Thursday, 2 July 2020

Understanding Intellectual Property


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Jane Lambert

On Tuesday 30 June 2020 I gave a talk over Zoom for the Menai Science Park Enterprise Hub entitled Understanding Intellectual Property.  I spoke for just over 30 minutes and then answered questions from the audience. I made 42 slides which Emily Roberts distributed to attendees after my talk.  I have also uploaded them to Slideshare. As there is a limit to what a person who did not attend the talk can learn from a set of slides, I have summarized my talk in this article.

Intellectual property is the collective term for the bundle of laws that protect investment in branding, design, technology and creativity.  Examples of those laws include patents for inventions and copyright for architecture, drawings, films, novels, plays and sound recordings.  They reflect a bargain that the public makes with those engaged in creating and disseminating new products and services.  In exchange for sharing their creativity and innovation with the public, the public grants them monopolies or exclusive rights that offer them opportunities to recoup their investment and perhaps a little bit more.

Those monopolies and exclusive rights can be very valuable,  As the Intellectual Property Office explains in its animation IP BASICS: Is Intellectual Property important to my business?. they can be used to exploit a competitve advantage.  They can also make money even when their owner is not making or selling anything because they may be licensed for periodic payments known as "royalties" or assigned for one-off payments.

On the other hand, as the animation also explains, intellectual property can be an existential threat to a business.  That is because the remedies and penalties for intellectual property infringement are draconian.  Another reason to take account of intellectual property.

There are often different ways of protecting an intellectual asset.  For instance, the inventor of a new product may tell the world how to make or use his or her invention in return for a patent.  Alternatively, he or she may keep it under wraps and require his or her employees to keep it secret. Not a bad option for a product that cannot easily be reverse-engineered such as a beverage.  That is how Coca Cola has kept its recipe secret since the end of the 19th century and the monks of Chartreuse the recipe for their liqueur for centuries,  But a drug company with a new medicine in competition with other major pharmaceutical companies around the world will probably want a patent in each of its main markets.

Some intellectual property rights such as copyrights, design rights, rights in performances and actions for breach of confidence and passing off come into being automatically and cost nothing to obtain. Others such as patents, trade marks or registered designs have to be registered with the Intellectual Property Office in Newport or a foreign intellectual property office for protection overseas.

When applying for a patent it is a good idea to instruct a patent attorney. They can make the necessary searches and draft the application in such a way as to maximize protection but minimize the risk of a challenge to the patent's validity.  The Chartered Institute of Patent Attorneys has produced a very good video entitled Why do I need a Patent Attorney? which shows how patent attorneys work.  Many patent attorneys are also trade mark attorneys or work in partnership with trade mark attorneys.  If a business owner wants to register a trade mark or design he or she would be well advised to consider a trade mark attorney, The Chartered Institute of Trade Mark Attorneys publishes a useful video on trade mark attorneys entitled How to navigate Intellectual Property Law.

I am often asked how much it costs to register a patent, trade mark or registered design.  The answer depends on how much work the attorney has to do.  There are also office fees and sometimes other costs such as translations or disbursements for other professionals such as barristers.   Typically, a patent for the UK can cost anything up to £5,000 or even more if there are objections and hearings.  Research published by the European Patent Office some years ago calculated that a 10 page patent with drawings for France, Germany, Italy, the Netherlands, Sweden and the UK renewed for up to 10 years could cost €30,000.  A patent covering all those countries plus China, India, Japan, South Korea and the USA could easily amount to £100,000.  Trade marks and registered designs are a lot cheaper.  Well under £1,000 for a UK trade mark including searches, drafting a specification and correspondence with the examiner or third parties and even less for a design registration as there is no substantive examination.

Although some IP infringements are criminal offences, primary responsibility for enforcing IP rights lies with the IP owner.   In Wales and England actions for IP infringement have to be brought in the Intellectual Property List of the Business and Property Courts of England and Wales.   Claims for damages for patent or registered design infringement exceeding £500,000 are brought in the Patents Court which sits in the Rolls Building in London. Claims for infringements of other IP rights have to be brought in the Chancery Division of the High Court or a County Court hearing centre where there is also a Chancery district registry.  The costs of litigating in Patents Court or the Chancery Division can be massive.  Assessments of over £1 million are not uncommon.  Claims under £500,000 can be brought in the Intellectual Property Enterprise Court where recoverable costs are limited to £50,000.  There is a small claims track for claims under £10,000 where the recoverable costs are limited to a few hundred pounds.  The Intellectual Property Office offers a cost-effective mediation service and examiners' opinions on patent validity and infringement disputes.   Both the World Intellectual Property Organization and Nominet provide a cost-effective service for resolving domain name disputes.

Intellectual property claims are often excluded from legal liability insurance policies but there are a few brokers who specialize in IP insurance.   Ian Wishart of Sybaris Special Risks gave a talk on the cover that are available for start-ups and SMEs when he visited M-SParc last September. Other sources of funding are members of the Association of Litigation Funders.  In the USA and some other countries, it is possible to instruct lawyers on the understanding that they will be paid only if their client wins and that their fee will be a share of any damages that may be awarded.

The following websites provide further information on intellectual property the last two of which are my own:


Name
URL
Intellectual Property Office
European Patent Office
https://www.epo.org/
European Union
Intellectual Property Office
World Intellectual
Property Organization
British Library Business and
Intellectual Property Centre
NIPC
NIPC Wales

There is a network of Business and Intellectual Property Centres based which offer a wide range of services and resources onsite and online. The largest of those centres is at the British Library in London. The British Library Business & IP Centre video provides a good introduction to the Centre's services.  Anyone can join its Linkedin and Facebook groups and subscribe to its mailing lists but it is necessary to obtain a British Library reader's ticket to use its onsite services. The nearest Business and IP Centre to Anglesey is Liverpool Central Library and its services are described in the Business and IP Centre Liverpool video.

I finished by mentioning that the Menai Science Park is gathering the following network of professional advisors who can advise and assist its tenants and other businesses and creative or innovative individuals in Northwest Wales:


Profession
Name
Barrister
Commercial Solicitor
Innovation Consultant
IP Tax Specialist
IP Specialist Solicitor 
Patent Attorney


The first question I was asked after my talk was how to protect computer programs.  I replied that copyright was the main way of preventing copying of the code itself and perhaps also features of a program such as its system, sequence and organization. Secret information relating to the design and development of the program such as comments in the source code might be protected from unauthorized use or disclosure by the law of confidence or under the Trade Secrets Directive.  Although computer programs are not patentable as such it is sometimes possible to obtain a patent for a software-implemented invention.

The next question was on how to protect a new travel service.  I explained that services were the most difficult type of innovation to protect. A service provider could register his or her brand as a trade mark and copyright prevented copying of manuals, advertisements and other literature.  Business information such as customers' names and addresses might be protected by the law of confidence and the Trade Secrets Directive.  However, the basic idea of the service could not be monopolized.  Anyone could offer a competing service so long as they did not lead the public to believe that their services were the same as the original service provider's.

My third question was whether copyright prevented copying of products.   I replied that copyright was once an indirect way of protecting new product designs but that had been abolished by the Copyright Designs and Patents Act 1988.  Original designs - that is to say the shape and configuration of articles - are now protected by a new IP right called unregistered design right.  The term of protection was much shorter: 15 years if nothing is made to the design or 10 years from the date of first marketing if articles were made to the design.   In the last 5 years, anyone including an infringer could apply as of right for a licence to make the item.  

The last question was on what to do if an infringer reposts a photo on his website without permission.   I said that most actions in the Small Claims Track were claims of that kind (see Jane Lambert Damages Awards in the Small Claims Track 17 June 2020 NIPC Law).  The court could grant injunctions and award up to £10,000 in damages. It was not always necessary to instruct a lawyer for a small claim and the costs that could be awarded against an unsuccessful party were limited to issue fees, loss of earnings and travel expenses.  Hearings of the Small Claims Track now took place in Business and Property Courts hearing centres outside London such as Liverpool and Cardiff.

Anyone wishing to discuss this topic should call my clerk Stephen Somerville on +44(0)7986 948267 or send me a message through my contact page.

Friday, 5 June 2020

How the Pontio Centre and M-SParc complement each other in the Social and Economic Development of Northwest Wales


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Jane Lambert

On 29 Nov 2019, I visited the Menai Science Park (M-SParc) to talk \about IP searches and understanding patent specifications.  In addition to our usual audience of local artists, business owners, entrepreneurs, inventors, makers and their professional advisers, we welcomed some graduate and undergraduate students from Bangor Law School. The audience was so large that we had to move the talk from the boardroom to the training room.  You will find a copy of my presentation at IP Database Searches and Understanding Specifications 30 Nov 2020.

After my talk, I held my usual clinic for local businesses and then drove across the Britannia Bridge to the Pontio Arts and Innovation Centre to watch Ballet Cymru's triple bill which I reviewed in  Ballet Cymru - Even Better than Last Year  6 Dec 2019 Terpsichore.   Before the show, I watched a performance by local schoolchildren in the foyer of the Pontio Centre. I wrote:
"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."
Yesterday, Ballet Cymru released a film of their work with those children which I have embedded above.

Like M-SParc, the Pontio Centre is an initiative of Bangor University and they complement each other.  While the science park provides facilities for new knowledge-based businesses the Pontio is a venue for the performing arts.  Both are essential for the economic and social regeneration of Northwest Wales.  The new businesses in or clustering around M-SParc already provide employment for the region's graduates and young professionals.  The arts will nourish their minds and spirits.

As I noted in IP and Dance  30 May 2019, intellectual property is important to the performing arts as it is is to science and technology.  While patents, trade secrecy, unregistered design right and copyright protect investment in research and development, copyright protects the work of artists, choreographers, composers, costume and set designers, dramatists, dramaturges and librettists and rights in performances the work of actors, ballerinas, musicians and singers.

Anyone wishing to discuss this article or any of the topics mentioned it should call my clerk Stephen on 07986 948267 or send me a message through my contact page. I shall gladly respond by phone, VoIP or email.

Monday, 18 May 2020

EGNI2020 - Just the Sort of Technologies that might benefit from WIPO Green and the Green Channel

Citrus_leaf.JPG: ZooFariderivative work: Laitr Keiows / CC BY-SA
 (https://creativecommons.org/licenses/by-sa/3.0)n


























Jane Lambert

On 27 April 2020, the Menai Science Park (M-SParc) celebrated World Intellectual Property Day 2020 with a webinar on green innovation. We focused on two aspects of that theme: the online market place for green technologies operated by the World Intellectual Property Organization (the UN agency for intellectual property) known as WIPO Green and the accelerated procedure for examining applications for environmentally friendly inventions known as the green channel. Just over two weeks later M-SParc presented another webinar entitled Egni2020 that discussed recent developments in the energy sector.  That webinar dovetailed perfectly with ours because the technologies that were discussed in EGNI2020 were exactly the sort that we had in mind when we talked about green innovation on World IP Day.

I had already introduced the WIPO Green online market in Anglesey to celebrate World Intellectual Property Day with Talks on Protecting and Exploiting Green Innovation at M-SParc 5 March 2020 and I gave more details in World Intellectual Property Day – April 26, 2020: Innovate for a Green Future on 2 March 2020 in NIPC News.  I also mentioned it in my chairperson's presentation at the World IP Day webinar.  Amy Dietterich, Director, Global Challenges Division of the WIPO has published a comprehensive article on the topic in the March 2020 edition of the WIPO Magazine entitled WIPO GREEN: supporting green innovation and technology transfer.

WIPO Green offers unparalleled opportunities for investment, joint ventures, licensing and marketing throughout the world and inclusion in the database which Ms Dietterich describes as the backbone of the WIPO Green platform is absolutely free.  It could have been tailor-made for businesses in Wales and other parts of the UK yet no Welsh companies and only one British company has taken advantage of the resource.  I am not sure why that is the case but my guess is that most accountants, bankers, business advisors, consultants and other professionals are unaware of it.

The EGNI2020 webinar included short presentations from:
It seems likely that inventions for harnessing the wind, waves and tides, decommissioning nuclear reactors and sites and hydrogen fuel cell propulsion would qualify for the Intellectual Property Office's green channel and similar schemes offered by other patent offices.  Anyone working in those technologies who requires initial advice on patentability, searching or sn introduction to a patent attorney is welcome to contact at any time me using the Initial Advice and Signposting form at the end of Online Support for Businesses in Wales.   No fees will be charged for using that service.

Anyone wishing to discuss this article or any of the topics mentioned in it contact me through my message page. I am happy too reply by phone, email or Zoom.

Sunday, 19 April 2020

Online Support for Businesses in Wales

Source WIPO















Jane Lambert

As promised in  Responding to COVID-19. What Makers Need to Know about IP. Webinar 15 April at 17:30, I presented my talk to the members of Ffiws over Zoom. It was the first time I had hosted and delivered a talk over Zoom so I was a little apprehensive.  Most of the audience came from North Wales but we also welcomed Kate Hammer from London who runs a project called Shield to deliver PPE to front line workers. There were no technical glitches and we covered the ground. Readers can download my slides from Linkedin Slideshare.

On Tuesday 21 April at 14:00, I shall give a free 90-minute talk on patents.  The talk will cover:
  • What is a patent?
  • The development of patent law from the Statute of Monopolies to the European Patent Convention and the Patents Act 1977;
  • Why governments grant patents: the inventor's bargain with the public;
  • Institutions: The Intellectual Property Office, the European Patent Office and the World Intellectual Property Organization;
  • Patentable inventions: novelty, inventive step, utility and excluded matter;
  • How to apply for a patent;
  • Specification;
  • Claims and how to interpret them;
  • Enforcement: the Patents Court, Intellectual Property Enterprise Court, Examiners' opinions;
  • Revocation: anticipation, obviousness, insufficiency and added matter;
  • Threats actions;
  • Employees' inventions;
  • Licensing;
  • Supplementary protection certificates; and
  • Alternatives to patenting.
Further details are available in IP Training - Patents 101 Tuesday, 21 April 2020 14:00Register for the talk through Eventbrite.

Next Sunday is World Intellectual Property Day and the M-SParc (the Menai Science Park) will celebrate it with a special lunchtime seminar on green innovation,  We shall discuss two topics, WIPO Green and the Green Channel, We shall try to follow the programme we had announced in
Anglesey to celebrate World Intellectual Property Day with Talks on Protecting and Exploiting Green Innovation at M-SParc on 5 March 2020. I shall say a few words about WIPO Green and the opportunities it offers to businesses in Wales. I shall be followed by Rob Elias of Beacon Biorefining  on the services that his company offers to such businesses. He will be followed by Andrea Knox of Knox Commercial on consultancy joint venture and other contracts. I shall round off with a discussion of the Green Channel at the UK Intellectual Property Office and similar arrangements in other patent offices.  You can register for the event here

M-SParc received a request in February for a discussion on open source software and hardware licensing. It had originally planned a seminar on the topic in Conwy but that is no longer possible in view of the social distancing and movement restrictions.  Plans are in hand for an online seminar at which Carwyn Edwards and I have agreed to speak. Further plans will be announced shortly.

It is not possible for me to hold person to person IP clinics at M-SParc during the COVID-19 emergency but there is nothing to stop my holding them online.  Should any business in Wales require advice or assistance on IP law during this period it should complete the form below. I may not know the answer to every question but I probably know someone who does.  If a client needs a patent attorney I can direct him to her to Sean Thomas or show the client how to use the CIPA database if he or she wants a wider choice. I can do the same for clients who want advice on trade mark registration, company and commercial law, tax and product development.  Anyone seeking such help should fill in the form below.

Monday, 13 April 2020

Responding to COVID-19. What Makers Need to Know about IP. Webinar 15 April at 17:30

© 2018 Jane Lambert: All eights reserved

Jane Lambert

All over the United Kingdom, makers have responded magnificently to appeals for personal protection equipment and other devices by hospitals, care homes, general medical practitioners and essential workers in their localities and beyond.

A typical example is the efforts by businesses and individuals on Anglesey organized by M-SParc (the Menai Science Park) to make and distribute masks and shields to local health and social care workers (see PPE Masks/Shields on GoFundMe). Yesterday, I learned of a nationwide campaign called Shield to coordinate such efforts.

I also learned of a government-backed initiative for InnovateUK to invest £20 million in innovative responses to the COVID-19 pandemic and its aftermath (see InnovateUK to fund Innovative Responses to the COVID-19 Pandemic 12 April 2020 NIPC Inventors Club).

Investment on that kind of scale needs legal protection. While the priority must be to save lives and minimize infection, it is in the interests of care providers and patients that the rights of solution providers are recognized and respected.   As I said in IP Services During the Emergency 23 March 2020 NIPC Inventors Club, the laws that protect those rights known collectively as "intellectual property" have never been more important than they are now.

So.  What are those rights?

Well, they include monopolies of the manufacture, importation, holding, marketing or distribution of products that are new, inventive and useful that do not fall within a number of statutory exclusions. These are known as patents and they can last up to 20 years.  They cost several thousand pounds to obtain and even more to maintain and enforce.

A right that arises automatically in the UK is the right to prevent others from reproducing an original product design.  That is called unregistered design right which essentially protects the shape or configuration of an article. It can last up to 10 years from the end of the year it is made available to the public though in the last 5 years anybody including an infringer can apply for a licence to make and distribute it as of right. 

Unregistered design right is not to be confused with registered designs or unregistered Community designs which protect the appearance of products.   Designs that are new and have individual character can be registered at the Intellectual Property Office for five renewable terms of 5 years each. Registration confers a monopoly of the manufacture, importation, stocking, marketing or sale of products that incorporate the design.  Designs that could have been registered with the Intellectual Property Office as registered designs are protected from copying for up to 3 years throughout the EU and the UK for the transitional period as unregistered Community designs.

Software which could include programs for 3D printers and other digital fabrication technologies are literary works which may be protected from copying by copyright in the UK and most other countries for the life of the author plus 70 years.  The right arises automatically as soon as the work is written down or otherwise recorded.   Copyright cannot subsist in ideas as such.  Only in the expression of ideas.

If anybody wants to learn more, I shall discuss these topics in a free webinar for makers on Wednesday 15 April 2020 at 17:30.  If you want to sign up, please register here.

Thursday, 26 March 2020

Delivering on my Promises in Wales


Jane Lambert




















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

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

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

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

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

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

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

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

Thursday, 5 March 2020

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
















Jane Lambert

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

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

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

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

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