Showing posts from 2017

Lambert to speak at C5 Pharma & Biotech Patent Litigation Conference on 28 Feb 2017

Jane Lambert

One of the most important cases of 2017 was the Supreme Court's decision in Eli Lilly v Actavis UK Ltd and Others [2017] Bus LR 1731, [2017] UKSC 48.  That case is important for two reasons. First, it re-struck the balance that the law has to strike between the needs of inventors for reasonable protection for their inventions, competitors in the industry for certainty and clarity as to what they can and cannot do and the general the general public for reasonable competition much more favourably to inventors.  Secondly, the Court considered for the first time topics such as the "doctrine of equivalents" and "file wrapper estoppel" that are familiar to US judges and lawyers but not to their colleagues in this country.

I wrote about that case in The Supreme Court's Judgment in Eli Lilly v Actavis UK Ltd and Others: how to understand it and why it is important13 July 2017 NIPC Law. My case note received a lot of hits and favourable comment includin…

Adonis's Departure is not Good News for Regional Development

Jane Lambert

For those who have never heard of the National Infrastructure Commission, I described it as an executive agency of the Treasury consisting of a chair, a deputy chair and 9 commissioners (see Jane Lambert Partnering for Prosperity: A new deal for the Cambridge- Milton Keynes-Oxford Arc21 Nov 2017 NIPC East), Its purpose is to offer impartial, expert advice and recommendations to the government on economic infrastructure which includes energy, transport, water (drainage sewerage and flood management) and digital communications. Its objectives are to support sustainable economic growth across all regions of the UK and improve competitiveness and the quality of life.

Lord Adonis was the chair of that Commission and his resignation earlier today is not good news for the regions.  That is because they look to the Commission to secure the funding that they need for the improved transport links and the other requirements identified in the Midlands Engine Strategy. the Northern Po…

NIPC News Roundup - 27 Oct 2017

Jane Lambert

Since my last News Roundupon 12 Oct 2017 I have written about copyright in photographs and television gameshow formats. the construction of patent licence terms and the English courts' jurisdiction to hear applications for declarations of non-infringement. I have also discussed the second reading of the Data Protection Bill in the House of Lords and the Irish High Court's referral to the Court of Justice of the European Union of the question of whether standard contract terms for the transfer of data overseas comply with EU law. I have continued to monitor the Brexit negotiations and discussed a joint letter from the British government and the Commission on our future relationship with the World Trade Organization. I attended the annual meeting of the WIPO domain name dispute resolution panellists and wrote about it in NIPC Branding. I discussed an IPO consultation on how to encourage inventors to do more commercialization and collaboration. I mentioned Manchester…

NIPC News Update - 12 Oct 2017

Jane Lambert

In this Update, I discuss my article on FRAND. the article 50 negotiations with the remaining 27 EU member states. Silicon Roundabout, accessing free IP advice in Yorkshire and my presentation on copyright in photographs in Liverpool yesterday.


Ever since the Statute of Monopolies 1623, the law has tried to balance the interests of consumers with those of inventors. The current manifestation of this balancing exercise occurs where an industry standard requires the use of patented inventions. Obviously, patentees expect and are entitled to be rewarded for their ingenuity but if consumers are to benefit fully from advantages in technology all manufacturers must be allowed to use the patented inventions. The question then arises on what terms and in particular at what rates should such inventions be licensed? The answer from courts around the world is "on terms that are fair, reasonable and non-discriminatory commonly abbreviated to "FRAND".

Ah, but what i…

Free IP Training for Businesses: "When is it OK to reuse other people's photos or other content?" Liverpool 11 Oct 2017

Jane Lambert

Whenever I get a lot of enquiries on the same topic from a particular location I offer a talk on the subject.  I have recently had a lot of enquiries from Liverpool and the North West on "When is it OK to reuse other people's photos or other content?"

The issue can arise in many ways. Sometimes a copyright owner complains that copies of his photos appear on someone else's website without his permission and he wants to know what he can do about it. Other times, I find myself counselling a business owner who has received a bruising letter before claim demanding eye-watering sums of money by way of compensation and legal costs and far-reaching undertakings.

Before the launch of the small claims track of the small claims track of the Intellectual Property Enterprise Court in 2012, the question was often academic because the costs of copyright infringement litigation greatly exceeded the damages that were likely to be awarded. What has made it a live issue is…

NIPC News Roundup 4 Oct 2017


Despite Mrs May's conciliatory speech in Florence, the two sides in the withdrawal agreement negotiations seem to be no closer on the one issue that matters, namely, how can the British government's commitments to such an agreement be guaranteed if the UK will not accept the jurisdiction of the Court of Justice after March 2019 (see Jane Lambert Brexit Briefing - September 20173 Oct 2017 NIPC Brexit).

Despite her warm words, Mrs May reaffirms that no deal is better than a bad deal and, of course, she is right. But the same is true for the 27 states that remain in the EU. A deal that does not guarantee Britain's commitments to the withdrawal agreement to the same extent as they would be bound would be a bad deal for them.  They cannot be expected to agree to it. That is why the European Parliament overwhelmingly concluded that insufficient progress had been made in the withdrawal agreement talks to enable the negotiators to move on to trade (see the European Parliame…

NIPC News Roundup 3 Oct 2017

Business and Property Courts

The Business and Property Courts in Birmingham, Bristol, Cardiff, Leeds, Manchester and London went live yesterday. I discussed them in Launch of a Judicial Superhighwayon 12 July 2014 in IP North West and The Leeds Business and Property Courtson 12 July 2017 in IP Yorkshire. On 27 Sept 2017, the Judiciary issued a new 14-page advisory note which I mentioned inBetter than the M4 - "The Judicial Superhighway" 2 Oct 2017.
Relevance This topic affects IP practitioners and owners as well as litigation lawyers throughout the UK, particularly those in Birmingham, Bristol, Cardiff, Leeds and Manchester.

Commonwealth Games

Birmingham has been chosen as the UK's candidate city to host the Commonwealth Grounds. Like all other major sporting events, the Games will rely on sponsorship, broadcasting and licensing revenues but, unlike the Olympics, there is nothing like the Nairobi Treaty or Olympic association rights to protect the Games' branding. In I…

NIPC News Roundup - 30 Sept 2017

IP Valuation

Article Hidden Value - A Study of the UK Valuation Market30 Sep 2017

The announcement of the appointment of Metis Partners to market Barratts' intellectual property occurred a few days after the publication of Martin Brassell and Jackie Maguire's study of the British IP valuation industry. The study was commissioned by the IPO to help it understand why businesses do not value their IP rights more often. The authors do not address that question directly but rather preliminary questions on the size of the market and the scope for its expansion. It is an interesting and useful enquiry accompanied by an even more useful and interesting appendix on methodology. The report prompted my own thoughts on valuation and whether it is useful. While agreeing that it can be useful I point out that it is not fully developed and that there is a lot of muddled thinking as to how IP works, I can understand businesses' reluctance to use it. However, that should change as the firms…

"Hidden Value: a Study of the UK IP Valuation Market"

Jane Lambert

The appointment of Metis Partners to market the intellectual property of W. Barratt & Co. Ltd. which I mentioned in IP Yorkshire yesterday (see Bradford Footwear Distributor's Intellectual Property Sale29 Sept 2017 IP Yorks) occurred a few days after the publication of Hidden Value: A study of the UK IP Valuation Marketby the Intelectual Property Office.

This was a report by Martin Brassell and Jackie Maguire which was commissioned by the IPO to understand why companies do not consider the hidden financial value of their intangible assets and particularly intellectual property on a more routine basis. The research does not appear to answer that question directly but rather a number of preliminary questions:-
Who are the main suppliers of IP valuation services and how they operate?Why businesses seek IP valuation services?Whether there are any barriers to the development of a market for valuation services? andIf so, how to overcome those barriers? The authors found …

Bell sounds but is anyone listening - Recommendations for the Future of the British Life Sciences Industry

Jane Lambert

The life sciences industry makes a lot of work for my branch of the legal services industry so when Professor Sir John Bell, the Regius Professor of Medicine at Oxford, delivered a report to the government on a strategy for life sciences, we were full of anticipation.  The life sciences industry was one of a handful of sectors that were identified as engines of growth in the Department for Business, Energy and Industrial Strategy's green paper, Building our Industrial Strategy, earlier this year (see page 97) and Sir John's work was specifically welcomed in that consultation document (see pages 102 and 105).

Sir John has now delivered his report, Life Sciences Industrial Strategy – A report to the Government from the life sciences sector, at the Institute of Translational Medicine of the University of Birmingham in the presence of Greg Clark MP, Secretary of State for Business and Jeremy Hunt MP, Secretary of State for Health (see the University's press releas…

IPR Helpdesk: Case Study on IP Strategy

Jane Lambert

Last week I answered the following question from Will Roebuck, one of my readers: "What do start-up entrepreneurs need to look for in a good IP lawyer?" I replied:

"Probably the most useful professional adviser will be one who can help you to use IP to meet your business objectives. That is known as "IP strategy" which the American lawyer Jackie Hutter described as the combination of business acumen with IP knowledge to provide business focused advice (see Hutter What is an IP Strategist? IP Asset Maximizer Blog)."

My article elicited a number of comments including this one from Julian Potter of WP Thomson:

"hi Jane, I am interested in the idea that IP strategists are a new type of adviser. It is certainly the case that in recent years one has seen a number of individuals and organisations refers to themselves as IP strategists, that seemingly being their only skill in some instances. However, identifying IP and formulating it within a cl…

What do Start-up Entrepreneurs need to look for in a Good IP Lawyer?

Jane Lambert

In response to my article on patent revocation, Will Roebuck wrote:

"Thanks for posting Jane - given that we want to attract more (and probably much younger) business entrepreneurs into UK, post Brexit (particularly in the Northern Powerhouse region) what's your recommended advice for choosing the best patent/IP legal expert? What do start-up entrepreneurs need to look for in a good IP lawyer?"

Here is my reply.  Will, this is for you.

The first thing to say is that intellectual property is far too important to be left to IP lawyers and patent and trade mark attorneys. IP should be on the curriculum of every business school in the country. Every entrepreneur, investor, business owner and manager should know how the law protects his or her brands, designs,technology and creative output and how to leverage such protection for the benefit of his or her business.

If you do not already have such knowledge and experience, there are a number of crash courses like t…

Cambridge IP Law Summer School


Before going to China get your Tackle in Order here first

Jane Lambert

The IPO has published details of the China IP Roadshow 2017 when our IP attaché, Tom Duke, will tour Scotland and the North of England between 18 and 20 Sept. My chambers are assisting with the Yorkshire leg of his tour and I can tell you that there have been a lot of enquiries and we are already into double figures with the bookings. If you want to attend the Leeds event call my clerk Steve on 020 7404 5252 or send him an email without delay.

Most British businesses do very well in China but things can go wrong sometimes. When they do, they can have repercussions here. That is where I come in.  Here are some of the problems that occasionally arise:
The British trade mark of a company that applies to register that mark in China is opposed, invalidated or revoked;A company that imports goods from China for distribution in the UK finds that its supplier has no or insufficient legal protection for those goods here;A British distributor that imports goods made to its order in C…