Wednesday 23 March 2016

You wouldn't use a wood to get out of a bunker: seeking and using IP advice

A Set of Clubs
Author Post406
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Jane Lambert

On 23 Feb 2016 the Intellectual Property Office ("IPO") updated its guidance Seeking intellectual property advice. In its passage on Invention Promotion Companies it warns:
"Some unreliable firms promise to evaluate your invention for a fee of a few hundred pounds. They then tell you that your invention has great market potential. They may offer to promote your invention to manufacturers if you pay a fee of several thousand pounds up front. Once you have paid up, they may do little or nothing for you."
"If an invention promotion firm approaches you", it urges, "take great care." Very good advice which us repeated frequently by patent offices, consumer protection organizations, inventors' clubs and IP professionals the world over.

Yet despite those warnings more and more people fall for the promises of such companies and find themselves seriously out of pocket as a result. "Why is that?" one might ask. Part of the answer is that innovation companies offer a simple solution to the question how do I get my new product or business to market without anyone else nicking my idea.

Unfortunately, protecting a new  idea long enough for it to make a reasonable return for its creators is not usually a straightforward matter because the law favours competition and freedom to carry on business. The world's very first intellectual property legislation, The Statute of Monopolies 1623, was in fact a statute to abolish monopolies and restraints of trade. Parliament recognized, however, that it is expensive and risky to develop new products and processes and that businesses need some respite from unbridled competition as an incentive to invest in new inventions.

For that reason there is no one stop intellectual property shop. You need all the professionals mentioned in the IPO's guidance to get the right legal protection for your business idea. 

You need a patent attorney to apply on your behalf for a British or European patent for your invention in the United Kingdom and he or she should also be able to help you get one for other countries. If you have a trade name or logo that needs protecting a trade mark attorney can make an application to the IPO or European Intellectual Property Office for British or European Union trade mark.  Patent and trade mark attorneys should also be able to help you get registered and registered Community designs from the IPO or EUIPO. 

If you need a licence from a third party to make a product, use a process or carry on business under a franchise a specialist solicitor or barrister can help you negotiate one. Such a solicitor or barrister can also draw up terms upon which others can use your invention, design or other intellectual asset.  If you believe that your intellectual property right has been infringed or if you are accused of infringing someone else's rights he or she should help you resolve your dispute satisfactorily.

Each of those professionals has his or her own special skills and training for a particular job. In that way thet are rather like the woods and irons in your golf bag. There was a time when you had to instruct a solicitor or patent or trade mark attorney in order to consult a barrister but you can now instruct many of them directly under the Public Access scheme

Instructing a public access barrister is often a good way of finding other professionals that you may need such as patent or trade mark attorneys, solicitors or foreign lawyers. Through our work we get to know a lot of those professionals and what they can do. Although there is now plenty of overlap between our work and the work of other professionals we have a professional duty to refer a client to a solicitor. patent or trade mark attorney or other intermediary if that is in the client's best interests. As our core work is advice on difficult points of law, drafting complex legal instruments and oral and written advocacy we tend to refer patent and trade mark prosecution to patent and trade mark attorneys and litigation to solicitors. Our relationship with those other professionals is in that regard rather like the relationship that subsists between a consultant surgeon or physician and general medical practitioner. 

I am often asked whether there is a duplication of effort or additional expense in instructing different professionals. Sometimes that happens where for example a litigator attempts to do work that is better left to an advocate but it should not. Indeed, it should actually save time and costs.

If you want to discuss this article or IP advice in general call me on 020 7404 5252 during office hours or send me a message through my contact form.

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