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Showing posts from 2017

IP Rights in China

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Jane Lambert
Some homework for those who are coming to hear our IP attaché, Tom Duke, speak about Succeeding in China - How to mitigate IP risk in Barnsley, Edinburgh, Glasgow, Leeds, Liverpool, London or Manchester this September.

The Intellectual Property Office has produced a very helpful guide entitled Intellectual property rights in China.  A quick read of this guide before he speaks will enable you to make the most of Mr Duke's talk, especially if you are new to the subject.

Although our law differs from China's in detail the basic concepts are the same because China is a member of many of the same international agreements to which we belong. Thus patents protect new inventions. trade marks brands, copyrights literary and artistic works and so on. But there are some rights in Chima that do not exist in our law such as utility models and vice versa. Also, they can enforce IP rights through administrative measures as well as by civil litigation.

For many years technology t…

My Contribution to Helen Tse's "Doing Business After Brexit"

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Doing Business After Brexit A Practical Guide to the Legal ChangesBy:Helen Tse

Jane Lambert

Yesterday the Rt Hon David Davis MP introduced the European Union (Withdrawal) Bill into the House of Commons and his Department announced a flurry of position papers and guidance on the Bill. On the same day, The Commission's Taskforce on Art 50 Negotiations published an even bigger pile of position papers ranging from atomic energy to parallel imports. There could not be a better time for the publication of Doing Business After Brexit, a practical but comprehensive guide to the legal changes edited by Helen Tse.

The book consists of 13 chapters covering every area of law covering everything from Commercial Contracts to Tax. I have contributed the chapter on Intellectual Property and Data Protection.  I have written it in the way that I write this blog, with the business owner or manager very much in mind. On 29 March 2019, a massive corpus of legislation and case law will cease to be part …

UPC Ratification Update: July 2017

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Jane Lambert


In my June UPC Ratification Update 5 June 2017 I wrote:

"There is every chance that the Court will open its doors before the end of this year."

Famous last words! Two days later the UPC Preparatory Committee wrote that "the previously announced target date for the entry into operation of the UPC, envisaged for December 2017, cannot be maintained" (seeUPC – Timetable Update – June 20177 June 2017 UPC website).

For once it is not out fault. Even though we are negotiating terms for exiting the European Union (see Brexit Briefing June 201730 June 2017 NIPC News) we remain on course to ratify the UPC Agreement well before we go. The last legislative hurdle is the ratification of the Protocol on Privileges and Immunities of the Unified Patent Court and that will be done by The Unified Patent Court (Immunities and Privileges) Order 2017 a draft of which has been laid before Parliament together with an explanatory memorandum.

The holdup seems to have been caus…

Brexit Briefing June 2017

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Standard YouTube Licence

Jane Lambert


A lot has happened since my last Brexit briefing in January 2017:

HMG has published its white papers on exiting from, and new partnership with, the European Union and its "great repeal bill";The Prime Minister sought unsuccessfully to take advantage of a massive lead in the opinion polls to increase her parliamentary majority in order to strengthen her hand in the Brexit negotiations;Negotiations have commenced between the British government and the EU and terms of reference have been agreed;The Commission's Art 50 Task Force has created a very useful microsite on the Brexit negotiations with some very useful publications including position papers on ongoing judicial and administrative procedures and  Judicial Cooperation in Civil and Commercial Matters;The Queen's speech has survived an amendment requiring the UK to remain in the customs union and single market but not without a substantial rebellion on the Labour benches and the …

Mrs. May is right - sometimes a bad deal really is worse than no deal

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Jane Lambert

It is hard not to feel a little bit sorry for Mr Ray Dorset, the lead singer of Mungo Jerry, whose case I discussed yesterday in Music and Entertainment Law: Music Contracts - Editions Musicales Alpha S.A.R.L. v Universal Music Publishing Ltd and Others28 June 2017 NIPC Law. Mr Dorset wrote the words of the hit song Alright, Alright, Alrightfromwhich he might reasonably have expected a shed load of money as it reached number 3 in the charts. Instead, he has been ordered to pay £33,600 plus costs to a company run by a former business associate of his former manager.  It could have been even worse for Mr Dorset as a claim by that company against him for breach of contract might well have succeeded.

So how did he find himself in that position?  Well, his first problem was that he tried to record a song without first getting the permission of the company that owned the copyright in the music to do so.  It should have been easy enough to obtain that permission. The tune had al…

What is the Midlands Engine and how does it affect IP?

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Jane Lambert

I have started a Midlands Engine resource page in NIPC East Midlands that is similar to the Northern Powerhouse resource page in IP Northwest.  The term is used in relation to a set of initiatives that were announced by Philip Hammond MP, the Chancellor of the Exchequer, in The Midlands Engine Strategyon 9 March 2017. There is also a Midlands Engine Partnership with a website and a number of publications.

As to the relevance to IP, I wrote:

"The support of enterprise and innovation should result in the creation of more inventions and other intellectual assets as well as funding for development and marketing. Licences will be required to deploy technologies that will improve connectivity and raise productivity."

I have begun a short bibliography which includes my article on The Midlands Engineof 7 Dec 2015 NIPC East Midlands.

Call me on +44 (0)20 7404 5252 or send me a message on my contact form for further information,

Buying Intellectual Property from an Administrator

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Jane Lambert

In Brantano - IP and Insolvency23 June 2017 NIPC East Midlands, I noted that the administrators of Brantano Retail Ltd., which once ran a nationwide chain of shoe shops, had instructed Metis Partners to market the company's trade marks and other intellectual property rights together with various legally protectable intellectual assets. Bids for those rights and assets have to be submitted by 12:00 on 30 June 2017 which does not leave much time for taking legal and other professional advice. Yet such advice will ve required if the bid is to be anything more than guesswork and further advice will be required on the negotiation and drawing up of any assignments and other agreements should a bid be accepted.

For further information call me on 020 7404 5252 during office hours or send me a message through my contact form.

Opinion Former: Why you should choose the UK

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The politics.co website has just published an article entitled Intellectual Property: why you should choose the UKwith a brilliant video on behalf of the Chartered Institute of Patent Attorneys, the Chartered Institute of Trade Mark Attorneys, The British Association of the International Federation of Intellectual Property Attorneys, the Intellectual Property Lawyers Association and the Law Society.
It makes several excellent points about our international connections, our commercial strengths, the quality of our counsel, litigators and patent and trade mark attorneys, the speed and thoroughness of our courts and our mother tongue.
Wishing all my readers a great weekend.

Arbitration News

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Jane Lambert

I should like to congratulate my colleague, Caroline Kenny QC, on her election as President of the Chartered Institute of Arbitrators in Australia (see Top QC elected President of Australian global arbitration body30 May 2017). Caroline is one of several distinguished international tenants of 4-5 Gray's Inn Square.

We have a distinguished team of arbitrators and mediators based in the United Kingdom of which I am one.  I specialize in resolving intellectual property and technology disputes and am a member of the WIPO's panel of neutrals. I am also on the IPO's list of mediation providers.

Finally, the London branch of the Chartered Institute of Arbitrators is holding a seminar on ADR and film disputes at the offices of Herbert Smith Freehills at Exchange House, Primrose Street, London EC2A 2EG between 18:00 and 20:00 this evening. The speakers will be Edward Cullen QC, Andrew Hildebrand, Alan Watts and Daniel Djanogly and the meeting will be chaired by James F…

My Interest in the Gulf Cooperation Countries

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Jane Lambert

The blockade of Qatar by three of its partners in the Gulf Cooperation Council which I discussed in How will the Blockade of Qatar affect IP Law in the GCC Countries? 7 June NIPC Gulf reminds us that those countries have always been important to the United Kingdom. We sell a lot of goods am services to them and they supply us with oil and gas.  We have invested heavily in their economies and they have invested in ours. Those countries would have become even more important to us in that they would have been looking to us and other advanced countries to help them develop new industries and technologies for when the oil runs out and we would have been looking to do more business with them after Brexit.

Because of the importance of this region to the UK, I started some years ago the NIPC Gulf blog which follows legal developments in the region that are likely to affect this country and vice versa.  As I emphasize in the blog;s About page, NIPC Gulf is not a blog on comparativ…

Unified Patent Court: Ratification Update:

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Jane Lambert

Art 89 (1) of the Agreement on a Unified Patent Court provides that the Agreement will come into force on the 1st day of the 4th month after the deposit with the Commission of the 13th instrument of ratification or accession including deposits of such instruments by France, Germany and the United Kingdom.
According to the Council website, 12 states have deposited instruments of ratification. The last of these was Italy which deposited its instrument on on 12 Feb 2017.  Italy's ratification is particularly significant for two reasons. The first is that it had opposed the unitary patent in C-274/11 - Spain and Italy v Commission and others[2013] EUECJ C-274/11 on the grounds that the implementing legislation was incompatible with EU law. The second reason why Italy's participation is significant is that it will be entitled to host one of the sections of the Central Division of the Court of First Instance should the UK be obliged to withdraw from the UPC in 2019.

Desp…

IP in China and Hong Kong: Our Man in China

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Jane Lambert

An important part of my work is connected with China. Hardly surprising given the size of its population, territory and GDP and increasing importance in science, technology and the arts. I am often asked to draft or review distribution, joint venture, licensing, manufacturing or other agreements for British businesses that wish to supply, invest in, or import from, China and, increasingly, for Chinese businesses that wish to supply or invest in us.

Yesterday I received an email from Tom Duke who is Her Majesty's IP Attaché to China and Hong Kong advising me of his work.  He wrote:

"My team and I support over 200 British companies a year with IP issues in China. We help companies of all sizes navigate the Chinese IP system, helping to improve their IP outcomes. We publish a regular China IP Newsletter (here) and a series of business factsheets (here). In addition to company support, I also run the UK’s bilateral policy programmes on IP with various Chinese governme…

Record Number of Page Hits in May 2017 for NIPC Law

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I started this family of blogs on 22 Aug 2005 with Porridge on Patent Infringement, a sceptical response to the European Commission's Proposal for a Council framework decision to strengthen the criminal law framework to combat intellectual property offences.  That article has attracted 170 page hits over the years.

The blog has grown over the years and has now received 737,868 page hits including 36,761 in May which was my best month ever. My readers come from all over the world with the biggest audiences in the USA 269.545, the UK 120,635, Russia 70,528, Germany 39,204 and the Republic of Ireland 34,178.

My most popular articles have been

Copyright in Photographs: Temple Island Collections and Creation Records15 Jan 2012 which attracted 40,022 hits;Injunctions against ISPs Part III: Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd. and Others21 Feb 2012, 18,318 hits;The New Small Claims IP Jurisdiction5 March 2012, 8,121 hits;Patents: Unilever v Johnson27 May…

NIPC Branding Launched

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Jane Lambert

I have just launched a new blog called NIPC Branding which covers trade marks and branding for startups and other small businesses.

This blog has grown out of my public access practice. On the About page I explain that "difficulties have arisen that could have been avoided, or opportunities missed that could have been exploited, had the persons involved been made aware of the issue in advance." The purpose of this blog is discuss those issues and the countermeasures that can be taken to avoid the difficulties and steps that can be taken to exploit the opportunities.

I also set out the services that I offer and how I can be instructed if anyone wants further advice or assistance.

The very first post addresses the question of whether an entrepreneur can apply for a trade mark by him or herself or whether he or she should instruct a trade mark attorney (see Can I apply for a Trade Mark by myself or must I instruct an Attorney?31 May 2017). There is a very big tempt…

Domain Names: WIPO to resolve EU Top Level Domain Name Disputes from Tomorrow

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Jane Lambert

Since 2005 the European Union has had its own top level domain space for businesses, institutions and individuals domiciled in any of the EU or EFTA mmber states.  The best known users of that domain space are the EU institutions such as the European Union itself (http://europa.eu/), the Court of Justice of the European Union (https://curia.europa.eu) and the European Union Intellectual Property Office (https://euipo.europa.eu) but there are others who have registered ".eu" domain names.

The agreement to register an ".eu" domain name requires complaints by trade mark owners over the registration of the domain name to be referred to a panel appointed by a dispute resolution service provider chosen by the complainant. Up to now, the Czech Arbitration Court has been the only dispute resolution service provider but from tomorrow it will be joined by the World Intellectual Property Organization ("WIPO") which is already the leading provider of res…

Has Small Business Access to IP Services improved since the Hargreaves Review?

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In November 2010, a few months after it had assumed office, the Coalition Government commissioned Prof. Ian Hargreaves to review how the intellectual property framework supports growth and innovation. His terms of reference expressly included "the cost and complexity to SMEs of accessing IP services to help them to protect and exploit IP".

At para 9.2 of his report, Digital Opportunity A Review of Intellectual Property and Growth, whichHargreaves presented in May 2011, he identified "gaps in IP knowledge among SMEs and gaps in IP services available to them" which impaired the "ability of young and innovative UK firms to realise the potential value of IP".  That mattered, according to Hargreaves "because of the growing importance of smaller IP intensive firms to future growth."  Hargreaves found that the reason for those gaps was that current service provision was not configured as well as it could have been to help SMEs understand and protect t…

Business Incubators and Accelerators Directory

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Jane Lambert

The Department for Business, Energy and Industrial Strategy has recently published Business incubators and accelerators: the national picture, a research paper for the Departmentwritten by Jonathan Bone, Olivia Allen and Christopher Haley of NESTA and a national directory of business incubators and accelerators.

The authors have identified 205 incubators and 163 accelerators in the UK supporting around 3,450 and 3,660 businesses a year respectively. Incubators are to be found throughout the UK but the regions with the highest proportion to the number of businesses are to be found in Scotland, Northern Ireland and Wales. Over half of all accelerators are in London though the highest concentration of accelerators to the number of businesses is to be found in Scotland.

As I specialize in advising and acting for start-ups and other small and medium enterprises ("SME") this research is particularly valuable since many of the businesses that I help are to be found in …

Lambert to speak at IP Law Summer School

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Jane Lambert

Earlier this week I mentioned Juris Conferences LLC's Eleventh Annual Investment Treaty Arbitration Conference – Technology, IP and Investor-State Arbitration at the Washington Plaza Hotel in Washington DC on 25 April 2017. I suggested that it was particularly timely in view of the final award in Eli Lilly & Co. v Canada 16 March 2017 which I discussed in the Falling to BITs: the Eli Lilly and Philip Morris Cases8 April 2017 NIPC Law. I canvassed support for a similar conference on that topic in England and received one positive reply through Linkedin.

The next day I received an invitation from the organizers of the Cambridge IP Law Summer School to speak on the subject at this year's summer school at Downing College, Cambridge between 14 and 18 Aug 2017. This should be a splendid occasion.  The agenda looks fascinating. Some of the country's leading practitioners in IP law have agreed to speak at the event.

This summer school is billed as:

"A unique an…

Small Claims Track Checklist

Much of the work that I did between 1980 and 2010 was to advise and act for small and medium enterprises from the North of England in claims for copyright, design right and trade mark infringement, breach of confidence and passing off. In many of those cases, a party sought an interim injunction and there was a fierce battle either on motions or Chancery interlocutory applications day or on the hearing of the motion or application for order.

The parties usually lost interest in the case after the injunction was granted or refused. Rarely did a case go to trial and there was hardly ever an account or an inquiry. Sometimes money changed hands to settle a case but it rarely exceeded a few thousand pounds.
Nowadays, most of those cases would fall within the jurisdiction of IPEC ("the Intellectual Property Enterprise Court"). IPEC was established on 1 Oct 2013 as a specialist list within the Chancery Division of the High Court of Justice for intellectual property claims of £500,…

Latest Articles

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Falling to BITs: the Eli Lilly and Philip Morris Cases NIPC Law  8 April 2017 Do the awards in Philip Morris v Australia and Eli Lilly v Canada mean that IP owners can't claim compensation from foreign governments if those governments fail to enforce their IP laws? Probably not, because nothing in those cases affects the principle that an investor that suffers expropriation of his IP rights can recover compensation for such expropriation. More
IP Yorkshire 10 April 2018
I was one of the speakers at CIPA's York meeting at the Principal Hotel. The others were Louise Edwards of Mazars, David Bloom of Safeguard IP and Kalim Yasseen of the IPO. Tony Rollins chaired the meeting.

I spoke about litigation after 28 March 2017 when the EU treaties will cease to apply and considered the litigation framework we are likely to find then. Louise discussed changes to patent box relief in the Finance Act 2016 and the Finance Bill. David talked about all the new products in IP insurance. Yasim…

Domain Name Recovery

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When you key in the name of a business or one of its products or services into the address of a modern browser like Chrome the chances are that it will take you to where you want to go. Increasingly frequently, however. such an exercise will lead you to a landing page with sponsored links and searches including links to products or services of the business you are trying to reach. Occasionally, it will even lead to a spoof site that looks and feels like a genuine site but if a user tries to order goods or services through it or simply leaves an email address all sorts of annoying things can happen of which serial spamming is probably the least to worry about.

The reason why internet users are waylaid in this way is that it is very cheap and easy to register a domain name that is the same or similar to a business name or trade mark. Now registering a domain name that is the same as, or similar to, someone else's trade mark or business name without justification has been illegal for…

Small IP Claims Update

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Jane Lambert

It is not often that one receives an accolade from a client. Usually, if a client wins, it is down to the natural justice of the case and nothing to do with the eloquence or preparation of the advocate. If the client loses, it's all the lawyer's fault.

So it was lovely to receive thanks from a public access client earlier this week whose case in the small IP claims track has just been resolved to his satisfaction. The client said that it actually took him a very long time to find someone who truly understands IP the way I do, especially in relation to e-commerce and added that there is certainly a market there for me to tackle.

Although the case was in the small claims track it was not an easy one.  Had the claim not settled a novel point of law would have to have been decided and there were also procedural issues that required several preliminary hearings.

Before 2010 claims like this would have been brought in the Chancery Division of the High Court of Justice wh…