Showing posts from 2014

What an employee can and cannot do when no longer on your payroll

While an employee remains on your payroll he or she is bound by an implied obligation of good faith and fidelity to do his or her best for you. He or she is not allowed to discuss your affairs in public or work for a competitor. As Mr Justice Laddie said in Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] RPC 289, [1996] EWHC Patents 1, (1997) 20(3) IPD 20022, that has nothing to do with the law of confidence or trade secrecy.

However, the employee is not your slave. He or she is entitled to seek work elsewhere or even set himself or herself up in business in competition with you. If the employee leaves your employment he or she is likely to use skills, knowledge and experience gained in your employment. There is nothing wrong with that even if you have spent time and money training the employee. After all, you see nothing wring in recruiting someone who has been trained by somebody else do you. Nor is it disloyal of the employee to attend interviews or take preliminary ste…

Brilliant Beckton

In an email to the Intellectual Property Bar Association, our Chair Henry Carr QC reported that he and a party of other IP lawyers and patent attorneys visited 1000 Dockland Road, Royal Albert Dock, London E16 2QU last month. The reason for their visit is that the site has been identified as a possible venue for the London section of the central division of the Court of First Instance of the Unified Patent Court.

The estate agents' particulars sound idyllic:
"Fully accessible raised floorSuspended ceiling with 1.5m planning gridCat 5 lightingExcellent natural lightViews over Royal Albert DockFour pipe fan coil air conditioning7 underground car parking spaces and bicycle storage3 passenger liftsFive-storey winter garden and building receptionOn site coffee shop, cafeteria and news agents."! Henry's note is also pretty encouraging: "1. The facility is, potentially, very good for a European Institution. The space is large and will allow about five big courts as we…

WIPO Panellists Meeting

Jane Lambert

Last Wednesday I attended the annual domain name panellists' meeting at the World Intellectual Property Organization ("WIPO")'s head office in Geneva. The meeting normally takes place on the third Monday of October but this year it was postponed until December.

The WIPO is one of five domain name dispute resolution service providers that have been approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") for the resolution of disputes between trade mark owners and those who have registered domain names. The other service providers are the Arab Centre for Dispute Resolution, the Asian Domain Name Dispute Resolution Centre, the Czech Arbitration Court Arbitration Centre for Internet Disputes and the National Arbitration Forum.

By a memorandum of understanding between the US Department of Commerce and ICANN dated 25 Nov 1998 the US government entrusted the oversight and management of the domain name system to ICANN. By paragrap…

Bringing high quality advice and advocacy to those who need them most but can often afford them least

When I practised on my own account from the Media Centre in Huddersfield my strapline was
"Bringing high quality advice and advocacy to those who need them most but can often afford them least."  Although I now have to charge more because I have much higher costs I try to do the same in London.

It is now more necessary than ever because the Legal Services Consumer Panel wrote at page 5 of their report 2020 Legal Services How regulators should prepare for the futureNovember 2014:
"The core challenge ahead is to extend access to justice to those currently excluded from the market because they cannot afford legal services. This need and other forces, including government policy, consumer empowerment, technology and the effects of liberalisation, will combine to result in less involvement by lawyers in many of the tasks that until now have made up their staple diet. Consumers will seek alternatives to lawyers or use them in different ways. In place of lawyers will be great…

Intellectual Property Act 2014: Annual Report on Innovation and Growth: First Annual Report from the IPO

If there is one thing that the IPO is good at it is writing reports which is just as well as it was ranked 12th in 2012 in the the list of top 15 patent offices by number of patent applications which was the last year that the World Intellectual Property Office ("WIPO") published that particular league table (see page 17 of WIPO IP Facts and Figures 2012). No doubt it will slip still further after unitary patents become available because why would anyone want a monopoly of an invention for a small, crowded, offshore island which came within an ace of fragmentation last September when they can get a European patent for nearly the whole of the EU as though it were a single state?

S.21 (1) of the Intellectual Property Act 2014 requires the Secretary of State before the end of the period of 6 months beginning with the end of each financial year to:
"lay before Parliament a report setting out—
(a) the Secretary of State’s opinion of the extent to which during that year—
(i) t…

Website Changes

Jane Lambert

As you can see from the above video the Intellectual Property Office has moved to the Government portal.  The new address of the site is although you can get through to the new site if you key in http://www, The new site is not as pretty as the old site and it takes a bit of getting used to but everything that I need seems to be there.

I use the site for the unofficial consolidations of The Patents Act 1977, The Registered Designs Act 1949, The Trade Marks Act 1994 and Parts I and II of the Copyright, Designs and Patents Act 1988 and The Patents Rules 2007 and The Trade Marks Rules 2008 and they all seem to be there. Harder to find are the Tribunal Practice Notices which you need whenever you go before a hearing officer. These have been archived with the old website.  So, too, have the patents, trade marks and some of the designs decisions. The Copyright Tribunal still has its own website

Forthcoming Presentations

Date Title Venue 26 Sept 2014 14:00 – 17:00 Making Sure you make Money from your Brands and Ideas and not other People
Workshop and clinic with speakers from 4-5 Gray’s Inn Square, Loven IP and the Intellectual Property Office CPD BSB and SRA Grantham College, Stonebridge Road, Grantham, NG31 9AP
29 Sept 2014 16:00 – 18:00 Intellectual Property Ac 2014 – What it means to you and your clients
In-depth seminar led by Jane Lambert, CPD BSB and SRA QualitySolicitors Jackson & Canter, 88 Church Street, Liverpool, L1 3AY 15 Oct 2014 18:00 – 19:45 The Intellectual Property Act 2014 - What it means for you and your clients
In-depth seminar led by Jane Lambert, CPD BSB and SRA Business and IP Centre. Central Library, Calverley Street, LS1 3AB

Grantham Science Festival - there is a practical side to science

Jane Lambert

Baroness Thatcher may be Grantham's most famous (or, depending on your politics infamous) daughter but Sir Isaac Newton was indisputably its greatest son. Although Thatcher was by no means in the same league as Newton she was also a scientist. To celebrate its scientific heritage and in particular Newton's theory of gravitation Grantham is holding a science and arts festival known as Gravity Fields between the 24 and 28 Sept 2014.

There will be all everything from rocket science for 2 to 5 year olds to building quantum computers with Professor Danny Segal of Imperial College in the Science Festival and Douglas Hollick's Goldberg Variations to Chasing the Eclipsea new ballet by Chantry Dance Company, the only professional dance company in Lincolnshire.

Now science, the arts and technology are the hallmarks of civilization but people will only invest in them only if their inventions, brands, designs and works of art and literature are safeguarded from the counter…

An Introduction to Intellectual Property, Grantham, 26 Sept 2014

Sponsoring the Performing Arts - the Legal Considerations

'Dream Dance' workshop from Rae Piper on Vimeo

Jane Lambert
As part of the Lincoln Inspired Festival 2014, the Chantry Dance Company delivered a workshop in which the participants were guided in creating their own modern ballet piece based on the subject of dreams. The piece seen in the video was created by the dancers in just 2 hours! You can read all about it in "Chantry Dance Company's Sandman and Dream Dance" 10 May 2014 Terpsichore. As I noted in Chantry Dance Summer School 2 Aug 2014 the company does great educational and outreach work bringing dance into prisons and care homes as well as theatres. Ballet Cymru does great work with Gloucester Dance (see "'Stuck in the Mud' doesn't mean you're stuck" 25 June 2014 Terpsichore). Valuable educational and outreach work is also done by Northern Ballet and Scottish Ballet.

Much of this work depends on sponsorship by businesses and individuals and companies in the performing arts are maki…

How to keep out of court

Jane Lambert

In Ungar v Sugg (1899) 9 RPC 117 Lord Esher MR said:
"A man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined." Clearly, there has to be a better way and indeed there is but you have to think and plan ahead.

The key to keeping out of court is to anticipate and defuse potential disputes before they arise. The best way to do that is to commission regular intellectual property audits from your lawyers or patent or trade mark attorneys.

An IP audit identifies the intellectual assets that you use in your business - that is to say, your brands, designs, technology and works of art and literature (which includes computer software and databases, catalogues and users' manuals as well as poetry and painting) - and finds out who owns them.

If you or your business own an asset the auditor considers whether it is …

Reflections on the Intellectual Property Act 2014

The Intellectual Property Bill received royal assent on the 14 May, just over a year after it was introduced into the House of Lords and is now an Act. It is a very short statute consisting of 24 sections divided into Four Parts together with a Schedule. It enables the Secretary of State to implement the Council Agreement on the Unified Patent Court and the Hague Agreement, expands the scope of the Intellectual Property patents opinion service and establishes an opinions service for designs and provides for appeals from hearing officers in designs matters to be heard by an Appointed Person as in trade marks. It also tidies up s.213 of the Copyright, Designs and Patents Act 1988, the Registered Designs Act 1949 and the Patents Act 1977. For a detailed analysis of the legislation, see my article The Intellectual Property Bill 28 May 2013 NIPC Law and the presentation by Alex Roxycki and me.
The Bill's only controversial provision was clause 13 which created a new criminal offence o…

Happy World Intellectual Property Day

Jane Lambert

Tomorrow is World Intellectual Property Day. I wish all my readers a happy World Intellectual Property Day.   Folk may think that that is an odd greeting. But is it?  When someone is ill don't you wish him a speedy recovery? What is more likely to accelerate his recovery than the medicine or medical device that may have cost millions to develop.  The fruits of that investment are protected by the patents, trade marks and other rights that prevent competitors from taking advantage of the research and development work known collectively as "intellectual property".   Intellectual property is the glue that holds investment in branding, design, technology and creative works together.  So the greeting "Happy World Intellectual Property Day" is a kind of celebration of the world's advances in science, technology, the arts and literature.

Every year there is a different theme is chosen for World Intellectual Property Day.  This year it is "Movies …

New IP Clinics in Hendon and Bradford

Before the economic downturn I used to hold monthly IP clinics in  Barnsley, Bradford, Halifax, Huddersfield, Leeds, Rotherham, York and the Wirral. These were very busy and I used to see between 20 and 30 entrepreneurs, inventors or other creative folk every month. A number of those persons succeeded and they created many new jobs.

When the downturn came, demand for those clinics disappeared almost overnight.  I do not know whether that was because banks were more reluctant to lend or because fewer people wanted to take the risk of setting up new businesses.  Only one clinic kept going throughout those years and that was the one at the Barnsley Business Innovation Centre on the second Tuesday of every month between 10:00 and 12:00.

Now that the economy has started to pick up I have decided to revive my Bradford clinic at Glyde House on the third Thursday between 14:00 and 16:00 and launch a new one at Middlesex University Law School in Hendon on the last Tuesday between 12:00 and 14…