Trade Secrets and Non-Disclosure Agreements

The Atrium at M-SParc

© 2019 Jane Elizabeth Lambert

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.

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.

IP Database Searches and Understanding Specifications

Searching IP Databases and using what you find from Jane Lambert

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.

Patent, Design and Trade Mark Filings in Wales

GB189420431 (A)

Source Wikipedia William Frost

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.

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.

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,

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.

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:

Profiad ac arbenigedd gorau yn y DU yma heddiw ar Eiddo Deallusol! Wir yr, da ni mor lwcus! Cyngor ar fanteision treth, sut i sicrhau Patent, TM neu ® , y cyfan yn hanfodol i gwmniau newydd. ~ Pryderi pic.twitter.com/A5Nthx42mG

— Yr Hwb @ M-SParc The Hub @ M-SParc (@HwbMenter) September 20, 2019

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,

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

Excalibur

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.

Entrepreneurial Support Services in Wakes

Jane Lambert

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

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

IPEC Small Claims Track IP Litigation in Wales

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

Jane Lambert

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

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

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

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

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


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

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

Round table discussions in full swing at our @biovoices workshop today on #challenges & #opportunities for development and #scale-up of #biobased products in Wales @ibers_aber @RhondaMinerva @wefowales #collaboratingwithindustry pic.twitter.com/JJzHWdNH5z

— BEACON Wales (@beaconwales) June 19, 2019

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.

Copyright, Poetry and Wales

Jane Lambert

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

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

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

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

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

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

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

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

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

Pitch Perfect Number Two

M-SParc (Menai Science Park)

Author Jane Lambert
© 2018 Jane Lambert: all rights reserved 

Jane Lambert

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

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

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

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

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

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

IP and Dance

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Jane Lambert

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

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

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

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

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

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

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

Welsh University Start-Ups

Author J Newman & Co.
Source Wikipedia Aberystwyth University

 



















Jane Lambert

According to the BBC "universities in Wales are producing more graduate entrepreneurs than higher education generally across the UK(see Brian Meechan New business: Welsh universities' high start-up rate 2 May 2019). Having attended Pitch Perfect at M-SParc, having given talks there and at Aberystwyth University and having visited Bangor University's Pontio Arts and Innovation Centre, I am not surprised. Wales is a pleasant place to live, with fine research universities and, increasingly, a lively cultural scene.

But there is still more that can be done. Shortly before I spoke at the World IP Day celebration at MSParc I attended a presentation by Mo Aldalo, Tech Nation's Entrepreneur Engagement Manager for the North West at Sci-Tech Daresbury. I chatted with him briefly after his presentation, told him a little bit about M-SParc and its tenants and asked him whether Tech Nation would like to give a similar talk there. He replied that it would and I have followed that up with an email putting Mo in touch with M-SParc's management.

In my article Resources for Inventors and other Startups in Northwest Wales 5 Feb 2019 NIPC Inventors' Club I noted that "all the patent and trade mark attorneys in Wales practise in the south and mainly in and around Cardiff." The nearest ones appear to be in Chester and Liverpool and I shall try to persuade one of them to accompany me to Gaerwen when M-SParc holds another seminar on IP. Other speakers for the future could include a patent librarian to teach businesses owners and managers how to carry out simple patent, design and trade mark searches and an insurer specializing in IP insurance to talk about the various types of cover that are available.

Anyone wishing to discuss any of these topics should call me on 020 7404 5252 during office hours or send me a message through my contact page.

Helping Wales's Home Grown Inventors

Sir William Grove, Inventor

Author Lock & Whitfield
Source Wikipedia William Robert Grove

Jane Lambert

On the Inspiration page of its website, M-SParc (the Menai Science Park) notes that "Wales is home to some of the best scientists in the world".  Many such as Lyn Evans who was project leader of the large hadron collider at CERN are employed by organizations in the public or private sectors but there are also many others in all walks of life who simply have good ideas.

One such was Willian Robert Grove whose photo appears above.  He was a prolific inventor whose inventions include the gas voltaic battery which was the forerunner of the fuel cell, a technology upon which the world is likely to rely increasingly if it is to meet its carbon reduction targets. Like me, Grove was a barrister whose practice included patents. There are still plenty of inventors like Grove today and the government seeks to harness their potential in its industrial strategy (see "Harnessing the Potential of the UK's Home Grown Inventors" - The Government's Proposed Industrial Strategy 24 Jan 2017).

Such inventors do not get an easy time for all sorts of reasons.  It is one thing to create a new product or process but quite another to market it.  If an inventor tries to make and market his or her invention he or she has to go into business which is impossible for many.  Entrepreneurship and invention do not always - in my experience, rarely - go together.  If an inventor tries to license the invention to an established business he or she meets not invented here scepticism for he or she is, by definition, an outsider.

So what can private inventors do to lower the odds against success?  One thing that inventors in other parts of the UK have done is to learn from each other.  Inventors in Northwest England have formed Ideas North West which described itself as  "a membership group of Inventors based in the North West of England" with the aim of helping each other exploit their ideas for new products or services in order to gain commercial success.  They have their own invention promotion company called Ideas North North West Limited which appears to have helped several local inventors.

According to the Wessex Round Table of Inventors, there are similar groups in most parts of the United Kingdom though it seems none for Wales as yet.  There is already a lot of support available for inventors in North Wales around M-SParc and the Pontio FabLab as events like Pitch Perfect and last week's World IP Day celebrations show.  Those of us who took part in last week's seminar would like to build up a comprehensive support network like those provided by the British Library in London and Business and IP Centres in other English cities.  There will soon be another science park in Aberystwyth where similar networks could be developed and, of course, there is the Intellectual Property Office in Newport which already hosts regular patent clinics.

if, while such networks are being developed, any inventor needs help with patenting, licensing, enforcement or other legal issues or signposting to other services such as angels, product design engineers, IP tax experts and others, he or she should call me during office hours on 020 7404 5252 or send me a message through my contact page.