Thursday, 26 March 2020

Delivering on my Promises in Wales

Jane Lambert

In IP Services During the Emergency 23 March 2020 NIPC Inventors Club, I wrote:
"I was due to speak to the inventors, makers and designers of Porthmadog at Ffiws Maker Space on 1 April 2020. I had an IP clinic at Barnsley Business Village on 14 April 2020. I was planning a high-level seminar on Green Innovation at the Menai Science Park on 27 April 2020 as Wales's contribution to World IP Day."
My visits to Porthmadog and Gaerwen had to be cancelled because of the public health emergency but that does not mean that the talks should not take place: 

I have already uploaded to Linkedin Slideshare the slides of the presentation, Intellectual Property Law for Makers, that I had intended to give to the makers of Northwest Wales at the Ffiws Maker Space at 125 High Street, Porthmadog,  At the time I was to rise to my feet in Porthmadog, I propose to deliver my talk over the Internet.  I hope that as many members of the intended audience at Porthmadog as possible will be able to listen but makers anywhere else in the world will be welcome.  I hope to publish details of the talk and an Eventbrite link later today.

My other commitment in North Wales is a seminar at the Menai Science Park (M-SParc) at Gaerwen on 27 April 2020 to celebrate World Intellectual Property Day (see Anglesey to celebrate World Intellectual Property Day with Talks on Protecting and Exploiting Green Innovation at M-SParc 5 March 2020). That will now take place online but at the slightly earlier time of 12:30 to 13:30.

It will focus on the opportunities offered by WIPO Green for businesses in Wales and the rest of the UK and on the Green Channel, the arrangements in place at the Intellectual Property Office and a number of other patent offices to fast track patent applications for environmentally friendly inventions.  Rob Elias of Beacon Biorefining will be the keynote speaker in relation to the business opportunities and how one of the UK's leading consultancies on plant research can help businesses in Wales to take advantage of them,  We have invited local experts to discuss the corporate legal and tax issues that might arise.  We had invited a speaker from the IPO to discuss the Green Channel but if none is available for our webinar we shall invite an experienced patent attorney instead.

The World IP Day webinar will be organized by M-SParc who have already staged an excellent conference on responding to the COVID-19 menace which I attended on Monday.  There were presentations from Lee Waters AM Deputy Minister for Transport and Economy in Wales and local speakers including the inventor of an antiviral snood which could not have been developed at a more propitious time.

Should any entrepreneur, inventor or maker in North Wales (or indeed anywhere else in the world) want some specific advice on protecting, commercializing or marketing a new product or service, we now have a team of experts who can help.  I have been practising IP law for many years and I can offer initial advice and support on most legal issues.  If you want to apply for a patent or registered design I can pass you on to Sean Thomas, an Anglesey man, who is an experienced patent attorney. If you are interested in branding I can refer you to Jonty Gordon of Amgen Law who can help you with trade mark matters.  On corporate issues, Andrea Knox of Knox Commercial Solicitors is your local expert. As for tax, Steve Livingston, another Anglesey man, is a chartered accountant specializing in IP taxation.  Last but by no means least is Huw Watkins of BIC Innovation who can help you get your product to market.   Anyone who wants to consult any member of that team should fill in the Initial Advice and Signposting Form and we shall take it from there.

If anyone is curious about the gravestone in the picture, it is in memory not of a human but of a dog.  A faithful hound called Gelert was left to guard the infant son of Llewellyn the Great, apparently without any human supervision.  While his father was away fighting the English a rapacious wolf entered the enclosure where the boy was sleeping.  Gelert fought off the wolf but upset the furniture in the process. When Llewellyn returned from battling with my compatriots he found the room in a tip. Concluding that the dog had savaged his son he slew the beast.  The canine's dying cry woke up the prince and revealed its heroism. Overcome with remorse Llewellyn renamed the town where the dog is buried Beddgelert.  The reason why I have taken that photo is that Beddgelert lies on the road between Gaerwen and Porthmadog. The Welsh and UK national treasure, Cerys Matthews, has written a lovely book about the story.

Anyone wanting to discuss this article or IP generally should message me through my contact form while this emergency lasts.   Should you want a chat by phone or VoIP I shall be glad to call you back.

Thursday, 5 March 2020

Anglesey to celebrate World Intellectual Property Day with Talks on Protecting and Exploiting Green Innovation at M-SParc

Jane Lambert

World Intellectual Property Day celebrates the coming into force of the Convention Establishing the World Intellectual Property Organization ("WIPO Convention").   It is celebrated throughout the world with talks, exhibitions and other events (see World Intellectual Property Day, 26 April 2013 11 April 2013 NIPC News).  Last year Wales contributed to the worldwide celebrations with a lunchtime seminar at M-SParc (the Menai Science Park) (see Celebrating World IP Day at M-SParc: Basic Tips for Startups and other Small Businesses 29 April 2019).

Every year the celebrations focus on a different theme.  This year's theme is Innovate for a Green Future (see World Intellectual Property Day – April 26, 2020: Innovate for a Green Future 2 March 2020).  Nothing could be more appropriate for Anglesey in view of the local authority's vision of Anglesey as an "energy island" harnessing its resources of wind power, tidal power and biomass (see the draft prospectus by Anglesey County Council and the Welsh Government for an Energy Island Enterprise Zone).

Although Anglesey, like the rest of Wales, has abundant natural resources and super talented entrepreneurs and innovators to take advantage of them, there is a worry that the county and country are not realizing their full potential.  Nesta (the National Endowment for Science, Technology and the Arts) identified the problem with a recent report commissioned by Jen Rae and others entitled Is Wales Getting Innovation Right?  The report noted that "Wales is a nation ready for innovation" but not everyone enjoys the benefit.

Some of those reasons are social and structural but there are at least two initiatives that could help.  One is the Intellectual Property Office's Green Channel scheme by which applications for patents for environmentally friendly inventions can be processed expeditiously.   This scheme reduces significantly the delay in obtaining legal protection which enables inventions to be launched substantially more quickly with consequential improvements to cash flow.  Started in Newport in 2009, the scheme has been followed by the Chinese, American and several other patent offices.   The other initiative is WIPO Green, an online market place for green technology which should make it easier for Welsh entrepreneurs and innovators to fund and market their inventions.  So far only one British business has taken advantage of the scheme and that is a company in London.

We shall discuss both opportunities at this year's IP Day celebrations at M-SParc on 27 April 2020 between 14:00 to 15:00.   Admission to those discussions is free but it is essential to book in advance.  Click here to secure your place at the event.  If you have any questions, call me on 020 7404 5252 or send me a message through my contact form.

Friday, 28 February 2020

Aberinnovation: Mid-Wales's New Science Park

Standard YouTube Licence

Jane Lambert

Aberystwyth Innovation and Enterprise Campus ("Aberinnovation") has just distributed its first newsletter.  It contains news of
On the construction of the campus, the newsletter reports that the Future Food Centre, Advanced Analysis Centre and Innovation Hub will be fully operational by October 2020. They will join the Biorefining Centre and Seed Biobank to form AberInnovation's core capabilities.

According to the History page of the campus's website, Aberinnovation is a joint project between Aberystwyth University and the Biotechnology and the Biological Sciences Research Council "to convert the 21st Century’s grand challenges of food, water and energy security into sustainable and prosperous opportunities for society, recognising that innovation in agriculture and the food supply chain will play a critical role in fostering a knowledge-based bio-economy."  The vision for the campus is to create a world leading facility for bio-science research, developing ground breaking products for the agri-tech market.

Anyone wishing to discuss this article or any of the topics mentioned in it should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Related Article

Friday, 21 February 2020

IP for Inventors, Makers and Designers

"How to Protect Your Ideas and Make Money from Them" 
FFIWS 125 High Street, Porthmadog, 1 April 2020, 17:30 - 19:00

Jane Lambert 

I mentioned the FFIWS maker space at Porthmadog in FFIWS - Another Resource for Inventors, Designers and Makers in North Wales today in my Inventors Club blog,  FFIWS is funded by Arloesi Gwynedd Wledig and the ARFOR Programme by Cyngor Gwynedd.  Arloesi Gwynedd Wledig is one of the projects of Menter Môn.

Rhys Gwilym, one of the officials of Menter Môn is arranging some workshops and other events at FFIWS and has invited me to speak about intellectual property for users of FFIWS's facilities.  I have given similar talks at various FabLabs around the country and other maker spaces in Sheffield and Carlisle.

Although I shall have to spend a few minutes explaining what intellectual property is and how it works I shall make my talk as practical as possible.  I shall concentrate on confidentiality agreements and non-disclosure agreements, rights that come into being automatically such as copyrights, design rights and unregistered Community designs, rights that can be registered inexpensively such as trade marks and designs, licensing and cost-effective methods of enforcement.   I shall explain how and where to get specialist advice quickly and cost-effectively including the community of advisors, investors and entrepreneurs that is gathering around M-SParc on Anglesey.

The talk will take place at FFIWS, 125 High Street, Porthmadog on 1 April 2020 at 17:30.  I shall mention this event to some of the other experts who have spoken at M-SParc and invite them to come to make the event a really special evening.

Tuesday, 28 January 2020

My Talk to the Enterprise Hub -"What is a Trade Secret?"

Standard YouTube Licence

Jane Lambert

 I had a good day at M-SParc yesterday. I discussed trade secrets and non-disclosure agreements with the Enterprise Hub between 12:00 and 13:00. For the rest of the afternoon, I held pro bono one-to-one consultations with some of the individuals who had attended my talk as well as other business owners and entrepreneurs.

For the purpose of my talk, I defined "trade secrets" as  "secret business or commercial information the unlicensed use or disclosure of which could benefit a recipient of the information or harm the person who is entitled to prevent such use or disclosure."  A trade secret can be an invention before the filing of a patent application, the source code of a computer program, a customer list or a business plan.

Until the 9 June 2018, the unauthorized use or disclosure of trade secrets was prevented by the law of confidence which had been developed by the courts over many years.  In Coco v AN Clark (Engineers) Ltd [1968] F.S.R. 415, [1969] RPC 41 Mr Justice Megarry summarized that law as follows:
"I would regard the recipient as carrying a heavy burden if he seeks to repel a contention that he was bound by an obligation of confidence.’
‘First, the information must be of a confidential nature. As Lord Greene said in the Saltman case . . ‘something which is public property and public knowledge’ cannot per se provide any foundation for proceedings for breach of confidence. However confidential the circumstances of communication, there can be no breach of confidence in revealing to others something which is already common knowledge. But this must not be taken too far. Something that has been constructed solely from materials in the public domain may possess the necessary quality of confidentiality: for something new and confidential may have been brought into being by the application of the skill and ingenuity of the human brain . . Novelty depends on the thing itself, and not upon the quality of its constituent parts . . whether it is described as originality or novelty or ingenuity or otherwise, I think there must be some product of the human brain which suffices to confer a confidential nature upon the information.
The second requirement is that the information must have been communicated in circumstances importing an obligation of confidence. However secret and confidential the information, there can be no binding obligation of confidence if that information is blurted out in public or is communicated in other circumstances which negative any duty of holding it confidential. From the authorities cited to me, I have not been able to derive any very precise idea of what test is to be applied in determining whether the circumstances import an obligation of confidence. In the Argyll case, Ungoed-Thomas, J. concluded his discussion of the circumstances in which the publication of marital communications should be restrained as being confidential by saying ‘If this was a well-developed jurisdiction doubtless there would be guides and tests to aid in exercising it’. In the absence of such guides or tests he then in effect concluded that part of the communications there in question would on any reasonable test emerge as confidential. It may be that that hard-worked creature, the reasonable man, may be pressed into service once more; for I do not see why he should not labour in equity as well as at law. It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence. In particular, where information of commercial or industrial value is given on a business-like basis and with some avowed common object in mind, such as a joint venture or the manufacture of articles by one party for the other, I would regard the recipient as carrying a heavy burden if he seeks to repel a contention that he was bound by an obligation of confidence: see the Saltman case . . On that footing, for reasons that will appear, I do not think I need explore this head further. I merely add that I doubt whether equity would intervene unless the circumstances are of sufficient gravity; equity ought not to be invoked merely to protect trivial tittle-tattle, however confidential.
Thirdly, there must be an unauthorised use of the information to the detriment of the person communicating it. Some of the statements of principle in the cases omit any mention of detriment; others include it. At first sight, it seems that detriment ought to be present if equity is to be induced to intervene; but I can conceive of cases where a plaintiff might have substantial motives for seeking the aid of equity and yet suffer nothing which could fairly be called detriment to him, as when the confidential information shows him in a favourable light but gravely injures some relation or friend of his whom he wishes to protect. The point does not arise for decision in this case, for detriment to the plaintiff plainly exists. I need therefore say no more than that although for the purposes of this case I have stated the proposition in the stricter form, I wish to keep open the possibility of the true proposition being that in the wider firm."

Since 9 June 2018 European Union trade secrecy law has been harmonized by Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (Text with EEA relevance) OJ L 157, 15.6.2016, p. 1–18 which I discussed in The Trade Secrets Directive on 7 July 2016 NIPC Law.  It would appear from The Trade Secrets (Enforcement, etc.) Regulations 2018 which implemented the Directive into the laws of the United Kingdom that the Directive did not repeal the old judge-made law but provided trade secret owners with new rights and remedies (see Jane Lambert Transposing the Trade Secrets Directive into English Law: The Trade Secrets (Enforcement etc) Regulations 6 June 2019 NIPC Law).

For the rest of my talk, I discussed confidentiality or non-disclosure agreements which is one of the "circumstances importing an obligation of confidence" that Mr Justice Megarry is likely to have had in mind in Coco v Clark.  Those agreements are easy enough to draft but much less easy to enforce in infringement proceedings.  Defendants tend to argue that the agreement was not intended to cover the information in question, that it was not really confidential or that the claimant is not entitled to rely on it for some other reason.  In There's more to the Law of Confidence than NDAs 14 Oct 2019 NIPC Inventors Club, I wrote:
"If you want to rely on the law of confidence, print a form in duplicate on no carbon required paper with boxes for:
  • The name and full postal address, job title, email, telephone and other contact details of the confidante and those of his or her employer if they are different.
  • Identify the information to be delivered and the way in which it is to be passed (that is to say, private conversation, whether it is is a document and if so what it contains).
  • An acknowledgement that the information has been disclosed in confidence.
  • A finite period in which the confidante can contentod that the information is not confidential at all and a rapid and cost-effective way of resolving such contentions such as expert determination or expedited arbitration.
  • The use to which the information may be put.
  • A deadline for the return of confidential documents and may have been made.
  • Submission to the jurisdiction of the English courts.
Every single confidential conversation and the delivery of every single document should be recorded and logged separately. If any of the conditions is breached, the confider should call the confidante at once. If it is still not put right the confider should consider legal action including possibly an interim injunction."
Trade secrets have a number of advantages over patents.  The right to prevent unauthorized use or disclosure arises automatically.  It costs nothing.  There is no need for registration. Theoretically, it can last for ever and some trade secrets like the recipes for Chartreuse or Coca Cola have been kept secret for centuries in the case of the liqueur and well over 100 years in the case of the fizzy drink. On the other hand, if a competitor discovers the secret through his own R & D or even by reverse engineering there is nothing to stop him from using it.  A patent, on the other hand, could stop such a competitor in his tracks if he makes or does something that is caught by one or more of the claims.

My next visit to the Enterprise Hub is scheduled for the end of April to join in the celebrations for World Intellectual Property Day. The theme this year is "Invest for a Green Future" which could not be more appropriate for the Menai Science Park. That has been the science park's theme from the day it opened on St David's Day 2018. 

While taking a break from my one-to-one's, Pryderi ap Rhisiart, M-SParc's managing director presented me with an ambassador's badge.  One of the reasons why M-SParc is so important is that it is helping to reverse a trend of relative economic decline and depopulation which has drained Northwest Wales of its best and brightest.  The businesses that are establishing themselves at M-SParc and other locations in the Menai area are attracting them back as well as highly skilled individuals from the rest of the world. I sense a real buzz whenever I step into the science park's atrium. For that reason, I shall wear my M-SParc badge with pride.

Much of the credit for the success of yesterday's meeting is due to Emily Roberts who runs the Enterprise Hub. She advertises the meetings and sets up the PowerPoint and refreshments.  I am very grateful to her for her work.

If anyone wants to discuss this article call me on 020 7404 5252 or send me a message through my contact form.

Friday, 17 January 2020

Building a Better Mousetrap - Visit to M-SParc on 27 Jan

Jane Lambert

"Build a better mousetrap, and the world will beat a path to your door".  That saying is attributed mistakenly to Ralph Waldo Emerson; It is a misquotation. According to Wikipedia Build a Better Mousetrap etcEmerson's actual words were:
"If a man has good corn or wood, or boards, or pigs, to sell, or can make better chairs or knives, crucibles or church organs, than anybody else, you will find a broad hard-beaten road to his house, though it be in the woods."
Nevertheless, the saying appears to have been taken seriously for the same article adds:
"The phrase has turned into a metaphor about the power of innovation and is frequently taken literally, with more than 4,400 patents issued by the United States Patent and Trademark Office for new mousetraps, with thousands more unsuccessful applicants, making them the "most frequently invented device in U.S. history."
There seems to be some truth in that.  There is a YouTube channel in the USA called Mousetrap Monday with 1.23 million subscribers that tests different types of mousetrap.

I am not sure what could count as a "better mousetrap" because every type of rodent control seems to inflict suffering.  According to the RSPCA Living with Rats and Mice, spring traps do not always kill outright, poison induces haemorrhaging, beasts caught in glue traps have been known to tear off their fur or even bite through their limbs in futile efforts to break free and even live traps can be cruel because released rodents have a very low survival rate. Many starve or freeze to death because they cannot find food or shelter in a new environment or they fall prey to other animals including other members of their species.  Rats and mice may be dangerous, destructive and indeed disgusting creatures that have to be controlled by lethal measures, but that is no excuse for inflicting more pain on those beings than is absolutely necessary.

If despite everything that I have just said, you have somehow invented a better mousetrap or, indeed, some other new product or process it is imperative that you keep your trap shut (no pun intended) until you are ready to commercialize it.  The reason for secrecy is that patents are granted only for inventions that are new. If you tell everybody how to make or use the invention then it is no longer new,  is it?  You may need to disclose your invention to a potential collaborator or investor but you must be careful to do that only in confidence and that's where I can help you.  On Monday, 27 Jan 2020 at 12:00 I shall be talking about trade secrets. confidentiality and non-disclosure agreements at the Menai Science Park (M-SParc) on Anglesey and you can find out all you need to know about that topic by registering for the event through Eventbrite.

As usual, I shall stay at the science park until 17:00 to discuss any issues that tenants of the science park or other local businesses may have.  If anybody wants to book a slot, call 020 7404 5252 and ask any of the clerks for an appointment.   Alternatively, just fill in the "Initial Advice and Signposting" form below.

My visit takes off immediately after Burns Night which remembers one of the world's greatest poets.  Among his most popular poems is "To a Mouse".  Having watched some of the videos on Mousetrap Monday I can't help thinking of the second verse of that poem:
"I’m truly sorry Man’s dominion
Has broken Nature’s social union,
An’ justifies that ill opinion
Which makes thee startle
At me, thy poor, earth-born companion
An’ fellow-mortal!"
Should any of my readers find themselves in  Southwest Scotland, I strongly recommend a visit to the Robert Burns Birthplace Museum.  One of my favourite parts of the museum is the Poet's Path that contains a statue of the ‘Wee sleekit, cow’rin, tim’rous beastie,"  In the photo above there is a picture of my shaking paws hands with it.  Not so "wee" this particular "beastie," I think you'll agree.  Burns also wrote "Auld lang syne" and although we are well into January this is my first opportunity to wish my readers a Happy New Year or. if they prefer,  Blwyddyn Newydd Dda.

Sunday, 8 December 2019

Trade Secrets and Non-Disclosure Agreements

The Atrium at M-SParc

Jane Lambert

On my last visit to the Menai Science Park (M-SParc), last month, I spoke about IP Database Searches and Understanding Specifications. I had a good audience and I think it shows that there is a demand for short talks on specific subjects, When I return to Anglesey at the end of next month, I propose to talk about trade secrets and non-disclosure agreements.

Why that topic?  Well, every business has trade secrets and for some companies such as Coca Cola, Microsoft and the distillers of Chartreuse a trade secret may be the most valuable intellectual asset that they own.  It can last a lot longer than a patent and can provide much better protection just so long as secrecy can be maintained.  Also, as patents are granted only for inventions that are new, every patentable invention starts off life as a trade secret,  If you want to discuss your invention with a consultant or a customer before you apply for a patent you had better make sure he or she signs a confidentiality agreement before you disclose any secret technical or commercial information to him or her.

The law relating to trade secrecy has recently changed across Europe with the coming into force of the Trade Secrets Directive last year.  Non-disclosure agreements and confidentiality clauses in consultancy, employment, joint venture, licensing and other commercial agreements have to be reassessed in the light of that Directive and the implementing regulations (see The Trade Secrets Directive 7 July 2016 NIPC Law and Transposing the Trade Secrets Directive into English Law: Confidentiality Agreements 30 Nov 2019 NIPC Law). So, too, must  companies' measures for keeping their sensitive technical and commercial information secret.  I shall also be talking about remedies if secret information is disclosed or used improperly.

This topic should be useful for each and every business in North West Wales from the very smallest seaside café with a recipe for scrumptious bara brith to the increasing number of knowledge-based businesses with winning technologies in life sciences or computation.  As with my previous visits, I will hold pro bono one to ones after the talk until the science park closes.

Shortly, Pryderi will give me a date for the talk and Emily will post a notice on Eventbrite inviting registrations. if in the meantime anybody in Northwest Wales (or anywhere else for that matter) wants to discuss this topic or any other IP issue, he or she should call me on +44 (0)202 7404 5252 or send me a message through my contact form.