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.

Thursday, 5 December 2019

Welsh IP Cases - Happy Camper Productions Ltd. v BBC

Author Resprinter123
Licence CC BY 3.0 
Source Wikipedia BBC Cymru Wales

Jane Lambert

Chancery Division (HH Judge Keyser QC) Happy Camper Productions Ltd v British Broadcasting Corporation  [2019] EWHC 558 (Ch) (11 Feb  2019)

I am grateful to Mr Iain Connor of Pinsent Masons for bringing this case to my attention in his presentation to the International Copyright Law Conference entitled Key Case Law Update, Critical Developments in  2019 on 3 Dec 2019.

This was an application for an interim injunction to restrain the BBC from broadcasting the first episode of Pitching In.  It was a drama about the owner of a caravan park in North Wales.  The applicant alleged that it infringed copyright in the script for a TV programme (or alternatively a film based on the script) about the owners of a holiday camp in West Wales that had been written by the directors of the claimant production company.  The application was made the day before Pitching In was due to be broadcast.  Cancelling the transmission could have cost the BBC £130,000 in rescheduling costs and a great deal more in reputational damage.

An injunction is an order of the court to do or refrain from doing something.  In Scotland, such an order is known as an interdict.  In the United Kingdom, disobeying an injunction or interdict is a contempt of court which can be punished by a fine or imprisonment.  In Wales and England, an injunction can be awarded after a trial when the parties' rights and obligations have been determined to prevent further infringement of the successful party's rights. That is known as a "final injunction".  But an injunction can also be granted at the beginning of the court proceedings before those rights and obligations have been determined to prevent irreparable harm to one or more parties in the period between the issue of proceedings and the trial of the action.  Injunctions of that kind are known as "interim injunctions."

As the court does not know for sure how an action will end, an applications judge in Wales or England will grant an interim injunction only if he or she is satisfied that the applicant could win and that the respondent could not compensate the applicant adequately by paying damages.  That may be for many reasons.  Possibly the respondent would not have the means to pay any damages.  Alternatively, it may be impossible to assess the full extent of the loss because records might not be kept or evidence would be missing.   There are also some kinds of loss for which no amount of money would be adequate recompense.

If damages will not be an adequate remedy for the applicant, the court will consider the position of the respondent if it grants an injunction and the order turns out not to have been justified. In most cases, the respondent would simply be delayed for the period between the start of the proceedings and their resolution which can be compensated by the applicant.   In nearly every case an applicant will be required to promise to pay damages to the respondent if the injunction turns out not to have been justified.  That promise is known as a "cross-undertaking in damages,"  In those circumstances, the court has to consider whether the applicant could afford to pay such damages if ordered to do so and whether those damages would be adequate compensation for the respondent.  All of those factors were considered by the House of Lords in American Cyanamid Co. v Ethicon Ltd   [1977] FSR 593, [1975] 1 All ER 504, [1975] 2 WLR 316, [1975] UKHL 1, [1975] AC 396.

His Honour Judge Keyser QC, who heard Happy Camper Productions Ltd.'s application against the BBC, referred to that case at paragraph [17] of his judgment (see  Happy Camper Productions Ltd v British Broadcasting Corporation (BBC) [2019] EWHC 558 (Ch) (11 Feb 2019)).  He said:
"The test to be applied is accordingly the familiar test in American Cyanamid Co (No 1) v Ethicon Ltd [1975] AC 396. In very broad terms, the purpose of the exercise, without adjudicating on the case, is to seek to ensure that if one makes a mistake it is the least bad mistake one can make, in this sense: one is concerned with the question, Is it worse to have granted an injunction on an interim basis if ultimately it should be found that there is no entitlement to an injunction, or to have refused an injunction if ultimately it should be found that there is an entitlement to an injunction? That is the broad idea behind the test."
His Honour appears to have concluded that the "least bad mistake" would be to refuse Happy Camper Production's request for an interim injunction and his reasons were as follows.

First, he had serious doubts as to whether the claimant could win.  The production company was formed after the script for the claimant's show had been written which meant that the authors did not write it in the course of their employment and there was no evidence that any copyrights had been assigned to it.  More seriously there was not much evidence of copying.  The producer of the BBC's programme had been given a copy of the claimant's script but there was little evidence that she had actually read it. There was even less that she, the BBC or its programme makers had copied it.  The setting of both works in a caravan park in Wales was the main common feature but the plots and characters were very different.  Moreover, although the learned judge did not mention these cases, it is not easy to protect the format of a TV show (see  Green v Broadcasting Corporation of New Zealand [1989] UKPC 26 (18 July 1989), Fraser v Thames Television [1984] QB 44 and Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd and another [2017] EWHC 2600 (Ch) (19 Oct 2017)).

Secondly, Judge Keyser thought that the claimant could be compensated adequately by an award of damages were its directors to prevail. Those authors had submitted their manuscript to the BBC in the hope of licensing it.  Am award of damages could be based on the licence fee that would have been negotiated by the parties had the script been accepted.

Thirdly, pulling the programme the day before its first transmission of Pitching In would have been very damaging to the BBC and there was a serious question mark as to whether the claimant could even meet the immediate cost of rescheduling its programmes.  Injunctions are an equitable remedy and there is a maxim that delay defeats equity.  The claimant knew about the corporation's plans to broadcast Pitching In for 6 months but had held back until the very last moment before launching this application. As the judge remarked, that was "dreadfully late".

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

Saturday, 30 November 2019

IP Database Searches and Understanding Specifications

I should like to thank Emily Roberts and her colleagues at M-SParc (the Menai Science Park) for organizing an excellent seminar yesterday. We had so many attendees that we had to move to a bigger conference room.  It was particularly good to see graduate students and undergraduates from Bangor Law School in the audience. After the talk, I held a pro bono clinic with representatives of 5 local companies.  We have laid the foundations for a very successful support network for the new knowledge-based enterprises located in the science park and elsewhere in Northwest Wales.

In yesterday's presentation, I discussed the reasons for searching IP databases. Obviously, if you want to register a patent or design you need to know the prior art.  Similarly, if you want to register a trade mark, you need to be aware of the same or similar signs for the same or similar goods or services. However, that is not the only or possibly even the main reason for searching patent, design or trade mark databases. There is an enormous volume of technical and commercial information in those records and it is available to anyone with access to the internet absolutely free.

I introduced my audience to three patent databases that I use frequently:
  • The IPO's Ipsum service if you want lots of information about the prosecution of a patent application which is not available anywhere else;
  • Espacenet which is very easy to search; and
  • Google Patents which has records from many patent offices all in one place.
After regaling the attendees with stories of Arthur Pedrick and his wacky inventions (something they really ought to teach in law school) we looked up Ginger's cat flap (GB1426698) and its wider embodiments and the cart before the horse (GB1128974A). For trade marks, we explored the IPO's service looking up the UK's first registration, namely the Bass triangle for pale ale. For designs, I recommended DesignView.

I pointed out that searches that business people and students can make are nothing like as extensive as searches carried out by attorneys and specialist search services and anybody seeking patent, design or trade mark registration should not dispense with their professional services.

We then discussed the elements of a patent specification, namely the abstract, description, drawings and claims and I stressed the importance of claims.  I introduced the audience to the Protocol on art 69 EPC and we considered the consequences of the new art 2.  I mentioned the Supreme Court's judgment in Eli Lilly v Actavis and we considered the three reformulated Improver questions by reference to whether the substitution of a carrot hanging from a string in front of the horse's nose was an equivalent to the food tray would fall within claim 1 in the cart before the horse invention.

After I finished my clinic I drove across the Britannia Bridge to Bangor to attend a splendid triple bill by Ballet Cymru at the Pontio Centre.  Members of the company had introduced ballet to the students of a local primary school who presented an impressive curtain-raiser in the theatre's foyer.  Alex Hallas, who tutored the children, told me that many including several boys had been inspired to take up ballet seriously.  Throughout my life, I have found ballet to be an excellent mental as well as physical exercise. Probably I could not do my job well without it.

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

Thursday, 28 November 2019

Patent, Design and Trade Mark Filings in Wales

GB189420431 (A)

Jane Lambert

Wales can claim to have invented one of the world's first flying machines years before the Wright Brothers.  Wiliam Frost of Saundersfoot filed an application for a patent for the following invention on 25 Oct 1894:
"The flying machine is propelled into the air by two reversible fans revolving horizontally. When sufficient height is gained, wings are spread and tilted by, means of a lever, causing the machine to float onward and downward. When low enough the lever is reversed causing it to rise upward & onward. When required to stop it the wings are tilted so as to hold against the wind or air and lowered by the reversible fans. The steering is done by a helm. fitted to front of machine."
Nowadays, aerospace is an important sector of the Welsh economy - one of several that are developing impressive new products and processes that require legal protection.

According to the Intellectual Property Office's Facts and Figures 2018, some 351 patent applications were filed from Wales in 2018 which was 2.7% of the UK total placing Wales 10th in the UK's nations and regions behind London with 2,625, Southeast England (1,944), Eastern England (1,811), Southwest England (1,312), the West Midlands (977), Northwest England (956), Scotland (756), Yorkshire and the Humber (693) and the East Midlands (486). However, Wales was ahead of Northeast England (279) and Northern Ireland (143).  That was 8% fewer than the number of applications made the previous year which was more than the UK trend that was down from 13,286 to 12,843. On the other hand, Wales bucked the trend in the number of grants which was 114 in 2018 - up from 109 in 2017.  The number of grants for the UK was 3,001 in 2018 down from 3,260 the year before.

There was an increase in the number of trade mark registration applications from Wales (1,809 in 2018 up from 1,700 in 2017) which was in line with the UK as a whole (66,875 in 2018 and 63,097 in 2017).  As in patents, Wales trailed all other nations and regions except Northeast England and Northern Ireland in trade mark applications.  There was also an increase in the number of grants to applicants in Wales (from 2,274 in 2017 to 3,159 in 2018) in line the rest of the UK (113,334 in 2017 to 122,165 in 2018).

Wales was ahead of the East Midlands, Northeast England, Northern Ireland and Scotland in the number of design registration applications in 2018 (1,965 in 2018 compared to 634 in 2017). That was also roughly in line with the UK as a whole which made 14,797 applications in 2017 and 20,984 in 2018.  There was also a similar increase in the number of grants up from 541 in 2017 to 939 in 2018.

Tomorrow I shall be speaking to Welsh entrepreneurs, inventors and creatives at the Menai Science Park (M-SParc) about patent, trade mark and design searches and how to read patents between 13:30 and 14:30.  We have had such a brig response that we have had to move the meeting from the boardroom to the training room but I am sure we could still take in a few more.  This link will take you to the Eventbrite page where you can register for the talk.

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

Saturday, 2 November 2019

How to use Patent, Trade Mark and Registered Design Databases

Standard youtube Licence 

Jane Lambert

On Friday 29 Nov 2019 I shall give a free class on how to search for patents, trade marks and registered designs and how to use the information that may be uncovered.  It will take place at the Menai Science Park (M-SParc) at Gaerwen on Anglesey between 13:30 and 14:30. Possibly this will be one of the most useful talks that you ever attend.

The patent, trade mark and design databases kept by the world's intellectual property offices contain a massive volume of technical, scientific and commercial information which is free to use for just about anyone, anywhere in the world.  All you need to know is where to look and how to use the information that you find.

As you know, patents are granted for inventions that are new and involve an inventive step.  Similarly, designs can be registered if they are new and have individual character.  Finally, signs can be registered as trade marks if they can distinguish one business's goods or services from those of all others.  Patent, trade mark and registered design prosecution is not cheap.  You can save yourself lots of money, time and grief by checking what has already been registered before you apply to register an intellectual property right that is either refused or taken away after it has been granted.

But that is not the only reason why folk search patent and other IP databases.  Because an applicant for a patent has to disclose his or her invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art every specification is in effect an instruction manual. Every patent database is in a massive library of scientific and technical literature.  Of course,, patent specifications have to follow certain formalities.  I shall show you how to read the specifications so that you can unlock and use the information.

Even if you have no plans for patenting an invention knowing how to search a patent or other IP rights database can still be useful.  The registers can tell you a lot about the business of a competitor, supplier or customer.  The classes for which a company has registered a trade mark will indicate the business that it hopes to develop in the next few years.  The designs register may even indicate what its new products will look like so you can take steps to take advantage of any opportunities that may be created or counter challenges that be laid.

While I cannot make you experts within an hour I can at least tell you where you can get further assistance either free of charge of for a  modest additional fee. These include the Business and IP Centres that partner the British Library in London and the Intellectual Property Office in Newport and the Patent Information Units around the country.

As I shall be making online searches you may want to bring your own laptop, tablet, smartphone or other devices to the event.  Free wifi is available at the science park so you will be able to follow what I do online.

If you want to attend, you need only click this Eventbrite link to register.  Should you want to find out more you can call me on 020 7404 5252 during office hours or send me a message through my contact form.

Wednesday, 9 October 2019

Intellectual Property Transactions

Jane Lambert

Whenever I give a talk at M-SParc I hold an informal clinic afterwards.  Many of the questions that I am asked concern ownership of intellectual property rights. Indeed, the title of the talk that Emily Roberts chose for our last session on 20 Sept 2019 was "Your ideas, your work, your rights. What do you really own?"

The starting point is to determine who is the first owner of the intellectual property rights and that is usually set out in the legislation that creates the IP right. So, s.11 (1) of the Copyright Designs and Patents Act 1988 provides that the author of a work is the first owner of any copyright in it and s.7 (2) (a) of the Patents Act 1977 provides that a patent for an invention may be granted primarily to the inventor or joint inventors.  However, there are exceptions such as where the author or inventor creates his copyright work or invention in the course of his employment. In that case, the employer owns the copyright or acquires the right to apply for a patent unless the employer and employee agree otherwise.

Problems sometimes arise when a customer commissions work that results in a patentable invention or another intellectual property right.  At first blush, the consultant or other person who did the work that resulted in the invention or other intellectual asset is entitled to the right, but is that fair?  What about the person who funded and directed the work?  It is his business and it is he rather than the consultant who needs the right to stop third parties from exploiting the asset.  The common law can sometimes help by recognizing the person who commissioned, directed and paid for the work as the beneficial or equitable owner of that work even if the legal owner is the person who carried it out.  But the best solution is a written n agreement before any work is done as to who is to own any copyright, right to apply for a patent or other IP right that may arise.

If that has not been done the business owner could ask the person who did the work for him to assign the IP right to him. There is usually no reason why that person should refuse to do so.  He is a graphic designer, product development consultant or some other intermediary.  If the work that he did for his client is pirated he can't show any loss.  The client, on the other hand, can but he can't sue unless he has the IP right. The intermediary might want to use techniques, ideas or even some of the matter that he created in future commissions but provision can be made for that in a licence back.

A simple assignment will be a one-page document in which the work, rights and territory are identified, the IP rights are assigned usually in exchange for a token consideration of say £1.  The assignor will normally assign with full title guarantee and he may promise to execute further documents at the assignee's expense to give effect to the transfer of ownership.  Any licences back or other provisions of the transaction can be added to the instrument.

An assignment can be compared to the conveyance of a parcel of land in that it is an outright transfer of ownership but it is not the only type of transaction that can be carried out with regard to intellectual property. Folk can be permitted to exploit an intellectual asset without actually owning it.  Rights to use such assets are known as "licences".  These fall into three categories:
  • exclusive licences
  • sole licences, and 
  • non-exclusive licences.
If an assignment is like a conveyance, then an exclusive licence is similar to a lease in that the licensee is the only person entitled to use the asset.  He can even stop the licensor.  Because he is the only person who can use the asset he has the right to sue infringers.  Non-exclusive licensees are simply permitted to use the asset and have no rights in it.  A typical example of a non-exclusive licence with which almost everyone is familiar is the right to load and run software.  A sole licence can best be regarded as a non-exclusive licence where there is only one licensee.  Care has to be taken when considering sole licences because in the United States it appears to be possible to be a "sole and exclusive licensee".  That is not possible in Wales or England or indeed any other part of the UK. Here you can be a sole licensee or an exclusive licensee but not both.

There are lots of other transactions in relation to IP that the law recognizes but it is not possible to consider them all right now. For the moment it is enough to know that a copyright, patent or other IP right can be bequeathed or given away,  that it can be realized to pay creditors if the right owner becomes insolvent and that it can be mortgaged just like any other property right.

Anybody wishing to discuss this article or transactions in IP generally may call me on 020 7404 5252 during office hours or send me a message through my contact form,

Thursday, 3 October 2019

Glyndwr University

Author Isobel Smith 

Jane Lambert

On Monday I addressed the Innovation and Sustainability – Packaging & Waste workshop at Wrexham Glyndŵr University. The event was arranged by the University, the North Wales Knowledge Transfer Project, and Horticulture Wales to launch Beacon Biorefining's services to businesses in Northeast Wales. The other speakers were Selwyn Owen and Rob Elias of Beacon and Mark Shaw of Parkside Flexibles.

This was the fourth time that I had worked with Beacon.  The other occasions were at Ty Menai near Bangor in January (see IP for the Welsh Food and Packaging Industries 30 Jan 2019 NIPV News) and at Aberystwyth in March and June (see "From Plants to Bio-Based Products" Motivation and Mutual Learning Workshop in Aberystwyth 24 June 2019).  As on previous occasions, I discussed the intellectual property aspects of protecting investment in innovation in packaging and preventing food waste. The slides from my presentation can be downloaded here.

It was, however, the first time that I had worked with the University.   According to its website, Wrexham Glyndwr offers a range of graduate, undergraduate and other courses. It has its own radio station, Calon FM, an innovation centre at St Asaph and the Techniquest Interactive Science Discovery Centre. During refreshment breaks and over lunch I met a number of faculty members and students and explored the possibility of building up networks with Denbighshire similar to the ones we have begun to establish on Anglesey and at Aberystwyth.

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