Friday, 27 January 2023

World Intellectual Property Day 2023

Author WIPO Licence CC Attribution 3.0 IGO

 







Jane Lambert

World Intellectual Property Day is an annual, international festival of creativity and innovation that takes place on or around 26 April to celebrate the anniversary of the coming into force of the treaty that established the World Intellectual Property Organization ("WIPO"), the UN agency for intellectual property.   Each year the celebrations focus on a different theme.  This year's theme is "Women and IP: Accelerating Innovation and Creativity."

The Menai Science Park ("M-SParc") at Gaerwen on Anglesey has celebrated every World IP Day since 2019 with a lunchtime seminar.  These have been Wales's main contribution to the worldwide celebrations.  They have raised awareness of the importance of intellectual property to the businesses and general public in Northwest Wales but also the rapidly growing importance of the region to the Welsh and wider UK economies.   

Nothing underscores the region's importance more than the opening of Aria Film Studios near Llangefni which I shall discuss in a separate article shortly.  Those studios have stimulated demand for creatives and technicians of all kinds prompting imaginative responses from local and national recruitment and training providers.  

It is with those developments in mind that M-SParc has begun to plan this year's World IP Day celebrations.  As in previous years, the project will be led by Emily Roberts with the assistance of Charlie Jones.   The centrepiece will be a hybrid in-person and online seminar for which we hope to use the Haia platform.  The main speakers will be women inventors and creatives from M-SParc's tenant companies plus at least one IP professional.   As we have a little more time to plan this year we hope to encourage some of the organizations based at M-SParc and in the region to stage their own celebrations. 

Anyone wishing to discuss this article is welcome to call me at +44 (0)20 7404 5252 during office hours or send me a message through my contact form at any other time. 

Monday, 19 December 2022

New Year, New Beginnings

Fireworks at Midnight on New Year's Day
Author Clarence Ji Licence CC BY 2.0  Source Wikimedia Commons

 

















The New Year is an opportunity for the formation of new businesses, the launch of new products and services, the opening of new business premises and all sorts of other new business initiatives.   There will be a business plan for most of those initiatives but many of those business plans will lack an important component.

That missing component will be intellectual property and the reason why it is important is that it protects your investment in branding, design, technology and creativity.  Without such protection, it will be so much easier for competitors who have not spent time and money on research, development or marketing to filch your business.

The way to prevent that from happening is to identify the advantages that attract customers to your business. It may be your reputation in the marketplace, the look of your products or the way they work or are made.  You may need an IP audit to identify those advantages (see How to use an IP Audit 19 Jan 2022 NIPC News).  Once you have identified what attracts customers to your business you must choose the optimum protection.   That is not necessarily the most expensive.  A patent will give you extensive protection for up to 20 years but if the invention is likely to become obsolete in a year or two you may prefer to rely on trade secrecy or unregistered design right.

Whatever intellectual property right you choose to protect your asset you must be prepared to pursue infringers and defend challenges to your rights. Infringement, invalidity and revocation proceedings take place in the High Court.   Unless the claim is for £10,000 or less and does not involve patents, registered designs, semiconductor topographies or plant varieties it must be brought in the Intellectual Property Enterprise Court where recoverable costs are limited to £80,000 or the Patents Court or Intellectual Property list where such costs are unlimited.   The only way that most small businesses can afford such costs is by taking our specialist IP insurance (see the IPO's Guidance on IP Insurance on the government website).

Unless you are confident that you can raise several hundred thousand pounds at short notice, IP insurance is not a nice-to-have extra but as much a necessity as your staff, plant and premises.   Just as you make provision for recruitment, rent and equipment leases or acquisition in your business plan you must do the same for your IP rights and their legal protection and enforcement.   In an extreme case, failure to do so could threaten the existence of your company.

If you are about to undertake a new venture in the New Year I wish you every success.  If you have questions or concerns feel free to contact me at 020 7404 5252 during normal business hours.  Alternatively, you can send me a message through my contact form at any time. 

Wednesday, 16 November 2022

Wales Enterprise Day 2022: Intellectual Property Rights outside the UK


 







Jane Lambert

Wales Enterprise Day celebrates business expansion.  Last year's theme was start-ups becoming scale-ups.  This year's is about obtaining and enforcing intellectual property rights abroad.  Businesses that export, license, manufacture or market their goods and services abroad need to make sure that their brands, designs, technology and creativity are protected outside the United Kingdom and that they have the means to enforce such protection in foreign courts and tribunals.

I discussed those topics in Protecting Intellectual Assets Abroad on 6 Oct 2022 in IP after Brexit and in Protecting your Brands, Designs and Technology Abroad on 21 Oct 2022 in this publication. Essentially a business should seek legal protection for those assets in its markets and in the jurisdictions in which its actual or potential competitors are to be found.  That is where a lot of mistakes are made and money is wasted.   For instance, many SMEs arrange for their product to be manufactured in China or some other country for distribution in the UK without first obtaining industrial design, patent or trade mark protection in that country, They then wonder why lookalikes flood their export and sometimes even their home markets.

To help businesses to avoid those mistakes I shall chair a hybrid in-person and online seminar on Protecting your Brands, Designs, Technology and Creativity at the Menai Science Park (M-SParc) on 18 November 2022 between 12:15 and 14:00.   To protect those assets businesses need to put the following arrangements into place:

  • Legal protection in the form of patents, copyrights, trade marks, registered designs and other intellectual property rights in each of their foreign markets and the countries where their competitors are to be found;
  • Local teams of lawyers and patent and trade mark attorneys to enforce such protection; and
  • Adequate funding for enforcing such protection.
M-SParc has gathered experts in each of those fields to speak on those topics.

The most important markets are the European Union, the United States and China.  Sean Thomas of Thomas Harrison IP will explain how to apply for patents whether directly or through the European Patent Convention or the Patent Cooperation Treaty.   He will discuss trade mark registration through the Madrid Protocol and design registrations through the Hague Agreement.  He will address such issues as how much a typical application will cost and how long it will take.  He has a lot of experience in registering and enforcing IP rights in China and the United States and will pass on some valuable tips.

When the UK was in the EU, the judgments of its courts could be enforced throughout the Union, EU trade marks and registered Community designs applied to the UK and they did to the other member states and London was to host one of the Central Divisions of the Unified Patent Court.  All that ended at 23:00 on 31 Dec 2020 when the implementation period provided by the EU withdrawal agreement expired.  Businesses in the UK that hold EU trade marks, registered Community designs or unitary patents have to bring proceedings in an EU member state.

Happily, a short ferry trip from Hollyhead lies an English-speaking common-law country that remains within the European Union,  Its courts can try EU trade mark, registered Community design and plant variety disputes.  Its counsel and solicitors can appear before the Unified Patent Court.  The Brussels Regulation continues to apply to the Irish Republic.

I have asked my friend and colleague James Bridgeman SC to speak on how the Irish legal profession can help UK businesses enforce their intellectual property rights.  James holds an appointment that is equivalent to King's Counsel in the United Kingdom.  He appeared in one of the leading cases on rights in performances before the Court of Justice of the European Union.  Before he was called to the Bar he practised as a trade mark attorney.   As a Past-President of the Chartered Institute of Arbitrators, he can suggest strategies in which the rights of British businesses can be enforced through international arbitration.

International IP litigation does not come cheap but, fortunately, it is possible to obtain insurance against such expenses.   M-SParc will welcome back Ian Wishart a director of Sybaris Special Risks whose company specializes in IP insurance. He has already spoken at M-SParc on litigation insurance for the UK.   On Friday he will discuss policies for the EU, USA, China and elsewhere,  In countries such as the USA where contingency fees are possible litigation funding is an alternative to IP insurance.   Sybaris talks to investors in litigation funding.  If there is time, Ian will say a few words about that market,

This will be a fascinating session.   Readers can register through this link.  Anyone wishing to discuss this topic can call me on 020 7404 5252 during office hours or send me a message through my contact page.

Friday, 11 November 2022

North Wales Creative meets Creative Wales

 
Author Tanya Dedyukhina Licence  CC BY 3.0  Source Wikimedia Commons

 


















On 9 Nov 2022, I attended a meeting of Creative North Wales (Gogledd Creadigol) at the Galeri arts centre in Caernarfon.  That was not my first encounter with Creative North Wales.  I wrote about them in Gogledd Creadigol on 11 May 2021 after I had given a talk to their members on Copyright Licensing and Information and Communications Technology on 21 April 2021 (see Jane Lambert Copyright Licensing and Information and Communications Technology 13 April 2021).

The evening began with an introduction to the executive and prominent members and a review of their recent activities.  One of those was a webinar entitled Powering up the Video Games Industry which took place just before my talk.  The keynote speaker at that webinar was Dr Davd Banner MBE who is founder and CEO of Wales Interactive.  David attended Wednesday's meeting and I was delighted to meet him in the flesh. He told me that he had been in the games industry since the 1990s and we remarked on the growth of the industry over the years.

David is also a non-executive board member of Creative Wales (Cymru Creadigol) and the purpose of the meeting was to introduce that organization and its leaders to stakeholders in the creative industries in Northwest Wales.  Gerwyn Evans, deputy director of Creative Wales delivered a short presentation on its work.  He began by stating that Creative Wales had a narrower remit than the Department for Digital, Culture, Media and Sport in that it did not cover such fields as architecture.  It occurred to me as he said those words that the United Kingdom equivalent to Creative Wales was the Creative Industries Council ("CIC") which is chaired by the Secretary of State for Digital, Culture, Media and Sport.  Architecture is indeed within the CIC's remit as well as advertising,, arts and culture and fashion which are outside Creative Wales's.

Creative Wales does, however, cover a lot:
  • film and television
  • music
  • games
  • animation
  • createch
  • R & D, and
  • publishing.
The deputy director mentioned each of those sectors in turn and discussed its importance to the Welsh economy and the support that it received from Creative Wales.

A surprising omission in view of the importance of such composers as Catrin Finch and Jack White, dance companies like Ballet Cymru and the National Dance Company of Wales and the National Eisteddfod is the exclusion of the performing arts.   According to Creative Wales's website:
"Fine art, dance, theatre and poetry fall outside of our remit. Don’t worry, they’re not forgotten. Other organisations, such as the Arts Council of Wales take care of these essential and thriving areas of creativity."

Other parts of the UK also have an Arts Council but the arts in those other nations and regions are still represented on the CIC. 

As an intellectual property specialist, I am particularly interested in the digital industries and I was fortunate to meet Paul Osbaldeston, the digital lead sector development manager.   Our meeting was brief but it is good to put a face to a name should we come into contact again.

Finally, I was delighted to see a strong representation from the Menai Science Park which included its managing director, Pryderi ap Rhisiart,. its outreach and community manager  Emily Roberts who has recently visited the Massachusetts Institute of Technology and Tanya Jones who kindly invited me to the event.  The science park and North Wales Creative complement each other in that the park catalyses business opportunities while the cultural industries feed the mind and soul.   Both are essential to making this region of Wales one of the most attractive places anywhere in which to work and live.

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

Friday, 21 October 2022

Protecting your Brands, Designs and Technology Abroad

Photo Jeremy Segrott Licence CC BY 2,0 Source Wikimedia Commons

 
















According to Business Wales, International Trade Week takes place between 31 Oct and 4 Nov 2022.  The Welsh Government has published an Export page which provides advice and guidance on exports and overseas investments.  One of its recent articles is Protecting your UK Intellectual Abroad which it published on 16 Sept 2022.

That article advises:
"To protect your intellectual property outside of the UK, you usually need to apply in each country you want protection in."

Although the author has confused intellectual property with intellectual assets this is good advice.  As the article also says, intellectual property rights are territorial and if you want to protect your brands, designs, technology or works of art or literature outside the United Kingdon you probably need to apply for a trade mark, registered design or patent in the countries or territories in which you seek protection.  Works of art and literature and the performances of actors. dancers, musicians and singers and other performing artists are slightly different since copyrights and rights in performances arise automatically in each of the countries that belong to the Berne and Rome Conventions.  

In Protecting Intellectual Assets Abroad (6 Oct 2022 IP after Brexit)  I explained that trade marks, design registrations and patents could be obtained singly by separate applications to each national or regional intellectual property office or collectively from a single filing under the Madrid ProtocolHague Agreement or Patent Cooperation Treaty.   Applications for patents under the PCT proceed in two phases.  As novelty, inventiveness, and utility are required by all countries' patent laws applications are examined centrally for those requirements.  If an invention passes that first stage it proceeds to national intellectual property offices which consider whether it complies with their local laws.  Equivalent procedures take place for designs under Hague and marks under Madrid.

Intellectual asset owners should beware that overseas protection can be very pricey.   In addition to the prosecution fees in each nation or regional office, registrations have to be renewed every so often.  In some countries, patent renewal fees will actually increase as the patent ages.  The validity of your patent, trade mark or design registration can be challenged in the courts or intellectual property offices of the countries in which you seek protection.   If anyone infringes your intellectual property right, you usually have to go to court to enforce it.  Defending invalidity or revocation claims or pursuing infringers can be very expensive, particularly in common law countries like Australia. Canada, Hong Kong, India, the Irish Republic, New Zealand, South Africa or the USA.  Unless your company is very well established you will probably benefit from taking out before-the-event insurance.

How do you decide where to protect your intellectual assets?   Generally, it should be where you have a market or a competitor.   If your company is big enough to export or invest abroad it has probably developed an intellectual property strategy which is integrated into its business plan.  If not, identify the asset that needs legal protection in the country concerned and seek the appropriate protection.

The Menai Science Park will hold a hybrid in-person and online seminar on IP protection overseas on 18 Nov 2022 at which expert patent attorneys,  specialist IP insurance brokers and lawyers from Ireland, India and Argentina will discuss those topics.  The science park expects an international audience for that event.  That is just one of many services that M-SParc offers to businesses in Northwest Wales that want to export or invest abroad.  We can introduce you to the UK's IP attaches abroad, the British Library's Business and IP Centre and its regional partners as well as many other resources.

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

Monday, 10 October 2022

Welsh Vodka Litigation- AU Vodka v NE10 Vodka













Jane Lambert

Chancery Division (Mr Justice Mellor) AU Vodka Ltd v NE10 Vodka Ltd and another [2022] EWHC 2371 (Ch) (21 Sept 2022)

Whisky Galore is the title of a novel by Sir Compton Mackenzie about the shipwreck of a cargo vessel off the Hebrides in the Second World War. The ship had been carrying whisky and the story is about a battle of wits between islanders who had salvaged the freight and hidden and the authorities who were doing their best to stop them.  I was reminded of that novel by the passing-off action that AU Vodka Ltd has brought against NE10 Vodka Ltd.

AU distils and distributes the vodka in the gold bottle and NE10 the vodka in the metallic blue.  Both companies are incorporated in Wales and carry on business in Swansea.  The action has been brought in the Intellectual Property List of the Chancery Division in London even though it could have been brought in the Business and Property Courts of Wales in Cardiff or the Intellectual Property Enterprise Court.

The first round of the proceedings was an application for an interim injunction to restrain NT10 from marketing and selling its products until judgment or further order.   It was heard by Mr Justice Mellor who delivered judgment in AU Vodka Ltd v NE10 Vodka Ltd and another [2022] EWHC 2371 (Ch) on 21 Sept 2022. The judge dismissed the application because he found that there would be a  greater risk of injustice to NE10 were he to grant the order than there would be to AU in refusing it.  I analysed his judgment in Passing-off: AU Vodka v NW10 Vodka in NIPC Law on 9 Oct 2022.

The next stage of the litigation will be a trial which the judge directed to take place in January,  In that hearing the court will consider the substantial issues.  The judge did not have to consider the merits of the case for the interim injunction application.  All he had to do was decide whether AU could win.   Mr Justice Mellor said at para [80] of his judgment that there was "a serious issue to be tried" but the case was "finely balanced."

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

Wednesday, 28 September 2022

Nesta Cymru


 







Jane Lambert

Nesta stands for National Endowment for Science, Technology and the Arts.  It was established by s,18 of the National Lotteries Act 1998 to administer funds raised by the lottery.  In 2012 its assets were transferred to a charity which has carried out the Endowment's functions ever since (see National Endowment for Science, Technology and the Arts is now independent of the UK government on the UK government website). Nesta describes itself as "The UK's innovation agency for social good."

Yesterday Nesta published its first issue of Nesta Cymru, a newsletter on the charity's events, research and projects in Wales,  It discussed healthy school meals, access to healthy food for adults to combat obesity, Nesta's submission to the Senedd on decarbonizing the private housing sector, access to green finance to upgrade homes, Nesta's partnership with Flintshire County Council to use early years data to support families,  Helen Wales's article on Graham Donaldson, Laura James's article Embracing insurgency: why local authorities need to be ready to fail and an interview with Dr Jan Rosenow, Principal and Director of European Programmes, Regulatory Assistance Project.

Nesta Cymru indicates Nesta's collaboration with the Welsh government, Cardiff University, the Wales Council for Voluntary Action and the Arts Council of Wales to fund programmes, produce research and design and test new ideas in its mission areas.  Nesta notes that devolution enables Wales to experiment and try new ideas for social good, finding places where devolution allows it to go further and faster in achieving its aims.  It has already set up Arloesiadur: an innovation dashboard for Wales and Y Lab, a public services innovation lab for Wales with Cardiff University and has supported several arts projects in Wales.

Anyone wishing to discuss this article may call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact page.