Why won’t industry use standard research agreements?

Sir Richard Lambert

IP Draughts has been studying a report, commissioned by the UK Intellectual Property Office and published this week, that has the catchy title, Collaborative Research between Business and Universities: The Lambert Toolkit 8 Years On.

The report makes clear that a surprisingly large number of people have not heard of the Lambert toolkit, or the Lambert agreements, so a quick explanation is in order.

What are the Lambert agreements?

Some years ago, Sir Richard Lambert chaired a committee that negotiated some standard research agreements for use between UK universities and industry.  In fact, there were two committees:

• an inner committee consisting of 4 university representatives, 4 industry representatives (including Malcolm Skingle of GlaxoSmithKline), and a solicitor to do the drafting – Christine Reid; and
• an outer committee to oversee the process, which included IP Draughts.

The output of these committees – the toolkit – eventually comprised:

• a set of 5 alternative, standard research agreements (two-way agreements between a sponsoring company and a university), known as Lamberts 1 to 5;
• another set of 4 alternative, multi-party research collaboration agreements, known as Lamberts A to D;
• an online “decision tree” to help parties decide which of the alternatives was most suitable for their circumstances
• guidance notes; and
• a selection of other agreements that had not been formally negotiated by Lambert but were posted on the Lambert website as a useful resource

These materials are nowadays hosted on the UK Intellectual Property Office website here.

Would Sir prefer a number 4 haircut?

The alternative agreement versions mostly provide different IP terms, using the same underlying document.  For example Lambert 1 is very pro-university on IP issues, while Lambert 5 is the most favourable to the company on IP issues.  From the report, it seems that Lambert 4 has become the most popular version over time.

What does the report say?

The recently-published report reviews the extent to which the Lambert agreements are used in practice, and what people think about the agreements and other materials.

Despite a sinking feeling when he saw that the report ran to 100 pages, IP Draughts persevered and speed-read most of the document.  He found much of it surprisingly interesting.  It confirms what many practitioners in this field probably know already, on the question of how parties go about drafting and negotiating research contracts.

Bucket full of puppies…            (limited relevance to post)

Saying that is not to diminish its value.  Policy-makers in the IP and competition law fields are forever asking for “evidence-based research”, which is often quite difficult to find.  The assertions of IP lawyers, in the absence of such research, seem to be mistrusted as special pleading – usually quite wrongly, in IP Draughts’ view.  This report provides buckets-full of evidence-based research.  100 pages of it, to be precise.

Some points that caught IP Draughts’ attention included these:

• People who know about the Lambert agreements mostly find them useful.
• Very few people use them as a starting point in negotiations.  Instead, they offer them as a compromise proposal or offer a document that incorporates elements of Lambert.  This goes against the vision of the Inner Lambert Committee who wanted them to be used without changes on a take it or leave it basis.
• They are more popular in universities than in industry.  Some industry sectors (eg pharmaceuticals, ICT) are content to use them (as a compromise) but other sectors, including engineering, energy and defence, take a more aggressive stance on IP issues and don’t like the “middle of the road” approach of the Lambert agreements.
• The online decision guide isn’t used much
• The fact that the agreements are on a Government website adds to their credibility

All of this suggests to IP Draughts that people are not yet ready to move away from an approach in negotiations where you start off with a proposal that is better than you expect to achieve, and then compromise.  The Lambert vision was designed to remove that process and go for a more scientific approach.

IP Draughts’ personal view is that the Lambert agreements are not perfect, but for routine research agreements there may be a significant commercial advantage in using a standard document and avoiding an expensive and time-consuming negotiation process.  This is a more relaxed view than many lawyers seem to take.  Obviously in individual cases it may be important to go for a more tailor-made approach rather than use the off-the-shelf Lambert document.

IP threats: If it were not assize time, I would not take such language from you!

Apologies for the odd title.  This posting is about the threats provisions in UK IP legislation.  Thinking about this subject reminded IP Draughts of the above quotation, which is from a seventeenth century criminal case, Turberville v Savage, that IP Draughts half-remembers from law school.  The issue was whether a conditional statement amounted to a threat and therefore to common law assault.  Or something like that.

Reminiscing further, IP Draughts’ glittering career as a criminal barrister ended shortly after it started, in 1984.  As a pupil barrister he was sent to the Old Bailey to be stand-in counsel for a client, part-way through a criminal trial.  The client was charged with some serious firearms and assault offences. The offences related to a dispute between neighbouring businesses which occupied workshops beneath the arches of a railway bridge.  Classy stuff.

The evidence had been given, the judge had summed up, and the jury had been deliberating for some time.  Unfortunately, the client’s “proper” counsel couldn’t wait any longer for the jury, and had to attend another trial.  At short notice, IP Draughts had to read the papers and decide what to say in a plea in mitigation, if the jury found the client guilty.

Fortunately, IP Draughts’ client was found not guilty of all the serious charges (did counsel and judge know this was likely before agreeing that a 24 year old know-nothing could take over the case?).  All that was left was a conviction for possession of an unlicensed firearm, which was a shotgun that didn’t work.  IP Draughts’ oratory, in best Marshall Hall style, no doubt had a tremendous effect on the judge’s sentence.  The client received a conditional discharge, almost the lowest sentence that could be given.  IP Draughts claims all due credit for this sentencing victory.

Anyway, back to the real world.  As IP Draughts has previously reported, the Law Commission is undertaking a review of whether the provisions of UK IP legislation concerning threats should be revised or abolished.  These provisions are intended to prevent an IP owner from making unjustified threats to sue others for IP infringement.  By saying the wrong thing in pre-action correspondence, an IP owner may find himself being sued by the would-be defendant, as this case illustrates.  In addition, a party’s legal advisers can be sued for making threats, even if they are just putting forward their client’s position.

The IP Working Party of the Law Society, of which IP Draughts is a member, produced a report some years ago which recommended that these provisions be abolished. (The previous link – at Schedule E – is to a version of the recommendations in a Gowers response; the stand alone report not immediately findable on the Law Society website.)

The Law Commission has now considered the subject of threats and has come up with its provisional conclusions, on which it is inviting comments.  Its consultation papers can be found here.  The summary version of their consultation paper runs to 31 pages, so this is not a subject for the faint-hearted.  In a nutshell, the Law Commission’s proposals are either:

1. To revise the threats provisions rather than abolish them, but end the right to sue a party’s legal advisers; or
2. Move to remedies based on a more general concept of “unfair competition” which is familiar in civil code countries and in Canada.

Please make your views known to the Law Commission.  The deadline for making responses is 17 July 2013.  Responses should be made:

By email to: intel.prop@lawcommission.gsi.gov.uk; or
By post to: Julia Jarzabkowski, Law Commission, Steel House, 11 Tothill Street, London SW1H 9LJ.