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Intellectual Property Enterprise Court expands its small claims track outside London

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Bristol Civil Justice Centre – photo depositphotos / jaceksphotos

In the new IPEC guide issued last week, it was rather quietly announced that from October 2019 District Judges will be available in Birmingham, Bristol, Cardiff, Leeds, Manchester and Newcastle to hear intellectual property small claims. This will be welcome news for businesses and individuals in the regions who will now have easier access to the court system to resolve certain small-scale IP disputes.

Since it was set up in 2012, it is difficult to present the history of the IPEC small claims track as anything but a resounding success.  The value of an individual small claim is low (at least, relatively low) but the importance of being able to effectively enforce IP rights at low cost is invaluable in certain industries. Professional photographers in particular have been able to use the system to obtain good compensation for infringements that have occurred, and no doubt deter a great many infringements that as a result have not occurred.

At the same time, small business and individual defendants faced with certain spurious or unjustified allegations that they have infringed intellectual property rights have been able to have their side of the story heard, without the fear that the legal costs involved give them no option but to “settle and pay up”.

An IPEC small claim will typically be dealt with by directions being given on a judge’s review of the paper file, and a final hearing being allocated with a time estimate of one day. In the vast majority of cases it will be necessary for the Claimant to attend the final hearing themselves as a witness, whether or not they choose to be represented by a lawyer. The availability of the “Business and Property Court centres out of London” – the new and rather more descriptive name for what you may still see called the “Chancery District Registries” – is therefore a significant improvement in the accessibility of the Court to litigants far from London.

For “multi-track” cases, those which are too high-value or too complex for the small claims procedure, the IPEC guide has stated for many years that the judges are able and willing to sit outside of London.  Perhaps litigants and their lawyers were afraid to ask, because the first such trial outside London took place in Birmingham in October 2018.  HHJ Melissa Clarke, the judge in the case, commented “I do not know why it has taken so long”.

From time-to-time we have seen intellectual property cases issued in the County Court via the “money claim online” procedure.  The rules make it quite clear that this is not allowed (63.13, Civil Procedure Rules if you want to look it up).  Where a claim is wrongly issued by this route, it almost always serves to increase the time and cost of resolving the dispute.  Given the availability of IPEC small claims outside London, there is no excuse now.  An intellectual property claim must be issued in the correct court.

We look forward to the continued success of the Intellectual Property Enterprise Court and expect that this latest development will further assist those who rely on intellectual property, and a reliable and accessible court system to enforce it, for the success of their own businesses and livelihoods.

Can I wait to file a patent application?

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Can I wait to file a patent application?

 

For start-ups that are building their business around an innovative product, preventing more established companies from copying their idea by having a patent granted is essential. However, there are plenty of other essential aspects of a business which need attention when just starting out.

 

Therefore, is it possible for a start-up to defer filing a patent application, to allow funds to be spent on other areas of the business?

 

Why would I not be able to wait?

 

One of the chief requirements of obtaining a patent is “novelty”. Therefore, your idea must be completely new compared to what is already publicly available at the time of filing the patent application.

 

In general (read on to find a notable exception), patent offices do not distinguish between who made the idea available. Therefore, if you wait to file a patent application and start selling or marketing your product beforehand, then you may be prevented from obtaining a patent.

 

Even if you are not intending to publish or market your product just yet, someone else may have come up with a similar idea. Waiting to file your patent application increases the chance of someone else disclosing or filing for a similar idea – preventing you from obtaining a patent to that idea.

 

“Enabling disclosure”

 

To destroy the novelty of your invention, you would need to publish enough information to allow someone to recreate your invention.

 

In the case of a physical product, selling the product would likely destroy your chances of protecting the product itself. However, the method used to make the product may be the clever idea you want to protect.  If this method is not discernible from looking at the product, and if you have kept the method confidential, then you may still be able to protect this, even after launching. Additionally, if you only publish pictures of the exterior of your product (for example for crowdfunding campaigns), and these do not reveal how the product works, then you may still be able to obtain a patent to the workings of the invention.

 

In the case of an app, if the clever way the app works is locked away behind the scenes and is not apparent from the software which is distributed, then it may still be possible to protect this aspect of the app, even after launching.

 

In the above examples, it would be crucial that the method of production and working of the app be kept confidential. Non-disclosure agreements should always be used if such information must be disseminated to potential business partners or developers.

 

The notable exception

 

The United States (among a small number of other countries) provides a 12-month grace period for inventor disclosures. Therefore, if you publish your invention, this publication and any third-party publications going to the same published material won’t work against your US patent application. This is as long as you file for a patent within 12 months of your first publication.

 

However, other key markets (such as the UK, Europe and China) do not have such grace periods, so this strategy would result in a loss of ability to obtain protection in these markets.

 

Design protection

 

Whilst the UK and Europe do not have a grace period for patents, they do have a 12-month grace period for registered designs. Therefore, if you are only interested in protecting the way your product looks in these territories, you can market your product first, and file for a registered design within 12 months.

 

However, this strategy is not without risks as your registered design can be knocked out if a third party independently derives and publishes the same or a similar design before you file your registered design.

 

Additionally, China, among some other countries, do not have such design grace periods.

 

Conclusion

 

As a general rule of thumb, do not wait to protect your intellectual property (IP), whether that is by way of a patent, trademark and/or design. The IP in your business can be one of the most valuable assets within a few years. Stake your claim to it before someone else does.

 

Furthermore, selling or marketing your invention before filing a patent application would usually prevent you from obtaining a patent downstream. However, if the concept of your invention is not discernible from the product you sell or market, it may still be possible to protect it even after launch. But this is risky. Determining whether and where protection can be obtained in these instances can be complex. If you would like advice on this or on any other aspect of intellectual property, please do not hesitate to contact us on 01242 691 801.

 

Albright IP Brexit Update: May 2019

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Brexit

 

At the time of writing, the UK Parliament is continuing to debate the terms upon which the United Kingdom and Northern Ireland will leave the European Union. In light of this, the deadline for the draft withdrawal Agreement to be signed, has been extended to 31 October 2019. Beyond this, providing ‘a deal’ is signed, a transition period will run up until end 2020.

 

Regardless of whether a modified version of the Withdrawal Agreement is negotiated, it is unlikely that the current draft proposals/terms relating to IP rights will change.

 

Trade Marks & Designs

 

Here are some key points to consider in anticipation of the post-Brexit proposals: 

 

Filing

  • All granted EUTM/RCD Registrations will be cloned at the effective date of Brexit; with the original filing/priority dates being preserved.
  • Any EUTM/RCD Applications pending at the effective date of Brexit will not be cloned; these will retain the original filing date/priority date, provided they are re-filed at the UKIPO within nine months of the effective date of Brexit. Thereafter, they will undergo fresh examination.
  • To ensure you will have rights in the EU and the UK after Brexit, file any new Applications in the EU and the UK going forwards from this point.
  • When filing IRs designating the EU; a separate UK designation should be added.

 

Renewals

  • Any EU renewals falling due prior to Brexit will encompass the UK.
  • Any EU renewals falling due after Brexit will not avoid payment of the renewal fee for a UK clone; this will require a separate renewal.

 

Use

  • For the future, use in the UK will not validate an EU Registration and vice versa. This will become relevant five years after grant, if vulnerability to cancellation for non-use is to be avoided.

 

Pending Proceedings

  • Closure of pending proceedings prior to the effective date of Brexit is to be recommended. As such, Cooling Off periods in pending EUIPO Oppositions should be brought to an end, and ongoing proceedings expediated.
  • Any ongoing EU Opposition and Invalidation proceedings based solely on a UK right, may be thrown out following Brexit.

 

Licenses and Security Interests

  • Licences or security interests recorded against an EUTM/RCD should also be recorded against its clone when this is created.

 

Contracts and Agreements

  • The terms of any pre-Brexit agreements should be reviewed, to ensure compliance following Brexit – opting-out or surrendering a clone might be necessary, as the existence of a UK Registration might be contravening earlier agreements.
  • Any clauses related to jurisdiction, governing law, and territory in existing contracts should be reviewed and amended to include the UK, as well as the EU, where appropriate.
  • Distribution agreements should also be reviewed in anticipation of changes to the exhaustion regime.

 

Patents

 

There will be no fundamental changes insofar as patents are concerned. Since the European Patent Office is not an EU Institution, and since the European Patent Convention is unrelated to EU law, practice will continue as usual.

 

Summary

 

As Brexit approaches, IP owners should be taking pro-active steps to ensure that their rights are well-managed and adequately protected. Whilst Patent owners and Applicants remain largely unaffected by the unfolding Brexit scenario, owners and Applicants of Trade Marks and Registered Designs should actively safeguard their interests, by paying attention to the action points outlined above.

 

Whatever happens in the lead-up to and indeed after Brexit, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most appropriate, most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.

Camborne Trevithick Day – 27th April 2019

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We are pleased to be supporting Camborne Trevithick Day on 27th April 2019.  This annual celebration commemorates Camborne’s most famous son, prolific inventor Richard Trevithick.  The first commercially useful steam engine was developed in 1712 by Thomas Newcomen, and improved by James Watt and others throughout the 18th century.  By the time Richard Trevithick began his professional career steam was already powering the industrial revolution – but Trevithick made critical improvements to efficiency and demonstrated the first working steam locomotive.  This laid the groundwork for George Stephenson’s famous locomotives and the development of the railway in the UK and around the world.

Full details of the event, including how to get there and where to park, may be found at the organiser’s website http://trevithickday.org.uk/.  Perhaps you will be inspired – as Cornwall’s newest patent attorney firm, we certainly hope that Richard Trevithick is not the last great inventor from Cambourne!

In the meantime, we thought it would be interesting to look at the legal side of Trevithick’s career.

Trevithick seems to have spent rather a lot of time trying to navigate patent law.  Initially, it was someone else’s patents – those of James Watt – which proved to be a thorn in Trevithick’s side.  As long ago as 1624, the law had set a maximum term for patents, but Watt managed to get an Act of Parliament to extend his protection for “A method of lessening the consumption of steam in steam engines” until 1800.  The nub of Watt’s patent was the separate condenser, something which led to improved fuel economy over the old Newcomen engine.

Towards the end of its extended term, it appears that Watt’s patent was being widely ignored in Cornwall, with various mining engineers adding separate condensers to old Newcomen engines.  Watt sued and, in theory at least, eventually won.

The expiry of the Watt patent in 1800, coinciding with Trevithick’s own pioneering use of high-pressure steam, represented an opportunity, and his experience with Watt had no doubt left an impression. There is a story – probably completely unverifiable – that on being served with an injunction Trevithick held Watt’s lawyer upside-down over a mineshaft.  Trevithick evidently did not gracefully accept defeat but had surely learned the power of the patent.  What’s more, the litigation over Watt’s patent lead to the important legal principle that a valid patent could be granted for an improvement to a known machine. Trevithick could turn this to his advantage.

After refining his high-pressure engine, Trevithick naturally sought to obtain his own patent.  In January 1802, with his cousin and business partner Andrew Vivian, Trevithick went to London and asked around for someone who knew how to get one.  This does not seem to have been an easy job and required personal attendance at multiple offices.  Trevithick was a busy man, visiting Merthyr Tydfil and Coalbrookdale in the same year, so it was Vivian who took his place in London and in March 1802 wrote to report that he “must call at the Patent Office for the great knob of wax”.  In those days there was no actual examination of a patent application to check that it was for a new invention, but the Patent Office made up for this in impressive bureaucracy.  Nowadays you get the photocopied signature of a middling civil servant in place of that great knob of wax.

Trevithick also took Watt’s lead when it came to charging for the use of his now patented invention.  Like Watt, Trevithick agreed with mine owners that he would be paid a percentage of the money saved on coal by the use of his modern and efficient high-pressure engines.  Unfortunately, after returning from his tour of the Americas, Trevithick found that his customers had simply stopped paying, variously claiming that they thought the patent had expired, or that it did not cover some variation in the boiler design. Trevithick managed to negotiate with a few, but – unlike Watt this time – did not pursue the matter in Court.

Trevithick nevertheless filed for patents throughout his career, ending up with fourteen to his name.  His first patent, of 1802, was numbered GB2599, in a sequence that starts with GB1 of 1617.  By the time Trevithick had obtained his last patent in the year before his death, the number was at GB6308.  More patents had been filed in Trevithick’s career than in the 200 years previous.  The age of technology had certainly arrived.

Illustration from Trevithick’s 1802 patent specification

How Disclosing Your Invention Can Prevent You From Obtaining a Granted Patent

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Starting a business is an exciting adventure to embark upon. Unfortunately, Intellectual Property (IP) is too often an after-thought and mistakes made early on in the process can be detrimental to obtaining IP rights.

 

Take patents for instance. In order to obtain a granted patent in the UK, at the time of filing a patent application, the invention must be novel (i.e. unknown in the whole world) and inventive (i.e. not obvious).

 

Looking more closely at the novelty requirement in the UK, the Patents Act 1977 states that:

 

“(1) An invention shall be taken to be new if it does not form part of the state of the art”,

 

and defines the state of the art as comprising:

 

“all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way” (see section 2 of the Patents Act 1977).

 

In essence, disclosing your invention publicly could prevent you from obtaining a granted patent because your invention will not be considered to be “new”.

 

So how do I know if I’ve publicly disclosed my invention?

 

You are likely to have disclosed your invention publicly if, before filing a patent application, you have:

  • Talked to investors, business partners, friends, or potential clients about your invention
  • Blogged, vlogged, tweeted, written about or posted images of the invention on a social media platform
  • Got a Kickstarter page in which the invention is disclosed
  • Posted a document about your invention on a website
  • Been on Dragons’ Den
  • Given a talk to an audience or displayed a poster at a conference,
  • Published a book or thesis which is on open shelves in a public library, even if no-one has ever read the book
  • Published an article, an abstract, or a grant proposal
  • Given away or sold samples
  • Shown your invention at an exhibition (with some exceptions)
  • Used the invention in a public place

 

There are, however, caveats to be voiced about the above list.

 

Confidentiality

 

Any disclosure in confidence, for example under a Non-Disclosure Agreement (NDA), will not be considered as a public disclosure. For a free, template Non-Disclosure Agreement, please click here.

 

Please note however, that any IP-related discussion you have with a chartered patent attorney or trademark attorney in the UK, such as those here at Albright IP, will be considered as confidential (i.e. not public), without you needing to sign an NDA first. This is because legal advice privilege applies to chartered patent and trademark attorneys.

 

Website postings

 

With regards to website disclosures, the European Board of Appeal provided the following two-step test to clarify when posting a document on a website constitutes a public disclosure.

 

If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL

 

(1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and

 

(2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document,

 

then the document was made available to the public […].

 

Therefore, if you post about your invention online, and if your posting remains online long enough and can be found by typing keywords into a public search engine (such as Google®), then the posting can be cited against your own patent application.

 

You should also, therefore, assume that the same approach will be taken by the UK Intellectual Property Office.

 

Emails

 

In a related case, the European Board of Appeal decided that the act of sending an email via the Internet does not constitute publicly disclosing the email’s contents.

 

Keep in mind, however, that the recipient of an email disclosing the invention needs to be under a confidentiality agreement – otherwise, the email contents could be considered as a public disclosure.

 

I think I’ve disclosed my idea publicly. Does that mean I can’t get a patent granted anymore?

 

Not necessarily.

 

To count as public disclosure, the disclosure also needs to be “enabling”. This means that enough detail needs to be disclosed so that someone “skilled in the art” could deduce how the invention works, for example, see Lux Traffic Controls Limited v Pike Signals Limited [1993] RPC 107, 132-135.

 

If your public disclosure is enabling, it may invalidate only part of your patent application. For example, you may have disclosed how the invention works but not how the invention is made. In this case, you may still be able to get a granted patent for the method of manufacture.

 

Where you have publicly disclosed everything about your invention, then patent protection in the UK or in Europe may no longer be an option. However, in some countries outside of the UK and Europe, you might still be able to rely on a grace period to get a patent granted, for example, in the USA. Alternatively, you may still be able to obtain another form of intellectual property in the UK or in Europe such as a registered design, due to the existence of a grace period.

 

Finally, it is worth highlighting that a public disclosure will only be detrimental if it is done before filing a patent application containing all the details disclosed.

 

In summary, avoid disclosing anything about your invention before you file a patent application, and make sure that any disclosure is done in confidence. If you are unsure on what to do, you can always talk to Albright patent attorneys or trademark attorneys for IP-related advice.

 

Cost-effective biotechnology searches in the UK

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If you have an invention in the field of biotechnology, you should consider filing a UK patent application first. It could save you money on search fees, and give you an idea of patentability in Europe without even filing a European patent application.

 

UK co-operation with Europe

 

Biotechnology-related applications have been accumulating at the UK Intellectual Property Office (UK IPO) for some time, partly due to a lack of suitably qualified examiners.

 

The UK IPO has invested in recruiting and training new examiners, according to their press release, but it will take time for those examiners to become fully proficient at what they do. This is expected to remain the case until sometime in 2019, based on a letter in March 2018 from the UK IPO to the EPO (see Annex 1).

 

In the meantime, the UK IPO has established an agreement with the European Patent Office (EPO), which came into force on 1st July 2018. The agreement will see some biotechnology applications sent over to the EPO for an official search. The first batch of applications to be searched was sent to the EPO in November 2018.

 

How could this benefit you?

 

The official search fee for a UK patent application is normally £150 (GBP). The official search fee for a patent application filed at the EPO is normally €1300 (EUR). The UK IPO will decide which applications get sent to the EPO for a search, and this is expected to be around 200 to 300 applications per year. If you’re lucky, your UK patent application might be one of the ones searched by the EPO, seemingly without the need to pay the much higher European search fee.

 

In addition, if you later file an equivalent application at the EPO which claims priority to a UK application searched by the EPO, the EPO search fee will be partly or fully refunded. Details of the exact level of the refund vary – see the EPO Official Journal of January 2019 for further information.

 

Is it worth patenting in the UK first?

 

It may be a bit of a lottery as to whether your application will be searched by the EPO. However, if it is sent to the EPO for searching, then you may get a direct indication of patentability in Europe before incurring costs for filing a European patent application. Similarly, for a PCT application which has not been searched by the EPO, entering the UK national phase early could be a good strategic move, since you may get an EPO search before you decide whether to incur significant costs for European regional phase entry.

 

Even if you are certain to file in Europe, filing a UK patent application first might still be a good idea, if the EPO-sourced search report includes the usual written opinion. This could be very valuable indeed, particularly if there are objections to sufficiency or plausibility which can be difficult to resolve after filing. Instead, you may get advance knowledge of potential problems and be able to pre-emptively update the patent specification before you file in Europe.

 

If you’d like further advice on patents or any other aspect of intellectual property protection or enforcement, please contact us to speak with one of our qualified attorneys.

 

Four New Appointments Set Albright IP Up For a Strong 2019

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Albright IP has welcomed four new members of staff to its offices. Following an exceptional year of growth in 2018, the new team members will help to strengthen our offering of professional and cost-effective intellectual property (IP) protection for our clients in the UK and across the globe. Our new employees take the total number of staff up to 26 at our Montpellier headquarters.

 

These new additions to the team are a reflection of our ongoing expansion and will bolster us to meet our clients’ ever-evolving needs. We pride ourselves on providing our clients with a unique combination of IP strategy, patent and trademark services combined with the prototype design/development services offered through our in-house design consultancy, DUKU.

 

Commenting on the new arrivals, Albright IP Managing Director Robert Games said:

 

“These new team members have given us a real boost and we’re delighted to be starting 2019 on such a strong footing. They are already supporting our clients and making their individual contributions to our overall delivery of quality legal advice and practice in all matters relating to Intellectual Property. We look forward to another year of driving and protecting innovation for our clients in the UK and internationally.”

 

Meet the new team members

 

With each of the new additions bringing their own interests and insights to the team, you can find out a little about them here…

 

Christina Chan has joined as Trainee Trade Mark Attorney


Christina joins Albright IP straight from Queen Mary University of London, where she completed an MA in Intellectual Property Law. She is particularly interested in the interplay between Intellectual Property Rights, the right to freedom of expression, and their place in the age of interactive and collaborative online activity, and she brings a fresh enthusiasm to the team.

 

Adrian French has joined as Trainee Patent Attorney


Having completed a BEng in Systems Engineering and an MSc in Advanced Biomedical Engineering from the University of Warwick, Adrian worked as a UK IPO Patent Examiner for 5 years.  He is currently working on his dissertation to complete a LL.M in Intellectual Property Law.  He’ll be training as a patent attorney and will be involved in drafting, filing and general prosecution of patents.

 

Jennifer Pitman has joined as IP Administrator


Jenny holds the Patent Administrator’s qualification awarded by the Chartered Institute of Patent Attorneys (CIPA). She has many years of legal experience, both in the UK and her birthplace of Bermuda, having previously worked in IP with a focus on patents and registered designs, since 2009.

 

Helen Morris has joined as IP Administrator

 

Due to attend the CIPA Administrators’ Course later in the year, Helen will be working with patent and design matters, assisting with initial client enquires, through filing and the various stages of the application process to grant and maintenance.

Overcoming UK Patent Rejections

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PATENT REJECTIONS

Many designers spend months and even years working on a development, only to encounter numerous barriers and hurdles raised by the Patent Office when trying to patent it.

 

In many scenarios, the issue with the patent application is that the claimed concept does not fall within the legal definition of an invention. This is given by Section 1(2) of the Patents Act, which can be summarised as follows:

 

Section 1(2):

  1. Scientific theories/discoveries and mathematical methods are unpatentable
  2. Aesthetic creations (e.g. literature, music and drama) are unpatentable
  3. Rules for games, business methods, schemes and rules, and computer programs are unpatentable
  4. The presentation of information is unpatentable

 

In particular, it is not possible to obtain a patent which is directed purely to an algorithm (clause (a) above); copyright generally covers aesthetic creations (clause (b) above); and clauses (c) and (d) are reasonably self-explanatory.

 

As an aside, a nice ‘presentation of information’ may be protected by a registered design instead.

 

Schemes, Rules and Methods – Applying UK Law

 

It is clause (c) above which often gives applicants the most problem, and is more often than not the reason for refusal of individual applicants’ patent applications. It can be difficult to readily assess what constitutes a method for performing a mental act, playing a game or doing business in particular.

 

The test under UK law is derived from the judgement of the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application. This judgement provides a four-step test for determining what is excluded subject-matter.

 

The four-step test is as follows:

 

(1) properly construe the claim

 

In other words, what does the claim actually mean, when translated out of legalese?

 

(2) identify the actual (or alleged) contribution

 

In other words, what does the invention do?

 

(3) ask whether it falls solely within the excluded subject matter

 

Is the claim as a whole excluded under the above provisions? In other words, are you outright claiming a computer programme, for instance?

 

(4) check whether the actual (or alleged) contribution is actually technical in nature

 

If the technical features were stripped out of the claim to expose the underlying inventive concept, would the claim then fall into an excluded matter category?

 

In most circumstances, this Aerotel/Macrossan test is used to frame a Patent Examiner’s objections to a particular claim in a patent application.

 

However, we can use the test as a guideline for determining whether an invention is likely to be excluded from patentability before a patent application is filed.

 

For an assessment of whether an idea is excluded from patentability, it is best to walk backwards through the Aerotel/Macrossan test.

 

  • Is there a technical contribution to your idea?

 

This can be a tricky thing to analyse. What makes something ‘technical’? If you are only able to describe the way your idea will work in abstract terms, then there is a risk that any patent claim to the idea will fail the Aerotel/Macrossan test.

 

  • Does the idea fall completely into one of the excluded categories specified in Section 1(2) above?

 

This is most difficult to assess for clause (c) of Section 1(2), where there may be blending between features which are excluded subject-matter, and features which are not.

 

It is always worth attempting to ‘pitch’ your idea to yourself, in a way that encompasses the scope of protection you would want for the idea. If the clever part of your idea is easily categorizable in one of the definitions of Section 1(2), then there are likely to be issues with patentability in due course.

 

  • Properly construe the claim and identify the contribution

 

This requires a claim to have been created which defines the scope of protection which you would like from your patent, and therefore is something that can be addressed by your patent attorney.

 

If you are able to consider the first two points relating to exclusion from patentability under the UK Patents Act, then we can assist with the preparation of suitable claims which should overcome potential excluded subject-matter objections in advance, and/or advise you before applying for a patent whether your idea is likely to face significant obstacles to grant.

 

Applying Aerotel/Macrossan to your invention

 

If you have a pending patent application with a Section 1(2)(c) rejection raised against the claims, what can you do?

 

(1) Recast the claims to highlight the technical matter. Often UK Patent Examiners can attempt to pick apart a claim into component parts which are well-known in order to exclude them from consideration. It’s worth remembering that this is not necessarily the correct approach to take.

 

If the technical components have been combined in a clever way to solve a problem which would otherwise fall within an excluded category, there may be ways to get around the objections.

 

(2) Consider whether the claim category can be changed. If you have claimed a method of doing something, should you instead be claiming the apparatus that performs the method? This may add the technical characteristics which will help you to demonstrate patentability.

 

(3) Is the Examiner correct? Sometimes, objections can be raised which are not completely accurate, for example, if an Examiner has not fully understood the core inventive ‘nugget’ of your idea. Clarifying claims can help in this regard.

 

If you have received an objection to your pending application, then it’s worthwhile consulting with a patent attorney to see how we might be able to help you achieve your goals.

 

For ideas which are still gestating, it would be worth speaking to a patent attorney prior to filing a patent application. Lack of disclosure, and therefore lack of clarity, is a big factor in receiving objections on the grounds of excluded subject matter. We are experienced in writing patent applications with lots of options for fall-back positions, should the invention be more abstract than most. After all, a patent is potentially a twenty-year investment, and therefore it’s worthwhile getting it correct from day one!

 

Financial Compensation for Intellectual Property Infringement

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Damages ac of profits

An intellectual property right is fundamentally a right to prevent competitors from using your brand, invention, design, copyright work, or whatever.  But what if they do?  A rightsholder who successfully sues for infringement will be able to obtain an injunction – a court order preventing the infringement from continuing.  For infringements which have already occurred, there will usually be an entitlement to financial compensation.

Damages or profits?

A successful claimant will be able to choose either to claim damages – compensation for the loss that they have suffered due to the infringement, or an account of profits – the profits wrongfully made by the infringer.  The claimant will obviously want to choose the remedy worth the most, and will normally be able to get an order for disclosure of the defendant’s documents in order to gauge the relative value of each option.

Damages – lost sales

In theory, damages are compensation paid to a rightsholder for the loss caused by the infringing activity.  A certain number of infringing sales will have been made, but a key question is whether all of those infringing sales represent lost sales to the rightsholder.  All sorts of factors will need to be taken into consideration.  As an example, if a counterfeit or pirate product is sold at a much lower price than the original, and customers probably know that they are buying a counterfeit, then it may be very difficult to say that all of those customers would have paid full price for the genuine article if the infringement was not available.  On the other hand, if it is a very good counterfeit and sold at a similar price, so that customers are misled, then each infringing sale probably does represent a lost sale on the part of the rightsholder.

This example of counterfeit goods is relatively straightforward.  In other cases, for example a patent infringement, it may be that nobody is being misled, but a rightsholder might still argue that at least a proportion of the infringing sales represent lost sales on their part.  Evidence for this may end up being a little inexact.  Again, multiple factors will come into it – the price of the product may be an issue; if the infringing product has aesthetic differences then perhaps some customers would not have bought the patent holder’s product just because they did not like it, and so on.  In the end a Judge will have to weigh up all the evidence and come to an approximate view as to how many sales were lost by the rightsholder.

Damages – reasonable royalty

What if a rightsholder can’t prove lost sales for some or all of the infringements?  They are still entitled to a “reasonable royalty”.  This is an amount determined by looking at how much a hypothetical willing licensee in the position of the infringer would have agreed to pay a hypothetical willing licensor in the position of the rightsholder.  Again it is all a bit – well – hypothetical, but relevant evidence might include similar licences in the industry.  For example, in “simple mechanical” patent cases, reasonable royalties often seem to be determined at about 5% of sale price.

Reasonable royalty damages often end up being a small fraction of damages for lost profits, so rightsholders will work hard to try to prove lost profits for as many sales as possible, if they think they can.

Other heads of damage

Any reasonably foreseeable damage caused by the wrongful infringement can in theory be recovered.  Rightsholders may put forward various theories that they have lost out in different ways and need to be compensated.  A few examples include damages for price depression, where a rightsholder claims that infringing activity has forced them to drop their prices; lost sales of “convoyed goods”, i.e. goods not specifically covered by the relevant IP right but which are typically sold alongside and provide additional revenue; and costs incurred in mitigating damage, for example the cost of additional advertising to counteract lost business caused by the infringement.

Moral prejudice and damages for “flagrant” infringement

The Enforcement Directive[1] provides for “non-economic” factors, such as “moral prejudice”.  What is that?  There is relatively little guidance so far, but it probably allows – in principle – damages for “pain and suffering” and “mental distress” caused by an infringement.  English Courts have been rather reluctant to award damages under this head.

In copyright cases, “additional damages” can be awarded for “flagrant” infringement, and these additional damages can be quite valuable.  Additional damages go beyond the compensatory principle and can be well worth claiming.

Account of profits

What about the other option – an account of profits?  In principle, the rightsholder is entitled to the profits which the infringer has made by infringing, most obviously by selling infringing products.  In the first place this is an accounting question – what profits have actually been made by selling this particular infringing product line?  This might be less than straightforward, and there could be disputes over the proper allocation of variable and fixed costs.  Then what about the central overheads of the business? Whether these can be properly deducted can be a contentious issue.  The legal test is (a) whether the overheads would have been incurred anyway even if the infringement had not occurred and (b) whether the sale of infringing products would not have been replaced by the sale of non-infringing products.  In other words, would the same overheads in fact have sustained a non-infringing business if the infringement had not occurred?[2].  What this boils down to is that the rightsholder is entitled to recover the extra profits the infringer made due to their choice to carry out the acts which infringed.

Overall the rightsholder is entitled to the profits due to the infringement, so that may also raise the question as to whether the fact of infringement was really driving the sale of the product – i.e. did the consumer want an infringing product, a product having the particular characteristics protected by the IP right, or did they just want a product of a certain broader category?  If the infringement did not drive the sale then an apportionment may be made so that the rightsholder is only recovering the profits due to the infringement, rather than all of the profits due to sales of the infringing goods.

In some cases what this can mean is that after all this difficult accounting, an account of profits comes down to more or less the same thing as a reasonable royalty, which is the least a rightsholder can expect if they elect to claim damages.  Probably for that reason, damages tends to be the more popular choice.  It does all depend on the circumstances though.

An enquiry into damages or an account of profits is the very last thing that happens in IP litigation.  But it is well worth both parties having a good look at the possible financial implications early in the process, because with a realistic idea of the value of a claim, a swift and agreeable compromise can often be reached, vastly reducing the legal costs of resolving a dispute.  Estimating damages can be complex, but we’ve made a handy flow-chart to help a little bit.  Also, we would obviously be delighted to advise further on your specific case.

[1] EU Directive 2004/48/EC

[2] See Design & Display Ltd v OOO Abbott & anr. [2016] EWCA Civ 95

Albright IP and Duku get to root of the issue for dental client

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Albright IP and sister product design company Duku have helped Harley Street Dentist Phillip Davies and Hygienist Laraine Wright to solve an everyday issue, with the launch of a new patent pending product line called Techsurg.

 

The product, which hit the markets in early 2018, is designed to give dentists and their patients better access to dental accessories, Phillip Davies explains:

 

“The development of the Techsurg product range originally led from finding a smart and hygienic solution to place much needed tissue boxes within easy reach for the customer.  We developed a number of design solutions and prototypes before finalising on a multi-use product, which holds a variety of items attached by a universal strap to the dentist chair.”

 

With a global market worth $7bn leading dentists invest heavily in the latest equipment presenting their customers with a modern, clean and high-tech surgery to attract and retain customers.

 

With Albright IP and Duku’s help we now have a unique product with multiple applications

While there is a large product range for high tech chairs, instruments, x-ray machines and lighting, there was a clear gap in the market for Techsurg, added Laraine Wright: “We knew that there had to be a better solution to using rubber bands to mount tissue boxes, and while it seems a simple problem to have, the adopted solution of rubber bands was undesirable and a poor reflection of the high-tech standards of modern dentistry. With Albright IP and Duku’s help we now have a unique product with multiple applications from tissue boxes to entertainment, delivered in a clean, sleek, more professional way.”

 

Driven by an ageing population and an increase in cosmetic dentistry the UK dentistry market is very competitive. Last year, consumer spending on dentistry reached around £3.8bn, a growth of 12%. With over 12,000 practices in the UK and a lot of consumer choice, dentist practices not only need to deliver the very best customer experience but ensure that they set themselves apart from the competition.

 

Alex Lee, Director at Duku commented “Consumers want their dentistry to be delivered in sleek, stylish and hygienic dentist practices. Surgeries need to be practical and enable dentists to offer the best service and customer experience for their clients.”

 

The solution includes a silicon rubber grip designed to fasten around the different diameter poles common to dentist chairs. This was complemented by a patented twist-release bracket to allow easy attachment of different items.

 

Alex added “Of course, hygiene was a number one priority and our design solution was focused around developing a wipe clean product, using materials that were suitable for washer disinfection.”

 

Securing strong IP rights including patents, registered designs and registered trademarks is an incredibly important step when developing a new product.

 

Robert Games, Managing Director at Albright IP, responsible for securing the IP commented: “Securing strong IP rights including patents, registered designs and registered trademarks is an incredibly important step when developing a new product.  This not only protects it from being copied but instantly builds value in your company which you can leverage for investment.”

 

“While there are thousands of different straps out there, the Techsurg product has unique protectable features. Not only is it protected in numerous countries across the world, but our client Techsurg will be able to benefit from the Patent Box tax incentive with up to a 50% reduction on corporation tax from sales of the patented product.”

 

With patent protection, manufacturing and packaging design in place, the product was put into production through Duku’s manufacturing partners. Today the product range is being sold across the leading Dentist equipment suppliers.

 

For more information on Techsurg go to www.techsurg.co.uk

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