NIPC News

World Intellectual Property Organization, Geneva Author Emmanuel Berrod  Licence CC BY-SA 4.0   S ource     Wikimedia Commons   Jane Lambert I mentioned the government's consultation on standard essential patents in  Latest Consultation on Standard Essential Patent Licensing   on 18 July 2025.  One of the topics is "Tell us how alternative dispute resolution services work for standard essential patent disputes."   According to its "WIPO ADR for FRAND Disputes" page , the WIPO Arbitration and Mediation Centre has administered some 80 WIPO mediation cases relating to FRAND licensing negotiations. Here are examples of some of the disputes that the Centre has handled: "Mediations between large SEP holders and implementers in Asia and Europe to facilitate the agreement of FRAND licensing terms. Requests for WIPO Mediation relating to licensing negotiations between patent pool administrators and implementers in relation to ongoing unsuccessful...

Department for Science, Innovation and Technology Author bryan...   Licence CC BY-SA 2.0   Source Wikimedia Commons Jane Lambert   In Patents: a New Resource Hub on Standard Essential Patents in May and HMG's other Proposals on FRAND Licensing ,  I wrote on 5 March 2025: "A standard essential patent ("SEP") is a patent that has to be worked in order to comply with a technical standard. Organizations that set such standards (known as standards-setting organizations or SSOs) require SEP proprietors to promise to license the use of their patents to businesses that want to make or distribute products that comply with those standards ("implementers") on fair, reasonable and non-discriminatory ("FRAND") terms as a condition for including their patents within the standards." I added that in theory such a condition looks very fair and ought to work very well but in many cases it doesn't.  That is because implementers delay paying fees until a c...

Intellectual Property Office, Newport Reproduced with kind permission of the Intellectual Property Office Jane Lambert   In  Protecting creativity, supporting innovation: IP enforcement 2020   which was published on 16 May 2020, the Intellectual Property Office promised to review periodically "existing methods of legal recourse for IP infringement to ensure they are effective, consistent, and proportionate."  On 5 Oct 2020, it announced a call for evidence from IP rights owners to inform that review.   The closing date for submissions is 11:45 on 2 Nov 2020. There are three key themes for the review;  the cost of legal challenges,  how accessible and effective the judicial process is, and  improvements to the Small Claims Track of the Intellectual Property Enterprise Court.  There is also a discussion on whether to include registered designs disputes within the jurisdiction of the Small Claims Track. The Introduction  states that t...

The WIPO © 2004 Jane Lambert: all rights reserved Jane Lambert WIPO Advisory Committee on Enforcement 14th Session 2 - 4 Sept 2019 The World Intellectual Property Organization ("WIPO")  is a specialist agency of the United Nations with 192 member states. Its mission is "to lead the development of a balanced and effective international IP system that enables innovation and creativity for the benefit of all." Its mandate, governing body and procedures are set out in the WIPO Convention  to which the British government is a party. One of the WIPO's services is alternative dispute resolution  through arbitration,   mediation  and domain name dispute resolution  and I have been one of its panellists since 2003.  Every year the domain name dispute resolution panellists are invited to Geneva for a day of continuing professional development training.  I have attended every session since 2005 (see Needled in Geneva   18...

US Copyright Office Author Matt Wade Licence Creative Commons Attribution-Share Alike 3.0 Unported Source Wikipedia US Copyright Office Jane Lambert Yesterday I received a phone call from an American lawyer who wanted to learn about the Intellectual Property Enterprise Court's Small Claims Track.  The reason she called is that she advises members of the US Congress who have introduced a bill "to establish an alternative dispute resolution program for copyright small claims, and for other purposes."  I answered her questions as well as I could and referred her to the Intellectual Property Enterprise Court's website , the IPEC and Small Claims Track guides  as well as my own writings on the subject.  I also directed her to Judge Hacon's clerk for further information. The ADR programme for copyright small claims proposed by the members of Congress is very different from IPEC's Small Claims Track.  It does not appear to be a co...

Will Roebuck 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 experie...

Jane Lambert "Litigation should be a last resort" begins para 8 of Practice Direction - Pre-Action Conduct and Protocols which both sides to a dispute are required to follow. The paragraph continues: "As part of a relevant pre-action protocol or this Practice Direction, the parties should consider whether negotiation or some other form of ADR might enable them to settle their dispute without commencing proceedings."  The obligation to consider ways of settling a dispute is not a once-and-for-all step but continues even after a claim form has been issued. What Paragraph 8 means in Practice When I read that paragraph to clients they often have three questions: What is meant by "ADR"? How do I get some of this ADR? and What happens if I don't consider ADR? What is meant by ADR? "ADR" stands for "alternative dispute resolution" which is defined in the Glossary to the Civil Procedure Rules as "Col...

Jane Lambert Earlier this year I discussed mediation as a method of resolving IP disputes (see IP Mediation 22 May 2015). Mediation is a form of alternative dispute resolution ( "ADR" ) , that is to say resolving a disputes without going to court.  ADR offers a number of advantages which the World Intellectual Property Organization ( "WIPO" ) listed in ADR Advantages . As I noted in my previous article "the courts and the Intellectual Property Office ( "IPO" ) hearing officers expect parties to consider mediation or some other form of alternative dispute resolution before issuing proceedings" in every case. In that article I described mediation as "chaired" or "facilitated" negotiation. Like all forms of negotiation it works through consent. However. there are some disputes that can never be resolved in this way.  They require an  adjudication , that is to say a decision based on a finding of fact and law....

European Patent Office, Munich Photo Wikipedia Jane Lambert Many new businesses are started at this time of the year.  Unless it is a tech start-up little thought is likely to be given to intellectual property ( "IP" ) by entrepreneurs and small business owners when drawing up their business plans. That is a mistake because the competitive advantages earned from designing good looking new products, innovation or establishing a reputation for good service can be entrenched by law. It is a particularly British phenomenon fostered partly by lack of awareness of IP law by many business owners and their professional advisers and partly because IP rights were until recently very expensive to enforce. Their competitors in continental Europe, Asia and North America are much more likely to incorporate IP into their business planning. Develop an  IP Strategy First One of the reasons why British business owners and their advisers are wary of IP is tha...