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Wednesday, 11 May 2011

IP commercialisation services: the first British Standard reviewed

Fluffy didn't mind giving advice on commercialisation,
but she wasn't so keen to take advice on how to give it ...

(cat by Erin Albert)
The IPKat was fascinated by the prospect of the British Standards Institution (BSI) coming up with BS 8358, a set of standards for those purporting to provide advice and assistance in the commercialisation of intellectual property rights: this is, after all, a matter of interest and concern to IP owners and businesses alike. It's also something which some IP legal practitioners pride themselves on being able to do, while others are wary of offering advice which, in many cases, lies at the outer limit of their regular professional activity and experience. And while British solicitors, patent attorneys and trade mark attorneys are heavily regulated and required to undergo continuing professional training, commercialisation embraces services that may be provided by any person, regardless of his or her skills, experience, training or ethics.

Being a non-practitioner himself and with relatively limited experience of commercialisation, the IPKat was a little concerned about his own competence to assess BS 8358. He was therefore heartily relieved when his friend, fellow SOLO IP blogger Barbara Cookson (Filemot Technology Law Ltd), agreed to take a close look at the new standard --and this is what she says:
"The British Standard for the Specification for the Provision of Services Relating to the Commercialisation of Intellectual Property Rights caused a certain amount of  furore when the final draft was published with a request for comments back in June 2010. See the IPKat post herethe SOLO IP post here and the UK's Intellectual Property Office announcement here
Now the standard has been published, accompanied by a press release and comments from the intellectual property minister, Baroness Wilcox, on 4 March 2011 (here) and, as announced on Twitter. we have a review copy.  
The initial reception from inventors' support group A Better Mousetrap was somewhat muted, but based only on the press release. The response from professionals similarly informed has also been sceptical. 
The IPO has now confirmed in a disclosure under the Freedom of Information Act (see below) that their involvement on this project began in January 2007 and that they contributed £20,000 from their budget towards it. The IPO attended six of the seven meetings that finalised the standard. 
The standard itself arrives on 24 eco-friendly PDF pages, neatly watermarked down the left-hand side to show to whom they are licensed.  The introduction contains a broad-brush description of the range of intellectual property service providers. While many of the concerns of the regulated professionals made during the consultation stage have been taken into account, it is unfortunate that the standard is still being promoted as suitable for lawyers. It is not. We would have been better served by the BSI if they had focused this on the invention promotion companies and evaluators.

There are no lurid descriptions of the IP crime and misappropriation of inventors’ ideas that worried A Better Mousetrap in earlier drafts. The Standard specifies principles of ethical behaviour.  It now defines both idea (result of mental activity that is a process, product device or artistic work) and intellectual property (legally protectable products of mental activity) separately. 
A Standardised service provider must put the originator's interest foremost.  The requirements  then follow the usual desiderata about timeliness, skill and competence.  Patent attorneys regulated by IPReg will find that some of the clauses have a certain resonance with their own rules of conduct (no copyright infringement, of course!)
One novelty that the Standard requires is a statement of competence to include the length of time that the provider has been operating, experience and qualifications and the basis of any claims of success. It is at this point that it becomes clear that the Standard is really only going to be applicable to prototypers and invention promotion companies, but not regulated professionals. A binding non-disclosure agreement (NDA) is to be executed and it must not be an assignment. Two typical NDAs are included as Annexes to the Standard. 
The Standard then goes on to set out procedures which are consistent with an invention evaluation and promotion business -- a service that patent attorneys seldom provide, even if inventors tend to assume that they do. There is no obligation on the service provider to become engaged in evaluating the prospects of the commercial exploitation of the idea. However, if that's what the service provider does, he must do it in a timely manner. 
There is a detailed  section on the commercial agreement offer. This seems to be the appointment of the service provider as an exclusive promotion agent.  This presumably reflects the business model of Trevor Baylis Brands plc, which proudly  proclaims that it complies with the Standard.

So where does that leave us? If you are a regulated lawyer, then you don't need this Standard -- and trying to comply with it would add to your client care burden by introducing a written NDA. On the other hand, if you are an inventor looking for evaluation, prototype-making services or promotional services, it's quite comforting to know that the service provider must put your interest foremost. It seems to me that that imposes an obligation to tell an inventor when his hopes are overblown. 
Who has adopted the standard apart from Trevor Baylis? Checking through my little black book of prototypers I found that Innovate Design advertises that “their business and documentation is formulated to be compliant with the Standard”. If there are others, perhaps they would like to add some comments. 
The idea of the Standard is to provide reassurance to inventors. However, its confidential nature could be said to limit that benefit quite considerably. There is no enforcement provision. Service providers just buy the Standard and assert their compliance in order to reassure potential clients that they are good eggs. 
Should an inventor deal with a non-standard evaluator? At present, that would be most names that come up in his Google search. If there's an NDA and a reasonable fee, does he need the comfort of the Standard? If he's thinking about engaging a full-scale exclusive promoter, then the presence of the Standard in the provider's literature does offer some comfort and, if it all goes wrong, there is some basis for a proper complaint procedure. However, going wrong doesn't mean failure to get the product up-and-running. Standardised service providers are not required to publish success rates but, if they do, the basis for their claims must be stated. It might be worth looking for some".
As a special bonus, these are the questions posed under the Freedom of Information Act, and the answers received:
1. How much did BS 8538 cost the taxpayer? This information is not held by the IPO, but you may redirect your request to the BSI. As a public body they will be obliged to answer you if the information is held and if no exemptions apply to it. We can say that the IPO contributed £20,000 towards the cost of the standard, but as the IPO is financed by fees paid for its services, none of that money came directly from taxpayers in general. 
2. How much of that cost was paid to BSI? We do not hold this information; again, it is a question for BSI to answer. 
3. How much was paid to persons/firms outside BSI? As above. 
4. Approximately from what date did you commence dealing with BS 8538? The IPO commenced dealing with BS 8538 in January 2007. 
5. Approximately from what date did you last deal with BS 8538? This is an on-going relationship. 
6. Approximately how many meetings did you attend? The IPO attended six meetings. (There have been a total of seven meetings which includes the comments resolution meeting November 2010). 
7. Who drafted BS 8538 as it appeared on the web up to last date for submissions? We do not hold this information; again, it is a question for BSI to answer. 
8. Please provide a list of persons on the BS 8538 panel after the closing date. Again, this is a question only BSI can answer. 
9. The aim of BS 8538 was to protect the public and inventors from unethical, unscrupulous rogues who prey on inventors. Do you personally feel this has been achieved? We regret that the FOI Act provides a right of access to recorded information [The IPKat wonders whether this is precisely the note which the IPO sought to strike]. Statements of personal opinions and speculation are not covered by the legislation, from either a personal or corporate standpoint. 
We realise that this response is of very limited use to you, but would remind you that BSI are obliged to respond to any similar requests for recorded information. They may at least be able to provide you with more factual detail than the IPO is able to do.

6 comments:

Gentoo said...

Far be it for me to disagree with the IPO but formally I don't think the BSI is yet covered by the FOIA, though it is planned:

http://www.justice.gov.uk/news/newsrelease070111a.htm

though of course the lawyers among you might care to push it as BSI is currently subject to JR

Mark Anderson said...

Excellent link, Gentoo - thank you.

The name "British Standards Institution" suggests that it is a public body, but its willingness to promulgate standards such as BS 8538, yet refuse to provide copies to critics without paying £130 (well done Barbara for managing to get hold of a copy), suggests more of a profit-based approach.

Nigel Nobles@no win no fee said...

I agree with what Gentoo said. I want to know does anyone know when the FOIA will do that?

Graham Barker said...

Excellent review. As a heretic member of the committee (were there any others?) who provided input but didn’t attend any meetings, I have limited insight into BS 8538 and all of it is described in my blog post referenced above.

I too would like to know how the (at least) £20,000 cost of the standard was spent. Did it go solely on legal midwifery? I don’t recall being offered even travelling expenses, which was the main reason I was reluctant to attend meetings 200 miles away to discuss a standard I quickly came to regard as pointless.

‘Who has adopted the standard apart from Trevor Baylis? ‘ A good question, as TBB seems to have been the main and perhaps only driver of the standard. I’m confident that our own T&C are compliant without even reading BS 5838, and were compliant long before BS 5838 was conceived. (Or misconceived.) That leaves probably only a tiny handful of similar providers.

What also intrigues me is how inventors are to know what iniquities they are being protected against when the standard isn’t easily available to read and expensive to buy. (If I buy or somehow acquire a copy, will it be OK for me to publish the text in full on my website? Or do I get busted for piracy?)

‘It seems to me that that imposes an obligation to tell an inventor when his hopes are overblown.’ Spot on. Anyone dealing routinely with inventions will know that of every ten people who say ‘I have an invention’, the correct response in at least eight cases will be ‘Oh no you haven’t’. Yet overblownness is to some degree subjective, and therein lies a loophole. I often see inventions publicised by well-known invention promotion companies where I can only assume that any reservations about prospects were uttered in a whisper.

Anonymous said...

Bodies that set standards are not necessarily arms of the government. This is certainly not the case in the US: one of the equivalent US standard-setting bodies ANSI [American National Standards Institute] is "a 501(c)3 private, not-for-profit organization." to quote from their web site.

My understanding is that the BSI gets its income from sale of its standards, and that public libraries are not allowed to supply photocopies.

When I worked in industry, our on-site library did have a set on CD-ROM, and a special A3 monitor to allow viewing of multiple pages simultaneously. The library was licenced to print ad hoc hard copies for temporary use, but they had to be printed on special paper, pre-printed in red with a warning that they were to be destroyed when the task that they were printed for had finished.

Graham Barker said...

Excellent review. As a heretic member of the committee (were there any others?) who provided input but didn’t attend any meetings, I have some limited insight into BS 8538 and all of it is described in my blog post referenced above.

I too would like to know how the (at least) £20,000 cost of the standard was spent. Did it go solely on legal midwifery? I don’t recall being offered even travelling expenses, which was the main reason I was reluctant to attend meetings 200 miles away to discuss a standard I quickly came to regard as pointless.

‘Who has adopted the standard apart from Trevor Baylis?‘ A good question, as TBB seems to have been the main and perhaps only driver of the standard. I’m confident that our own T&C were BS 5838 compliant well before BS 5838 was conceived. (Or misconceived.) That leaves probably only a tiny handful of similar providers to whom it might apply. But in order to comply, all you have to do is say so! On that basis, it hardly matters whether you adopt the standard or not.

What also intrigues me is how inventors are to know what iniquities they are being protected against when the standard isn’t easily available to read and is expensive to buy. (If I buy or somehow acquire a copy, will it be OK for me to publish the text in full on my website? Or do I get busted for copyright infringement?)

‘It seems to me that that imposes an obligation to tell an inventor when his hopes are overblown.’ Spot on. Anyone dealing routinely with inventions will know that of every ten people who say ‘I have an invention’, the correct response to at least eight will be ‘Oh no you haven’t’. Yet overblownness is to some degree subjective, and therein lies a loophole. I often see inventions publicised by well-known invention promotion companies where I can only assume that any reservations about prospects were uttered in a whisper.

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