Arbitration of Intellectual Property and Technology Disputes

Jane Lambert

Arbitration is a method of resolving disputes. It arises out of an agreement between two or more parties to refer an existing or any future dispute that may arise to a third party known as the arbitratior ("arbiter" in Scotland) who will decide the case on its merits after considering evidence and arguments. The arbitrator's decision, which is known as an award, is enforced in England and Wales in the same way as a judgment (see s.66 (1) of the Arbitration Act 1996).  Her Majesty's Government is party to an international agreement to which most countries in the world belong known as the Convention on the Recognition and Enforcement of Foreign Arbitral Awards (New York, 1958) (the "New York Convention") whereby each party agrees to enforce in its territories arbitration awards made in accordance with its provisions.

What are the Advantages of Arbitration?
Because the arbitration arises out of an agreement between the parties, it is they rather than an outside agency such as HM Courts and Tribunals Service who control the process. That means that the dispute can be determined in a manner and at a time of the parties' choosing by a tribunal of their choice whose competence, experience and impartiality they can trust rather than by the judge to whom their case is allocated who may or may not have relevant knowledge and experience who will apply rules of procedure and evidence that may not be relevant when the case comes into his or her list. Arbitration can therefore be quicker, cheaper and less formal than litigation and render better justice though much will depend on the terms of the arbitration agreement and the skills, knowledge and experience of the arbitrator. In most cases arbitrations are conducted in private so that nobody but the persons involved in the process hear damaging or embarrassing disclosures. That often makes it easier for them to maintain or renew a business relationship once the dispute is resolved.

And the Disadvantages?
These are largely the converse of the advantages and usually result from a badly drawn up agreement or an incompetent, inexperienced or less than impartial arbitrator.  The costs and delay can be greater than the parties would have been incurred had they gone to court and the decision may be less than fair or wrong in law. In nearly every case the parties have to pay a fee to the arbitrator and hire the room in which the arbitration takes place and the office equipment, stationery and other consumables that the arbitrator uses. The privacy of the arbitration may hide from the public facts and matters that should be made known and indeed may remove one of the incentives to early settlement. Often the remedies available to the arbitrator and the opportunities to challenge an award are limited.

What Sort of Cases are suitable for Arbitration?
Generally these are cases in which the parties have agreed to resolve any disputes that may arise by arbitration at the time they made their contract. One such agreement might be for the supply of computer equipment or services where the supplier is in a developed country and the customer may be a government department in a less developed country where the judges are not known for their independence of the executive. Another might be a licensing agreement where the parties have done good business with each other before and expect to do so again. However, the parties can agree to refer an existing dispute to arbitration. One instance in which they may decide to do so is after they have exchanged letters of claim and response in accordance with the Practice Direction - Pre-Action Conduct, seen each other's evidence, tried unsuccessfully to resolve their dispute through negotiation. They may try arbitration because they do not want to go to court since the case turns on issues of law or fact that could be solved quickly, cheaply and easily by an experienced specialist arbitraior.

What Sort of Cases are unsuitable?
These are generally cases where the parties do not trust each other (which will include most infringement actions) where one of the parties wants an injunction to restrain the other side from damaging its interests.  Having said that s.48 (5) of the Arbitration Act 1996 confers upon an arbitrator (subject to any agreement to the contrary) the same powers as a judge:

"(a) to order a party to do or refrain from doing anything;
(b) to order specific performance of a contract (other than a contract relating to land);
(c) to order the rectification, setting aside or cancellation of a deed or other document."

 Moreover the civil courts have power under s.44 (2) (e) to grant injunctions in support of an arbitration. It should also be noted that arbitration is a procedure that can be used at any time. There is no reason why one part of the dispute cannot be resolved by litigation, negotiation or mediation and another by arbitration. Intellectual property disputes are usually determined in two phases: the first stage being to decide liability and the second the pecuniary remedy. The taking of an account of profits or an inquiry as to damages is a technical matter involving forensic accountants that could often be conducted more cheaply and quickly by an arbitrator.

Where to find an Arbitrator
Moat arbitrators in the UK are trained and accredited by the Chartered Institute of Arbitrators ("CIArb") which keeps a searchable database of members with particulars of their qualifications. An international panel of arbitrators, mediators and other dispute resolution providers who specialize in intellectual property and technology is maintained by WIPO ("World Intellectual Property Organization") the UN agency for intellectual property. As you can see, I am a member of that panel.  And then there are us (see "Our IP and Technology Dispute Resolution Team" 28 Dec 2013 4-5 IP). Our members include Professor Louis Harms, the former Deputy President of the Supreme Court of Appeal of South Africa, Thomas Dillon who was a senior in-house legal advisor to the trade association of the US film and TV industry as well as me.

How to Appoint an Arbitrator
If you have an arbitration agreement it will probably set out a procedure for appointing an arbitrator. Typical language will be

"Any dispute or difference shall be referred to arbitration before a single arbitrator agreed by the parties of in default of agreement within 28 days appointed by the Chair for the time being of the Bar of England and Wales."

The usual procedure is for the parties to exchange lists of names and curricula vitarum. If the same name appears on both lists he or she is likely to become the arbitrator. If the parties cannot agree the Chair of the Bar or other appointing party will select a suitable candidate from his or her list. Once the arbitrator has been agreed or appointed the parties may enter a supplemental agreement within the arbitrator covering such matters as his or her fees and the date, time and place of the arbitration.

What happens next?
That depends on the terms of the arbitration agreement and the rules that the parties have agreed to adopt. The arbitration may be conducted entirely in writing, orally or partly orally and partly in writing. Usually, the complainant has to send a statement of case to the arbitrator and the other side to which the respondent has to reply within a specified time. Such statements of case are very much like the particulars of claim and defence in civil litigation. After statements of case have been exchanged or indeed at any other time the arbitrator may invite the parties to a case management meeting or he or she may give directions on his or her own initiative in writing. In some cases, disclosure of documents and the exchange of witness statements and experts' reports may be ordered. In other cases, the arbitrator may order documents to be attached to the statements of case or witness statements. If the parties agree, or the arbitrator decides, that witnesses' testimony needs to be tested by cross-examination he or she will order a hearing which will be conducted very much like a trial. Arbitrators have power under s.38 (5) of the Arbitration Act 1996 to examine witnesses on oath and the civil courts have power under s.43 to compel the attendance of witnesses. Once the arbitrator has considered the evidence and arguments he or she will draft the award. The arbitrator has power under s.56 to without publication of his award until his or her fees have been paid. If as is frequently the case the person paying the arbitrator is the party who succeeds in the arbitration the arbitrator's fee (or at any rate a portion of it) can usually be recovered from the other side. The circumstances in which an award can be challenged are set out in s.67 and s.68 or they may be provision for an appeal or challenge in the rules or arbitration agreement.

Do you want to learn more?
if you happen to be anywhere near Sheffield tomorrow evening you can hear me mention arbitration as well as other forms of ADR in my talk to Sheffield Inventors' Group at the Business and IP Centre at Central Library at 18:00 tomorrow (see "Holding your Own - How to stop others from ripping you off if you are a Private Inventor" 5 April 2014 IP Yorks). If there is sufficient demand I will hold a seminar on ADR of IP disputes at chambers or alternatively a webinar which will of course carry SRA, BSB and IPReg points. If you are interested in attending such an event please call me on 020 7404 5252 or message me through my contact form. You can also tweet me, write on my wall or get in touch through Linkedin, G+ or Xing.  If you need someone to sit as an arbitrator, to represent you before an arbitration, to draft an arbitration agreement or otherwise advise in relation to an arbitration please call our clerks on +44 (0)20 7404 5252 or complete their enquiry form.

Further Reading

Jane Lambert "Our IP and Technology Dispute Resolution Team" 28 Dec 2014 4-5 IP

WIPO  

"ADR Advantages 

"Why Arbitration in Intellectual Property"

Working with Middlesex

On Monday 3 Feb 2014 I gave a talk on intellectual property to a mixed group of LLM and LLB students and staff at the Hendon campus of Middlesex University. As I had a fairly mixed audience that ranged from academics and professionals specializing in IP to undergraduates I started with a general introduction to IP which covered the topics mentioned in my slides and handout of the 26 June 2013. Stressing the territorial limitations of intellectual property rights I mentioned the intellectual property treaties and the TRIPs agreement. Topics that I had discussed in detail in my presentation to the Arab-British Chamber of Commerce just before Christmas in TRIPS: The Linchpin of the World Intellectual Property System. Finally, I focused on bilateral investment treaties which I introduced in "Bilateral Investment Treaties: Eli Lilly and Co. v Government of Canada" 27 July 2013 NIPC Law and is now the subject of an article that I published in Sweet & Maxwell's EIPR last December (Jane Lambert "Bilateral Investment Treaties: A Remedy for SME?" (Dec 2013) [2013] EIPR 759).

The audience seemed to like my presentation - or at least they were very polite about it - and over lunch with Professor Joshua Castellino, Dean of the Law School, I discussed ways in which my chambers and I could contribute to the already extensive work that the University is doing for its own students and staff and businesses and the wider community in Hendon, North London and beyond.  Possible areas of consolidation include the launch of an inventors club along the lines of the one I already chair in Leeds to transferring the clinics that I operate in chambers to Hendon. I also told Professor Castelino about some of the initiatives that are taking place elsewhere in London such as the British Library's Business and IP Centre.

With some 40,000 students on campuses in London, Dubai, Malta and Mauritius, Middlesex University is a massive institution which already offers a wide range of services for business. These include research and consultancy, technology transfer and knowledge transfer schemes for which various sources of funding are available. The University's clients include some of the largest businesses in the UK including ASDA, Halifax, Royal Mail and Toshiba.

If as is likely my discussions with Prof Castellino and his colleagues bear fruit I shall mention it in this blog. In the meantime should anyone from the University wish to attend the next London IP clinic which will be held in chambers on 26 Feb 2014 he or she should make an appointment with George on 020 7670 1550 or complete our London IP clinics form. If you want to discuss this article you may call me on 020 7404 5252 during normal office hours or you can message me through my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.

IP Clinics with a Difference

Between 15:00 and 17:00 on the last Wednesday of every month we shall hold IP clinics at 4-5 Gray's Inn Square. Between those hours we shall offer 4 free 30-minute slots where you can discuss any aspect of IP law with a barrister specializing in intellectual property, technology or media law.

Because we are barristers and not patent or trade mark attorneys our clinics are rather different from those run by the Chartered Institute of Patent Attorneys at the Intellectual Property Office every Tuesday evening or the Innovation Surgeries run by Ideas21 at the British Library. If you want to know more about what the different IP professions do, read my article "IP Professionals - who does what?"  9 Sept 2013,

We can advise you on IP generally, IP strategy, enforcement, responding to claims by third parties, licensing, joint ventures and so much more. Although we know about patent, trade mark or design registration we do not do that work ourselves. If it appears to us that you we may need a patent, trade mark, registered design or other professional's services, we would introduce you to one of the patent or trade mark attorneys or other professionals on our panel.

We can also advise you of some of the other resources that are available such as the Business and IP Centre of the British Library and the three inventors' clubs in London. We can guide you to some of the useful on-line materials that are published by the Intellectual Property Office, European Patent Office, World Intellectual Property Office, Chartered Institute of Patent Attorneys, Institute of Trade Mark Attorneys and, of course, ourselves.

If you want to book a 30 minute slot on the 29 Jan, 26 Feb or 28 March please call Linda on 020 7404 5252 or complete our booking form.

London Pride: a Domain Name for London

Jane Lambert

At present a business or other entity in London can indicate its description by registering a generic top level domain for its website or mailboxes ending in ".com" or ".biz" or its incorporation in or connection with the United Kingdom but it cannot yet show its location in or connexion with London.  For many businesses a London address is its most important attribute.  Soon such a business will be able to do so as a result of the expansion of generic top level domain names that I discussed in my article "What's in a Name? WIPO Domain Name Dispute Resolution Panellists' Meeting 28 Oct 2013" 3 Nov 2013 NIPC Law.  

Dot London Domains Ltd., a wholly owned subsidiary of London & Partners which is the official promotional organization for the capital, has applied to register ".london" as a new generic top level domain name and you can inspect a copy of its application here. According to the application the advantages of operating a successful London TLD registry and the subsequent use of .LONDON domains will be to:

• Enhance the reputation of London and promote the London brand
• Amplify London & Partners’ promotional activity
• Position London as a leading centre of technology and innovation
• Promote consumer choice and benefit registrants by offering relevant and affordable .LONDON domain names
• Create jobs and economic benefit for London.

Dot London's mission is 

"to generate benefits for London and Londoners and provide .LONDON domains to:

• Those interested in disseminating information, whether commercial, non-commercial, news, culture, lifestyle, entertainment, sports or any other topic and who wish to associate themselves and their information with London.

• Those interested in selling goods and services or providing information and who wish to associate themselves and their goods, services and information with London.

• Individuals, organisations and businesses who wish to associate themselves or identify with London."

Its purpose is to

• "Make .LONDON domains available to organisations and individuals in London, the UK and world-wide and by the use of .LONDON domains, enable them to associate their products, information and themselves with London for their own legal purposes.

• Allow organisations and individuals to promote their association or identification with London and provide a means to communicate with those who associate or identify with London.

• Increase the number of organisations and individuals that identify with London through their use of .LONDON domains and email accounts.

• Make .LONDON domains affordable and available subject to compliance with the rules governing .LONDON discussed elsewhere in this application.

• Operate a safe and secure registry for .LONDON that exceeds ICANN’s requirements."

The application states that domain names will generally be registered on a first come first served basis and that applicants will be expected to have an affiliation or association with London though "this need not be based on the location of the applicant."

Registration on a first come first served basis does provide an opportunity for cyber squatting though that will be mitigated by a sunrise period in which trade mark proprietors will have a chance to register domain names in the .london domain space before anybody else and the registry will incorporate the Uniform Domain Name Dispute Resolution Policy into its registration agreement.

Unlike many other new generic top level domain names .london encountered no objections or contentions and its application has been approved (see "London gets go ahead for new ‘.london’ top level internet domain"  10 June 2013 Dot London Domains website). London drew 635th place in the prioritization draw so I am not sure when the domain will be delegated but it cannot be long.

If you want to discuss anything in this article or the legal issues relating to domain names generally, call me on 020 7404 5252 during office hours or use my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.

Introduction to Design Law

British Leyland v Armstrong Patents - the appeal over exhaust pipes that changed
British design law
Photo Wilipedia

Jane Lambert

In everyday language the word design is used in two senses.  We talk of designer jeans and furnishings but also of engine and web design. When used in the first sense the word refers to the appearance of things. In the second sense the word refers to the shape or configuration of an article often so that the article can perform a function.  We call designs in the first category decorative, ornamental or even aesthetic designs and those in the second category functional designs. Most legal systems including ours protect decorative and functional designs in different ways.

That has not always been the case.  Until the 31 July 1989 most functional as well as decorative designs were protected by copyright in the United Kingdom and many Commonwealth countries. Theoretically s.3 of the Copyright Act 1956 did not protect designs as such, but the engineering or production drawing from which an object (which could be a machine or a component for a machine) was manufactured. So long as they were not copied wholly from an antecedent work, such drawings qualified for copyright protection as original artistic works. Copyright subsisted in those drawings for a very long time, namely the life of the author plus 50 years.  If the object that had been made to the drawing had been copied then so too had the drawing, albeit indirectly, The sanctions for copyright infringement were draconian.  In addition to injunctions. orders for delivery up and compensatory and additional damages each infringing copy was deemed to belong to the copyright owner and an infringer who had sold such such copies also had to pay damages for conversion.

The difficulties of protecting functional designs by artistic copyright were exposed by the decision of the House of Lords in British Leyland Motor Corporation and Others v Armstrong Patents Company Ltd and Others [1986] 2 WLR 400, [1986] UKHL 7, [1986] RPC 279, (1986) 5 Tr LR 97, [1986] FSR 221, [1986] 1 All ER 850, [1986] ECC 534, [1986] AC 577 where a motor manufacturer relied on copyright to prevent a replacement parts manufacturer from making exhaust pipes for its motor cars.  In order to prevent monopolization of the after-market the law lords developed a non-statutory exemption to the Copyright Act 1956 conferring a right to repair.

Shortly after that appeal Parliament passed the Copyright, Designs and Patents Act 1988 which came into effect on 1 Aug 1989.   S.51 (1) of that Act provided:

"It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design."

At a stroke that provision brought to an end copyright protection of functional designs.   However, Part III of the same Act introduced a new intellectual property right known as design right which subsisted in original designs.   "Design" for these purposes was defined by s.213 (1) of the 1988 Act as:

"the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article."

This right could be infringed by making articles to the design and making articles to the design was defined by s.226 (2) as

"copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly."

Although design right is very similar to copyright there are a number of important differences.  First, the term is very much shorter:

• up to 10 years from the date upon which articles made to the design are first offered for sale or hire; or
• up to 15 years from the date the design was first recorded in a design document or prototype if articles made to the designer are not offered for sale or hire in the first 5 years of that period.

Secondly, in the last 5 years of the term anyone in the world including an infringer can apply for a licence to do any act that would otherwise infringe design right as of right.  Thirdly, as very few countries adopted similar legislation the citizens of very few countries outside the EU are entitled to claim design right protection for their functional designs.

S.213 (3) (c) of the Act excludes "surface decoration" from the definition of "design" for the purposes of Part III.  Thus, the only way of protecting fabrics, wall coverings and the like remains copyright.

Although decorative designs were protected by copyright until 1989 it was also possible to register them with the Intellectual Property Office ("IPO") for up to 5 renewable periods of 5 years each under the Registered Designs Act 1949.  As originally enacted, registration conferred a monopoly known as "design copyright" for new or original designs and design for that purpose meant "features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye."  The 1949 Act is still in force but it has been overhauled twice: first by Part IV of, and Sched. 4 to, the Copyright, Designs Act 1988 and, more recently, by the Registered Designs Regulations 2001 which implement Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.  The IPO has published a useful unofficial consolidation of the Registered Designs Act 1949 as amended.  Under the amended Act designs may be registered if they are new and have individual character.

Designs that are new and have individual character may also be registered at OHIM (Office of Harmonization in the Internal Market (Trade Marks and Designs) for the EU (including the UK) under the Community Designs Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1). Designs registered with OHIM under this Regulation are known as registered Community designs. 

The Community Designs Regulation also establishes a new intellectual property right for the whole EU known as unregistered Community design.   Designs that are new and have individual character and could therefore be registered with OHIM as registered Community designs or indeed with the IPO under the Registered Designs Act 1949 are protected from copying for up to 3 years from the time they are first made available within the EU.  This unregistered right is particularly useful for the fashion, toy and other industries where the shelf life of a design is very short.

To recap there are five ways of protecting designs in  the UK:

• functional and indeed some ornamental designs are protected in the UK alone by design right pursuant to Part III of the Copyright, Designs and Patents Act 1988;
• artwork recording designs of fabrics, wall coverings and other surface decoration continues to be protected by copyright;
• designs that are new and have individual character can be protected in the UK by registration under the Registered Designs Act 1949;
• such designs could also be protected throughout the whole EU by registration as registered Community designs; and
• such designs can also be protected for up to 3 years throughout the EU without registration as unregistered Community designs.

Design law is likely to be overhauled yet again by the Intellectual Property Bill which is now with the House of Commons. For an overview and commentary on the Bill as it stood in May see my article on The Intellectual Property Bill 28 May 2013 NIPC Law.

Should you wish to learn more about design law, I shall be leading a seminar on Creative Output - Copyright and Related Rights on 30 Oct 2013 at 4-5 Gray's Inn Square between 14:00 and 16:00.  If you want to come you can register on-line through our Eventrbrite site.  The event is free but places are filling up so it is essential to book.   If you want to discuss this article or any aspect of design law call me on 020 7404 5252 during office hours or get in touch through my contact form.

Related Articles

Jane Lambert   "What is IP? Why do Folk want it? How do they get it? How to learn more?" 20 Aug 2013 IP South East

IP Professionals - who does what

Jane Lambert

In his review of IP and growth, Professor Ian Hargreaves noted that there is "a plethora of organisations providing advice and information in relation to IP" and that "the extent of information available on IP can actually act as a significant barrier to SMEs, particularly to start ups." Clearly what is needed is a simple guide as to who does what in the intellectual property jungle.

IP Professionals
In England and Wales there are four established IP professions:

• patent attorneys (or agents);
• trade mark attorneys (or agents);
• specialist solicitors; and 
• specialist counsel.

A fifth profession, that of IP strategists is beginning to emerge here and in the United States.

Patent Applications
If you, your company, university or other organization have invented a new product or process you may want to apply for a patent for your invention.  If you do, you would be wise to consult a patent attorney.

Patent attorneys specialize in drafting applications for patents that are broad enough to provide the necessary protection but not so broad as to be invalid. They are used to dealing with the Intellectual Property Office, European Patent Office and other patent offices around the world and can usually deal with objections by patent examiners and third parties. They will carry out or procure searches of the prior art (previous patent applications and the technical literature) to find out whether your invention is patentable and advise you accordingly.

You cannot however expect patent attorneys to advise you whether it would be wise to apply for a patent because few of them are trained to give business advice. Those that are would probably describe themselves as patent strategists.   It is important to bear that in mind because most patents cost more to obtain than the revenues that they generate. If you want advice on the wisdom of patenting an invention you should consult some other professional such as a management consultant or chartered accountant or, if you can find one, a patent strategist.

Patent attorneys can also draft applications for the registration of new product designs either as registered designs in the UK or as registered Community designs for the whole of the EU.

Most patent attorneys belong to the Chartered Institute of Patent Attorneys ("CIPA") and are regulated by the Intellectual Property Regulation Board ("IPReg").

IPReg keeps a register of patent attorneys which includes those who are employed in-house as well as those in private practice. If you want to find a firm of patent attorneys CIPA has a searchable database on its website.

Many patent attorneys and other intellectual property professionals give up to an hour of their time free of charge to members of the public who consult them at patent clinics.   In London an IP clinic is held every Tuesday at the London branch of the Intellectual Property Office at 4 Abbey Orchard Street, London SW1P 2HT.  Consultations are by appointment only and these can be booked through Sarah Harmsworth on 020 7405 9450.

Until 2006 patent attorneys in the UK were known as patent agents. In that year CIPA changed its name from the Chartered Institute of Patent Agents to the Chartered Institute of Patent Attorneys. In a short article by Ted Blake "Patent agents change name after 124 years" which remains on its website, the President of CIPA explained why:

“This change means that the official name of the Institute is now much more appropriate given the truly international aspects of our profession. Back in 1882 when the Institute was formed, the title patent agent was in use, and it remains a respected title, but with the passage of time members have adopted the term patent attorney which is the title used by patent practitioners throughout the rest of the English-speaking world. The members of the Institute deal every day with the very latest technological ideas which emanate from the four corners of the world, so we must move with the times no matter how proud we are of our history”.

The reference to "international aspects" is surprising because there are two separate professions in the USA:

• patent attorneys who are lawyers specializing in patent practice, and 
• patent agents who are not.

Although English patent attorneys can and increasingly do conduct IP litigation and appear as advocates in the Patents and Patents County Courts they are more like US patent agents than US patent attorneys. The problem lies in the fact that an "attorney" (which means "agent") was a lawyer who practised before the common law courts of England and Wales until the Judicature Act 1873 and the title "attorney at law" is still used by lawyers in the USA, South Africa and many other countries. 

Trade Mark Applications

If you want to register a British or Community trade mark you should consult a registered trade mark attorney.  Trade mark attorneys can also advise and assist you with the registration of designs either for the UK ("registered designs") or the EU ("registered Community designs").  Their professional association is the Institute of Trade Mark Attorneys ("ITMA") and they are also regulated by IPReg.   A list of registered trade mark attorneys is kept by IPReg and the ITMA website has a searchable database of trade mark attorneys in private practice on its website. Those practising in London are here.

Trade mark attorneys used to be known as trade mark agents.   They and their institute have also adopted the description "attorneys".

Many patent attorneys and some solicitors are also trade mark attorneys.   Some law firms prosecute trade mark and design applications even though they may not employ attorneys.

IP Transactions

If you want advice or assistance on a licensing, joint venture or other business transaction where intellectual property is one of several issues you should consult a law firm with expertise in IP.  Most such firms are very large but there are a few such as Filemot Technology Law where the principal Barbara Cookson is qualified as a solicitor, registered patent attorney and trade registered mark attorney.

Many of the larger law firms with specialist practices are members of the Intellectual Property Lawyers' Association ("IPLA"). 

Solicitors are regulated by the Solicitors Regulation Authority ("SRA") though some solicitors (such as Ms. Cookson) who are also patent or trade mark attorneys are regulated by IPReg.

Litigation

If you believe that someone has infringed your patent, copyright, trade mark, registered design or other intellectual property right or your are accused of infringing someone else's you should consult a solicitor or other authorized litigator.   

If you consult a solicitor make sure that he or she or at least one member of his or her team is an IP specialist. All the firms in the IPLA have such expertise.

Some patent and trade mark attorneys have qualified as patent and trade mark attorney litigators.  If the only or principal issue in the litigation is a matter of intellectual property law their knowledge and experience of patent or trade mark prosecution may be advantageous.  Also, some patent and trade mark agencies, such as Marks & Clerk and Harrison Goddard Foot, have associated law firms.

Specialist Counsel

If a new or difficult point of law arises during an application for a patent, registered design or trade mark or a business transaction the patent or trade mark attorney or solicitor may wish to consult a barrister specializing in intellectual property law. Such a barrister can also draft complex legal instruments such as software development contracts, source code deposit deeds and other documents.  

Occasionally, there is a hearing before a hearing officer of the Intellectual Property Office, Appointed Person or other tribunal.   Again, a barrister can help by settling statements of case, witness statements and skeleton arguments and presenting oral arguments to the tribunal.

A barrister can also advise on the strength of a claim for infringement of a patent, copyright, trade mark, design or other intellectual property right, the revocation of a patent, invalidation or revocation of a trade mark or other action in the Patents or Patents County Courts or Intellectual Property list of the Chancery Division or Chancery County Courts.  He or she can settle proceedings and evidence and present cases before those courts. 

The two great strengths of a barrister are that he or she is trained in advocacy and he or she will have been appeared before, or even against, the judges when they were at the Bar. Through such appearance he or she will have learned how the judges think. He or she will thus be in a better position than most to predict how they will determine new issues of law.

Barristers practise as sole practitioners in unincorporated associations known as "chambers" or "sets of chambers".  Well over half are in London and most are established near the Royal Courts of Justice in the historic Inns of Court. A handful of chambers specialize or have expertise in intellectual property and a list of those chambers can be downloaded from the Intellectual Property Bar Association website.

Barristers are regulated by the Bar Standards Board.

For further information see my article "IP Services from Barristers" 6 April 2013 4-5 IP.

IP Strategists
The US IP lawyer and strategist Jackie Hutter described patent strategists as "a new type of Intellectual Property advisor" who "combines business acumen with IP knowledge to provide business-focused advice." She continued:

"An IP Strategist does not advise you to spend your money on obtaining IP because you can, but because you need to. That is, an invention may be legally entitled to a patent, but if that patent does not protect a product or technology that your company is selling currently or planning to sell in the future, obtaining a patent is a waste of your company’s valuable resources. To ensure that you do not waste money on IP rights that do not align with your goals, an IP Strategist works with you to ensure that you only get IP that supports and maximizes your business value. In other words, an IP Strategist first listens to you to determine what your business goals are and how you wish to achieve them and only then will the IP Strategist suggest that you move forward with obtaining cost appropriate IP protection."

In the UK individuals with an interest in IP strategy are appearing in all four professions. Many are members of the IP Strategists Association ("INTIPSA").

Further Information
If you want to discuss this article or intellectual property in general call me on 020 7404 5252 during office hours or fill in my contact form.

How to read a Patent

Intellectual Property Office, Concept House, Newport

Crown copyright
Reproduced with the permission of the IPO

Updated 9 Oct 2015

Jane Lambert

As I have remarked elsewhere, an inventor makes a bargain with the public when he or she applies for a patent for his or her invention. In exchange for a monopoly of the invention the inventor must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art (s.14 (3) of the Patents Act 1977). If the inventor fails to do that, any patent that may be granted can be revoked under s.72 (1) (c) of the Act.

The document in which the invention is disclosed is known as "the specification". It is one of the documents that must be filed when applying for a patent (see s. 14 (2) (b)).  A specification must contain "a description of the invention, a claim or claims and any drawing referred to in the description or any claim".   According to s.14 (5) (a) the claims "define the matter for which the applicant seeks protection". S.125 (1) of the Act adds:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

Claims are therefore enormously important.   It is the claims that we consult when we consider whether a patent has been infringed or whether it is valid.   Usually there are several claims arranged  in numbered paragraphs. Each claim sets out the "features" (also known as "the integers" or "elements") of the invention.   The first claim expresses the invention in the broadest possible terms, the next slightly more narrowly, the third more narrowly still and so on like a set of Russian dolls.

Until the arrival of the internet patent specifications were available only in print.   The only way to read them was to subscribe to the Patents and Designs Journal and buy any specification that was of interest or to visit a the Patent Office or other library that subscribed to the Patent Office's publications.  Nowadays specifications are published on line and can be searched on Espacenet or a number of other online databases.   Specifications are read for the technical information that they contain, for determining the scope of a patent, for finding matter that invalidates a later patent or patent application and many other reasons.

When reading a specification it is important to remember that it is addressed to the "person skilled in the art" that I mentioned in the first paragraph.  A specification uses that person's terminology and assumes that the reader shares that person's skills and knowledge. Generally words are given their everyday meaning but if a word or phrase has a special meaning in the relevant industry then that meaning will apply.

When interpreting claims s.125 (3) of the Patents Act 1977 provides the following guidance:

"The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article."

In other words, patents granted for the UK by the IPO in Newport have to be interpreted the same way as European patents granted by the European Patent Office ("EPO") in Munich.

The Protocol, which was revised a few years ago, now consists of two articles.  For present purposes, it is enough to concentrate on art 1. When you see the reference to art 69, think of s.125 (1) of the Patents Act 1977 which is quoted above:

"Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties."

There is a massive amount of case law from courts and tribunals across Europe as to how this provision is to to be applied.   For those who are keen to find out what they are, the latest cases are Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others [2005] RPC 9, [2004] UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 and Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, [2010] RPC 8.

For a practical example of how patents are interpreted read my article "Construction of Patents - Lizzanno Partitions (UK) Ltd v Interiors Manufacturing Ltd".  If you are new to patents you may like to download my  "Introduction to Patents" presentation that I gave to Liverpool Inventors Club on the 29 April and pages 3 to 8 if my handout.    You can also register for my Introduction to Technology Law seminar at 4-5 Gray's Inn Square on 27 Nov 2013 where we shall discuss patents as well as other ways of protecting investments in R & D such as trade secrets, design rights, plant varieties and so on.

If you want to discuss this article or indeed patents or intellectual property in general, call me on 020 7404 5252 during office hours or fill in my contact form.

Oh and one final tip.   Patents in this country are pronounced with a short "a" as in black. Never as "pay tents".  I have heard BBC announcers and even solicitors use the long "a" but it is a real newbie giveaway.

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