Saturday, 30 November 2019

IP Database Searches and Understanding Specifications



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

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

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

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

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

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

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

Thursday, 28 November 2019

Patent, Design and Trade Mark Filings in Wales

GB189420431 (A)





















Jane Lambert

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

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

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

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

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

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

Saturday, 2 November 2019

How to use Patent, Trade Mark and Registered Design Databases


Standard youtube Licence 

Jane Lambert

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

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

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

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

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

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

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

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

Wednesday, 9 October 2019

Intellectual Property Transactions













Jane Lambert

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

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

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

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

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

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

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

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

Thursday, 3 October 2019

Glyndwr University

Author Isobel Smith 




















Jane Lambert

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

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

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

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

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

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.