Showing posts from 2015

IP Arbitration

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.  Litigation is one form of adjudication a…

How to challenge a UDRP Decision

Jane Lambert

In my experience as a domain name dispute resolution panellist for the WIPO as well as a member of the Bar who has advised and settled pleadings for both complainants and respondents, most domain name disputes are straightforward. Moreover, most complaints are decided in favour of the complainant.  Of all the cases that have been referred to WIPO since 1999, some 21,399 or nearly 86.0% have resulted in a transfer to the complainant and 407 or 1.6% in a cancellation. A complaint has been denied in only 3,086 cases making 12.4% of the total (see Case Outcome (Consolidated): All Yearson the WIPO website).

Those figures are hardly surprising as it is rare for a complaint to be defended and even rarer for a response to disclose any merit. It can therefore be said with some confidence that most panellists' decisions are likely to be right. Consequently, those decisions will not often be challenged but every so often a party is aggrieved at a decision and wants to take it fu…

Justice in Wales - what about Newport?

Jane Lambert

Instead of reflecting on a brilliant performance of Swan Lake at the Lowry by the Birmingham Royal Ballet, I spent much of Thursday evening reading Justice for Wales. That is the title of a pamphlet written by Sir Roderick Evans QC and others calling for the establishment of a separate judiciary and court system for Wales.  My copy came from my good friend and colleague David Hughes who is a member of my chambers' intellectual property team. I googled "Sir Roderick Evans QC" and "Justice for Wales" but was unable to find the publication on the worldwide web. The nearest I came was Top lawyers campaign for a separate justice system for Wales23 Sept 2015 Wales on Line.

The pamphlet makes a good case for the reform of the English and Welsh justice system generally. For instance:
"In its report entitled ‘Doing Business 2015’, the World Bank ranked the UK only 36th in the world for ‘Enforcing Contracts – how judicial efficiency supports freedom of …

Exercising the right to be forgotten

Jane Lambert

In Right to be forgotten: a Transatlantic Dialogue1 Aug 2015 NIPC Law I discussed the judgment in C‑131/12 Google Spain SL and Another v Agencia Española de Protección de Datos (AEPD) ex parte Costeja36 BHRC 589, [2014] 3 CMLR 50, [2014] EMLR 27, EU:C:2014:317, ECLI:EU:C:2014:317, [2014] All ER (EC) 717, [2014] 3 WLR 659, [2014] ECDR 16, [2014] 2 All ER (Comm) 301, [2014] EUECJ C-131/12, [2014] 1 QB 1022, [2014] QB 1022 and Google's response to it. Yesterday I wrote about Judge Behrens's decision in Dawson-Damer and Others v Taylor Wessing LLP and Others[2015] EWHC 2366 (Ch) (6 Aug 2015) in Wilmslow versus the Bahamas: Dawson-Damer and Others v Taylor Wessing and Others13 Aug 2015. Although Dawson-Damer was not a right to be forgotten case, it casts some light on how rights arising under the 1998 Act would be enforced.

What is the right to be forgotten?

As I observed in Right to be forgotten: a Transatlantic Dialogue the "right to be forgotten" amounts to…

IP Insurance for Business Conference

On 2 July 2015 the Intellectual Property Office held a conference on IP insurance for business at the offices of the Association of British Insurers in Gresham Street. As I have written a lot of articles about IP insurance over the last 10 years I attended the conference with my colleague Ruhi Sethi. Many of the great and the good in intellectual property were there including Mr Justice Arnold, the senior patents judge and Andrea Brewster, president of the Chartered Institute of Patent Attorneys.

Although the title of the conference was IP Insurance for Business its subject matter was very much wider, As you can see from the slides, only David Bloom of Safeguard IP and Dids Macdonld of ACID actually discussed IP insurance. I found Macdonld's speech particularly interesting in that she gave some details of an insurance scheme for ACID members which she had set up with Sybaris Legal and IP. That's the sort of deal I should like to negotiate for private inventors.

Mr Justice Arn…

IP Mediation

Mediation can best be described as "chaired" or "facilitated" negotiation. It works because negotiations proceed through an intermediary known as "a mediator" who is often privy to information that neither party would disclose to the other. To show how mediation works I have uploaded two case histories: one on the resolution of a computer supply dispute and the other a trade mark opposition (see also Mediating Disputes from the Trade Marks Registry1 Sept 2005 NIPC Law).

Both 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. Both have power to penalize parties who fail to do so by, for example, disallowing costs that they would normally have awarded to the successful party or awarding more costs than they would otherwise have ordered the unsuccessful party to pay.

The IPO has recently updated its guidance t…

Why Bother with IP?

Upon seeing the above presentation one of my Yorkshire clients sent me the following rant:
"Hello Jane, I have just finished watching your Enforcing IPR talk.
Very impressive.
The UK law is so dysfunctional and financially prohibitive — serving only the financial elite.
I have to say, having listened to it, it reinforces what I have been saying to you for some time ...
Why bother with IPR?
I mean, why bother with protecting IPR if it is just not within financial reach to defend it?
ADR could be the beneficiary of such prohibitive costs, but not really.

For example, if one entity is more financially endowed than the other it actually is a strategy to threaten the other side with the court system, if only because they know it will bankrupt the other side.
The courts no longer represent fairness, or right over wrong.
The UK law is so dysfunctional and financially prohibitive — serving only the financial elite.
I feel quite depressed to be honest! Kind regards" There's a lot of tru…

Legal Cost Finance - Another Response to Sky Rocketing Court Fees

Yesterday the Ministry of Justice increased fees for issuing proceedings to 5% of the value of the claim for claims over £10,000 with a cap of £10,000 for claims of £200,000 or over.  For some claims that it is a whopping 622% increase in fees.  The statutory instrument that effects those increases is The Civil Proceedings and Family Proceedings Fees (Amendment) Order 2015 which is available only in draft on the website.

For entrepreneurs, designers and inventors this fees increase is very bad news because most IP infringement claims are for injunctions and unspecified damages. As I explained in Why "IP Yorkshire?"10 Sept 2008 there is a correlation between patenting and the cost of enforcement. That is why this country consistently trails not only France and Germany in the number of European  patent applications but also the Netherlands with a third of our population and Switzerland with one eighth. It was because of that correlation that the government …

IALCI Seminar: IP in the Luxury and Fashion Sectors

Last month I uploaded my slides for my presentation to the IALCI seminar on enforcing intellectual property rights in England and Wales. Here is a show reel of the highlights of the seminar.

IALCI Seminar: Enforcing IPR in England and Wales

Jane Lambert

IALCI stands for The international association of lawyers for the creative industries. It was founded in March 2013, during Paris fashion week to provide useful and up-to-date business and legal know-how and solutions to the creative industries.  Its main goal is to enhance the collective knowledge of the creative industries, by organising seminars, webinars and Massive Open Online Courses (MOOCS), talks, google hangouts, podcasts, TV programmes about, and by publishing articles, newsletters, blogs and books on, business and legal topics of critical importance to the creative industries and entertainment sector.

One of those seminars took place on Tuesday, 10 Feb 2015 on the law of luxury goods series: intellectual property – how to protect, manage and monetize the know-how and intangible capital of luxury and fashion brands. Alexander Rozycki and I spoke at that seminar.  My presentation, which appears above, was one of three talks on enforcing intellectual property righ…

Putting IP at the Heart of Your Business Plan

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 that a lot of money has been wasted on patents that will never be worked or on trade mark…