An Example of how Patenting can work

Electron Micrograph of the Zika Virus

Author Cynthia Goldsmith, Centre for Disease Control and Prevention
Licensed by US government
Source Wikipedia 

Jane Lambert

In Patent or No Patent 28 Aug 2016 NIPC Inventors Club I warned of the risks and costs of patenting, discussed alternatives to patents and suggested a simple methodology by which companies could identify the type of legal protection for their intellectual assets (intellectual property) would be right for their businesses. There are, however, circumstances when only a patent will do and although those are much more likely to arise in the case of big companies there are still instances when a patent can assist a small one or even an individual inventor with a bright idea.

I was slowly coming to at 06:15 this morning when I heard an interview on BBC Radio 4's Today programme with an entrepreneur called Peter Laing who claimed to have developed a new response not just to the zika virus but also to dengue fever as well. Laing was asked how the technology was developed and he replied largely in his head. He added that he had a patent for the basic idea. He also talked about his company's business strategy which was to license the technology to multinationals like GSK and Xanofi with the manufacturing capacity and distribution channels to market a vaccine for zika and dengue.

That interview got me out of bed with a start and I started googling. I discovered an article by Andrew McConaghie in Phamaphorum entitled Single vaccine against Zika and Dengue to be developed 18 Aug 2016 which seemed broadly consistent with the item on Today.  That led me in turn to the website of a company at the St John's Innovation Centre in Cambridge called Excivion Ltd. and to one Peter Laing its CEO. I also made an Espacenet search against Peter Laing and found several entries where he was named as an inventor.

Now this is not an endorsement of Dr Laing or Excivion Ltd. I have no more inkling than anyone else whether this business strategy or technology will succeed. This article is not to be read as an investment tip or even a work of journalism. I am a patent lawyer and not an investment analyst or a journalist. My point is simply that patenting can work for very new and fairly small companies including start-ups even in advanced technologies and this could be an example.

It is important to note that Dr Laing has an exceptionally strong academic record having read biochemistry and carried out research at the University of Bath and after holding postdoctoral appointments in New Zealand, Bristol and the USA and teaching at the University of Nottingham. He has also had a very impressive business career holding senior appointments in research and development and setting up a successful consultancy. Not every private inventor has those sort of credentials.

It also appears from the home, about, intellectual property, news and media and consultancy pages of its website that Excivion has integrated its IP strategy into its business plan as I suggested in Why every business plan should take account of intellectual property 3 April 2016 NIPC News.  That is another important ingredient of success.

I urge any readers who are thinking of going into business to exploit a new technology to follow this company (as it will) to see what can be learned from its success or failures. Naturally I hope it will be very successful and I wish Dr Laing and his colleagues well with their venture But if for any reason it does not work there will be lessons to be learned that could be even more important than a success story.

IP and Brexit: The Arts

Jane Lambert

This is the latest in my series of articles on IP and Brexit.  I set out the general position in What Sort of IP Framework do we need after Brexit and what are we likely to get?  3 July 2016 NIPC Law. As the effect of Brexit is likely to vary considerably from industry to industry I have considered the position of each economic sector.  So far I have covered fashion, software and private inventors.

In this article I consider the effect on the arts. I have published it in IP East because few regions have benefited more from investment in the arts than this one as I have mentioned more than once in this blog (see Why IP East 21 April 2014, Business Sustainability and Intellectual Property - how to make the Most of a Useful Essex Initiative 6 May 2014 and National College for the Creative and Cultural Industries 7 Dec 2014).  Thurrock, the district that has attracted much of that investment, was incidentally one of the local authorities that voted most heavily for Brexit: 79,916 people representing 72.72% of the electorate voted to leave the EU which was way above the national average (see EU referendum: full results and analysis The Guardian).

The arts will be one of the sectors least affected by changes in the low resulting from our withdrawal from the EU. Its work consists of literary and artistic works which fall into two categories:

• Works in permanent form such as broadcasts, drawings, films, musical scores, novels, paintings, plays, poems, sculptures and sound recordings; and
• Performances by actors, dancers, musicians, singers and others.

investment in creating, publishing and marketing works in permanent form is protected by copyright. Investment in performances is protected by a new intellectual property right known as rights in performances that came into being with the enactment of the Copyright, Designs and Patents Act 1988. Our law of copyright is codified by Part I of that Act and our law on rights in performances by Part II.

Now unlike designs, trade marks, plant varieties and to a lesser extent patents there has been no attempt to create an EU or Community copyright law. There have been a lot of EU directives that have been implemented by secondary legislation (see the Related Laws section on the Copyright Acts and related laws web page on the Gov.UK website) but many of these have been adopted to give effect to the EU member states' obligations under multilateral treaties to which HM government would probably have adhered whether the UK remained in the EU or not. Occasionally there have been disputes in several of the member states including Britain over the construction of those directives that have required a reference to the Court of Justice of the European Union but these have been far less common in copyright than in say trade marks.

After Brexit the directives will cease to bind the UK but the legislation that implements those directives will remain in force as it was made by or under an Act of Parliament. The one big change is that points of law arising from such legislation will cease to be referred to the Court of Justice. However, decisions of the Court of Justice on the interpretation of the directives are likely to have persuasive authority after we leave the EU. In her speech to the British group of the Union of European Practitioners in Intellectual Property on National and International-level concerns and developments regarding the IP landscape 30 June 2016 the Minister for IP promised that the UK would continue to lead in international IP discussions. One consequence of that is that we shall have to continue to implement changes in the multilateral IP treaties and when doing so it will be sensible to pay heed to what is happening in the rest of Europe.

There will be some sections of the arts that will be affected more by the disappearance of European trade marks and designs than others. The film industry, for example, depends heavily on brands but dance hardly at all (see my article Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers 13 March 2014 Terpsichore). There will be some effect on merchandising and I have discussed these in IP and Brexit: the Fashion Industry (10 July 2016 4-5 IP).  

I shall discuss this topic as well as other IP issues arising out of Brexit at a seminar in Liverpool to be organized by Guy Williams Layton on 14 Sept 2016 and in London at 4-5 Gray's Inn Square on 15 Sept 2016. Both seminars are likely to be very popular and places will go very quickly. If you want to attend call me during office hours on 020 7404 5252 or send me a message through my contact form.

Plant Breeders' Rights

Wheat

Author User Bluermoose
Source Wikipedia

Creative Commons Licence

Jane Lambert


As the world comes to terms with a changing climate and a rapidly increasing population the development of new drought, disease and pest resistant and higher yielding crops is vital.  The development of a new plant variety requires considerable investment which is protected in the UK by the Plant Varieties Act 1997. This Act establishes intellectual property rights known as "plant breeders' rights" that may subsist in varieties of plant genera and species. Holders of those rights are entitled

"to prevent anyone doing any of the following acts as respects the propagating material of the protected variety without his authority, namely—
(a) production or reproduction (multiplication),
(b) conditioning for the purpose of propagation,
(c) offering for sale,
(d) selling or other marketing,
(e) exporting,
(f) importing,
(g) stocking for any of the purposes mentioned in paragraphs (a) to (f) above, and
(h) any other act prescribed for the purposes of this provision."

Anyone who does any of those acts in relation to a protected variety without the holder's licence may be sued in the Patents Court or Intellectual Property Enterprise Court for an injunction, damages or other relief.

The body responsible for granting those rights is the Plant Variety Rights Office which is located in Cambridge:

Plant Variety Rights Office
Animal and Plant Health Agency
Eastbrook
Shaftesbury Road
Cambridge
CB2 8DR
Tel: +44 (0) 208 026 5993
Fax: +44 (0) 208 415 2504
Email: pvs.helpdesk@apha.gsi.gov.uk

In order to qualify for such rights a variety must be:

• distinct (that is to say it must have different characteristics to other plants of the same species);
• uniform (all plants of the variety must share the same characteristics); and
• stable (it must remain unchanged after ‘repeated propagation’, whether from seeds, cuttings, bulbs or other plant parts).

If those rights are granted they subsist for 30 years from the date of grant in the case of potatoes, trees and vines or 25 years in the case of anything else.

New plant varieties may also be protected throughout the EU by Community plant variety rights which are granted by the Community Plant Variety Office under the Council Regulation (EC) 2100/94 of 27 July 1994 on Community plant variety rights (OJ  L 227 , 01/09/1994 P.1-30) but national plant breeders' rights may not be enjoyed concurrently with Community plant variety rights,

Both the United Kingdom and the European Union are party to the International Convention for the Protection of New Varieties of Plants which facilitates reciprocal protection of new plant varieties. The Convention established the UPOV (International Union for the Protection of New Varieties of Plants) which implements the Convention.

Because the Cambridge Centre for Crop Science, the National Institute for Agricultural Botany (NIAB), the Plant Variety Rights Office and one of the world's leading research universities in agronomy and agriculture are located in Cambridge these important but little studied intellectual property rights are of particular importance to this region. More basic information is provided in Get plant breeders’ rights to your new variety on the British government website. Somewhat more detailed information is set out in the Plant Breeders' Rights Handbook. Anyone wishing to learn more about plant breeders rights should call me on 020 7404 5252 during office hours or send me a message through my contact form.