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The Story of an Individual Inventor's Struggle
The day I decided I was going to do something about an idea I had been sitting on for years, was the day that completely changed my life. It was also one of the best decisions I have ever made.
I would say that one in every three people, at some point, will have had a good idea, but it's not an every day subject that you can chat about. A lot of people, no matter how good their idea, think it is beyond their skills or they are told that they must not tell anyone, so they don't.
I began inventing 10 years ago and I was as naive as they come. I had no relevant skills or contacts and was a single parent of two beautiful children. I knew I had a challenge ahead of me, but I am very determined!
I took one step at a time and studied hard to understand what was required. For example, when I first heard how much my Patent Agent charged, I studied the Patent system and acquired all the free advice I could for the next two years and then wrote my own patent application, which was later granted.
Over the next six years I won many awards for my concept, including Bronze Medal for International Invention of the Year, Female Inventor of the Year, Design and Innovation award, and Commendations. I also appeared on TV's Big Breakfast, GMTV with Lorraine Kelly and featured in New Woman magazine.
What I did discover over the years was the advice and services offered to inventors was either too expensive or each adviser only answered the questions relative to his subject. A novice inventor needs to know about 10 different areas in one go as time is precious and money in short supply. A major barrier I came across was being an individual and not a business.
I also found there was a lot more awareness for the need in the South, and living in the North meant a very expensive trip to an exhibition or even a meeting.
I know now I have taken the long hard route but I have experienced so much more in doing so. I was gullible, I fell down every pit-fall out there but I have also experienced some of the best and most fascinating times of my life.
It was my goal to take my concept and present "a commercially viable business proposition" to the most reputable name in my target industry, which was hairdressing. Eight years on I was armed with awards,, including just being named as a finalist in The British Hairdressing Business Awards, Innovation category, alongside the biggest names in hairdressing, and my finished product.
I had done it. I had reached my goal and presented, very professionally and with enormous pride, my product. It was turned down!
OK, I could deal with that, but circumstances delayed the return of my only two finished models (that had eight years and every spare penny put into them). When I requested my models back I was told that they had, accidentally, been destroyed.
I can't express how I felt. I didn't even tell my husband what had happened for a month. I think I was in shock. They did pay me compensation and, if I hadn't felt like I had had the life knocked out of me, I probably may have been able to rebuild one of the models again with the money. My heart and passion for my idea had gone. But "what doesn't kill you makes you stronger!"
I decided I was going to channel my "energy", for want of a better word, into helping other inventors. So I created Inventors' Highway. To start with I structured a day course, which covers all aspects of inventing from:
- You
- Your Idea
- Design and prototyping
- How to protect your idea
- Product patent and market research
right through to preparing to present your idea to a company, looking to licence, or preparation to setting up in business.
Inventors' Highway is presented in a comprehensive and relaxed manner, but with total respect of confidence.
Since starting the business in July 2002, it has gained the support of many professional bodies to which we can signpost inventors such as NWBA, Bolton Business Venture, Campus Ventures, Patent Attorneys and more.
I have also been on numerous courses over the past few years and have certificates in Project Management, Public Speaking, Business Studies, Auto CAD and a Diploma in Performance Coaching in Business. I am just starting my Diploma in Life Coaching.
As a result of developments and the fact that people outside of the North West were approaching Inventors' Highway for advice, I have now put together comprehensive packages to help inventors and "Thoughts".
Thoughts is an outlet in a quaint little tourist town called Ramsbottom, surrounded by countryside with a steam train passing by.
Inside Thoughts you will find unique and exclusive gifts, most of which are created by local artists and inventors and, again, are presented in a calm and relaxing atmosphere.
At the back of the shop you will find our Internet Café, which is used for research and patent searches via Esp@cenet. Here is where you will also find the heart of Inventors' Highway.
Inventors' Highway is growing and we are always glad to hear from anyone, be it an artist, an inventor, an entrepreneur wanting to brainstorm, sponsors wanting to get involved, or manufacturers who can help with prototyping.
Lorna Roscow
www.inventorshighway.co.uk
email: lorna@consultant.com
On 17th January, Lorna heard that she had been short-listed for the finals of the NW Women in Business Awards. The finals will take place at the Reebok Stadium in Bolton on 14th February 2003. (ME)
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President's Diary
Welcome to the first News Exchange of 2003 and to a year of exciting LES meetings and events.
I am about to leave for the LESI Presidents meetings in Florida and, although I know that the time will be spent in air-conditioned meeting rooms, I am really looking forward to feeling the sunshine.
The Annual Lunch arrangements have now been finalised and you should all have received your invitations to The Savoy on February 13th. This is the eighth Annual Lunch and morning meeting and will provide an excellent networking opportunity, supplemented by good food, and we anticipate humour and interest from our guest speaker, Adam Hart-Davis, who will give a talk on "The Weird and Wonderful History of Invention!"
There will be a half-day meeting before the Annual Lunch entitled "The Technology Developer and the Venture Capitalist". We have four key speakers to provide you with an insight into the real needs of both the start-up company and the investor. All start-up company business models require an intellectual property strategy and this strategy will evolve and change in line with the demands of the investors. In order to create a risk reducing strategy, we need to understand how the investor demands can reshape the IP plan. The meeting topics are:
- Why companies choose venture capital funding
- The venture capitalists perspective
- Valuation of companies for venture capital purposes
- Managing venture capital investments
We have organised a half-day Healthcare meeting on the afternoon of May 1st. This will be held at the Royal Institution and promises a deal-orientated, industry-led session that should be of interest to all LES members. The companies participating in the presentations include AstraZeneca, Celltech, Boots Healthcare International, Mundipharma, GSK and J.A.Kemps.
We hope to make the 2003 AGM and conference details available to you shortly. This year's meeting will be at Chelsea Football Club in London on 26th and 27th June. We are hoping that the 2004 AGM will take place in Dublin. I gave a licensing talk for BioConnect Ireland at Trinity College, Dublin before Christmas. The meeting attracted a large and enthusiastic audience in a wonderful location and I am sure that it will make an ideal venue for the LES 2004 meeting.
We try to make our meeting attractive to as wide a range of LES members as possible - don't forget that colleagues are welcome too!
Christi Mitchell,
President LES B&I
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Is your technology working for you in China?
New rules for technology transfer - effect of the new rules
It has just been announced that China is now the world's largest recipient of foreign investment - over $52 billion. Technology transfer forms a significant part of this. Total contracted technology transfers to China in 2001 amounted to over US $9 billion. The top five transferring nations were Germany, the US, Japan, Sweden and Hong Kong. The UK did not make the top 10.
Most analysts predict continued growth. In 2002, China changed its technology transfer rules to reflect its commitments to its WTO accession of 11 December 2001. This article summarises the new regulations and offers some pointers on how to best ensure your agreements are compliant.
What qualifies as technology transfer?
The new regulations (the "Regulations for the Administration of Technology Import and Export"), oversee the "import" of certain technologies into China, which means:
- Patent transfers or assignments of patent application rights
- Patent licenses
- Trade secret assignments
- Technical service provisions
- Other means of technology transfer
Usually, patent holders will enter into manufacturing contracts with Chinese factories. This is considered technology transfer and subject to the new regulations. If you have already established a presence in China (that is, by way of a joint venture or a wholly-foreign owned enterprise), then you will still need to comply with the technology transfer regulations if you wish to transfer technology to your China vehicle.
Categories of technologies
China has advanced dramatically since the early days of reform when most foreign investment consisted of lower product cycle tier products (toys and textiles). While, of course, China still manufactures these products probably cheaper and more efficiently than any other country, it is more so on the back of its own technology rather than foreign. Official policy now encourages advanced new technologies.
The new regulations sort "technology" into three categories:
- Prohibited technology
Such technology cannot be imported into or exported out of China. Examples include manufacturing of nickel-cadmium cells, types of lead and copper making, type setting and plating processes for sheet glass
- Restricted technology
Technology classified as "restricted" means that its import and export are subject to approval and/or recordal. Restricted technologies include genetically modified organisms, certain oil refining technologies, polyester production and types of pigment manufacture
- Unrestricted technology
If not "prohibited" or "restricted" then technology is classified as "unrestricted" and can be imported and exported freely, but needs to be registered
To determine which classification your technology falls in, you will need to refer to catalogues issued by the Government which are periodically amended. The current "prohibited" and "restricted" catalogues are published by the Ministry of Foreign Trade and Economic Cooperation (MOFTEC) and the State Economic and Trade Commission (SETC). If your technology is not listed in either catalogue, then it is deemed "unrestricted".
Approval and Registration Procedures
Once you know how your technology will be classified, you can then determine whether your technology transfer contract should be registered (for unrestricted technology) or approved and registered (for restricted technology). Approval and registration is done after the parties have entered into the technology transfer contract, which is the instrument the authorities consider most closely.
Unrestricted technology
Unrestricted technology is subject to registration only. It does not need to be approved to be imported into China. It should be registered at either MOFTEC or at MOFTEC's lower level equivalent, the Commission for Foreign Economic and Trade (COFTEC). The difference is whether the project is considered a "major project" or not. A "major project" is one where:
- the source of the project capital involves state budget funds, foreign government loans or international financial organization loans;
or
- the project is set up and approved by the State Council.
Submission of the technology transfer contract is made online. Once submitted, MOFTEC/COFTEC reviews the contract and, if approved, issues a Technology Import Contract Registration Certificate. It usually takes about three days from online submission for the certificate to be issued.
Restricted technology
Restricted technology requires both approval and registration, and is subject to both MOFTEC and the SETC scrutiny.
Unlike unrestricted technology, a potential transferor of restricted technology has the choice of first submitting its application for approval in principle before submitting its executed technology transfer contract for registration. Normally, applicants prefer to get the green light on the approval procedure before exposing the contract. This is a new procedure and one which the foreign business community lobbied for for years, before concession was finally made on the run-up to WTO.
What you do is to submit the approval form (signed by both transferor and transferee) along with a description of the technology and a support letter from the local Chinese department responsible for the transferee to MOFTEC. MOFTEC then takes 30 days to approve the application and issue a Letter of Intent Permitting Technology Import.
Then, the parties normally draft and execute their technology transfer contract which is submitted to MOFTEC. After 10 days, MOFTEC will issue a Technology Import Licence if it is satisfied with the provisions and terms of the contract. The contract is then submitted online for registration.
The simultaneous route (the approval application and the executed contract sent together to MOFTEC) takes about 40 working days to approve, so it is normally no more expedient than the separate route. It is sometimes preferable in instances where the contract is already prepared, or where the parties have already entered or intend to enter into similar transfers. However, if the approval application is rejected for whatever reason, the contract review will not proceed and it will actually have to be abandoned or amended (as obviously the contract will contain technology specifications or terms which caused the refusal in the first place).
Conclusion
China represents a major business opportunity for UK and Irish technology companies. Not only is the standard and sophistication of manufacture increasing all the time, but the domestic market is growing at a speed which is the envy of many mature developed economies. The new Chinese Technology Transfer Regulations are still fairly bureaucratic, but that should not come as a surprise to anyone who has done business in China. Properly handled, they should not represent a significant obstacle to successful technology transfer into China.
Ben Goodger, Shanghai - bgoodger@iprights.com
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Elizabeth Emanuel made this dress BUT it is NOT an "Elizabeth Emanuel"
the pitfalls of using your name for your business!
Recent cases involving Elizabeth Emanuel and Gerald Ratner have illustrated once again the pitfalls of people using their own names as the name of their business. This common practice can lead to complex legal problems, not only for the person whose name is used, but also for those involved in dealing with such companies.
"Joe Bloggs took my name and I want it back" screamed the headline, as designer Elizabeth Emanuel prepared to launch a court battle to recover the right to use her name as the name of her business. At first glance, most people are likely to feel some sympathy for Ms Emanuel. Her name, synonymous with Lady Diana Spencer's wedding dress, was one of the most famous in the fashion world, and as things stand she is no longer able to use it as the name of her business. On closer examination, though, the problems that Ms Emanuel finds herself facing in relation to the use of her name are largely of her own making. By no means the first or the last person to fall into this trap, Ms Emanuel has found that adopting one's own name as a trademark can have unforeseen and unwanted consequences.
While business was booming during the eighties, Ms Emanuel built a brand around her own name. Most importantly, she applied for a registered trademark for the "Elizabeth Emanuel" brand, to ensure that no-one else could use the mark in relation to clothes. By 1997, however, business had declined to such an extent that Ms Emanuel was forced to sell her business (including its debts and its trademarks) to Joe Bloggs jeans boss Shami Ahmed for a significant sum. Shortly after the sale, the designer and the eponymous trademark parted company - Ms Emanuel went one way, and the registered trademark went the other. A registered trademark, it should be stressed, is a monopoly right, and generally gives its holder the right to completely control how it is used in relation to particular goods and services. It is also a property right, and can be bought and sold as such - as indeed Ms Emanuel had done. However, the law recognises a person's name is important to them, and consequently there is a statutory defence to an action for trademark infringement where a person is using their own name, provided that such use "is in accordance with honest practices in industrial or commercial matters".
Emanuel's argument was basically that every designer should be entitled to use their own name, and that no third party should be able to use another designer's name. "It's just terrible for any designer not to use their own name," said Ms Emanuel, "I don't think young designers realise just how important their name is and how, if you lose it, you are really stuck." In support of her case she submitted affidavits from Vogue editor Alexandra Shulman and, most bizzarely, Jeffrey Archer, all with a view to supporting her view that a designer's name is crucial. Further, she argued that Joe Bloggs' products confuse the public, who will think that they have been made with the personal involvement of Ms Emanuel. Mr Ahmed's argument was more simple - Ms Emanuel had made her name into a trademark, and then sold it to him. If she had adopted another brand to work under, or had not sold the registered trademark for "Elizabeth Emanuel", she would not have this problem. By making her name and the name of her business synonymous with each other, and then selling the business, she had ceded control over how her name may be used. Mr Ahmed argued, in effect, that Ms Emanuel wants to have her cake and eat it, by selling it to him and then claiming that he isn't allowed to use it in any case.
As widely predicted in intellectual property circles, the case resulted in a clear-cut victory for Mr Ahmed in October 2002. If Ms Emanuel wishes to obtain the "Elizabeth Emanuel" name from Mr Ahmed she must buy it. The status quo set out in the Emanuel case was the same one that was accepted by Gerald Ratner in a recent dispute over the right to use the "Ratner" name, which he sold following the collapse of his business (brought about when he described some of its products as "crap"). While Ms Emanuel is entitled to use her own name while working as a designer, she cannot use her name as the name of her business, or as a brand name. Any such use would not be "in accordance with honest practices …. in commercial matters", and the statutory defence would not be open to her.
Certainly, a decision in support of Mr Ahmed should, perhaps paradoxically, be supported by the great majority of people who use their own names as business names. If Ms Emanuel's action was successful, this would have had huge implications for their own businesses as and when they come to be sold. Take the example of Jimmy Choo, shoe designer and celebrity darling. Potential buyers of his business would be perturbed, no doubt, if they thought that they couldn't use the Jimmy Choo name. Without the "Jimmy Choo" name, the shoe-making business would be worth a tiny fraction of what it is currently worth. Similarly, an exclusive licensee of a trademark consisting of a natural person's name would face real risks if the individual whose name formed that of the trademark could use his own, well known, name anyway. The moral of the story must be that a person should take great care when using their own name as a brand name, as this may lead to unfortunate situations when the brand and the individual become divorced.
Graeme Colquhoun
Associate, McGrigor Donald
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POSH OFF!
If you're a football fan, the likelihood is you know Peterborough Football Club's (FC) nickname is THE POSH (often shortened to POSH). You may also know they have used this nickname since the 1920s.
Unless you managed to escape the radio and television in the 1990s, you will have heard of the Spice Girls, the all girl band (Baby, Posh, Sporty, Scary and Ginger Spice) who had their debut number one single "Wannabe" in 1996. Six years later it seems that what Posh Spice (Aka Victoria Beckham) "really, really wants" is a monopoly in the nickname Posh in the UK.
Peter Boizot, chairman of Peterborough FC, has applied to register two trademarks with the UK Trademarks Registry (TMR) for POSH and THE POSH. Both applications were made in August 1998 and after discussions with the TMR have been restricted to 28 classes. The current applications for goods include detergents, firearms, toys, carpets, and coffee and cover services such as telephone rental, entertainment and news reporting.
On 19 June 2002, the TMR published both applications to see whether any third party opposed them within the three month deadline. In September 2002, Victoria Beckham opposed both applications. News reports suggest the basis of Victoria's oppositions is that since the launch of the Spice Girls she has become known as Posh or Posh Spice throughout the world.
The legal basis for Victoria's oppositions has not been disclosed and it is, therefore, for us to speculate. The likelihood is, it is for one or more of the following reasons:
- The marks are deceptive (s3 (3) (b) Trademarks Act 1994 (TMA))
- The applications were made in bad faith (s3(6) TMA)
- The names consists of, or incorporate, the name of a famous individual and the applicant's name differs from it (s3 (6) TMA)
- Victoria has prior rights in the name Posh (s5 (4) (a) TMA
Is Victoria likely to succeed on the basis of any of these arguments?
- Deception: As Peterborough FC have been known as THE POSH and POSH since the 1920s, it is unlikely the public will be deceived into believing Victoria is connected to goods and/or services which display these marks in relation to football or football merchandise. There may be confusion to the public if Peterborough FC apply the marks to goods and services in relation to pop music or pop music merchandise, which arguably would be deceptive.
- Bad faith: If Peterborough FC do not use the name POSH in relation to some of the goods and services listed in the specification of the applications, and Victoria can show they have no intention of doing so, the specification may be partially struck out.
- Famous: This is unlikely to carry much weight as Posh is simply Victoria's nickname. If Peterborough FC were trying to register the name "Victoria Beckham" she would have a stronger case.
- Prior rights: This is probably the crux of Victoria's opposition. She is likely to argue she has used the name Posh throughout the UK since 1996 for many of the goods which Peterborough FC seek to register it for. Further, as Peterborough FC's interest in the name POSH has been restricted to the Peterborough area until now, she has a prior right to the name nationally. She will be particularly concerned that if their applications are successful they will have the right to use the name POSH and THE POSH throughout the UK, for all the goods and services they have applied for, to the exclusion of her.
A practical solution to this dispute would be for Victoria to agree to Peterborough FC's registration of the names POSH and THE POSH in relation to football and football merchandise, provided they agree to specifically exclude pop music and pop music merchandise. Although she may have common law rights in the name Posh in the pop music industry, she has not applied to register a trademark herself. She should also, therefore, consider registering Posh in the categories she uses the mark, or proposes to use the mark within the next five years. Indeed, if she had already done so, Peterborough FC may have restricted their applications further to ensure there was no overlap of goods and services, and avoided this dispute.
If Victoria opposes the whole of Peterborough FC's applications it is unlikely she will succeed, and she may well find herself prevented from using the name Posh in respect of certain goods and services in the UK in the future.
Carolyn Yearsley-Whitehead
Solicitor, Shoosmiths Solicitors
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Arsenal gunned down!
Arsenal Football Club (AFC) has suffered a shock defeat in the latest round of its brand dispute with street vendor Mr Matthew Reed.
Reed tasted victory in the first round of this battle (April 2001) when the trial judge found that use of signs identical or substantially similar to AFC's registered trademarks ("ARSENAL", "ARSENAL GUNNERS" and its "crest" and "cannon device") on his products did not carry a message that the goods must have originated, or been manufactured under, licence from AFC. Instead, such use of the signs would merely be perceived as a badge of support, loyalty or affiliation. The judge considered that a reference to the European Court of Justice (ECJ) was required to resolve issues of law in relation to the scope of the Trademark Directive 89/105/EEC relating to infringement.
In November 2002, the ECJ ruled in favour of AFC (case C-206/01), and confirmed the view of the Advocate General that unauthorised products bearing Arsenal's name could not be sold by a trader, even if it was clear that they were not official AFC merchandise. The ECJ disagreed with the conclusions of fact reached at trial and indicated that AFC should win because Reed's use was such as would be perceived by some customers as a designation of origin.
Just when everyone thought it was another case of lucky Arsenal, the case came back before the English Courts for final determination and an unexpected defeat. The judge (Laddie) surprised everyone by holding that, in his view, the ECJ had exceeded its jurisdiction and he was not bound by its conclusion. He held that Reed had not infringed AFC's registered trademarks and that he should be free to continue his activities.
Will the "giant-killing" continue or will Arsenal turn things around? Look out for the result of the replay when the case most likely moves on to the English Court of Appeal this year.
Dr Hayley French
Taylor Wessing
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Anne Lane - A Profile
My first encounter with LES was in 1999, when I was working in Montreal for a small start-up drug delivery company, RTP Pharma. The CEO had come across a marketing leaflet for LES US & Canada and had passed it on to me to see if LES could be useful!
I was new to licensing, I had started my career as a research scientist at University College London (UCL), worked as a post-doctoral fellow at Harvard Medical School and at RTP Pharma I was working in business development as well as studying for an MBA at John Molson Business School. Licensing technology was the revenue generator for RTP and the focus of my work was identifying potential licensees and beginning the approach. Being new to the industry I needed a way to build up my contacts outside the Quebec area and so my LES membership began.
The first meeting I attended was the Annual meeting, which that year, 1999, was held in San Antonio, Texas. I had also registered to take the professional licensing course. I was very impressed with the number of representatives from the pharmaceutical and biotechnology industries, because I was not really sure what to expect. The course was very informative, but I have to say that the most useful part of the meeting was the contacts I made. Much of the course was common sense, and I was learning some of it from my MBA programme, but it never hurts to go through it again and have issues re-addressed.
After leaving Canada and coming back to the UK, I started work in the technology transfer office at UCL (UCL Business) as a licensing manager, and as I had already been a member of LES in North America, I was chosen to be the UCL LES member in the UK. The person I replaced was Hayley French, who was also a LES member, and is now a member of Council and had moved on to work at the Centre for Applied Microbiology and Research (CAMR) at Porton Down, Salisbury, as Head of Legal Affairs".
The Licensing Executive's Society was a great way to kick-start my networking in the UK. I had been out of the country for six years, and when I left I had very few industrial contacts. I am now a member of Council myself, and also a member of the LES Education Committee.
I was appointed to the post of Head of the Biopharm section at UCL Business, and we have recently reformed this area into a company vehicle, UCL Biomedica Plc, a wholly-owned UCL company, to cover the commercial activity across UCL. UCL has changed dramatically since I left in 1994, with the mergers of the Royal Free Hospital Medical School (RFHMS), the Institute of Child Health (ICH), the Eastman Dental Institute (EDI), the Institute of Ophthalmology and the Institute of Neurology. UCL Business has successfully established a number of start-up companies and licensed a number of early stage technologies to industry. The formation of UCL Biomedica, under the previous structure of Freemedic Plc, the commercial vehicle used to transfer technologies out of the RFHMS, is hoped to allow a more streamlined process for the exploitation of UCL technologies and also to allow us to pump-prime projects and to invest in spin-outs by retaining income generated within the company. The ultimate aim of UCL Biomedica is to maximise the return to UCL and to further the academic achievements of the university.
LES B&I has been of great help to us. The meetings it organises at the Royal Overseas League can act as useful training for some of the newer members of the UCL Biomedica team. The opportunity to take part in courses organised by Hawksmere has gone a long way to addressing the unique challenges for industry in working with universities and other non-profit research organisations, and also in increasing the awareness of the different pressures and priorities that an academic institution has in comparison to those of industry.
I hope that the membership of LES, especially on the Committees and the Council will begin to include more academic participants and, from a purely selfish point of view, more from the biotechnology and pharmaceutical industries.
Anne Lane.
Anne.lane@ucl.ac.uk
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LES B&I Annual Lunch, The Savoy, London, 13 February 2003
The Annual Lunch is one of the most popular events of the LES B&I calendar and justifiably! The speakers are always excellent and the Lunch, held at the Savoy, provides members with a great opportunity to entertain clients and colleagues in a friendly entertaining atmosphere as well as to catch up with other LES members.
This year's speaker, Adam Hart-Davis, will be well known to all those with an interest in invention. Probably best known as a presenter of Tomorrow's World, he is also a freelance photographer, writer and broadcaster and has presented many other television programmes. At the Lunch he will speak about "The Weird and Wonderful History of Invention".
The preceding morning meeting entitled "The Technology Developer and The Venture Capitalist" addresses some of the most difficult areas for those trying to bring ideas to the market place:
- Where do you get the funding?
- Should you use venture capital?
- Valuation of companies for venture capital purposes
- Managing venture capital investments
Don't miss this chance to hear and speak to the experts.
For further details contact Renate Siebrasse email: Siebrasse@medtap.co.uk
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LES B&I Spring Healthcare Meeting, The Royal Institution, London, 1 May 2003
The Spring Healthcare Meeting will be a half-day afternoon meeting preceded by a buffet lunch.
Details are still being finalised, but the current line-up includes speakers from AstraZeneca, Celltech, Boots Healthcare International, Mundipharma, GSK and JA Kemps.
Topics planned include:
- Results of a survey conducted into various pharma companies' licensing processes, and key learning points
- The use of equity in structuring licensing deals
- Current patent issues in the genomics/biotech area
- Anatomy of a "win-win" IP licensing deal - Nurofen Plus
A key aim of this programme has been to concentrate on subject matter that is deal-oriented and to focus on presenters that work in industry, so that the meeting will have real relevance to service providers AND to pharma deal-makers.
Further details will be made available shortly, including timings, full programme and attendance costs.
The meeting will also be publicised through PLG UK, whose members will also be very welcome to attend.
For further details please contact:
Steve Mansfield, Chair LES B&I Healthcare Committee
steve.mansfield@bhint.com
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Licensing Update - Licensing IPR in business
- Guidance for businesses on changes to copyright law to apply from Spring 2003. Areas include (a) copying for commercial research (b) use of broadcasts in public and access to material for visually impaired. See www.patent.gov.uk/copy/changes.htm
- SAM Business Systems Ltd v Hedley & Co (20020 TCC 19/12/02). With particular regard to the money back guarantee clause, the exclusion and entire agreement clauses in a licence agreement were not unreasonable for the purposes of the Unfair Contract Terms Act 1977 (UCTA).
- Attorney General decision in Paranova cases (12/12/02). AG held not compatible with Articles 28 and 30 for a licence to medicinal which was a parallel import to be revoked on the sole ground that marketing authorisation withdrawn at holders request for reasons other than safety.
- Football Association Premier League Ltd v Panini UK Ltd (12/12/02). Claimant had exclusive licence to produce world-wide sticker albums. Defendant's inclusion of badges and logos in photographs of players was infringement of claimants copyright and such inclusion not "incidental" for the purposes of s. 31 (1) of the CPDA 1988.
- Useful Website for IP and IT legislation. See google powered www.paemen.com
- Intel Corp v Via technologies Inc & others (20/12/02). The Defendants' appeal against summary judgement allowed. Real prospect of success in demonstrating that licences offered by claimant incompatible with Articles 81 and 82 EC.
- Dranez Anstalt & Ors v Zamir Hayek & Ors (26/11/02). The judge had erred in failing to consider whether it was in the public interest for the inventor of medical equipment to be subject to greater restrictions in the application of his inventive skills than those imposed by the Patents Act.
- Worldwide Fund for Nature v World Wrestling Federation (08/11/02). Court not prepared to grant order allowing third party (licensee in relation to wrestling video games) to continue potentially infringing activities (use of WWF logo) until substantive hearing.
- The 3G Patent Platform is a non-profit company set up by the mobile phone industry for evaluating and licensing patents that are essential for manufacture and operation of 3rd generation 3G mobile communications systems. See www.3gpatents.com
Monitored by Dr Hayley French, TAYLOR WESSING
h.french@taylorwessing.com
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News from the Regions
LES Scotland
Annual Burns Supper, Radisson Hotel, Argyle Street, Glasgow 6 February 2003
Our regulars will know that this is a full evening meeting with a sit-down traditional Burns Supper (lounge suits rather than full traditional dress are the norm), the Haggis properly addressed, tot of whisky, traditional music, cash bar and entertaining charismatic speakers.
Our first speaker will be Colin Anderson, MD of DENKI, the award winning computer games company, who have recently entered into an agreement with Sky that ensure DENKI BLOCKS! is broadcast into more than 5 million homes 24 hours, seven days a week! Colin will speak about his experiences in the exploitation of IP and the challenges to be faced in negotiation with a multi-national.
Our second speaker is still to confirm but we can promise you an exciting introduction to the world of information use by the creative industries!
As usual our Burns Supper is open to non-members, do join us to celebrate the life of our national bard!
For further information please contact:
Cathy Rooney
Cathy.rooney@snbts.csa.scot.nhs.uk
LES North-East
Patents, Engineers, Software and the US/Europe Patents Divide
LES North-East held its most successful meeting yet, when Andy Bartlett, Deputy Director, The Patent Office, and Guy Burkill QC, Barrister, 3 New Square, attracted an audience of more than 40 to a half-day meeting, preceded by a buffet lunch. The meeting was kindly hosted by Pace Micro Technology in their fine lecture hall, located within the Salt's Mill complex, Saltaire. Salt's Mill is an historic "model" industrial village created by the Victorian wool baron Sir Titus Salt, that has been declared a UNESCO World Heritage site and today is home for many innovative and high-tech enterprises. It is well worth a visit!
Introduced by Liz Ward, Head of IP at Keeble Hawson and recently elected Chair of LES NE, Andy Bartlett, who heads the Patent Office's examining group which deals with applications relating to software inventions and business methods and is involved with development of policy in this area, reviewed the merits of patents for technological innovation as a stimulus to further innovation. However, he also reminded us of the burdens that a patenting policy could impose, particularly for SMEs. Turning to the question of patents for computer-implemented inventions, Andy reported that the EC packaged software market is now worth 39 billion euros and reviewed the consultation procedure undertaken by the Patent Office on this topic in late 2000, prior to the publication of the EC draft Directive for Software Patents in February 2002. Responses to the consultation procedure were widespread but there was no consensus on how far software ought to be patentable. However, few argued that software should be patentable when there is no technical effect but none disputed the urgent need for clarification of the current position. There was widespread aversion to patents for business methods. Aware of the lack of progress to resolve this issue, the Government tabled an illustrative draft for discussion of how Article 52 of the EPC might be revised to accommodate its conclusions. (www.patent.gov.uk/patent/notices/misc/softpat)
Guy Burkill drew our attention to the particular characteristics of patent disputes in the electronics field, where technical standards are of particular importance. "Patents are important to the creators of technical standards to enable recovery of investment but sometimes technical standards may be attacked by a third party's patents. Block licensing and cross-licensing agreements in this industry are common and infringement can involve an entire product range. To achieve the largest royalty return, patentees prefer to try to licence end products and not just the machinery for making them or, to licence the entire system and not just the chip with the clever part". Guy discussed the three main issues that invariably arise at trial, construction, infringement and validity and illustrated these with a number of cases. In a very fast moving industry those drafting patent claims wished for a crystal ball with a 20-year range!
Guy concluded by emphasising the need for good R&D notebook records to take account of the US practice of granting patents to the first to invent, and said that a contemporaneous record could be especially valuable for defensive purposes when prior use, obviousness and section 64 of the Patents Act 1977 are contested issues.
The meeting was followed by an opportunity for further discussion of the issues of the day and networking over a glass of wine.
Trevor Hunter
LES London Region
Numbers attending the London meetings have been increasing over the last 12 months. The meetings are an excellent way to increase your licensing contacts and to meet speakers. We make every effort to arrange talks with a wide appeal. LES is always keen to hear from you if you have a suggestion for a topic or a speaker.
In December Dr Iain Smith, of TWI, gave a very interesting talk at the Royal Overseas League. TWI is one of the UK's largest research and technology organisations and has an excellent track record of major innovation. Like many organisations, until recently it did not focus on the exploitation of its IPR and so was not fully using the potential of its inventions. From a position, 10 years ago, of no income from IPR and patent expenses of over £100k each year, It now benefits from licence sales of nearly £1m! The IPR team manages about 55 granted patents and has about 100 outstanding patent applications. Over 80 organisations have licences from TWI.
TWI is now able to advise other organisations on their IP policy and their specific management procedures and Iain's talk was about commercialising early stage technology. TWI works with a stage gate process: new inventions or ideas will go through a series of stages. At the end of each stage there is a gate at which a definite go/no go decision is required. The staff involved at each stage will vary but usually include the inventor(s), the Technology Group Manager, IP Manager and the Directors of Research, Business Development and Finance.
The progress of ideas and inventions are communicated widely at TWI and input is sought from a variety of members of staff. The process only works properly if it can be seen that a number of ideas are stopped. Allowing weak ideas through to avoid offending inventors, or for other political reasons, will damage the process. Consequently, some patents will be abandoned and some projects stopped, but those with potential will be exploited to TWI's maximum benefit.
Finding potential partners for early ideas is not easy. The stage gate process reassures potential partners/funders that rigorous checks on the ideas have already been made. It then remains to find the best way of exploiting the idea. For each idea the organisation should choose the method that fits best with their overall business aims. There is no right or wrong in the choice of an exploitation route. However, all key staff should be involved and the choice should not be left to the inventor or even to an IP executive.
For further information please contact: iain.smith@twi.co.uk
LES Irish Section
Intellectual Property- to litigate or mediate
Following on from the successful IP Valuation Seminar held last year, the Irish Section again decided to use the Guinness Hop Store as a venue for the recent morning seminar on IP litigation. Despite torrential rain on the preceding day, the quality of the speakers was evident in that over 50 people braved the conditions to attend on the 15th November!
The meeting was chaired by Peter Short, a European patent and trademark attorney with Tomkins, who introduced the morning's events with an overview of where he believes litigation in Europe is going and whether it is a viable option from an Irish perspective. Michael Edenborough, of Hogarth Chambers in London, then gave us the benefit of his experience of litigation of trademarks in Europe while Pat Kelleher of Bird & Bird discussed litigation from a European perspective, including forum shopping and nuances associated with different jurisdictions. Following coffee, Brian Michaelis and Jim Stoll, US attorneys from Brown Rudnick Berlack Israels in Boston, gave a lively overview of the US dimension to this topic, including some interesting statistics on how many cases actually end up going to full trial. Grace Smith, of McCann Fitzgerald in Dublin, then concluded the speakers with strategies specifically directed to litigation from an Irish perspective. A general Q and A session to all speakers started with the observation that none of the speakers had spoken much on mediation - perhaps it was that they were all lawyers! It was concluded that most litigation does not proceed to full trial - so, in essence, mediation is introduced as part of the litigation process.
After lunch, a smaller group retired to the Gravity Bar for some of the stout for which the Hop Store is famous!! In conclusion, the Seminar was both informative and interactive, providing the opportunity for informal discussions relating to a very formal issue. Special thanks for helping organising the event go to LES Irish Section Committee members Yvonne McNamara, Rosaleen Byrne and Niall Rooney
Barry Moore
bmoore@tomkins.ie
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New Members
Council has been please to welcome the following new members to the Society:
- Dr Gary L Evans, IP Manager, Medichip;
- Dr Alex Freelove, IP Manager, Medichip;
- Dr Panos Kefalas, IP Manager, Medichip;
- Mr Garry Michael Proctor, Legal Services Manager, The London Institute.
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