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.

Wednesday, 25 September 2019

Building an Enterprise Ecosystem on Anglesey

The Atrium, Menai Science Park
© 2019 Jane Elizabeth Lambert: all rights reserved

Jane Lambert

Why are places like Silicon Valley, Tech City or indeed Silicon Fen special?  They are where some of the world's most successful high tech companies have been launched.  The entrepreneurs who launched those companies were attracted to those areas by great research universities, the local availability of specialist professional advice and angel and private equity funding and a pleasant working environment.

Nobody who has visited Northwest Wales will dispute that it is one of the most beautiful corners of the planet combining outstanding coastal, mountain and pastoral scenery.  There can be no better place in which to live, work and bring up a family.  There is a fine research university at Bangor that is particularly strong in product design and ocean sciences. The Menai Science Park (M-SParc) on Anglesey is one of its initiatives and the FabLab and entertainment complex at the Pontio Centre is another.  Though it is still very small the Pitch Perfect events in March and June attracted a few equity investors several of whom live nearby. What the region lacks is a full range of intellectual property services in its vicinity. The nearest patent and trade mark attorneys are in Chester, Liverpool and Manchester. The nearest ones in Wales are in Chepstow and Cardiff.

It was to fill this lacuna that I chaired World IP Day at M-SParc which turned out to be Wales's contribution to World Intellectual Property Day on 26 April 2019.  We built on the success of that day last Friday with an even larger seminar which included contributions from Jonty Gordon of Amgen Law, Sean Thomas of Thomas Harrison IP,  Steve Livingston of IP Tax Solutions, Andera Knox of Knox Commercial and Ian Wishart of Sybaris Legal & IP.  Jonty spoke about registered trade marks and passing off, Sean discussed patents, Steve mentioned tax incentives such as the patent box, Andrea gave us plenty of tips about business structures and contracts such as shareholders' agreements and Ian outlined the IP insurance products that are now available. 

It turned out to be a very stimulating afternoon and we received some nice comments on social media. The Hub tweeted:
The science park's managing director, Pryderi ap Rhisiart, posted the following on Linkedin:

We also received a lovely thank you email from Emily Roberts who coordinated the two seminars.

After the workshop, we held some informal one-to-ones with the delegates to discuss their immediate issues.   We identified the need for ongoing support for entrepreneurs, investors, lenders and others in the region and agreed to form a loose association through Facebook and Linkedin which anyone can join.  We also thought business people in the area will require focused discussion on such topics as searching and confidentiality.   Maybe these can be organized locally on a monthly or some other regular basis.

We look forward to working together to assist the inventors, designers, artists, authors and other creative, enterprising and innovative individuals of Northwest Wales. Should anyone wish to discuss this article, call me on 020 7404 5252 or send me a message through my contact page,

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 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:

Standard YouTube Licence

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.