community plant variety rights,

Both the United Kingdom and the European Union are party to the International Convention for the Protection of New Varieties of Plants which facilitates reciprocal protection of new plant varieties. The Convention established the UPOV (International Union for the Protection of New Varieties of Plants) which implements the Convention.

Because the Cambridge Centre for Crop Science, the National Institute for Agricultural Botany (NIAB), the Plant Variety Rights Office and one of the world's leading research universities in agronomy and agriculture are located in Cambridge these important but little studied intellectual property rights are of particular importance to this region. More basic information is provided in Get plant breeders’ rights to your new variety on the British government website. Somewhat more detailed information is set out in the Plant Breeders' Rights Handbook. Anyone wishing to learn more about plant breeders rights should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Monday, 7 December 2015

National College for the Creative and Cultural Industries

The Royal Opera House's Manoukian Production Facility
Source Wikipedia
Creative Commons Licence





















Jane Lambert

In his Autumn statement the Chancellor of the Exchequer promised to support "a new National College for Creative and Cultural Industries will be based in Essex (subject to due diligence)". Doubtless he was referring to the college announced by Chris Shipman on the Royal Opera House website in First National College for the creative and cultural industries to be established at High House Production Park, Thurrock on 11 Dec 2014. This college will be located in the Backstage Centre which is run by Creative and Cultural Industries Trading Limited for a number of important businesses and institutions in the creative industries including the Royal Opera House. Live Nation, White Light and the Association of British Theatre Technicians.

The College will open in September 2016 with a curriculum developed in consultation  with the University of the Arts to meet the needs of employers in the creative sector, particularly those in the High House Production Park.

Many types of intellectual assets are created by the performing arts some in permanent form such as back cloths, costumes and props and others ephemeral like an actor's soliloquy or a dancer's steps, turns and jumps. The investment in developing those assets is protected by copyright, design right, registered designs, rights in performances and  so on upon which we shall always be glad to advise. Should anyone wish to discuss those issues he or she should call me during office hours on 020 7404 5252 during office hours or send me a message through my contact form.

Friday, 7 August 2015

Protecting your Business Name or Trading Style

Jane Lambert














Every business in the world has some intellectual property even if it has never registered a single patent, design or trade mark. At the very least it will own the goodwill - that is to say the loyalty or other factor appealing to its customers - that is attached to its name, logo or trading style. If someone else uses the same or similar sign in the same market it can lead to a lot of confusion. The business that was here first may lose business to the newcomer, Or the newcomer may get an unmerited free ride on the back of the established trader.

The Clock v The Clock House Hotel 

A good example of that happened nearly 80 years ago in Hertfordshire. It concerned two roadhouses, one called The Clock in Welwyn and the other The Clock House Hotel in Barnet. It resulted in a case that went all the way to the Court of Appeal with King's Counsel and junior barristers on each side. The case, which is called The Clock Ltd v The Clock House Hotel Ltd 53 RPC 269 is still discussed today. Were a similar case to come before the courts now it would probably be decided the same way.

The Dispute

In 1929 The Clock Ltd. opened a roadhouse, that is to say hotel and restaurant near the Welwyn bypass. It was built in the Tudor style and its most distinctive feature was a gabled clock tower. The building was burned down some years ago and it had ceased to be an hotel some years earlier but there are some photos of the establishment in its prime in The Clock Hotel Welwyn by Susan Hall on the Herts Memories website. According to the law report, The Clock House Hotel Ltd, opened an establishment called the Clock House Hotel on the Barnet bypass some 5 miles away in 1934. Fearing the possibility of confusion and consequent damage The Clock House Ltd. applied to the High Court for an injunction restraining
"the Defendants, their directors, officers, servants and agents from carrying on the business of an hotel, road house or restaurant under the name of ' The Clock House,' 'The Clock House Hotel' or 'The Glock House', Hotel, Limited" on the premises now occupied by the Defendants or any name colourably resembling the Plaintiffs' name or the name 'T'he Clock' or from otherwise carrying on business under any description calculated to produce the belief that the Defendants' business is that of the Plaintiffs or that the one is a branch or department of the other."
The company's application was successful. The action was heard by Mr Justice Farwell who granted an injunction in those terms.  The Clock House Ltd appealed to the Court of Appeal but the judges who heard the appeal - Lord Wright MR and Lord Justices Romer and Green - could find no reason for disturbing the decision of the judge below.

Why the The Clock Ltd won

Then as now a claimant in an action for passing off has to prove three things which were summarized conveniently some years later by Lord Oliver in Reckitt and Colman Products Ltd v Borden Inc [1990] 1 WLR 491, [1990] RPC 341, [1990] WLR 491, [1990] 1 All ER 873, [1990] UKHL 12:
"a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."
The Clock House had no trouble proving each of those elements.

Goodwill

In his judgment Lord Wright said:
"We have had some illustrations of the road house of the Plaintiffs. They show a very attractive set of buildings equipped for the delectation of the travelling or visiting public. It is equipped with a garden and a lawn; it has a swimming pool, a restaurant and tennis courts 20 which are available in connection with the premises. There is no accommodation for people to sleep other than the domestic staff; there is no sleeping accommodation for visitors. It is not, in any case, a hotel and it has not a licence. The building is in Tudor style and on one side of the building is a clock on a pedestal of its own. Close to the clock is the sign "The Clock, 25 " Welwyn." That business has become very prosperous; it has been very successful and a great many motorists either go there. specially in order to have luncheon, tea or dinner and take part in dancing or other amusements, or stop there on their way up and down the Great North Road. As I have said, that business was established in 1929 and has been going on ever since."
That was sufficient to satisfy the first requirement.

Misrepresentation

Although the defendant did not call its hotel The Clock House with an intention to deceive the trial judge and the Court of Appeal held that that was the result. The businesses were too similar and the distance between them too close to eliminate the risk of confusion.  Because of such confusion there was a real risk that the Welwyn establishment would lose trade to the one in Barnet.

How would this case be handled nowadays?

A similar case today would almost certainly be allocated to the Intellectual Property Enterprise Court and could possibly be heard in the small clams track. The small claims track has jurisdiction in passing off matters so long as damages are limited to £10,000. The case is heard by the district judge. Liability is determined and damages are assessed in the same hearing.  Recoverable costs are limited to just a few hundred pounds. I have written a lot of articles about starting proceedings in the small claims track and a good starting point would be How to take proceedings in the IPEC Small Claims Track 12 July 2014 IP South East.

Further Information

If you want to discuss this matter further give me a ring during office hours on 020 7404 5252 or send me a message on my contact form.

Saturday, 29 November 2014

Litigation choices - should I apply for an interim injunction or should I not?

Jane Lambert














You may have heard of the expression "taking out an injunction" on someone. It's a quaint expression, An injunction sounds a bit like a spell that a wicked witch or magician will cast on your enemy if you cross her or his palm with silver. In fact it refers to a procedure that is designed to ensure that justice is not defeated by a fait accompli.

What is an Injunction?
An injunction is an order of the court to do or refrain from doing something on pain of a fine or imprisonment for disobedience. There are two types of injunction: perpetual and interim.

What is a Perpetual Injunction?
A perpetual injunction is granted at the end of the litigation after the judge has heard all the arguments and considered all the evidence. Orders are usually granted in very broad terms such as
"the defendant is restrained from infringing the claimant's copyright whether by himself, his servants or agents or otherwise howsoever."
Such an order is called perpetual because there is no time limit other than the duration of copyright which in the case of an artistic, dramatic, literary or musical work means the life of the author plus 70 years.

What is an Interim Injunction?
An interim injunction lasts until trial or further order.  Its purpose is to preserve the status quo until the dispute is resolved.  As the court has not yet heard all the evidence and arguments it will make its order in much clearer and narrower terms.  Something like this
"the defendant is restrained until after judgment or further order in the meantime from doing or authorizing the following acts:
(1)   making or importing copies of the catalogue (a copy of which is annexed to this order marked "A")
(2)   distributing such copies in the UK
............................."
The order is not granted unconditionally. The person seeking the injunction ("the applicant") has to give the court a cross-undertaking in damages.  That is to say, the applicant must promise to compensate the other party ("the respondent") if the applicant loses the case or the court decides for some other reason that the injunction should never have been granted.

The reason for requiring a cross-undertaking in damages is that the court has not decided who is going to win the case and it wants to make sure that as little harm as possible is done to each of the parties in the interval between the issue of the claim form and trial of the action. The respondent will have suffered harm if he wins the case because he will have been prevented from doing something that turns out to have been perfectly lawful for months and possibly years. It is only right that the applicant should compensate him for such harm.

Why might you need an Interim Injunction?
The usual remedies for the infringement (violation) of an intellectual property right are a perpetual injunction against repeating or continuing the infringement and either damages (compensation) or an account of profits (disgorging of the defendant's ill-gotten gains) but there are times when those remedies are just not good enough.  Actions for the infringement of an intellectual property right generally take place in two phases. First there is the trial on liability where the court decides whether the defendant has infringed the intellectual property right. That usually takes place a year after the issue of the claim form.  The second phase is an inquiry as to damages or an account of profits. That usually takes place a year after the trial on liability. The upshot is that you are likely to wait at least a year for  perpetual injunctions and at least two for any money. A defendant can do quite a lot of harm in that time unless restrained by the court or he may run out of money and be unable to pay you any damages at the end of the day. If either of those things happen you will have spent a lot of money, time and effort for nothing. It is to prevent such injustice that the court grants interim injunctions to restrain such wrongdoing in appropriate cases.

Which Courts grant Interim Injunctions?
All courts except the small claims track of the Intellectual Property Enterprise Court ("IPEC") have jurisdiction to grant interim injunctions.  Although the IPEC multi-track has jurisdiction to grant such orders it is reluctant to do so because of the cost and time limits that apply to that court.  If you want an interim injunction you should bring your case in the Chancery Division of the High Court in London or possibly Manchester, Liverpool, Leeds, Newcastle, Bristol, Birmingham, Cardiff, Caernarfon, Mold or Preston if the case or either of the parties has a connection with any of those towns.

How do the Courts decide whether to grant or refuse an Interim Injunction?
The principles were set out by Lord Diplock in a speech to the House of Lords in a case called American Cyanamid Co v Ethicon Ltd. [1977] FSR 593, [1975] AC 396, [1975] 1 All ER 504, [1975] 2 WLR 316, [1975] UKHL 1.
  • First, the judge decides whether the applicant can win.  If he can't there is no point in granting an injunction.  The judge is not concerned with the strength of either party's case at this point. And he can't really make a determination on the merits until he has seen all the evidence and heard all the arguments.
  • Secondly, he decides whether the applicant can be compensated adequately in damages if he refuses the order.  if he can the judge refuses the order because the claimant will get his injunction after trial and damages after an inquiry. But if the respondent does not appear to have any money or if damages would be impossible or very difficult to calculate the judge will move on to the next question.
  • Thirdly, the judge decides whether the applicant can compensate the respondent in damages on his cross-undertaking. If he can he will grant the order but if not he will move on to the final question.
  • Lastly, he will weight all relevant considerations such as the strengths of each party's case as it appears at this point and whether there are any alternatives to an injunction such as a Brupat order where the defendant pays a percentage of his revenues into an escrow account or a speedy trial.
If the circumstances in which the order was made change either party can come back to court to seek he discharge or variation of the order.

What you should consider before seeking an Interim Injunction
The first thing to consider is whether it is worth it. To get an injunction application before the court you must issue and serve a claim form (if you have not already done so) and an application notice with a draft order attached and prepare at least a couple of witness statements that address each of the considerations mentioned above. Then you must prepare the arguments for at least a two hour hearing before the judge. Whether you do it or your lawyers do it such preparation will take a lot of time and cost a lot of money. Possibly £15,000 when everything is taken into account. And you have to be prepared to pay a similar sum of money to the other side within 14 days if you lose your application though you may get back a contribution to your costs if you win.

Secondly, as you will have to offer a cross-undertaking as to damages and you must satisfy yourself and show that you are able to afford it.

Thirdly, you mustn't dither. There is an old maxim or saying that "delay defeats equity".  What that means in practice is that you have to make your application at the earliest practical moment. The court will allow you a day or so to get your evidence together, take advice and raise the money but that's it. If you sit on your hands a week or so or indeed even a week you are sending out the signal that it is not so urgent. During that time the defendant is spending time and money on launching his brand or product. If you leave it too late the status quo changes and you are the one seeking to change it.

What you should consider if you are a Respondent
Again you have to decide whether it is worth the cost and risk of defending the application. If you can live with the injunction then you can save yourself a lot of time and money by offering an undertaking. You are still entitled to a cross-undertaking in damages from the other side so make sure that you get it and that the other side is good for the money.  If there is a problem you can offer the other side an alternative such as keeping proper accounts and records or a Brupat order. If you and the other side can't reach agreement, make sure that your witness statement explains why you have a problem and the steps you have taken to help the applicant in your witness statement.

What happens at the Hearing?
If the hearing of the application is likely to last more than 2 hours a date will have to be fixed for it to be heard as an application by order. Ideally the parties should agree a timetable for filing evidence and other arrangements. If they can't agree both sides will have to attend the interim applications judge who will give directions.

If the application is likely to last less than 2 hours you must attend the interim applications judge in the Rolls Building if the hearing takes place in London or the Civil Justice Centre or Crown Court elsewhere. The applications judge will read the list of cases and the applicant or his counsel replies either "effective" or "ineffective" followed by a time estimate as the case may be. Anything else risks wasting the time of the judge. The application is effective something is likely to be contested.  It is ineffective if everything is agreed. The judge then goes through the list taking the shorter applications first.

The application proceeds entirely on written evidence.  It is very rare for witnesses to be called. In my 37 years at the Bar I have seen a witness called only once on an interim application and that was a committal hearing.  The applicant opens, refers the judge to his evidence and makes his submissions. The defendant makes submissions in reply. The applicant then answers the respondent's submissions. The judge then makes his decision.

Further Information
The procedure is governed by Parts 23 and 25 of the Civil Procedure Rules and the Part 23A and Part 25A Practice Directions. You must also make yourself familiar with pages 18 to 28 of the Chancery Guide and Interim Applications in the Chancery Division: A Guide for Litigants in Person which contains useful information even for professionals. If you'd like to discuss this subject further, give me a ring on 020 7404 5252 during office hours or message me through my contact form.

Friday, 17 October 2014

The Low Carbon Innovation Fund offers Investment to Businesses in the East of England









The Low Carbon Innovation Fund has over £50 million available for investment in low carbon initiatives by businesses in the East of England. Launched in 2010 the Fund is financed by £20.5 million from the European Regional Development Fund and £30 million from the private sector.  The scheme will operate until December 2015.

The Fund is one of the activities of the Adapt Low Carbon Group which brings together the expertise of the Norwich Business School and the School of Environmental Sciences of the University of East Anglia. According to the Fund's website some £43m has been injected into East of England businesses. Projects include low carbon feature film Peter Grimes on Aldeburgh Beach, a new digital magazine ‘Electronic Sound’ and the ‘99 Squared’ advertising app.

Applications can be made through the Fund's website which sets out the investment process. Businesses or their professional intermediaries that need help with the contractual, intellectual property or tax issues should contact us through our contact form or call us on 020 7404 5252 or 01603 343030.