Services


Jane Lambert
7 Jan 2017


I am a lawyer specializing in intellectual property ("IP") and related areas of law. I offer a wide range of services though I do not try to do everything. However, if a client needs a service that I do not supply or that can be supplied better by someone else I will introduce that client to that service provider.  I am therefore a point of access to the legal system.

Services that I do provide
I advise on difficult points of law, draft contracts and other legal documents and present cases to courts and other tribunals. I am also an arbitrator and mediator.

Patent, Trade Mark and Design Applications
I do not prosecute patent, trade mark or design registration applications, search for prior art or antecedent trade mark or design registrations or arrange watch services because patent and trade mark attorneys are best qualified to do that work. However, I am often asked by attorneys to advise on the patentability of inventions or the registrability of marks and designs, to draft statements of case or to appear for them at hearings before a hearing officer, Appointed Person or appeal court. Although I always encourage clients to instruct attorneys to apply for patents, trade marks or registered designs, they do not, or cannot, always take that advice. If a client acts for him or herself and runs into difficulty I will advise and assist him or her as far as I can without taking over the application.

Litigation
Similarly, I do not conduct litigation even though I have successfully completed litigation training because litigation usually requires resources that only a law firm can provide. There are, however, exceptions such as where there is insufficient time to instruct a solicitor in time to discharge or vary a search order or other "without notice" injunction, where the filing and correspondence can conveniently be done by the client such or actions in the small claims track or domain name disputes where the successful party cannot recover its costs.

Advice on Difficult Points of Law
Probably the time at which I can be of most use to a business is before it starts trading. At that stage I can advise it of the IP protection and licences that it needs and the risk of clashes with other IP owners. I can help set up procedures for identifying intellectual assets and protecting sensitive commercial and technical information. I can ensure all procurement and supply agreements are in order and that IP insurance or some other funding for infringement, invalidity and revocation disputes is in place.

Other services that I carry out include IP audits (cataloguing intellectual assets, their legal protection, licences and possible risk of claims or objections by third parties), reviewing collaboration agreements with universities, businesses and other institutions, and assisting when a business wants to grant or acquire a franchise, commission or license software, transfer technology under a patent or know-how licence, deposit source code or some other information in escrow, enter a joint venture or some other commercial contract.

If it appears that a client's patent or other IP right has been infringed or if a client is accused of infringing someone else's IPR, I can advise on the strength of the claim and the defence and the options that exist for resolving the dispute. If a dispute is not resolved I can advise on the testimonial, documentary and material evidence required for a trial, arbitration or other hearing.

Drafting Complex Legal Documents
I draft software development contracts, escrow instruments, privacy codes, franchise, joint venture and other agreements, licences, privacy codes, intellectual asset and information handling policies for businesses.

I also draft letters before claim and replies, particulars of claim or points of claim, defences, replies and other statements of case for use before the courts, Intellectual Property Office ("IPO") and other tribunals, application notices for injunctions and other interim relief, minutes of order, witness statements and affidavits, skeleton arguments, notices of appeal and other documents for use in litigation and arbitration.

Presenting Cases 
I appear in IP and related cases before all courts and tribunals including, in particular, the Patents Court, the Intellectual Property Enterprise Court (IPEC), the Chancery Division and County Court hearing centres where there is also a Chancery District Registry.

I also appear in ex parte (hearings to resolve disputes with examiners) and inter partes (hearings to resolve disputes such as entitlement to patents or oppositions to the registration of trade marks) hearings in the IPO.

I offer a capped fee service for all drafting and advocacy from settling the letter before claim or reply to a final hearing in the small claims track of IPEC.

I offer a fixed fee service for drafting requests for an examiner's opinion on the validity of a patent, whether it has been infringed or other matters in the IPO as well as observations on another party's request for an opinion.

Similarly, I offer a fixed fee service for drafting a complaint or a response in a generic or country code top level domain name dispute.

Mediation
I help to settle all kinds of IP disputes before proceedings are issued and afterwards.  I am a member of the WIPO's mediation panel.

Arbitration
I resolve all kinds of IP disputes particularly those arising from software procurement, franchising and licensing.  I am a member of the WIPO arbitration and domain name panels.

Further information
Call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.