Intellectual Property
Jane Lambert advises and represents entrepreneurs, investors and others in contentious and non-contentions matters relating to patents, registered and Community trade marks, registered and registered Community designs, unregistered Community designs, unregistered design right, copyright and related rights, actions for passing off, actions for breach of confidence and other intellectual property matters.
Patents: actions for infringement, groundless threats, declarations of non-infringement and revocation of patents in the Patents Court and Intellectual Property Enterprise Court (“IPEC”) and appeals to the Patents Court from the Comptroller; proceedings before the Comptroller on patentability, entitlement, employee’s compensation, non-infringement, revocation, amendment, compulsory licences and licences of right supplementary protection certificates; proceedings before the Boards of Appeal in the European Patent Office; actions for infringement and revocation of Unitary and other European patents in the Unified Patent Court; advice on patent strategy, patentability, licensing, validity and other transactions relating to patents; and drafting assignments, licences and other agreements and other instruments (cases Sapey v Trianco Redfyre Ltd [2002] IpsofactoJ Part 2 Case 1; Kooltrade Ltd v XTS Ltd [2001] FSR 344 and Wragg v Donnelly);
Trade marks: actions for infringement of registered trade marks and Community trade marks, groundless threats and actions and counterclaims for declarations of invalidity in the Chancery Division, IPEC and Chancery County Courts and appeals to the Chancery Division from the Registrar; opposition, invalidity and revocation proceedings before the Registrar and appeals from examiners; appeals to the Appointed Person; oppositions and invalidity proceedings in OHIM; appeals to Boards of Appeal and actions in General Court; domain name disputes before WIPO, Nominet, Czech Court of Arbitration and other domain name dispute resolution tribunals; advice on whether a mark can be registered, licensing, validity and other transactions relating to trade marks; drafting licences, assignments, franchise agreements and other transactions relating to trade mark (cases Microsoft Corporation v Ling and Others [2006] EWHC 1619 and Strellson AG v Thornton & Ross Ltd);
Registered Designs and Registered Community Designs: actions for infringement of registered designs and registered Community designs, groundless threats and actions and counterclaims for declarations of invalidity in the Patents Court and IPEC; invalidity proceedings before the Registrar; appeals from the Registrar to the Appointed Person or Patents Court; advice on whether a design can be registered, licensing, validity and other transactions relating to designs; drafting licences, assignments, franchise agreements, domain name transfers and other agreements relating to designs;
Unregistered Community Designs: actions for infringement in the Chancery Division, IPEC and the Chancery County Courts; drafting licences, assignments and other agreements relating to Community designs;
Unregistered Design Right: actions for infringement, groundless threats and applications to the Comptroller to settle terms of licences of right; drafting licences, assignments and other agreements relating to unregistered designs;
Copyright including moral rights: actions for infringement in the Chancery Division, IPEC and Chancery County Courts; proceedings before the Copyright Tribunal; drafting licences, assignments and other agreements relating to copyright (cases Total Information Processing Systems v Daman [1992] FSR 171 and Ibcos Computers Ltd. v Barclays Mercantile Highland Finance Ltd. [1994] FSR 265):
Rights in performances including moral rights: actions for infringement in the Chancery Division, IPEC and Chancery County Courts; drafting licences, assignments Passing off: actions for passing off in the Chancery Division, IPEC and Chancery County Courts; Breach of Confidence: actions for breach of confidence in the Chancery Division, IPEC and Chancery County Courts; drafting and reviewing confidentiality agreements; Other Intellectual Property Rights: plant varieties, semiconductor topographies, association rights, geographical indications of origin; injurious falsehood; database rights; encryption rights and foreign intellectual property rights.
Technology
Jane Lambert advises and represents parties to: Computer supply disputes: claims for breach of contract or negligence over the supply of hardware, software or services before the Technology and Construction Court or before arbitrators; Software Copyright: claims for copyright infringement or other IP disputes in the Chancery Division or IPEC; Data Protection: claims for compensation for alleged breach of statutory duty in the Chancery Division; proceedings in the Information Tribunal, drafting of privacy codes; Domain Name Disputes: proceedings before the courts or WIPO, Nominet or other tribunals; Electronic Commerce: representing parties to disputes and drafting terms and conditions, website access terms and other contracts; Escrow: source code and private key Contracts: research and development between universities, the NHS and private companies.
Competition
European: claims for damages and enforcement proceedings by Competition and Markets Authority and Commission for infringement of arts 101 and 102 of the Treaty of Functioning of the European Union; Statutory Claims: claims for damages and enforcement proceedings for infringement of Chapters I and II of Competition Act 1988 and proceedings under Enterprise Act 2002; Common Law: claims to restrain covenants in employment contracts; Drafting and reviewing: vertical and horizontal agreements particularly licences and distribution agreements.
Media and Entertainment
Telecommunications: licensing and regulation of broadcasting, narrow casting, telephony and data, end-use agreements; Regulation of investigatory Powers Music: recording, management and distribution agreements and band partnerships; Film and TV: productions and distribution agreements; intellectual property rights. Sports: sponsorship, regulation of sportsmen and women.
Bilateral Investment Treaties
Treaties between HM government and mainly developing countries by which investors can seek compensation for expropriation of their investments (which can include domestic legislation affecting subsistence or enforcement of the investor’s intellectual property rights such as plain packaging of tobacco products or patentability) though arbitration proceedings in the International Centre for the Settlement of Investment Disputes (“ICSID”) or other forums. Jane Lambert is the first IP lawyer to understand the importance of this developing jurisdiction and wrote “Bilateral Investment Treaties: A Remedy for SME?” (Dec 2013) [2013] EIPR 759. A similar dispute resolution mechanism will be used for disputes between businesses and sovereigns under the proposed transatlantic trade agreement between the USA and EU.
Commercial
Although I now specialize in IP and technology work I was Robert Reid’s pupil at 9 Old Square and practised in general chancery at 8 Old Square and Bridge Street Chambers until 1995. I have a good knowledge of charities, commons, company law, constructive, implied and resulting trusts, conveyancing, equitable remedies, fairs and markets, family provision, franchising, landlord and tenant, partnerships, trusts, wills and the like. I have appeared in several reported cases in the Court of Appeal and Chancery Division.
Drafting and reviewing commercial contracts and standard terms and conditions, shareholder agreements, corporate and individual insolvency (Brook v Reed [2012] 1 WLR 419, [2012] 1 BCLC 379, [2011] BPIR 583, [2011] 3 All ER 743, [2012] WLR 419, [2011] BCC 423, [2011] NPC 34, [2011] EWCA Civ 331, [2012] BCLC 379, [2011] 4 Costs LR 622 and Deutsche Bank v Ariff 1991 FT LR 20 Dec).
