New Intellectual Property Court

posted 29 Nov 2010, 07:31 by Jane Lambert   [ updated 30 Nov 2010, 05:21 ]

The New Intellectual Property Court
Thursday 6th January 2011
14:00 - 17:15
CPD 3 Hours
Gumption Centres, Glydegate, Bradford, BD5 0BQ
t. Dunstan's House, trial centre of the Patents County Court

£120 + VAT 
Save VAT by booking before 1st Jan 2011

How to Book
You can make sure of your place right now by booking and paying online. Otherwise you can d
ownload the course brochure, complete the booking form and send the cheque to NIPC Ltd. The Media Centre, 7 Northumberland Street, Huddersfield, HD1 1RL.

You can also c
all us on 0800 862 0055 and we shall send you an invoice.

Why this is important

New rules for the Patents County Court, which came into force on 1 Oct 2010, have effectively created a new intellectual property court for England and Wales. This Court is intended to handle claims under £500,000 involving small and medium enterprises ("SME").

The rules and practice of this new court are a radical departure from the way intellectual property litigation has been conducted up to now.  Here are some of their features:
  • limits to the overall costs that can normally be recovered in an intellectual property claim (£50,000 on liability and £25,000 for an inquiry as to damages or an account of profits);
  • limits to the costs that can be recovered at each stage of the proceedings (£6,125 for the initial pleadings, £2,500 for attending a case management conference, £15,000 for a trial and son on);
  • statements of case to stand as the primary evidence;
  • strict controls on introducing any other evidence;
  • interim applications to be in writing unless there is a good reason for a hearing; 
  • the court to sit outside London;
  • strict controls on cross-examination; and
  • most trials to be completed within a day or 2 at the outside.
Since most intellectual property claims issued out of the Leeds, Liverpool, Manchester and other Chancery District Registries or their county courts are worth less than £500,000 and involve SME it is likely that most of those cases will in future proceed in the Patents County Court.   It is therefore vital that every solicitor, patent or trade mark attorney in the North gets to know and understand these new rules.
Speakers and Topics

The main speaker will be Jane Lambert of NIPCJane is the only member of the Intellectual Property Bar Association to practise outside London. 

She has been am enthusiastic user of the court ever since it started and in one year settled 25% of the claims issued out of that court.   She has fought several patents, registered designs, design right and trade mark trials and many more interim applications there over the last 20 years.Also, she has published many articles and case notes about the Court's practice. Finally, she contributed to the IPCUC Report that led to the new rules.  

Jane will talk about the history and development of the court, the background to the rule changes, an overview of the rules and case law. She will then discuss in detail the steps to be taken before a dispute arises mentioning IP audits, patent, design and trade mark registrations, alternatives to litigation. contracts and the funding options.
As funding is an issue for many clients, she will be joined by Gareth Greaves-Milner of specialist brokers McParland Finn who will discuss many of the IP insurance packages that are now available at premiums that most SME can afford.

Finally Jane will talk about pre-action procedure, how to avoid threats actions, issuing proceedings and transfer to and from other courts, the statements of case, case management, evidence and trial. In particular, she will discuss such knotty problems as claiming costs off the scale and listing outside London.

In addition to a complete set of materials to follow the course, every delegate will receive a DVD containing a complete set of model pleadings settled by patent counsel, model application notices, skeleton arguments for use at trial, case management conferences and other applications and model minutes of order with links to the relevant rules, practice directions, cases and the Jackson and IPCUC Reports. 

For further information download our brochure.

posted 28 Sept 2010, 10:15 by Jane Lambert

Plaudits for Foundation Course

We now have feedback from our first course:

All delegates recommended the course and most rated it "excellent."

We got an "excellent" rating from most of the delegates for
  • clarity of aims and intended learning outcomes
  • success in meeting the intended learning outcomes
  • knowledge and effectiveness of the speakers
  • method of presentation
  • quality of the course materials
  • administration of the course.
We're repeating the course in the Wirral tomorrow and in Portsmouth at the end of the month.

Wouldn’t you like to do more IP work?

posted 30 Aug 2010, 02:08 by Jane Lambert   [ updated 6 Sept 2010, 00:17 ]

Wouldn’t you like to do more IP work?

There is a vast and largely untapped demand for advice and representation on intellectual property. 

It is vast because every business in the world from a multinational pharmaceutical manufacturer to a tea shop has at least some intellectual assets whether the formula for a wonder drug or a recipe for scones. 

It is largely untapped because the fees that most law firms in the 
Intellectual Property Lawyers Association
 (“IPLA”can command are well beyond the means of teashop proprietors as they are for most businesses. 

Most litigators and general commercial practitioners do not charge at those rates but their problem is that they do not do enough intellectual property work to be familiar with
 the practice of the Patents Court or to appreciate the significance of the latest case on making available in copyright or the Protocol on the interpretation of art 69 of the European Patent Convention.    

A small company’s legal representatives need to consider such things because the copyright or patent issues facing a small business are likely to be very much the same as those that would face a multinational. 

Practitioners on a learning curve therefore have three choices:

  • To charge the client for the time that they spend on the case and their disbursements to counsel upon whom they tend to rely more heavily than in a case in an area of law with which they are more familiar;
  • To absorb most of those extra costs themselves; or 
  • Not to do the work at all.

The trouble with the first choice is that the final bill for the client will not be much less and could even be higher than he would have paid had he gone to an IPLA member firm in the first place and the advice and representation that the client may eventually get from the non-specialist lawyer may turn out to be not quite be as good.

The trouble with the second is that the non-specialist solicitor may not make so much profit on the work and could even make a loss. He will have put in a lot more hours often at the expense of his family and social life and other work and putting himself under a lot of stress for which his only reward may be carping and criticism from his client and the judge and sarcasm and patronizing from the other side. 

It is therefore not surprising that most lawyers opt for the third choice but that is one of the reasons why intellectual property services in this country cost so much more than they do elsewhere. And that in turn helps to explain why the UK trails not just the USA, Japan, Germany and France in the annual number of patent applications but also the Netherlands with one third of our population and Switzerland with one eighth (see the Table in
“Why IP Yorkshire”
 IP Yorkshire Blog10 Sep 2008).

My chambers and its procurement company NIPC Ltd. have tried very hard to do something about our country’s poor showing in the European patent league table ever since NIPC was founded in 1997. We offer monthly IP clinics in seven towns and cities in the North of England. We set up and chair inventors clubs in LeedsLiverpool and Sheffield and have sponsored and supported the ones in Blackburn and Manchester. 

Training non-specialist practitioners in law is a similar initiative. We think our courses will bring two sets of benefits. 

  • First, it should equip non-specialists to do more IP work for their existing clients and maybe bid for more. 
  • Secondly, it will give us an opportunity to meet potential members for our recommended solicitors’ panel.

We get a lot of enquiries from our clinics, inventors’ clubs and websites for work that we as counsel do not do. Some of that is for patent and trade mark agents such as applying for patents, trade marks and registered designs but a lot of it is for solicitors such as setting up companies, drafting leases, shareholders’ agreements and contracts of employment, drafting and responding to letters before claim and issuing or defending proceedings. We have a panel of trusted solicitors to whom we feel comfortable in recommending such workKate ReidSara Ludlam and James Love in Yorkshire, Michael SandysJoanne Shelley and Craig Hollingdrake in the North-West, Barbara Cookson and Peter Groves in London and so on. But they cannot do all the work and clients often want more choices.

Every week from the middle of September we shall be presenting courses somewhere in the country which will help you develop the expertise you need to do more IP work. We are starting off with our IP Foundation Course in BradfordPortsmouth and Merseyside on the 22, 28 and 29 September. These are taster sessions which we are offering at the heavily subsidized price of £25 + VAT. That is as near to free as can make it as the SRA will charge us a fee for CPD accreditation and we must pay for room hire, copying and refreshments.

These will be followed in October by our introductions to PatentsCopyrightsTrade Marks and Designs which we are running from Morgan Cole’s offices at Oxford with Ipso Jure on 6, 13, 27 and 27 October respectively. For these we have to charge the slightly higher but still competitive fee of £120 + VAT. Later in the year we shall be doing courses on Patent Court and Patents County Court practice, IP law updates, mediating IP disputes and the specific IP issues affecting advertising, E-Commerce, fashion, hardware, internet service provision, music, publishing, software, universities and web design. Our mission is to make these the best IP courses for practitioners on the market and we shall strive constantly to improve their quality and usefulness to practitioners.

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