"Providing entrepreneurs, small businesses, and independent inventors with access to intellectual property (IP) resources is one of the major priorities for the USPTO. These entities are vital to our country’s economy, but they often don’t have the same resources that larger entities can leverage to protect their innovations. Because of that, the USPTO oversees several programs to assist with free or reduced-cost help in applying for patents, including the Patent Pro Bono Program, the Pro Se Assistance Program, the Certified Law School Clinic Program, and Patent and Trademark Resource Centers. That’s all in addition to the reduced filing fees we charge to small and micro entities."
Entrepreneurs, small businesses and independent inventors are as important to the British (and probably every other advanced country's) economy as they are to the American economy. At the very least, we can learn from Mr Iancu's blog post. British inventors and entrepreneurs seeking US patents and trade marks may even be able to take advantage of some of the facilities and resources that Mr Iancu mentions.
Patent Pro Bono Program Inventors and small businesses that meet certain financial thresholds and other criteria may be eligible for free legal assistance in preparing and filing patent applications under the Patent Pro Bono Program. This is a nationwide network of independently operated regional programmes that match financially under-resourced inventors and small businesses with volunteer patent attorneys and patent agents.
Pro Se Assistance Programme "Pro se" is Latin for "on his (or her) own behalf" and refers to what we would call "unrepresented parties", that is to say, inventors or other applicants who file patent applications without the assistance of a US qualified patent attorney or patent agent. The Pro Se Assistance Program offers a number of services to the public prior to filing, including:
Dedicated personnel to assist with pre-filing questions including:
An explanation of different types of application filings
Assistance with forms completions and filings
Reviewing application (e.g. Specification, Drawings, and Claims) for compliance with current regulations
In-person assistance for the general public at USPTO Headquarters at Alexandria in Virginia regarding pre-filing
Targeted support to connect applicants with relevant resources and information
The page also contains some very useful videos. It is the resource that inventors and advisors outside the USA are likely to find most useful.
Law School Clinic Certification Program
Participating universities in this programme offer advice and assistance on US patent and trade mark law from selected law students under the supervision of their teachers or other IP professionals. I am delighted to see that the University of California at Los Angeles (which is my alma mater and also that of Mr Iancu) participates in the programme. A table of universities indicating the services they offer, the geographical area that they cover and the contact details of the organizer appears on the programme page.
Patent and Trademark Resource Centers
These seem to be like our Business and IP Centres. Many are located in public libraries and provide classes and workshops as well as patent specifications, law reports, textbooks and other specialist publications to subscribers. Some run or host inventors' clubs. Los Angeles Public Library, for instance, offers:
"computerized searching of patents, trademarks, and copyrights. Library users perform their own searches. Computers are available on a first-come, first served basis. Ask library staff for instructions on use. Use of intellectual property databases is free, but printing is $.25 per page. We also have collections in print and microfilm. During regular library hours, we provide some assistance by telephone at 213-228-7220."
There is a lot of general information on patents, trade secrets, trade marks and other IP rights on the library's web page. The USPTO lists patent and trade mark resource centres on its PTRC locations by state web page.
Anybody wishing to discuss this article or the resources available to inventors and SME in this or any other country should call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact form.
Before starting on this route inventors should satisfy themselves that they have the right personal qualities. Wherever they live in the UK, a good place to start is Business Wales's Starting up and Business Planningpage. In particular, they should read Is self-employment for you?and complete the Assess Your Personal Qualitiesquestionnaire. There may be options even for those who score badly on that assessment such as employment or a consultancy with a business to be set up by others who are of the right temperament and possess the right skills and experience. Considerably caution should be exercised by both sides in those circumstances. Any agreement should be properly documented with both sides taking legal and accounting advice.
The next question for inventors is whether they have the right skills. Some of these can be taught. The Business and IP Centre at the British Library and its national network of city centre libraries host free or inexpensive courses and workshops on all sorts of topics from accounting to writing business plans. Other good places to learn include Tech Nation's Digital Academy and the Google Campus. Another option is to build a team. Again, that requires caution. professional advice for all concerned and full documentation. Ideally, there should be a professionally drafted shareholders' or other agreement between the promoters with robust dispute resolution procedures in case things go wrong.
Such an agreement should incorporate or at least refer to a business plan and it goes without saying that the business plan should take account of intellectual property (see Jane Lambert Why Every Business Plan Should Take Account of Intellectual Property3 April 2016 NIPC News). The business plan should be more than something to impress the bank manager. It should be the company's road map. The business plan should coordinate every aspect of the company's activities and policy including research and development, marketing and of course intellectual property (see An IP Strategy for Private Inventors 13 Jan 2019).
The business plan will be relied upon by the company's investors and lenders. Long term investment to enable the company to buy or hire premises, equipment, vehicles and the like will be exchanged for shares in the company. That is called "equity investment" and it is usually provided by inventors' friends and family, business angels and private equity or venture capital investors. Working capital to cover components or raw materials, professional service and other short term costs may be provided by the company's bankers or, increasingly frequently, peer-to-peer lenders. This is often referred to as "debt". Lenders may require security over the company's assets but they are unlikely to wish to interfere in its management. Equity investors 0ften want representation on the board. Again, both sides should take professional advice and document any agreement that they may reach in a shareholders' agreement or some other instrument.
Inventors should be aware that very few fortunes are made from a single invention. It may give their business an advantage for a time but that advantage will usually be eroded as competitors' launching their own new products or services. Research and development and innovation should continue. Inventors should always be looking for the next gap in the market or other business opportunity.
Anyone wishing to discuss this article or inventions generally should call me on 020 7404 5252 during office hours or send me a message through my contact page.
Unlike England, there are no local enterprise partnerships in Wales. Instead, Business Wales offers the same sort of advice and support that used to be provided in England by Business Link under the strategic oversight of the Welsh government. There are therefore no Business and IP Libraries though Llandudno junction was once part of the PatLib network (see A New Patlib has opened at Llandudno Junction North Wales15 April 2011 Patlib UK). The nearest English Business and IP Centre is at Liverpool Central Library.
As there are no Business and IP Centres in Wales Liverpool Central Library hosts the nearest CIPA patent clinic. Advice on contracts, copyrights and trade marks is also available through specialist clinics at the library. The only IP clinic in Wales takes place at the Intellectual Property Office in Newport. A search of the CIPA and CITMA databases suggests that all the patent and trade mark attorneys in Wales practise in the south and mainly in and around Cardiff.
Business funding in Wales is offered by the National Development Bank of Wales which trades under the Banc trade mark. The Bank has four offices in Wales the nearest being at St Asaph and Wrexham. According to the "About Us" page of its website, it offers both loan and equity finance. A list of the funds it manages also appears on its website, There is also a business angel network known as Angels Invest Wales
Anyone wishing to discuss this article or any matter arising from it should call me on 020 7404 5252 during office hours or send me a message through my contact page.
An intellectual asset ("IA") is something that gives a business an advantage over its competitors. No matter how small it may be or how simple its business model, almost every successful business will have such assets. An IA may be the business's reputation, its customer list, a way of making or packaging things, a website or even its standard terms and conditions.
A business that possesses such an asset will want to hold on to it and, if possible, make money from it. Its best chance of doing so is to devise a plan to
identify assets likely to generate revenue or some other benefit for the company,
determine the best legal protection for the IA having regard to its value and available resources,
provide a means of enforcing such protection, and
manufacture, license or otherwise make money from the asset.
Such a plan is often called "an intellectual property" or "IP strategy".
Inventing is a business activity. If an inventor is employed in a research and development capacity, his or her employer is likely to have an IP strategy. If the inventor is not so employed, he or she would be well advised to develop such a strategy for him or herself.
The starting point for a private inventor must be his or her invention. Is anyone likely to buy it? If so, who will be its buyers and how many will they buy? Developing, marketing and patenting an invention, not to say enforcing a patent, is likely to be costly. Unless those costs are likely to be recouped, there is no sense in incurring them. For many private inventors this is a very difficult question. The technical elegance of their brainchild may blind them to commercial realities. This is where membership of an inventors' club can help. The members of such clubs are not a bad cross-section of the general public. If fellow inventors are unmoved by the invention or see snags their views should be considered seriously.
The next issue to address is putting the invention on the market. That usually boils down to a choice between making and marketing the invention or licensing others to make and market it. Some inventors already have their own manufacturing or retailing businesses but many do not. If they want to make or market the invention for themselves they have to set themselves up in business. They will need to draw up business plans, find collaborators, raise funds, acquire premises, plant and staff and market their inventions to the public. They may subcontract production to a manufacturer in this country or abroad. If they do that, they must ensure that their invention is patented or otherwise protected in the country where the manufacturing is to take place and they will need a very tight written agreement with the sub-contractor.
Licensing is often regarded as an easy option but it is not. A licensee will incur costs in tooling and marketing. A business will incur those costs only if persuaded that to do so would be worthwhile. Determining whether a licence is worth taking is a type of business planning that few potential licensees have the time or inclination to carry out. It is therefore up to the inventor to persuade them that it is worthwhile. Daunted by such difficulties many inventors resort to invention promotion companies or making unsolicited offers to manufacturers or retailers. Such approaches rarely work and often lead to expenses for the inventor.
Patenting is expensive but may be necessary. Ideally, the invention must be protected in the countries where it is to be sold and the countries where it can be made but such protection may cost many tens of thousands of pounds in flings, translations and renewal fees. The trouble with a patent is that the inventor discloses his or her invention to the world in return for a monopoly in a single country. If a patentee has a patent for his invention in the United Kingdom but not the United States there is nothing to stop an American from making and selling the invention in the USA or anywhere else where the invention is unprotected. There may be other, cheaper forms of legal protection for the invention that are available to the inventor. Simply keeping schtum about the invention is one option if the invention is a product that is hard to reverse engineer is one option. Relying on some other IP right such as unregistered design right in the shape or configuration of the product or copyright in any software that may control the device may be another.
An inventor must be able to resist applications for his patent or other IP right's revocation or invalidation or declarations of non-infringement as well as to pursue infringers in the Senior Courts. Even with costs caps and cost management civil litigation can be cripplingly expensive. The only way that most businesses can sustain such expense is by taking out adequate IP insurance and the premiums for such cover are not cheap.
An IP strategy can be drawn up at any time and it will be reviewed and updated continuously but the ideal time to devise one is when drawing up a business plan. That is because the costs of prosecution, procurement, professional services, premiums and so on can be funded and balanced against other expenses.
Anyone wishing to discuss this article should call me during office hours on 020 7404 5252 during office hours or send me a message through my contact form.
"Pontio Innovation is about equipping individuals and businesses with the tools they need to succeed in the modern economy. With a focus on transdisciplinary working and rapid prototyping, the Co-Lab, Media Lab, Hackspace and Fablab areas are equipped with cutting-edge technologies. It will boost the University’s cross-disciplinary teaching programmes and encourage collaborative work between students, staff and local businesses. Check out the Innovation Events page for details about what's going on here and read more about the Pontio Innovation philosophy."
For artists, designers, inventors and other makers it is important to translate an idea in the brain or on a sheet of paper into three-dimensional objects that they can show to collaborators, investors and customers. That is where the three-dimensional printers, laser cutters and other equipment at the centre's FabLab can help.
A FabLab is a fabrication laboratory and I have written quite a lot about them in this and other blogs. Readers can find more information and links to some of those articles in Liverpool Inventors Club Re-launch - Fabulous FabLab28 Jan 2012. The Pontio offers training in the use of that equipment and access to the machines which can be booked through the centre's website. Details of those courses can be found on the "Innovation Events" page.
There is also some very good information about innovation generally on the "Pontio Innovation" page. The only topic that appears to be missing from that page is a mention of intellectual property. For the benefit of users of the Pontio innovation space as well as artists, designers, inventors and makers generally I shall try to fill that gap here.
Users of the Hwb's facilities should be aware that the laws that protect their intellectual assets also protect other peoples'. They must be careful not to copy beyond what is expressly or impliedly licensed, to check for registered rights such as patents, trade marks and registered designs and, wherever possible, to take out specialist IP insurance to enforce their own rights and to resist infringement claims by others.
Anyone wishing to discuss this article or any topic raised in it is welcome to call me on 020 7404 5252 during office hours or send me a message through my contact form.
"....... seek to harness the potential of the UK’s home-grown inventors and stimulate user led innovation by launching a challenge prize programme. This prize, which will be piloted through the NESTA Challenge Prize Centre, will help inform our support to the ‘everyday entrepreneurs’ operating in companies and at home – such as through supporting enabling environments, incubators and maker spaces."
The competition was launched in August 2017 and received over 180 entries. A shortlist of 10 finalists was announced in NESTA Inventor Shortliston 31 Jan 2018. Each of those finalists received £5,000 and mentoring from Barclay's Eagle Labs to perfect their inventions.
The shortlisted inventions have now been evaluated and Neurofenix Limited' is the winner. Its invention is the Neuroball which encouragea stroke patients to perform hand and arm exercises and thereby recover their manual dexterity.
Anyone wishing to discuss this article or inventions generally should call me on 020 7404 5252 or message me through my contact form.
I am very sorry to learn of the death of the inventor, Trevor Baylis CBE. I met him on two occasions. The first was the Brass from Gumption event at the Huddersfield Media Centre and the University of Huddersfield on 18 Feb 2005 where Mr Baylis ran a brainstorming session (see Bright Ideas Get a Boost26 Jan 2005 Huddersfield Examiner). The second was at an LES meeting in Leeds hosted by Liz Ward at her previous law firm.
Mr Baylis founded the business Trevor Baylis Bands which has published his biography on its website. It will be seen that he was a remarkable man and although I did not see eye-to-eye with on everything - particularly not criminal liability for patent infringement which I debated with him on at least one occasion - I had a lot of time for him. I offer his family, friends and connections my sincere condolences.
A flippant response to the above question might be: "Why do patent attorneys and solicitors seek counsel's opinion, instruct barristers to draft complex legal instruments or brief them to represent them before the courts or hearing officers on behalf of their clients?" The obvious answer is that barristers can do some of those things better than other legal professionals can. That is not because barristers are brighter or more knowledgeable than other IP professionals but because we have two important advantages.
The first is that we know the judges who make the law. We know how they think which enables us to guess how they would analyse an issue that has not come in front of the courts before. We gain that knowledge by arguing against them when they are at the bar and before them when they reach the bench. Anybody can look up a statute or the case law which will describe the law as it stands today but only a specialist advocate can forecast accurately how the law will develop tomorrow.
Our other advantage is that we tend to be called in only after things have gone wrong. Through such experience, we learn how disputes or other difficulties arise and what could have been done to avoid them. That experience also enables us to flag up potential difficulties before they arise and to suggest steps to avoid them. That is why barristers are instructed to draft contracts and other legal instruments for use in business, particularly in new situations involving new technologies or new business situations.
Until 2004 our expertise could be accessed only if a solicitor, patent attorney or other professional intermediary instructed us. Since then, it has been possible for businesses or individuals in the UK to instruct us directly. That does not mean that we now do patent attorneys' or solicitors' work. We remain a referral or specialist profession, but there is no longer a need to instruct an intermediary just to instruct us. Also, if we believe that it is our client's interests to instruct some other legal professional, we are under a professional duty to say so.
That leads to yet another advantage. We see a lot of patent agents, solicitors and other legal professionals in the course of our work and are thus in a unique position to judge their relative strengths and weaknesses. We can, therefore, help members of the public who require the services of such an intermediary to identify one who will best suit their needs.
We can now be a point of entry to the legal services industry. Often the best time to instruct us is early in the life of a new business or the development of a new product because we can help with the formulation of an IP strategy, suggest the optimum legal protection for an intellectual asset and build a team of IP professionals. I have listed some of the services that I offer on the Servicespage of this blog and you will find others on the equivalent page of my NIPC Law blog. Details of how to instruct me appear on the Instruct Me page.
If you want to discuss this article with me or you have a specific matter upon which you require some help, call me on +44 (0)20 7404 5252 or send me a message through my contact form.