Wales Enterprise Day 2022: Intellectual Property Rights outside the UK

 

Jane Lambert

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

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

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

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

M-SParc has gathered experts in each of those fields to speak on those topics.

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

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

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

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

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

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

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.