Tuesday, 16 July 2013

London Patent Box Workshop

The patent box is a valuable tax concession to encourage innovation introduced by s,19 and Sched 2 to the Finance Act 2012 which came into effect on 1 April 2013.

Our chambers have been running a roadshow on the patent box in conjunction with our colleagues from Atlas Tax Chambers and our good friends from BDO UK LLP and Broudie Jackson Canter. We had already staged workshops in Leeds and Liverpool.  On 12 July 2013 we brought the roadshow to the Liverpool embassy in London.

I gave a brief introduction to patents along the lines of my talk to the Liverpool Inventors Club on 29 April 2013 which you can download here:

The Patent Box: Introduction to Patents from Jane Lambert

I also distributed the following handout:

Introduction to Patents from Jane Lambert

The main speaker was Howard Veares, tax director - Corporate International Tax Services at BDO LLP. You will find his slides here:

The last presentation was by Michael Sandys of Broudie Jackson Canter. He spoke on commercializing intellectual property:

The seminar went so well that we plan to hold another on IP and taxation at the same venue on 13 September 2013 at which the main speaker will be my colleague Anne Fairpo.   We shall advertise that event shortly but as we shall only have 15 places including the chair and speakers you may wish to reserve your place now. You can do so by calling Steve Broom or John Lister on 020 7404 5252 or filling out our contact form.

We are also building up a collection of resources on the patent box here.  If you would like to contribute an article or link we shall be glad to hear from you.

Saturday, 6 July 2013

Choosing the Right Kind of IP - Five Top Tips

The Intellectual  Property Office

Jane Lambert

What is Intellectual Property?
As I said in my presentation, "Introduction to Intellectual Property", which you can download here, intellectual property ("IP") is "the collective term for the bundle of laws that protect investment in intellectual assets. ("IA"). In the same presentation I defined intellectual assets as the brands, designs, technology or works of art and literature that give one business a competitive advantage over all others.

Different Ways of protecting IA
Most of those IA can be protected in a variety of ways. For example, you can apply for a patent for a new product or process but you have to the your invention to the world in sufficient detail for anyone with th right skills and experience to make it. That's fine if you get a patent, if t is valid and if you can afford to enforce it but these are three very big ifs,  Alternatively, you can rely on some other IP right such as the the law of confidence, unregistered design right or in some cases confidence.

Patenting does not come cheap.  According to research that had been commissioned by the European Patent Office in 2004 the cost of a typical European patent over 10 years amounted to €32,000. Since a fair proportion  of the patents on the register are never worked, and of those that are worked only a tiny number make serious money for their proprietors, patenting an invention can often be a complete waste of money.

Of course if you really have invented something like Emerson's better mousetrap and the world really is beating a path to your door, then it would be a shame not to have patented the invention.

Five Top Tips
So how do you find the right king of IP protection for your IA? The answer is that it is very difficult but here are some useful tips:

  1. When you write your business plan for your business or project, try to identify the income streams for the planning period. Consider the potential threats to those income streams during that period and then think of some possible countermeasures. In most cases, the threats will be commercial rather than legal and most of the countermeasures will be commercial too. If, however, one of those threats is imitation of your product or process by a competitor then maybe you need some kind of legal protection. The appropriate legal protection will depend on the nature of the threat. If your competitor is likely to copy the shape or configuration of your product then maybe some kind of design protection is required. If it is the mechanism of the product that is likely to be imitated then perhaps you need to consider unregistered design right or even patents.
  2. An IP right ("IPR") is essentially a title to bring a lawsuit. Except for a handful of infringements that are also criminal offences it is up to the IPR owner to enforce his rights in the civil courts.  Though the cost of IP enforcement has come down considerably with reforms to the Patents County Court litigation is still expensive.  It is important to ensure that you can enforce your IPR which in most cases means taking out specialist IP insurance (see my articles "Intellectual Property Litigation - the Funding Options"  23 April 2013 NIPC Law and "IP Insurance Five Years on" 23 Oct 2010 Inventors Club).
  3. You do not have to protect your IA everywhere. If you have no market in Ruritania and nobody is capable of making the product for export there then you do no need patent protection in that state.
  4. Make sure that you get the right kind of professional advice for each type of problem. For instance, if you want to apply for a patent you should consult a patent agent (aka patent attorney).  Although it is easier to apply for a registered design or trade mark and many businessmen and women make successful applications without an agent that I would still advise you to seek professional help. Attorneys are specially trained in IP law and practice. Their professions are regulated by the IP Regulation Board. They carry professional indemnity insurance if things go wrong.  If you do not already have a patent or trade mark attorney then we can introduce you to one with whom we have worked well. Alternatively, the Chartered Institute of Patent Attorneys and the Institute of Trade Mark Attorneys have searchable databases on their websites.
  5. Before you spend any money on patenting, trade marking or registering a design it is a good idea to devise an IP strategy and perhaps talking to an IP strategist.  IP strategists are a rapidly developing profession in its own right whose practitioners can be members of any of the IP professions (see "What is IP Strategy" 9 Jan 211).
Further Information
If you want to discuss any of these points in greater detail, give me a ring on 020 7404 5252 or fill out my contact form.