Thursday, 7 January 2016

Wessex Round Table of Inventors

The Solent from Space
Source Wikipedia



















As more patents were granted to South-East England than to any other region in 2014 according to the table on page 7 of the IPO's Facts and Figures for 2013 and 2014 it is not surprising that there are a fair number of inventors' clubs in that region. I am aware of at least five:  Croydon Round Table of Inventors, Kent Inventors Forum, Kingston Round Table of Inventors, Rural Inventors Club and the Wessex Round Table of Inventors.

The last of those clubs is probably the one that is best known to inventors around the country because of its impressive collection of links to inventors' resources and other inventors clubs and national inventors' associations.  The Round Table meets on the second Wednesday of every month between 18:00 and 21:30 in Room HC019 of the Herbert Collins Building at Southampton Solent University. The first two meetings of the new year will take place on 16 Jan and 10 Feb and the first speakers will be  Iain Thomas of Southampton Solent University who will talk about ‘A Hierarchy of Composites’ giving an overview of different kinds of composite materials and Clare Wright and Richard Poate of TÜV SÜD Product Ser, vice who will outline some techniques for environmental testing of products (see the Forthcoming Events page).

Looking around the site, the Round Table seems to have entertained some impressive presentations in the past, they present annual technology innovation awards and the members seem to have generated a substantial portfolio of inventions. Membership is free for students and £30 per year for everyone else (see Joining the WRTI).

Thursday, 6 August 2015

Disputes over Ownership of Inventions

Jane Lambert














According to the Intellectual Property Office at least 30 disputes are referred to its tribunals every year over who should own or be entitled to apply for a British or foreign patent or be named as an inventor (see the table on page 50 of the IPO;s Facts and figures for 2013 and 2014 calendar years). Disputes over ownership are known as entitlement disputes and disputes who should be named as inventors as inventorship disputes. Often entitlement and inventorship disputes arise between the same parties and are resolved in the same proceedings.

Introduction

S.7 (3) of the Patents Act 1977 defines an "inventor" as "the actual deviser of the invention." If more than one person devised the invention they are each "joint inventors."  The reason why it is important to identify the inventor is that the inventor or joint inventor is the person or persons primarily entitled to apply for a patent for the invention under s.7 (2) (a). The only person entitled to apply for a patent in preference to the inventor or joint inventors is the inventor's employer if he, she or they devised the invention in the course of their duties or a third party such as a product design consultancy's client if he or she agreed with the consultancy that he or she rather than the inventor or inventor's employer should be entitled to apply for patents for any inventions that might be devised.

The Comptroller's Jurisdiction

The head of the Intellectual Property Office (who is  referred to as "the Comptroller-General of Patents, Designs and Trade Marks" or simply "comptroller" in s,130 (1) of the Patents Act) has power under s.8 to decide who is entitled to apply for a British patent at any time before the patent is granted.  The comptroller also has power under s.12 to decide who is entitled to apply for a foreign patent at any time before grant. If a UK patent has been granted, the comptroller has power under s.37 to determine who should be entitled to the patent. Finally, the comptroller may decide who may be named as an inventor under s.13 of the Act. The comptroller no longer exercises those powers personally. Instead they are exercised on the comptroller's behalf by officials known as "hearing officers" who conduct proceedings in accordance with the Patents Rules 2007 and practices that have been codified into a series of Tribunal Practice Notices.

Proceedings before Hearing Officers

Proceedings before hearing officers are intended to be much less formal and expensive than proceedings before judges but they follow similar lines. Their decisions have to be based on the law and evidence which means that each side has the right to present evidence and test that of its opponent and to submit arguments to the hearing officer. If the parties agree the hearing officer may decide the case on the documents without a hearing.  If one or more of the parties request a hearing it can take place at the Intellectual Property Office's premises in London or Newport or at some other centre around the country, In the last 5 years I have represented parties to entitlement disputes at Concept House in Newport, Manchester Immigration and Asylum Chamber, Leeds Magistrates Court and the Radisson Blu Hotel in Glasgow.

Representation

The practice and procedure are made as easy to follow as possible to enable parties to represent themselves. They can also appear by counsel (barristers or advocates in Scotland), solicitors or their patent attorneys. Parties who instruct lawyers or patent attorneys can claim a contribution to their fees from the other side if they are successful but that is never more than a modest proportion of their costs unless the other side has behaved particularly unreasonably.

Pre-Action Correspondence

As proceedings before hearing officers usually take at least a year to resolve and cost many thousands of pounds towards which the successful party can expect only a modest contribution it is obviously in the interests of all sides to resolve their dispute by agreement if they possibly can. Disputes arise or are protracted because the parties do not have access to all relevant information and documents. The first step is to put the complainant's case to the other side as cogently as possible in a letter before claim. The other side should identify the parts of the case that it accepts and those that it does not. At the very least that should narrow the scope of the dispute and save time and costs.

Mediation

As often as not such exchange of correspondence is enough to settle the dispute either because one side accepts the case of the other or because the parties begin to negotiate. Usually the parties can conduct their negotiations without any outside help but occasionally they need a facilitator. Facilitated negotiation is another name for mediation. Both the IPO and WIPO offer specialist mediation services as do we (see IP Mediation 22 May 2015 4 to 5 IP),

Starting Proceedings

If the dispute cannot be resolved by negotiation or mediation a party may start proceedings by completing Form 2 and lodging it together with a remittance of £50 and a statement of grounds with the Intellectual Property Office. The statement of grounds is the equivalent of particulars of claim in litigation must include a concise statement of the facts and grounds on which the claimant relies and the remedy that he or she seeks verified by a statement of truth. Once the Office is satisfied that the application is in order it sends it to the other side who must respond with a counter-statement. That is the equivalent of a defence in litigation and must state:
(a) which of the allegations in the statement of grounds the defendant denies;
(b) which of the allegations he or she is unable to admit or deny, but which he or she requires the claimant to prove; and
(c) state which of the allegations he or she admits.
The counter-statement must also be verified by a statement of truth.

Evidence

Often negotiations start or re-start at this stage but if they do not resolve the natter the claimant must file Patents Form 4 and pay £350. The Office usually gives directions for the filing of evidence which usually takes the form of a witness statement though it can still be a statutory declaration or affidavit. This the parties' opportunity to set out their case in full.  The witness statements together with any documents that may be exhibited to them stand as a party's evidence in chief at the hearing.

Hearing

Once the evidence is filed the Office fixes a date for the hearing.  A few days before the hearing the parties exchange skeleton arguments and lodge copies of their skeletons with the hearing officer.

The hearing room is set up like a court room with the hearing officer on a dais and desks for the parties and their representatives.

Everyone present rises as the hearing officer enters the room.  He or she is addressed as "sir" or "madam" throughout the hearing.

The party with the burden of proof opens the case to the tribunal. Usually he or she makes sure that the hearing officer and the other parties have the same bundles of documents and that the skeletons have been filed. He or she outlines the issues that are to be decided and how he or she intends to prove them. He or she then calls his or her witnesses. He or she refers them to their witness statements and establishes that they are happy for the statements to stand as their evidence in chief.  He or she then sits down and allows the other side to test his or her evidence by cross-examination. Sometimes the witness raises an issue that requires supplemental questions in re-examination.   After all that parties' witnesses have been called and examined the party tells the hearing officer that his or her case is complete.

The other side responds by calling his or her witnesses and offering them for cross-examination.

At the end of his or her case the defendant makes oral submissions on the evidence and the conclusions to be drawn to the judge. These are answered by the other parties.

There is usually several weeks delay between the hearing and the delivery of the hearing officer's decision.

Appeal

Those who are dissatisfied with a hearing officer's decision can appeal to the Patents Court as of right.

Further Information
The Intellectual Property Office publishes a useful booklet entitled Patents:Deciding Disputes which can be downloaded from its website. Readers can also call me on 020 7404 5252 or send me a message through my contact form.

Wednesday, 17 December 2014

Representing yourself in Intellectual Property cases

Jane Lambert














Since the Access to Justice Act 1999 came into force more and more people have had to go to court without a lawyer.  Those who represent themselves in court are known as "litigants in person". The following guides have been produced for such  persons:  A Handbook for Litigants in Person published by the Judicial Studies Board and A Guide to Representing Yourself in Court ("the Guide") by the Bar Council.

Intellectual Property
Those guides are very useful and should be read by litigants in person in any type of case. However, they do not cover intellectual property ("IP") proceedings which is a pity because IP has rules and practices that differ from other types of dispute resolution. The purpose of this article is to supplement both publications and, in particular, the Guide. This article covers intellectual property proceedings in the civil courts and Intellectual Property Office ("IPO") tribunals. It does not cover proceedings in the European Patent Office ("EPO") or the Office for Harmonization in the Internal Market ("OHIM").

How to use this Article
Use this article in conjunction with the Guide. When I mention sections and paragraph I am referring to sections and paragraphs in the Guide. Treat this article as though it were an addendum to Section 4.  The disclaimer on the inside cover which is headed "Disclosure" (probably a misprint) applies equally to this article.

Section 1: How to find free or affordable help with your legal problem

Free legal advice and representation
Specialist legal advice on IP can be obtained from IP clinics run by the Chartered Institute of Patent Attorneys ("CIPA") and other bodies. Our chambers have run monthly clinics in London in conjunction with Middlesex University which we hope to resume in the New Year. We also run a regular clinic on the second Tuesday of every month in Barnsley. If you want to attend one of our clinics call George Scanlan on 020 7404 5252 during regular office hours or use our contact form. For more information on basic advice and information on IP in South East England, please read "Where to get free basic Information on Intellectual Property" 18 Dec 2014.

Paying for legal services
It is unlikely that any household policy will cover advice on IP. In fact, most legal indemnity policies for businesses specifically exclude IP. If you want cover against the costs of enforcing your own IP rights or resisting a claim against you for the revocation or invalidation of your own IP rights or the infringement of a third party's you will need special before-the-event IP insurance. There are only a handful of specialist brokers who provide such cover and I have listed some of them in IP Insurance Five Years On 23 Oct 2010 Inventors' Club blog and Intellectual Property Litigation - the Funding Options 10 Apr 2013 NIPC Law. Professional opinion does differ on the value of IP insurance but in my view it is well worth it.

Who can provide legal advice and representation?
In addition to barristers, solicitors and legal executives mentioned in the Guide, you can also consult patent attorneys (also known as "patent agents") and trade mark attorneys (also known as "trade mark agents"). For more information read my articles IP Professionals - who does what 5 Sept 2013 IP London and IP Services from Barristers 6 Apr 2013 4-5 IP. If you consult a barrister or a solicitor make sure that he or she is a specialist in IP or technology law for not all of them are. Most specialist counsel are members of the IP Bar Association and many specialist law firms are members of the IP Lawyers Association. If you want to sort out the IP sheep from the goats read How to spot an IP blagger at 30 paces 23 Feb 2009 IP North West.

If you can, settle outside court
There are three specialist alternative dispute resolution services ("ADR") for IP disputes of which you should be aware:
  • IPO opinions on patents and registered and unregistered design rights;
  • IPO's mediation service for IP disputes; and
  • the Uniform Domain Name Dispute Resolution Policy for generic top level domain names and equivalent services for country code top level domain name disputes such as Nominet's Dispute Resolution Service for .uk domains.
You may find the following articles useful:
Is ‘no win, no fee’ right for you?
It will be very difficult if not impossible for you to find a lawyer who is prepared to take an IP case on a "no win no fee" retainer. There are several reasons for that which I explained in Intellectual Property Litigation - the Funding Options 10 Apr 2013 NIPC Law and No Win No Fee 14 Jul 2011 NIPC website. Read my case notes on Henderson v All Around the World Recordings Ltd (Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd 4 May 2013 NIPC Law and Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 5 Nov 2014 to see what can go wrong.

Section 2, Part 2: Starting and defending a claim

‘Letter before claim’
It is very important to send a letter before claim in any type of action unless there is a good reason why you should not but it is particularly important for proceedings in the multitrack and small claims track of the Intellectual Property Enterprise Court ("IPEC") because CPR 63.20 (2) requires you to state in your particulars of claim whether you have complied with paragraph 7.1 (1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct). If you fail to do so the defendant has up to 70 days to file a defence under CPR 63.22 (3).

In addition to the Practice Direction - Pre-Action Conduct you will find the Code of Practice for Pre-action Conduct in Intellectual Property Disputes useful for completing your letter before claim.

Threats
One of the special features of intellectual property litigation is that you can be sued for threatening to sue for patent, registered and Community design, registered and Community trade mark and unregistered design right infringement without justification. You must therefore be very careful how you write your letter before claim.

You should remember this rule if you are threatened with patent, registered or unregistered design or trade mark infringement by a third party. Remember that the claim can lie not just against the party making the threats but also against its solicitor, patent or trade mark attorney. For more information see my article Threats Action Updates 26 Jan 2006 NIPC Law.

This is one of the occasions when it would be prudent to seek specialist advice from a barrister or solicitor specializing in IP or a patent or trade mark attorney.

Starting a claim – which court?
Some IP claims must be brought in the civil courts. Others must be brought in the IPO. Some can be brought in either. 

Claims for the infringement of most IP rights, breach of confidence, passing off and actions for groundless threats must be brought in court.

Claims to determine who is entitled to a patent or patent application, licences and supplementary protection certificates have to be brought in the IPO. So, too, do trade mark oppositions.

Claims for revocation and amendment of patents and declarations of non-infringement and counterclaims for invalidation of trade marks and registered designs can be brought in either the courts or the IPO.

Courts that hear IP cases
IP cases must be heard in the Chancery Division of the High Court of Justice or one of the county courts that is attached to a Chancery District Registry (that is to say, the Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold county courts). 

Within the Chancery Division there are two specialist courts, namely the Patents Court and the IPEC. IPEC has a small claims track for claims up to £10,000. The Chancery Division sits in London, Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold.  

For more information on practice in the Chancery Division see the latest Chancery Guide

Patent, Registered Designs, Semiconductor Topographies and Plant Breeders' Rights
Claims for patent, registered or registered Community design, semiconductor topography and plant breeders' rights infringement have to be brought in the Patents Court or IPEC. If the claim is for  £500,000 or less and can be tried in no more than 2 days the case can be brought in IPEC. Otherwise it must be brought in the Patents Court. See the Patents Court Guide for more information on the Patents Court and the Intellectual Property Enterprise Court Guide for more information on IPEC. My article New Patents County Court Rules 31 Oct 2010 NIPC Law may still be useful.

Other IP Claims
All other IP claims can be brought in IPEC, the Chancery Division and the Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold county courts. As with patents, if the claim is for £500,000 or less and the trial can be heard in not more than 2 days it can be brought in IPEC. The procedure in IPEC differs from that of the rest of the Chancery Division and costs are capped at £50,000 for trials and £25,000 for accounts of profits and inquiries as to damages.  

IP claims other than patent, registered or registered Community designs, semiconductor topography or plant breeders' rights under £10,000 can be brought in the small claims track of IPEC. Recoverable costs in the small claims track are limited to just a few hundred pounds. For more information on the small claims track, see the Guide to the Intellectual Property Enterprise Court Small Claims Track and my article How to take proceedings in the IPEC Small Claims Track 12 July 2014.

IPO Tribunals
There are separate tribunals within the IPO for patent, registered design and trade mark proceedings. Cases are decided by officials known as "hearing officers" who are addressed as "sir" or "madam" as the case may be. Costs are usually awarded on a scale annexed to Tribunal Practice Notice 2/2000 unless a party has behaved badly in which case a hearing officer may award costs off the scale.

European Patents
Claims relating to European patent applications and oppositions to European patents must be brought in the EPO. 

Community Trade Marks and Designs
Oppositions to Community trade marks have to proceed in OHIM while claims for the invalidation or revocation of Community trade marks can be brought in OHIM or Community trade mark courts which include the Chancery Division and chancery county courts. Similarly, applications for the invalidation of registered Community designs can be brought in OHIM or Community design courts including the Patents Court and IPEC.

Injunctions
In  many cases an IP owner requires an injunction to restrain an infringement between the issue of proceedings and trial. Such injunctions are known as "interim injunctions" to distinguish them from injunctions after trial which are known as "perpetual injunctions". Applications for interim injunctions are determined by a Chancery interim applications judge. For more information on interim injunction applications see Litigation choices - should I apply for an interim injunction or should I not? 29 Oct 2014 IP East and the Judiciary's Interim Applications in the Chancery Division: A Guide for Litigants in Person.

Further Information
ff you wat to discuss this subject further, give me a ring on 020 7404 5252 during office hours or message me through my contact form.

Thursday, 23 October 2014

The Furniture Industry and IP

High Wycombe


























This is the first of a series of articles about the communities and industries of South East England and how IP relates to them.  This post focuses on High Wycombe and its neighbourhood which is best known for furniture making.   According to the Wycombe District Council website, furniture has been manufactured in the district since the 17th century. Despite competition from other parts of the UK and abroad furniture making in Wycombe is still going strong.

Legal Protection
The reason for the industry's success is its reputation for quality and design.  That reputation results from considerable investment in technology, product design and marketing for which the industry requires robust legal protection.  Investment in new technology is protected by patents which may be granted by the Intellectual Property Office ("IPO") in Newport or the European Patent Office ("EPO") in Munich. New designs may be protected by registration with the IPO as registered designs or the Office for Harmonization in the Internal Market ("OHIM") in Alicante as registered Community designs ("RCD"). Brands are protected by the registration of distinctive signs as "registered trade marks" with the IPO or as "Community trade marks" ("CTM") with OHIM.  Copyright is also important to the furniture industry as the artwork for fabrics and other surface decoration are artistic works and some items of furniture may be works of artistic craftsmanship.

Patents
A patent is the monopoly of a new invention. It confers the exclusive right to make, sell, import or use the invention.  An invention may be a product or a process.  Patents may be granted for the United Kingdom by the IPO or the EPO. It is not yet possible to get a patent for the whole European Union but it is already possible to apply to the EPO for patents (known as "European patents") for the same invention in up to 38 European countries and it should soon be possible to apply to the EPO for a European patent for (which will be known as a "unitary patent") for the territories of most of the countries of the EU including the UK.

Designs
There are at least 6 ways of protecting designs in the United Kingdom:
  • new designs having individual character may be registered with the IPO for the UK alone as registered designs under the Registered Designs Act 1949;
  • new designs having individual character can be registered with OHIM for the whole EU as RCD under the Community design regulation;
  • designs that could have been registered with the IPO as registered designs or registered with OHIM as RCD are protected from copying throughout the EU as unregistered Community designs ("UCD") by virtue of the Community design regulation;
  • original designs of aspects of shape or configuration of 3-dimensional articles are protected within the UK from copying by unregistered design right pursuant to Part III of the Copyright Designs and Patents Act 1988 ("CDPA");
  • the artwork for fabrics, floor and wall coverings and other surface decoration is protected from copying in the UK by copyright pursuant to Part I of the CDPA; and
  • works of artistic craftsmanship within the meaning of s.4 (1) (c) of the CDPA which might include some items of furniture are protected in the UK as original artistic works by Part 1 of that Act.
Registration of a design as a registered design or RCD confers the exclusive right to use the design and "use" for this purpose means "making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes." Designs may be registered as registered designs or RCDs for an initial term of 5 years which can be renewed for further 5 year terms up to a maximum of 25 years. Registration of a design with the IPO confers that monopoly for the UK alone. Registration with OHIM confers that monopoly throughout the EU including the UK. UCD subsists in a new design for 3 years from the date upon which the design was first made available to the public in the EU. Unregistered design right subsists for a total of 15 years unless articles made to the design are offered for sale or hire within the first 5 years of that term in which case design right subsists for 10 years from the end of the year in which such articles were first made available to the public. In the last 5 years of the term anyone in the world can apply to the design right owner for a licence to make articles to the design as of right. If the terms of such licence cannot be agreed they are determined by a hearing officer appointed by the the CEO or Comptroller of the IPO.

Copyright
Artistic copyright subsists for the life of the person who created the design plus 70 years. However, s.52 of the CDPA limits the term of the copyright of any artistic work that was or could have been registered as a registered design or RCD to 25 years. S.52 has been repealed by s.74 (2) of the Enterprise and Regulatory Reform Act 2013 following the decision of the Court of Justice of the European Union in Case C168/09 Flos SpA v Semeraro Casa e Famiglia SpA [2011] ECDR 8, [2011] RPC 10, [2011] EUECJ C-168/09. The repeal has not yet taken effect and the government is consulting on when the repeal should take effect (see Jane Lambert "Flos putting us all through the Mill" 17 Oct 2014).

Trade Marks
A trade mark is a sign that can be represented graphically which is capable of distinguishing goods or services of one undertaking from those of others. Examples include words (including personal names), designs, letters, numerals or the shape of goods or their packaging. Signs are registered in relation to specified goods or services. Registration of a sign with the IPO as a registered trade mark confers the exclusive right to use that mark in the UK relation to the goods or services for which the mark is registered. Registration with OHIM confers the exclusive right to use that mark in relation to such goods or services throughout the EU. "Use" includes labelling, advertising and point of sale marketing.

Enforcement
The rights mentioned above may be enforced by civil proceedings of the courts of the country where an infringement is threatened or takes place.  Remedies include injunctions (orders of the court to do or refrain from doing specified acts punishable by fine or imprisonment if disobeyed), damages (compensation for loss or damage resulting from the infringement) or an account of profits (surrender of benefits of infringement) and costs. In England and Wales claims up to £500,000 may be brought in the Intellectual Property Enterprise Court ("IPEC") where trials are limited to 2 days and recoverable costs capped at £50,000. IPEC has a small claims track for trade mark and copyright claims up to £10,000 where recoverable costs are limited to a few hundred pounds. All other claims should be brought in the Chancery Division of the High Court. Patent and registered and RCD claims over are reserved to a special tribunal of the Chancery Division known as the Patents Court. Claims relating to the new unitary patent and eventually all European patents will be determined by a new Unified Patent Court consisting of a Court of First Instance and a Court of Appeal. The Court of First Instance will be based in Paris with a section in London and other chambers throughout the EU.

Criminal Proceedings
Piracy (copyright infringement on an industrial scale) and counterfeiting (trade mark infringement on an industrial scale) are offences in the UK and most other industrial countries. Since the 1 Oct 2014 intentional copying of a registered design or RCD has also been an offence in the UK. Prosecutions are brought by local authority trading standards officers or privately. It is not an offence to infringe a patent, unregistered design right or other intellectual property right in the UK.

Further Information
From time to time we hold workshops and publish guidance on issues that affect particular industries. Issues that we have identified as of particular interest to the furniture industry in High Wycombe and the rest of the UK are the unitary patent, the repeal of s.52 and the new offence of intentional copying. If there is sufficient interest we shall hold seminars in the town in conjunction with local patent and trade mark attorneys and solicitors. In the meantime, if anyone wants to discuss those issues or IP law in relation to furniture manufacturing and distribution generally he or she should call me on 020 7404 5252 or message me through my contact form.

Saturday, 6 September 2014

Forthcoming IP Events in South East England

Jane Lambert

Below is a list of events relating to IP in South East England of which I am aware. If anybody wants to add another event please message me through my contact form.



1-28 Sep 2014
Month of exhibitions, conferences and other events around Brighton

8 Sep 2014
AssimilateIP 09:00 - 17:00
Holiday Inn, Winnersh, Reading,
29 Sep 2014
Seminar operated by CIPA which is open to non-memnbers 12:30 - 17:30 (CPD points)
Worcester College, Walton St, Oxford, OX1 2HB
15 Oct 2014
Exhibition and seminar
09:00 - 16:30
H.G. Wells Conference & Events Centre, Church Street East
Woking, GU21 6HJ
22 Oct 2014
All day exhibition and seminar
Kent Event Centre, Kent Showground
, Detling

Maidstone, ME14 3JF
24 Oct 2014
Exhibition 10:00 - 15:30
Copthorne Hotel, Effingham, Gatwick

Monday, 25 August 2014

South East England leads the nation in R & D Tax Credit Claims
















Jane Lambert

Last month I reported that South East England led the nation in patenting (see "South East leads the Nation in Patenting" 15 July 2014). Today I reported that companies in the South East lead the nation in the number of R & D tax credit claims in 2013 followed by companies with registered offices in London though the amount claimed from London based companies exceeded those claimed from companies in the South East (see "R & D Tax Credit Statistics" 25 Aug 2014 Patent Box and Tax Credit Blog). Companies with registered officers in the East of England which includes Cambridge and Essex came third. This confirms that R & D is concentrated in and around England which is unlikely to come as much if a surprise to anyone.

R & D tax credits are deductible allowances against corporation tax for research and development expenditure. If a company is not liable for tax in the year for which the claim is made it can apply for a cash payment from the Revenue. These allowances were introduced for small and medium enterprises in 2000 and extended to larger companies in 2002. They are remarkably generous and reward particularly when combined with other incentives such as the patent box.

Our chambers are almost unique in that our intellectual property specialists work under the same roof as Atlas Tax Chambers and share the same clerks. We can thus provide comprehensive IP and corporation tax advice to businesses that invest heavily in high technology. Should anyone wish to discuss this article or any of the topics referred to he or she should call us on 020 74404 5252 during office hours or contact our clerks through this form.

Further Reading

HMSO Research and Development (R&D) Relief for Corporation Tax
Jane Lambert R & D Tax Credit Statistics 25 Aug 2014 Patent Box and R & D Tax Credit Blog

Wednesday, 30 July 2014

Get your free intellectual property rights

Jane Lambert














Everyone knows that patents, trade marks and registered designs have to be registered, that applications for patents and trade marks are examined, that all those registrations can be challenged and that it all costs money. But there are some intellectual property rights ("IPR") that cost nothing and these should be considered when budgeting for the protection of intellectual assets.

Non-registrable Rights
These fall into two groups:

  • those created by a succession  of judicial decisions (sometimes called "common law") such as the right to enforce and obligation of confidence or bring an action for passing off; and 
  • those created by British or EU legislation such as copyright, design rights, database rights and unregistered Community designs.
Some rights are alternatives to registrable rights such as the obligation of confidence and patents.  Others supplement registrable rights such as the law of passing off and trade marks. I will consider each class of intellectual asset - that is to say, brands, design, technology and creative works - in turn,

Brands
Trade marks, business names, the get up of products, the layout and livery if business premises or other distinguishable signs can be protected by the law of passing off. The right to bring an action for passing off arises in the following circumstances:
  • consumers of a product or service associate a supplier or its products or services with a particular sign;
  • a competitor misleads such consumers by offering goods or services under a similar sign; and
  • the supplier loses sales or suffers some other kind of loss and damage.
The action of passing off can sometimes be used to protect signs that cannot be registered as trade marks but there are two drawbacks. The first is that the action can only be brought once consumers have begun to associate a business or its goods and services with a particular sign. That is not always easy for start-ups or other small businesses. The second drawback is that complainants have to gather a lot of evidence about their goodwill or reputation and the alleged misrepresentation before an action can be launched. Thus, a passing off action tends to be more complex and expensive than an action for trade mark infringement.

Design
There are five ways in which designs can be protected in the UK:
  • new designs having individual character can be registered under the Registered Designs Act 1949;
  • new designs having individual character can be registered as registered Community designs under the Community Design Regulation;
  • designs that could be registered as registered designs or registered Community designs are protected from copying throughout the EU for up to 3 years as unregistered Community designs by the Community Design Regulation;
  • aspects of shape or configuration of the whole or part of an article can be protected from copying by unregistered design right for between 10 and 15 years under Part III of the Copyright Designs and Patents Act 1988; and
  • artwork for textiles, wall coverings and also surface decoration may be protected from copying as copyright works for the life of the author plus 70 years under Part I of the Copyright Designs and Patents Act 1988.
Registration of a design as a registered design confers a monopoly of  a design whereas the other rights confer protection only against copying. The significance of the distinction is that a monopoly may be infringed by making, selling, importing, exporting, using or stocking a product that looks like a registered design even even without copying. The other rights are infringed only where copying has occurred and that is not always easy to prove. 

Technology
Patents are monopolies that are granted for disclosing a new invention to the world. The law of confidence is the very opposite in that it can be used to keep technical information secret. An obligation of confidence arises when A ("the confider") discloses technical or other information that is not generally known the use or disclosure of which could harm the confider or benefit a third party ("confidential information") to B ("the confidante") expressly in confidence or in circumstances giving rise to an on obligation of confidence. The obligation continues for so long as the information remains secret. If is breached by using the information for a purpose other than the one for which it was disclosed or by passing it on to a third party without the confider's consent or other lawful excuse. The obligation subsists for so long as the information remains secret. One legitimate way of learning a business secret is by buying a product, taking it apart to see how it was made and reverse engineering it. There are however some products that cannot easily be reverse engineered such as food and drink. The recipes for chartreuse and Coca Cola have been kept secret for centuries.

Some new technologies such as computing and financial services cannot easily be protected by patents in the UK at any rate. The source code of a computer program is generally kept secret while the code itself (whether in digital impulses or human readable form is protected from unauthorized reproduction by copyright.

The casing and circuity of products with a short shelf life such as mobile phones, toys and consumer electronics can be protected from copying by unregistered design right.

An intellectual property right that can be used t protect compilations of data are database rights - that is to say the right to prevent unauthorized extraction and re-utilization of data held on databases.

Works of Art and Literature
Original artistic, dramatic, literary and musical works, broadcasts, films and sound recordings and published editions of typographical works can be protected from copying and other restricted acts for varying terms by Part I of the Copyright, Designs and Patents Act 1988.

Actors, dancers, musicians, singers and other performers can object to the unauthorized broadcasting, filming or taping of their performances by Part II of the Copyright, Designs and Patents Act 1988.

Publishers of an unpublished work in which copyright has expired are protected from unauthorized copying and other restricted acts by publication right.

The provisions relating to copyright, database right, publication rights and rights in performances are set out in an informal consolidation published by the Intellectual Property Office.

Intellectual Property Insurance
As with all IPR it is essential to consider how they will be enforced.   In the case of a new business that is best achieved by before-the-event insurance.


Further Information
Should anybody want to discuss this article or any of he topics mentioned or referred to call me on 020 7404 5252 during normal business hours. You can also contact me through my contact form or message me through FacebookG+Linkedintwitter or Xing.