Author Archives: Mark Anderson

About Mark Anderson

I am an English solicitor (attorney) who qualified originally as a barrister in 1983. After working as an in-house lawyer and with Bristows in London, I formed Anderson & Company in 1994. Our offices are based in Oxfordshire, on the banks of the River Thames, 50 miles west of London. Outside work, I enjoy walking and canoeing. I met my wife Sara whilst cycling from Land's End to John O'Groats (1,100 miles) in 1991.

Snow White and the Seven Dwarfs: What is the point of IP ministers?

snow whiteSince 2007, the UK Government has had a Minister for Intellectual Property. Or, to be accurate, it has had 7 ministers, each of whom has retained their position, on average, for about a year. The latest incumbent, Baroness Lucy Neville-Rolfe, was appointed earlier this month.

It sounds good that the Government is taking IP sufficiently seriously to have a minister-in-charge. But what does it mean in practice?

Clearly, the Government needs a responsible minister to steer legislation through Parliament. In practice, there need to be at least two ministers for the role, one in the House of Commons, and one in the House of Lords. Responsibility for steering the Intellectual Property Bill recently fell to Lord Younger in the House of Lords (the IP minister before Baroness Neville-Rolfe), and David (“Two-Brains”) Willetts in the House of Commons. Both have since lost their jobs as government ministers, but IP Draughts guesses that their performance on IP matters probably wasn’t the cause.

Steering IP legislation through Parliament doesn’t require the helmsman to have a formal title of IP Minister, as demonstrated by David Willetts’ performance of this task. So, what is the purpose of the named role?

Perhaps it is to coordinate Government policy in the field of IP? If that is the case, why is responsibility for IP policy split between the Department of Business, Innovation and Skills (where the IP minister is based), the Department for Culture (which is responsible for aspects of copyright policy) and the Department of Agriculture (which is responsible for plant breeders’ rights)?

Perhaps the IP minister is expected to be a champion for IP rights, and to make sure the Prime Minister “gets it”? But surely that has been the stated role of Mike Weatherley MP, the Prime Minister’s official adviser on IP?

It is not obvious that the Prime Minister needs an IP minister; he did very well to secure the life sciences division of the unified patent court for the UK, with no apparent involvement from an IP minister.

Perhaps the role is one “behind the scenes”, working within Government, and follows the mantra of Harry S Truman, that it is amazing what you can accomplish if you don’t care who gets the credit. If so, it would be good to know what the minister does, so that those of us who are involved in the IP world can provide information and support.

The late Alan Clark MP

The late Alan Clark MP

The late Alan Clark MP was a Government minister who never quite became a Cabinet Minister, and wrote some of the most entertaining political diaries of the 20th century. He was also, by his own confession, something of a shit in his personal life, but so what: the same was true of Picasso, and that fact doesn’t affect the quality of his art.

Clark’s diaries amusingly describe the drudgery of a junior minister’s official life. In part, according to Clark, the job is a training for higher office, and a probationary period to see whether you are fit to climb further up the greasy pole. In part, the junior minister’s role is to take on all the boring, politically unimportant, but somehow necessary duties that his boss, the Secretary of State, does not wish to spend time on.

This is a cynical view of the lot of a junior minister, but it is the only one that IP Draughts has seen clearly expressed. Nothing in the unimpressive performance of the 7 IP ministers leads him to a different view. In fairness, it is too soon to condemn Baroness Neville-Rolfe as she has only just started in the role.

If the Prime Minister, David Cameron, can be viewed as Snow White – the fairest of them all – for securing the life sciences division for the UK (and, as a bonus, hugely annoying the European Parliament in the process), which roles do the 7 IP ministers fill? IP Draughts would like to suggest the following casting:

Happy – Baroness Lucy Neville-Rolfe, who has resigned from directorships with Tesco and other companies in order to focus on her new role as IP minister.

Grumpy – Viscount Younger of Leckie, who was recently sacked as IP minister. IP Draughts can’t feel too sorry for this heir to the Younger’s brewing fortunes and the hereditory title that goes with it.

Sleepy – Lord Marland, who came before Lord Younger, and rose and sank without trace.

Sneezy – Baroness Wilcox. Apart from being Chair of the National Consumer Council, her job as IP minister seems to be the most noteworthy role she has had, at least if her Wikipedia entry is accurate. If she dislikes the title Sneezy (given for no other reason than that it was vacant), perhaps she would prefer the name that Walt Disney was originally planning to give to one of the seven dwarfs but abandoned as too boring: Jumpy?

Doc – David Lammy – the closest this group has to an intellectual. Not that it takes much: an LLM from Harvard means that he has more than one degree.  He is the only IP minister to come from the House of Commons; the rest have exercised their ministry from the Lords. He is probably the most dynamic of the bunch, but he wasn’t noticeable as IP minister.

Bashful – Baroness Morgan. She now has a more important role, and one to which she seems more suited in view of her career background, as Chief Executive of Breast Cancer Campaign, a leading UK charity.

Dopey – Lord Triesman, who lasted as IP minister for only a few months, before jumping ship to become Chairman of the (English) Football Association.

Part of the problem, in IP Draughts’ view, is defining what the role should be. There is probably more technical content for an IP minister to master than in many Government briefs, and  it would be good to have a minister with some intellectual clout as well as political influence. In fact, the technical content makes IP Draughts wonder whether a purely political ministerial appointment is quite right. He recalls the President of the Board of Trade, an ancient office whose title Michael Heseltine revived when he was Secretary of State for Trade and Industry (now the role held by Vince Cable, as Secretary for Business, Innovation and Skills). Originally, the Board of Trade was a committee advising Government. To quote Wikipedia:

In the 19th century the board had an advisory function on economic activity in the UK and its empire. During the second half of the 19th century it also dealt with legislation for patents, designs and trade marks, company regulation, labour and factories, merchant shipping, agriculture, transport, power etc.

It is also important to bear in mind that much of the UK legislation in the field of IP comes from Europe. IP Draughts is not convinced that the UK Government is properly set up to negotiate European legislation. For example, when IP legislation is negotiated by the UK Government in Europe, it seems to be handled by officials from the Foreign Office, to whom interested parties such as IP professionals have no direct access, instead having to deal with, for example, people in the UK IPO who, in turn, brief the Foreign Office representatives. IP Draughts hopes he has got this right; the lack of transparency on this issue makes it difficult to be certain. IP Draughts would much prefer there to be a single Government department, probably BIS, handling all legislative developments in the IP field in both the UK and Europe.

Therefore, in an ideal world, he would like to see an IP minister being a senior level Government appointment, perhaps with a title such as:

President of the Board of Trade and Secretary of State for Europe

 

 

 

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Equality and diversity in intellectual property

work partyThe Law Society of England and Wales has an Intellectual Property Working Party (IPWP), of which IP Draughts is a member. After several years’ campaigning, the IPWP has recently been upgraded to become a committee of the Law Society. While this has some major advantages in terms of influence and access to Law Society resources, it also means that we are now subject to more Law Society rules.

Yesterday, IP Draughts received an email from the Law Society, telling him that he had to complete an online, interactive training programme in “equality and diversity”, taking about an hour, as a pre-condition of being allowed to serve on this new committee.

IP Draughts took the programme yesterday evening. It was slightly more entertaining than he had feared. Students were required to match nationalities with characteristics, to demonstrate lazy prejudice. He enjoyed pairing up Scotsmen with the characteristic “sunny personality”, and Italians with the characteristic “coldly logical”. This wasn’t playing the game, though. More seriously, he got a couple of questions wrong in the online exam at the end of the course. Note to self: peer bullying is harrassment and not victimisation for the purposes of equality legislation. Giving an employee an unfair assessment, with the result that their performance deteriorates, is a self-fulfilling prophecy. No marks are given for calling this a vicious circle.

The vocab of the equality community is tiresome; the underlying objective is worthwhile. As a quasi-public body, the Law Society feels it has to be at the cutting edge of best practice in this field. All solicitors’ firms in England and Wales now have to conduct an annual survey of staff, to determine how equal and diverse the firm is. The most distinctive aspect of IP Draughts’ firm seems to be the number of its lawyers, IP Draughts included, who were the first generation of their family to attend university. This is not a measure of diversity that is commonly discussed. It seems to be easier to make assumptions about a professional firm based on race or gender, or whether its members attended private schools.

working partyThe equality procedures that some organisations follow, with the best of intentions, can seem like mindless bureacracy. When the IPWP recruited new members a year or so ago, the names on the application forms were removed by Law Society officials, presumably so that the interview panel could not be adversely influenced by a foreign-sounding name. However, this had the ludicrous result that with one applicant, who was attending the interview by phone, we had to call a mobile phone number without knowing who to ask for. It took a while for us to establish that we had the right person (“Hello? Hello? Who are you? Who are you? etc). Even for applicants who attended the interview in person (in a basement room of the Law Society that had once been a prison cell – wonderful atmosphere!), it was ridiculous having all the data about them and their career other than their name. The sense of the ridiculous was compounded when we later discovered that the Law Society did not follow this procedure when recruiting its own staff.

Coming back to the online course, some of its teaching should be obvious to anyone who is experienced in contract drafting and negotiation. Saying that someone “is an invalid” carries a loaded meaning that is absent in the phrase “has a disability”. The loaded meaning is in two parts: first, it confers a status on the person (“is”) rather than just describing an attribute (“has”); and secondly, it uses a word – invalid – that has secondary and pejorative meanings. If readers will forgive an earthy analogy from the world of IP licensing, in negotiations it is usually more productive to say that a comment is bullshit than to call the person who made the comment a bullshitter.

shadDigressing slightly, in his childhood IP Draughts was puzzled and slightly shocked by a line from the classic Cole Porter song, “Let’s do it – let’s fall in love”. The line went “folks in Siam do it, think of Siamese twins”. Cole Porter’s acidic wit took few hostages.  Later in the same song, after exhausting nationalities, he turns to different types of fish. Only recently has IP Draughts come to understand the line “why ask if shad do it, waiter bring me shad roe”. Shad is not often on the menu in English restaurants. Nor are its eggs.

IP Draughts’ sense is that the people who practise IP law in the UK are not representative of the population as a whole, but this is not due to any direct discrimination against people who have what the legislation calls “protected characteristics” – race, gender, age, etc. Perhaps there was a clubby, public (ie private) school atmosphere a couple of generations ago, but that is no longer the case, at least in IP Draughts’ experience. Perhaps the influx of scientists into the profession has helped to make it more diverse. The distinctive character of the IP profession may be based, at least in part, on the expectation of very high educational qualifications among its practitioners, which tends to favour some groups over others. More could be done to encourage disadvantaged groups to aspire to become commercial lawyers while still at school. Some of the largest City firms are involved in initiatives in this area.

Fortunately, IP Draughts’ main prejudices (we all have them, what counts is how we deal with them) are not protected characteristics, at least for now. Hopefully, the time will never come when it is illegal to discriminate against someone who “doesn’t give a shit”, and in favour of someone who tries their best.

 

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First reminder: course programme 2014

Buy the book and be well prepared for the course...

Buy the book and be well prepared for the course…

Here are details of some one-day courses that IP Draughts will be running over the Summer and Autumn.

Drafting Legal Clauses in Commercial Contracts

Over many years, this has been one of the most popular courses that IP Draughts has run. In the morning we focus on warranties, indemnities and liability clauses.  In the afternoon, we turn to various boilerplate clauses including entire agreement clauses, termination provisions and choice of law and jurisdiction.

This one-day course will be run on 19 August 2014 at the UCL Faculty of Laws in London. Course programme here.

Contract Drafting: An Advanced-Level Workshop

And don't forget to buy this one as well...

And don’t forget to buy this one as well…

This course focuses on the techniques of contract drafting. It is suitable for practitioners who have studied contract law and have some experience of drafting, and who wish to develop their drafting skills away from the ‘heat’ of negotiations. Participants will have the opportunity to draft and discuss wording in a non-judgmental setting.

This one-day course will be run on 4 September 2014 at the UCL Faculty of Laws in London. Course programme here.

Intellectual Property Licensing: An Advanced-Level Drafting Workshop

This course combines a discussion of the substance of IP licence agreements with a detailed look at the drafting of the terms of those agreements, including grant clauses, payment terms, performance obligations and warranties. It is not specific to any market sector, and much of the discussion is relevant to most sectors, but in the examples that are used there is an emphasis towards technology licensing rather than arts-based licensing.

This one-day course will be run on 16 September 2014 at the UCL Faculty of Laws in London. Course programme here.

To book on any of the above courses, please send an email to mark@andlaw.eu.

Other courses

While on the subject of courses, don’t overlook Ken Adams’ course on Drafting Clearer Contracts, which will be run for the first time at UCL on 3 November 2014. Ken is a US attorney and contracting drafting guru, who has spent many years refining his thoughts on how to draft contracts clearly. These thoughts are set ou in his excellent book, A Manual of Style for Contract Drafting. IP Draughts agrees with most of what Ken says about contract drafting, and is delighted that he has brought his course to the UK. Details here.

Finally, if you would like an intensive, week-long course on IP transactions, which provides 29 CPD points, please consider attending our multi-award-winning course, Intellectual Property Transactions: Law and Practice, which will be run again at UCL in 2015.  This time, we are running the course a little later in the year, from 20-24 April 2015. The course has won a Provost’s Teaching Award from UCL in 2014 and a Highly Commended in the 2013 Law Society Excellence Awards. Last year’s course brochure here.

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A fresh look at indemnities

have a goFollowing last week’s post about indemnities, IP Draughts has had a go at drafting an indemnity clause from first principles, without ‘cutting and pasting’ any traditional indemnity language. His attempt can be found here.

Some points to note:

  1. The core parts of the indemnity are in clauses 1.1 and 1.2. These clauses simply use the term “indemnify” and avoid wording such as “hold harmless and defend”. Instead, the scope of the indemnity is explained in later clauses.
  2. The indemnities are designed to place responsibility on a licensee of intellectual property to indemnify the licensor, except where the liability arises from the licensor’s breach of contractual warranties (in which case the licensor indemnifies the licensee). For example, the indemnity under clause 1.1 would operate if the licensee sells a defective licensed product, his customer is injured and the customer brings a claim against the licensor.
  3. The defined term “Commercialising Entities” broadens the reach of the indemnity beyond that of many indemnities, and IP Draughts is in two minds about this aspect. It might be argued that, as the indemnity covers claims made against the licensee by third parties, it is unnecessary to spell out who those third parties might be, eg by referring to ebaythe indemnity covering use of a licensed product by people far down the supply chain, eg the child of someone who buys a licensed product on eBay from the licensee’s customer. However, an alternative view is that if the indemnity is intended to cover all liabilities that may arise from the use of the product, it is best to be explicit about this aspect. IP Draughts would be interested to hear readers’ views.
  4. The most ‘novel’ aspect of this indemnity clause is probably clause 1.4, which seeks to address questions of interpretation that have probably been the subject of reported cases, as can be seen from the case references in Contractual Indemnities by Wayne Courtney, an excellent book that was reviewed in last week’s blog posting.
  5. Clauses 1.5 and 1.6 address points that are sometimes covered in detailed indemnity clauses. IP Draughts is grateful to his friend and former colleague, Matthew Warren of Bristows, for sending him a very detailed indemnity clause after reading last week’s blog posting, which provided a convenient shortcut to drafting these terms. IP Draughts has filleted most of the ideas from Matthew’s clause but used simpler, and probably less watertight, language. Some points have been omitted, eg an obligation of confidentiality on the indemnifier with respect information learnt from the beneficiary. This point might be covered in a separate confidentiality clause of the agreement. Similarly, if it is intended to give officers and employees personal rights to enforce the indemnity, a separate ‘third party rights’ clause should make this point clear.

Clearly, there is a great deal of detail in the attached wording, even with the simplified wording that IP Draughts has used, and in several cases there are choices to be made by the drafter, eg whether to include an obligation to mitigate losses under clause 1.5(c). There are, no doubt, other points of interpretation and litigation practice that could be addressed.

What do you think of the clause?

 

 

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