EGNI 2023

Author Global World Atlas Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

"Egni" is Cymraeg for "energy" and there is a lot of it about in Anglesey both physically and metaphorically. Both kinds came together yesterday in EGNI 2023 at the Menai Science Park. EGNI 2023 was advertised as "THE low carbon and renewable energy event of the year." It consisted of a conference and exhibition with a parallel event for local schoolchildren.

The conference consisted of four sessions on the following themes:

• Why Net Zero?
• How are we doing it?
• Strategic and Large Energy Projects
• Young Persons' Panel.

The first session was launched by an impressive speech from a local sixth former called Owain. He did not say what he intends to do for a living but he has every chance of distinguishing himself in whatever career he chooses to follow. Owain was followed by speakers from the Welsh Government, Ambition North Wales the local authority and other institutions. The second session focused on local initiatives to achieve net zero. The third session was a panel discussion with representatives from BP, Rolls Royce, HyCymru (the Wales Hygrogen Trade Association) and other organizations on large-scale projects to develop renewable and nuclear resources. For the final session, Owain returned with another local sixth former called Seren and a student from Bangor University to quiz M-SParc's managing director and two of the speakers on their personal commitments towards achieving net zero. During the lunch and tea breaks, we were entertained by local artist Josh Weaver. The conference finished with a short concert by Eve Goodman.

I enjoyed all the presentations and learned a lot from each of the speakers but for me as an intellectual property lawyer, the panel discussion on strategic and large energy projects was the most interesting session The transition from fossil fuels to renewables and nuclear energy is potentially as important as the transition from animal power to steam in the 18th century. Every major economy is investing heavily in wind, solar, tidal and other renewable energy sources and the rewards for the companies that develop those technologies first will be substantial. With abundant wind and tidal power and half a century's experience in nuclear power generation, Anglesey is well placed for those developments. I invited the speakers to consider the worldwide licensing opportunities from those developments in a question to the panellists.

Yesterday was not the first time that M-SParc considered those opportunities. The theme for World Intellectual Property Day in 2020 was Innovate for a Green Future which the science park celebrated with presentations on the Intellectual Property Office's Green Channel and the WIPO Green database (see Anglesey to celebrate World Intellectual Property Day with Talks on Protecting and Exploiting Green Innovation at M-SParc 5 March 2020).

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page.

World IP Day - "The Value of Her IP"

Author Martin Falbisoner Licence CC BY-SA 3.0  Source Wikimedia Commons 

 

Jane Lambert

"The Value of Her IP" is the sign under which the US Patent and Trademark Office will celebrate this year's World Intellectual Property Day.  The high point of the American celebrations will be an event in the US Capitol in Washington DC between 16:30 and 18:00 Eastern Time on 26 April 2023. It will begin with a welcome from Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, follow with greetings from Members of Congress, continue with a panel discussion on women innovators, creators and inventors including question and answer and end with remarks by Shira Perlmutter, the  Registrar of Copyrights.  Afterwards, there will be a reception and an exhibition.

According to Nicola Smith's post World IP Day 2023: Improving the Representation of Women in IP in the Intellectual Property Office Blog, the IPO will join WIPO to celebrate the women in IP and their role in accelerating innovation and creativity for World IP Day on 26 April 2023.  In her post, Nicola mentions the international task force with representatives from over 25 IP offices including the UK that the USPTO set up to improve the representation of women in IP.  The task force recently held a meeting at its head office which Nicola attended.  A video of Kathi Vidal's welcome appears on the USPTO's YouTube channel.

Nicola mentions some of the IPO's efforts to promote diversity within IP:

"We have played an active role in IP Inclusive since its inception, worked to embed IP into curriculums, invested in IT development opportunities through Code First Girls, and supported those wanting to return to work through our STEM Returners Programme."

That is a mission that the Menai Science Park (M-SParc) has shared ever since it opened (see STEM and Skills on the science park's website).

This year's celebrations of World IP Day will be M-SParc's best ever.  You will find the programme in M-SParc's World IP Day Seminar: whom you can meet and what you can learn.   If you want to attend the event in person you can register here,  If you want to join online the link is here. Anybody who wishes to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.

M-SParc's World IP Day Seminar: whom you can meet and what you can learn

 

Jane Lambert

I explained the importance of Word Intellectual Property Day and outlined Menai Science Park's plans to celebrate it in World Intellectual Property Day 2023 on 27 Jan 2023.  I introduced Anna Roberts of Explorage.com and mentioned some of the topics that we shall discuss in World Intellectual Property Day - M-SParc's Lunchtime Seminar on 9 April 2023.  In this article, I shall introduce the other speakers, anticipate what they will each talk about and advise readers on how they can register for, and participate in, the event.

As I said in my previous articles, the theme of this year's World Intellectual Property Day is "Women and IP: Accelerating Innovation and Creativity." The word "accelerating" is significant because it connotes contribution and cooperation, The seminar will focus not on matters that only interest women but on contributions from innovative and creative women that interest everybody.

For that reason, we offer an all-female panel.  The organizer of this year's IP Day event (like all previous ones) will be Emily Roberts, the Science Park's Outreach & Community Manager. The main speakers will be Anna Roberts whom I mentioned above, Anna Burke, Managing Director of Animated Technologies and Louise Carr, a patent attorney with Cameron IP.  I will introduce the speakers and chair the discussion. We also look forward to interventions and questions from the floor.

Emily is anxious for this event to be relevant and useful to everyone who attends.  She has found that many people who could have benefited from events like this one have been deterred by the fear that the topic will be too abstract or remote. She requires us to focus on the basics of intellectual property and illustrate its importance with real-life examples.

That is why Emily has invited two entrepreneurs to talk about their businesses.  They will identify the assets that give Explorage.com and Animated Technologies an advantage over their competitors. They will tell us how they protect their investment in those assets.  In response to any issues that may arise in the presentations or in enquiries from the floor, Louise will tell us how she and other attorneys can help.  I can chip in on any issues that the other panellists do not cover.

I will remain at the Science Park for a little while after the seminar in case someone wants a one-to-one conversation on a matter that he or she would prefer not to mention in public.  For those who are attending the event online, I shall be happy to make an appointment to talk by video link or phone.

If you want to attend this event you can do so by completing the Eventbrite card.  We are all looking forward to this event, seeing old acquaintances again and maybe making new ones. If you have any questions, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

World Intellectual Property Day - M-SParc's Luchtime Seminar

Jane Lambert

World Intellectual Property Day - Celebrating Wales.s Women Entrepreneurs, Inventors and Creatives - Menai Science Park 26 April 2023 12:30 

It is less than three weeks to World Intellectual Property Day.   For readers who missed my post, World Intellectual Property Dat 2023, on 27 Jan 2023, it is a worldwide festival of creativity, enterprise and innovation which takes place on 26 April of every year.  Each year the celebrations focus on a different theme.  This year's theme will be Women and IP:  Accelerating Innovation and Creativity.  In keeping with that theme, the Menai Science Park ("M-SParc") will celebrate the contribution of women entrepreneurs, inventors and creatives in Wales.

As in previous years, the main celebration at M-SParc will be a lunchtime seminar which will take place in one of the conference rooms and online.  One of the speakers will be Anna Roberts, the founder and CEO of Explorage.com.  That company has just launched a new web-based service that helps those with goods to store to find the optimum self-storage facilities in their area.  It also puts those with self-storage facilities in touch with members of the public looking for self-storage.  Emily Roberts has written about the service in Explorage com Launches New Platform which she posted to M-SParc's website on 6 April 2023.

Explorage.com is one of many innovative new businesses that are based in M-SParc.  Most provide services which is to be expected in a mature economy such as the United Kingdom where services account for 79.2% of GDP.  That is comparable to France at 78.8%, Germany at 71.1% and the USA at 79.7%. Protecting innovation in services is challenging because the world's intellectual property system was constructed during the industrial revolution when the priority was to protect innovation in manufacturing.  That may explain the exclusions of schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers as such from the definition of patentable inventions in art 52 (2) (c) of the European Patent Convention,  Also, it was not until the mid-1980s that the Trade Marks Act 1938 was amended to enable the registration of trade marks for services.

As there is no such thing as a service patent, new services have to be protected indirectly. That requires an analysis of the service provider's income-generating assets and a plan for protecting them which ideally should be incorporated into the enterprise's business plan.   In most cases, it is the brand that attracts customers so the enterprise will have to fund the registration of a trade mark in all the countries in which it intends to do business.  Sometimes the most important asset will be technical or commercial information. Trade secrecy law throughout Europe has recently been codified by the Trade Secrets Directive which remains part of our law notwithstanding Brexit.  Thought also has to be given to enforcement which remains expensive despite efforts of the courts and legal professions to minimize the costs.  For most small businesses, IP enforcement requires specialist insurance the premiums for which should also be written into the business plan.

These and other issues will be on the menu at M-SParc's lunchtime seminar on 26 April 2023.  If you want to book your place at the table or are looking for more information, call me at +44 (0)20 7404 5252 during office hours or message me through my contact form.

A Judicial Super Highway for North Wales

Author Dave Smethurst Licence CC BY-SA 2.0 Source Wikimedia Commons 

 

Jane Lambert

According to the updated guidance from the Department for Levelling Up, freeports are intended to attract external investment and stimulate innovation.  If the recently announced Anglesey Freeport achieves those objectives there will be a need for a cost-effective local forum for the resolution of business disputes.  Parties from that area now have the choice of litigating in London, Liverpool, Cardiff or possibly Mold which adds substantially to their costs.  The obvious solution is to extend para 1.1 of Practice Direction 57AA to the Caernarfon District Registry and the County Court at Caernarfon.

CPR57A and Practice Direction 57AA establish the Business and Property Courts of England and Wales.  These are the Royal Courts of Justice in London and the Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester and Newcastle District Registries and County Court hearing centres.  When they were first launched in 2017 the Chancellor referred to the Business and Property as a "judicial super highway" (see my article Launch of a Jusicial Super Highway  12 July 2017 IP Northwest).

The Business and Property Courts undertake the following work:

• the Admiralty Court, 
• the Business List, 
• the Commercial Court, 
• the Circuit Commercial Courts, 
• the Competition List, 
• the Financial List, 
• the Insolvency and Companies List, 
• the Intellectual Property List, 
• the Property, Trusts and Probate List, 
• the Revenue List, and 
• the Technology and Construction Court.

The County Court in Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester, Newcastle and Preston also do all the work that falls under the jurisdiction of the courts and lists that make up the Business and Property Courts with a number of exceptions.

Caernarfon already has a Chancery District Registry which means that an intellectual property claim other than one concerning patents, registered designs, plant varieties, semiconductor topographies and trade marks could be issued out of the District Registry and County Court there.  In practice, any County Court claim would almost certainly be transferred to the Intellectual Property Enterprise Court in London ("IPEC"). It appears from the Circuit Commercial Courts in Wales page of the Courts and Tribunals Judiciary website that the Circuit Commercial Court in Mold is part of the Business and Property Courts in Wales. Applications for interim injunctions in an IP case issued out of Caernarfon could therefore in theory be made to Judge Keyser KC or Judge Jarman KC sitting in Mold.   According to para 1.2 of the Intellectual Property Court Guide, small IP claims can be heard in Cardiff as well as Liverpool and London but not in North Wales.

The option for Welsh litigants of bringing their claims in Liverpool, London or elsewhere in England would cease were Wales to establish a separate court system (see my article "A Separate Welsh Legal Jurisdiction"  of 20 Feb 2021). In the eventuality, it would be imperative for the Caernarfon District Registry to become part of the Business and Property Courts in Wales and perhaps other Business and Property Court District Registries to be established in central and southwest Wales. As the Senedd  Cymru can now make primary legislation for Wales, the argument in favour of establishing a separate Welsh court system is likely to strengthen.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page.

Innovation for a Stronger, Fairer and Greener Wales

Author User:Gdr Licence CC BY-SA 3.0 Source Wikimedia Commons
 

Jane Lambert

The Welsh Government published a new innovation strategy yesterday with the objectives of creating better jobs, improved health and care services, a greener environment and a more prosperous nation.  Those are to be achieved through innovation which is defined as "the creation and application of new knowledge to improve the world."  The strategy is to be implemented by an action plan which will be published later.

Education

Education is central to the strategy because "schools, colleges, universities and research organisations create knowledge through research" which can "lead to commercialisation, create societal value, and support a stronger economy."   The new Curriculum for Wales should prepare learners for work in knowledge-based careers and the opportunities and challenges of an ever-changing economy. A new Commission for Tertiary Education and Research (CTEE) should create a more strategic, collaborative, and joined-up education and research sector for universities and colleges.

Economy

The mission is "an economy that innovates for growth, collaborates across sectors for solutions to society’s challenges, adopts new technologies for efficiency and productivity, uses resources proportionately, and allows citizens to share wealth through fair work."  The Welsh Government acknowledges that the Welsh economy is integrated into that of the UK and that its innovation strategy must be compatible with the UK one.  However, there is still scope for Welsh initiatives in R&D funding, public sector procurement, small business research, digital and healthcare innovation and Global Wales which will be pursued. A particularly exciting development is a partnership with T-Hub in Hyderabad which is the world's biggest innovation campus. 

Health and Wellbeing

The mission for this sector is a "coherent innovation ecosystem where the health and social care sector collaborates with industry, academia and the third sector to deliver greater value and impact for citizens, the economy, and the environment."  The pandemic occasioned clinicians to develop new ways of delivering health and social care which were discussed in  The NHS Wales COVID-19 Innovation and Transformation Study Report,  The strategy proposes greater alignment of the health and social care innovation ecosystems, coordinating health and social care with the wider economy and community.  Social Care Wales is developing a social care research, innovation and improvement which is set out in A healthier Wales: long term plan for health and social care.  Health and social care priorities will dovetail with the initiatives in the economy, education climate and nature.

Climate and Nature

This mission covers meeting Wales's climate change objectives.  Proposals include reducing reliance on fossil fuels, making greater use of renewals, developing new power storage technologies and substituting hydrogen for hydrocarbons.  Existing plans for future gas and electricity networks will be implemented. The adoption of new technologies for heating buildings will be encouraged, particularly retrofitting for older structures. Shared vehicle use will be promoted in order to reduce the need for individual vehicle ownership.  Other initiatives include greater use of recycling of household waste such as using dirty nappies as a road construction material and developing the Welsh timber industry.

Comment

In contrast to the UK Innovation Strategy which I reviewed in NIPC Invention on 12 Aug 2021,  the Welsh Innovation Strategy is ambitious but doable.   The UK strategy had the aim of transforming the UK into a science and tech superpower by 2030 - pure boosterism of the kind promoted by the last Prime Minister but one.  As I said in my review:

"the idea that British companies will be competing with the likes of Huawei, Mitsubishi and Samsung in such fields as artificial intelligence, mobile telecoms, consumer electronics or any other new technology is as fanciful as the garden bridge, an airport in the Thames estuary and a bridge to Northern Ireland."

If I have any criticism of the Welsh strategy it is that it bothers to mention the UK Innovation Strategy.  There are lots of good ideas in the Welsh strategy such as the coordination of the education, economy, healthcare and climate and nature missions and the use of universities and other educational institutions as centres of research. 

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.  

Negotiating Consultancy and Licensing Agreements with Universities

Author Andrew Woodvine Licence CC BY-SA 2.0 Source Wikimedia Commons

Jane Lambert

On Thursday I delivered a seminar on intellectual property law to the teams working on research, innovation, commercialization and partnership support for Bangor University.  I wrote about my visit in The Day I went to Bangor in NIPC News on 24 Feb 2023.  My audience included professionals who negotiate licence and consultancy agreements with third parties.

Licence agreements are made between owners of intellectual property rights and those who wish to use the technology protected by such rights.  Universities acquire considerable technical and scientific knowledge through research carried out by their academics and graduate students much of which can be useful for business. Where such research is protected by patents, unregistered design rights, supplementary unregistered designs, trade secrecy law or other intellectual property rights the university may license businesses and entrepreneurs to use the research.

Consultancy agreements are made between experts and those who wish to use their expertise.  Academics and graduate students often acquire considerable expertise in an area of science or technology through their research.   Businesses and entrepreneurs who wish to use such expertise may contract with the university to consult such an academic or student.  They may ask him or her to design or test something or carry out further sponsored research.

The licensing and consultancy services that are available from Bangor University are indexed on the Business Services page of its website.   These consist of a Collaboration Hub, Intellectual Property (IP) and Commercialization, Conferencing and Business Dining.  The services available from the Collaboration Hub that are most likely to interest businesses include knowledge exchange, collaborative research projects, consultancy and access to the University's facilities.  Those available from Intellectual Property and Commercialization are licensing and spinouts.

Most universities in Wales and indeed the rest of the United Kingdom as well as many more abroad offer similar services to businesses.   When negotiating with them, it is prudent to take the following steps.

• First, whenever you disclose confidential information to a third party make sure that he or she knows that the information is confidential and that you are confiding it to him or her in circumstances giving rise to an obligation of confidence.   You must set out precisely how the information may be used, who may see it and, in the case of a disclosure of documents when you need them back.   I gave a lot of information about this topic in  Trade Secrets and Non-Disclosure Agreements on 1 April 2018.
• Secondly, summarize the terms that you and the university may agree subject to contract in a document known as "heads of terms" or "heads of agreement".  Unless you and the university agree otherwise, most if not all the terms should be non-binding.  Even though the instrument should be non-binding it is a good idea for both parties to sign it so that there can be no doubt as to each party's understanding.   There is a good example of such an agreement and some explanatory notes on the Gov.UK website.
• The sample agreement is one of several that have been drawn up by a committee chaired by Sir Richard Lambert known as the Lambert Toolkit.   I attended and contributed to one of the drafting meetings of that committee.  The core of the toolkit consists of  7 draft agreements which are used by Bangor and many other universities.  Guidance on those draft agreements can be obtained from a "Decision Guide."
• A licence agreement is likely to be drawn up by one of the parties from scratch.   Tactically it is usually better for the licensee to draft it rather than rely on the university,   A typical licence will include the names and addresses of the parties, recitals on the background to the agreement, the grant, an interpretation clause, a description of rights granted, the territory and the term, the consideration for the licence, remedies for non-payment or delay, the licensor's obligations and the licensee's, provisions for termination, rights on termination, whole agreement, severance and other boilerplate clauses, provision for the service of notices and notifications, choice of law and jurisdiction.    

It is prudent to enlist the help of a lawyer or patent or trade mark attorney for at least some of the stages of the negotiation and drafting.   Such a lawyer can be a barrister specializing in intellectual property and technology law instructed under the public access scheme or a solicitor with expertise in those areas of the law.

Anyone wishing to discuss this article or its contents may call me on 020 7404 5252 during office hours or send me a message through my contact form at other times.