Tuesday, 20 August 2019

"How much does IP Protection cost? and "Is it worth it?" Get some Answers at M-SParc on 20 Sept

Author Arthur Pyle
Source Wikipedia Excalibur

Jane Lambert

It usually costs a lot of time and money to develop and market a new product or service and the last thing you want is for an interloper to nab your customers by trading in a way that leads them to believe that he is you or by supplying a product that looks a lot like yours. Intellectual property is the magic sword that can stop them from doing so.

However, just like the Excalibur of Arthurian legend, not everybody can wield it.  You usually have to put some steps in place such as registering a trade mark, patent or registered design or taking out intellectual property insurance so that you can go to court to enforce or protect your intellectual property right (see It is never enough to get a patent, trade mark or registered design 5 Aug 2019 NIPC Inventors' Club).  Patent, trade mark and design registration cost money as do insurance premiums.  Of course, not having adequate IP protection in place or being able to defend it can cost you very much more.

Entrepreneurs and small business owners have a lot of demands on their cash which is why it is essential to plan for such expenditure.  That is what a business plan is for.   It is "Why every business plan should take account of intellectual property" (see my article of 3 April 2016 NIPC News).

But in order to include intellectual property in your business plan, you will need some figures and other information.  Costs will vary widely from business to business and, for that reason, the Enterprise Hub at M-SParc has assembled the best possible lineup of expertise that is available in Wales.  They will be setting out their services and answering your questions in "Your ideas, your work, your rights. What do you really own?" at the Menai Science Park near Gaerwen on Anglesey between 12:00 and 14:00 on 20 Sept 2019.

I shall be chairing the meeting and I shall explain briefly what is meant by intellectual property and how it works.  I shall remind the audience of some simple steps that they can take to identify the right kind of legal protection for their businesses and where and how it can be protected.

I shall be followed immediately afterwards by Sean Thomas.  Originally from Anglesey, Sean practises as a patent attorney in Leeds for Thomas Harrison IP.  He will explain the advantages of patenting a new invention, what can happen if you don't patent it, where you can patent it and how much it could cost to get a British, European and international patent application.

Sean will be followed by Jonty Gordon of Amgen Law, an IP specialist practising in Bangor who will discuss trade mark and design registration. He will explain the advantages of registration of each of those two intellectual property rights, where they can be registered and how much it will cost in each case.

Andrea Knox, a commercial solicitor practising in Colwyn Bay who specializes in insolvency, will mention the need to consider IP in due diligence, employment, distribution and other commercial transactions.

Ian Wishart, a patent attorney who now works with his son, Paul, in Sybaris  Legal and IP a specialist IP insurance broker, will review the various types of cover that are available, the costs, and alternatives such as after-the-event insurance and other forms of litigation insurance.

Finally, Steve Livingston, a chartered accountant specializing in IP taxation who practises from the Menai Science Park will advise how to obtain the optimum tax treatment for your investment in obtaining, maintaining and enforcing your rights.

Anyone wishing to discuss this article, the seminar or any related matter should call me on 020 7404 5252 or send me a message through my contact form.

Monday, 15 July 2019

Entrepreneurial Support Services in Wakes

Jane Lambert

Be The Spark, a collaboration between business, government, universities and other interests to promote enterprise and innovation, has published its first edition blueprint of entrepreneurial support services throughout Wales.  It takes the form of an interactive map with co-working spaces, accelerator hubs, business services, tech facilities and membership organisations available to entrepreneurs. Members of the public are asked to notify Be The Spark of any services that aren’t currently represented through its contact form.

Be The Spark also lists talks and other events on its Events page, case studies and news items. Currently, it is featuring Cufflink.io Ltd., a software developer at the Menai Science Park on Anglesey.

Saturday, 13 July 2019

IPEC Small Claims Track IP Litigation in Wales

Author Ham II Licence CC BY-SA 3.0 Source Wikipedia Cardiff Crown Court

Jane Lambert

Suppose you are a photographer in Pwllheli and someone from Conwy copies one of your photos of Snowdon and posts it on his website without your permission.  You ask him politely to take it down but he ignores your emails calculating that it would be more trouble than it is worth for you to sue him.

You are pretty incensed and consider your options.  You google "IP", "enforcement", "wales" and find my article Enforcing Intellectual Property Rights 16 April 2019.  You discover that you have two choices. You can issue proceedings against him out of the Caernarforn Justice Centre as it is one of the Chancery District Registries mentioned in para 16.2 of the Part 63 Practice Direction or you can bring a claim in the Small Claims Track of the Intellectual Property Enterprise Court ("IPEC").

If you issue out of Caernarfon costs are unlimited even in the County Court.  The judges who hear your case may not be IP specialists.  The trial could take place at a hearing centre miles away from Caernarfon.  In the Small Claims Track, you would get a specialist judge and your liability for costs is limited to a few hundred pounds.  But IPEC is in London.  It has only tried a case outside the capital once in its history.  You and your opponent both live in North Wales.

From October 2019 there will be an alternative, The government has announced plans in the new Intellectual Property Enterprise Court Guide to appoint district judges in Cardiff, Manchester and the other Business and Property Courts outside London to hear IP cases in the Small Claims Track (see The New IPEC Guide 4 July 2019). I have discussed how this will be done in Cardiff in Small Claims Track IP Litigation in Bristol and Cardiff on 10 July 2019 in NIPC Severn and in Manchester in Small Claims Track IP Litigation in Manchester also on 10 July 2019 in IP Northwest.  For parties in North Wales, Manchester may be more convenient than Cardiff. Also, there is nothing to stop the district judge from hearing the action in Caernarfon or some other local trial centre if a court can be made available for him or her.

The key thing to remember whether you are a solicitor, patent or trade mark attorney litigator or litigant in person is to file through the CE-File System and choose Cardiff or Manchester.  There is a useful video below from the Courts and Tribunal Service that shows how to do it:

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Anybody wanting to discuss this article or IP litigation generally can call me on 020 7404 5252 during office hours or send me a message through my contact form.

Friday, 21 June 2019

"From Plants to Bio-Based Products" Motivation and Mutual Learning Workshop in Aberystwyth

Jane Lambert

Last Wednesday I attended a workshop in the William Davies Hall at the Institute of  Biological, Environmental & Rural Sciences ("IBERS") of Aberystwyth University. The theme of the workshop was "From Plants to Bio-Based Products The Challenges to and Opportunities for Development and Scale-up in Wales." The event was hosted by Beacon Biorefining in association with Minerva Communications Ltd and the Biovoices consortium. Over 50 stakeholders participated in the event representing the Welsh government, the universities, the professions and various sectors of Welsh agriculture and industry.

The attendees were seated on a number of tables each with its own moderator and rapporteurs.  Each table was asked to discuss four topics:
  • Challenges - What are the issues preventing progression and development of bio-based sectors and products in Wales?
  • Opportunities - What are the opportunities for the development of bio-based sectors and products in Wales?
  • Success Stories - UK companies and industrial approaches to develop the bioeconomy that have reached higher TRL levels and market acceleration, and
  • How to progress the Welsh bio-based sector? Top level points to share.
Each topic was introduced by one or more short presentations.  Prof. Iain Donnison, the director of IBERS welcomed the audience and set out the aims of the workshop. Speakers from Aber instruments, Beacon and other companies introduced their businesses and the work that they do. Those speeches showed the breadth of the bio-economy in Wales. Rob Elias of Beacon spoke of the business opportunities provided by the bio-economy while Ian Holmes of Innovate UK spoke of the funding opportunities. Joe Gallagher, head of industrial biotechnology at IBERS, spoke about some of the industrial projects in this sector from British Sugar's plant at Wissington to even more impressive installations in China and the USA.

As the only intellectual property specialist in the room I stressed the importance of protecting investment in technology, branding and design. One of the challenges affecting the bio-sector as much as the rest of the economy is that EU trade marks and Community designs and plant varieties will cease to apply to the UK if the UK leaves the EU without a withdrawal agreement on 31 Oct 2019. At the very least, holders of EU trade marks, registered Community designs and plant varieties will have to register national trade marks, designs and plant varieties. Separate proceedings will be necessary in the UK and EU if any of those IP rights is infringed simultaneously here and in one or more EU member states.

When asked what message the sector should give to the new prime minister, I suggested that the new government should think yet again about how to reduce the risks and costs of obtaining and enforcing IP protection, particularly if the UK has to withdraw from the Unified Patent Court and the unitary patent. Finally, I added that the food and farming sectors will have to get used to a national scheme for protecting designations of origin and will have to reacquaint themselves with national plant variety protection.

On a general level, there was a lot of enthusiasm for clusters. I argued that clusters required more than geographical proximity and that they have to be based on natural affinity rather than the wishes of civil servants. I pointed to clusters in the UK that worked such as Silicon Roundabout in London and the Cambridge Cluster. Those were more than a few university spin-offs and start-ups who happened to be in the same area. They were a community of entrepreneurs, angels, private equity and specialist financial and professional services sharing similar aspirations and a common enterprise culture.

I have detected signs of that happening - albeit on a very small scale - around Bangor with the Menai Science Park and the Pontio Arts and Innovation Centre. I had learned about some remarkable business successes in that region such as Halen Môn. The proprietors of that enterprise had diversified from running a sea zoo as a tourist attraction to extracting salt from seawater, creating entirely new products like smoky water. In a sense, their enterprise had moved full circle as they were attracting tourists to their extraction facility.  I suggested that something similar might be happening around Aberystwyth and other regions of Wales.

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

Monday, 17 June 2019

Copyright, Poetry and Wales

Jane Lambert

Copyright is a very useful intellectual property right. Unlike patents, trade marks and registered designs, copyright does not have to be registered with the Intellectual Property Office. It comes into being automatically in the UK as soon as the conditions for subsistence are met.  Copyright also subsists simultaneously in works that have been created by British nationals or residents in all countries that are party to an agreement with HM Government for the reciprocal protection of the literary and artistic works of each other's nationals or residents.

In this country, copyright subsists in original artistic, dramatic, literary or musical works, broadcasts, films and sound recordings and typographical arrangements of published works.  However, it has been argued before the Court of Justice of the European Union that copyright can subsist in the taste of a foodstuff because art 2 (1) of the Berne Convention defines"literary and artistic works" so as to include every production in the literary, scientific and artistic domain, whatever the mode or form of its expression may be (see my case note on Levolo Hengolo BV  v Smilde Foods BV ECLI:EU:C:2018:899, [2018] EUECJ C-310/17, EU:C:2018:899 (13 Nov 2018)).

"Artistic works" include architects' plans. artwork for surface decoration, logos, web pages, photographs and some high-value handicrafts such as apparel, furniture, jewellery, pottery and light fittings. "Dramatic works" can include screenplays and choreography as well as plays, "Literary works" can include computer code, directories, compilations of statistics, advertisements and brochures as well as poems and novels. "Films" can include animations and videos and "sound recordings" MP3 files.

Copyright confers on the author of a work, his or her employer or assignee the exclusive right to copy, publish, lend or rent, perform, communicate, translate or otherwise adapt the work without his or her licence.  There are a number of exceptions to that right and the copyright owner's licence can sometimes be inferred. However, anyone who does any of those things without such licence and outside any of the exceptions is said to infringe copyright. Copyright can also be infringed by importing, possessing, selling or offering for sale or hire, exhibiting or otherwise distributing an infringing copy of a copyright work knowing or having reason to believe it to be such.

Infringers can be sued for copyright infringement in the High Court or County Court sitting in Caernarfon, Cardiff or Mold, the Royal Courts of Justice in London or any of the other hearing centres in England where there is a Chancery  District Registry. Remedies can include an injunction (order of the court to stop, refrain from or occasionally do a specified act), destruction or delivery  up to the claimant of infringing copies, payment of damages for the claimant's loss or the surrender of the defendant's profits from the infringement, publication of the finding of infringement in the press or other media and reimbursement of the costs of bringing the claim.  Infringement on an industrial scale is also an offence carrying a maximum sentence of 10 years imprisonment, an unlimited fine or both.

For claims under £500,000 that can be tried in 2 days or less, there is a special court based in London which can sit in Wales known as IPEC (the Intellectual Property Enterprise Court).  Copyright claims of £10,000 or less can be heard in the small claims track of the Intellectual Property Enterprise Court. All other claims should be brought in the Chancery Divison of the High Court of Justice or the County Court.

An interesting Welsh copyright case is Pablo Star Media Ltd v Bowen [2017] EWHC 2541 which I discussed in Copyright in Photographs - Pablo Star Media v Bowen 15 Oct 2017 NIPC Law.  The defendant had posted Dylan Thomas's wedding photo on the VisitWales website where it was seen by only a handful of people before it was taken down.  An infringement action wa\s brought in the IPEC small claims track where the deputy district judge awarded the copyright owner net damages of £88.90. The copyright owner appealed to the Enterprise Judge who found no error on the part of the district judge and dismissed the appeal.  As this was a lower award than many would have expected I posted links to other articles and case notes for infringing copyright in photos online.

Last year, Ballet Cymru created two ballets to some of Dylan Thomas's most famous poems which were read by Cerys Matthews which they called Dylan Thomas - A Child's Christmas, Poems and Tiger Eggs.  I saw the show at the Stanley and Audrey Burton Theatre in Leeds and the Pontio Centre in Bangor and reviewed their performances in Ballet Cymru's Dylan Thomas Programme: The Company's Best Work Ever 13 Dec 2018 Terpsichore, Before their show in Leeds Ballet Cymru invited me and other ballet students to their workshop where they taught us their setting of In My Craft or Sullen Art  (see More than a Bit Differently: Ballet Cymru's Workshop and the Launch of the Powerhouse Ballet Circle 29 Nov 2018 Terpsichore.

Dylan Thomas is one of my favourite poets and Robert Burns is another.  Not owning a picture with a Dylan Thomas connection I resorted to this photo of my shaking hands with Burn's "Wee sleekit, cowran tim'rous beastie" in the gardens of the Robert Burns birthplace museum.  Anyone wishing to discuss this article or copyright, in general, should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Friday, 7 June 2019

Pitch Perfect Number Two

M-SParc (Menai Science Park)
Author Jane Lambert
© 2018 Jane Lambert: all rights reserved 

Jane Lambert

I was at M-SParc, the Menai Science Park, in Anglesey yesterday for Pitch Perfect 2, the second event at which local entrepreneurs pitch for funding for their business propositions.  I attended the first Pitch Perfect on 1 March 2019 and wrote about it in A Good Way to Spend St David's Day on 2 March 2019 in NIPC News.  This event was smaller than the last one but the quality of the business proposals was no less impressive.

Instead of separate contests for big investments, startups and students which took place last time, there was only one competition for two prizes.  One was awarded by the audience from their £10 entry fees. The other was awarded by the management.  As before, votes were cast and questions were put to the competitors through sli.do. There was a panel of experts who questioned the competitors on the details of their proposals. The audience contained at least one local angel as well as bankers, business advisers, business owners and friends and supporters of the competitors.  I was accompanied by a client from Yorkshire who had become a friend and who is now exploring the scope for licensing and other transactions in Northwest Wales.

The audience's favourite was Sbarduno, a project to encourage science teaching in Wales.  Those workshops can be given in either English or Welsh. Awen Haf Ashworth who made the pitch for the proposal has taught science to her own pupils in both languages. She presented her proposal in Welsh.  Sbrduno overtook a proposal by two recent graduates to identify and promote dementia friendly holiday accommodation in North Wales. Many of the proposals were altruistic as well as commercially viable such as a video game for mental healthcare developed by two young students, a mobile road safety device which won the management award a QR link for locating services and next of kin for vulnerable individuals.  My personal favourite was a social network for university students which reminds me very much of Facebook and could be just as big.

As before, visitors were offered refreshments on arrival and chilli con carne and vegetarian chile were served between the presentations and awards.  Several of the competitors asked me about patents, trade marks, confidentiality and IP generally.  I promised to return later in the year with a patent attorney who could carry out searches and advise on patenting and other issues.  If possible we shall try to include a speaker from the IPO and a specialist insurance broker.

Before Pitch Perfect 2 my guest and I visited the premises of Halen Mon which are located on the coast a few miles from M-SParc. We joined a conducted tour where we watched a video, saw the evaporation trays and packaging facility and tasted the company's products.  It is an example of the new businesses that are transforming the economy of Northwest Wales.  Its brand is protected not only by trade mark registrations and the laws of passing off but also by Council Regulation (EC) No 510/2006 on protected geographical indications and protected designations of origin.

Anybody wishing to discuss this article or topics arising from it should call me on 020 7404 5252 during office hours or send me a message through my contact page.

Thursday, 30 May 2019

IP and Dance

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Jane Lambert

I once heard Cerys Matthews describe Ballet Cymru as "the pride of Newport and the pride of Wales". I would not dissent except to add that that it is also the pride of the whole UK.  The reason I mention the company today is that it is about to perform Romeo a Juliet at the Riverfront Theatre in Newport. It will then visit Bangor, Brecon, Porthcawl and Milford Haven as well as venues in England.  The company will visit the Pontio Centre at Bangor on the 4 June.  I was at the Pontio the last time Ballet Cymru visited that venue and was almost as impressed by the centre as I was by the entertainment. Northwest Wales is beautiful and the M-SParc (the Menai Science Park) has created an environment for knowledge-based businesses to flourish but enterprising, innovative and creative people also need the arts. The Pontio delivers the best on stage and screen.

Ballet Cymru's production is a great show.  One of the best interpretations of Shakespeare's tragedy that I have seen.  It stands comparison with Birmingham Royal Ballet's, English National Ballet's, the Mariinsky's. Northern Ballet's, Scottish Ballet's and even the Royal Ballet's, all of which I know. I have seen and reviewed Ballet Cymru's Romeo a Juliet twice (see A Romeo and Juliet for Our Times 7 Nov 2016 and They're not from Chigwell - they're from a small Welsh Town called Newport 14 May 2013 Terpsichore).

Ballet Cymru is based in Rogerstone which is a township just outside Newport. It would be wrong to call it a suburb of Newport even though it is within that local authority's boundaries because the folk who live in that part of Wales have a strong sense of local identity. Caerleon is also within the city limits but it has existed since Roman times. One of Ballet Cymru's neighbours is the Intellectual Property Office  which describes itself as "the official UK government body responsible for intellectual property (IP) rights including patents, designs, trade marks and copyright."

Copyright protects the work of artists, broadcasters, composers, dramatists, filmmakers, publishers, recording studios other creative persons from unlicensed plagiarism and other exploitation.  Unlike patents, trade marks and registered designs, it does not have to be registered in the UK. The right comes into being automatically so long as the conditions for the subsistence of copyright are net. These are originality in the case of artistic, dramatic, literary and musical works and fixation and qualification in the case of all works. "Originality" used to mean independent skill and labour but is now intellectual creation.  "Fixation" means writing the work down or otherwise recording it. "Qualification" means the nationality or residence of the author or his employer or the place of publication. Basically, that includes a British national or resident or the national or resident of another country that provides reciprocal protection to the works of British authors under the Berne Convention or otherwise. 

Copyright is not necessarily infringed by making a similar work (see Davies v Wolverhampton Wanderers Football Club (1986) Ltd [2019] EWHC 1252 (Ch) (15 May 2019) which I discussed in Copyright: Davies v Wolverhampton Wanderers Football Club 25 May 2019 NIPC Law). It is infringed by copying or by doing in relation to the work one the other restrictive acts mentioned in s.16 of the Copyright, Designs and Patents Act 1988.  Similarity between two works and may suggest that there has been copying particularly when the author of the later work had the opportunity to see the earlier one but there may be many other reasons for such similarity such as functional exigency or sometimes mere coincidence.

A ballet is likely to consist of lots of copyright works.  There is the score for a start and then possibly the libretto.  Copyright can also subsist in choreography as a dramatic work so long as it is recorded in Benesch or some other notation (see my article Cracking Nuts - Copyright in Choreography 24 Nov 2011 IP Northwest).  The backdrop of the set and the designs of the fabric may well be original artistic works. There is also likely to be design right in the designs of the costumes and perhaps the props and sets. Finally, each and every one of the dancers and musicians has the right not to be filmed, taped or broadcast without consent under Part II of the 1988 Act (see Rights in Performances).

Actors tell each other to "break a leg" when they go on stage.  That is not really appropriate for dancers because they sometimes do.  They wish each other "toi, toi, toi", "chookas" or sometimes even "merde" instead.   Let's wish Ballet Cymru toi, toi, toi at the Riverfront tonight.   Do try to catch them on their tour of Wales if you possibly can.  If you want to discuss this article or copyright in general, call me on 020 7404 5252 during office hours or send me a message through my contact form.