Add spice (or at least embalming fluid) to your Board meeting. Invite Jeremy Bentham!
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Breaching client confidentiality on a train: a scale of 1 to 10
Originally posted on The Bizzle:
Tom Kilroy blogged recently about how lawyers working on the train may be committing serious breaches of confidentiality. For the his pains, he has been called, on the Roll On Friday discussion board and elsewhere, “a prig”, “an utter nob”, “a pompous arse”, and “a keeno teedfest” (this last from a partner at the prestigious firm of Beiber and Bieber, apparently).
Now, I’m completely with Tom on this, if only because the constant tippy-tapping of laptop keyboards and self-important BB yapping irritates me almost to the point of homicide. But it is clear that a more nuanced approach is required to head off accusations of over-reaction and priggishness.
I have therefore gathered together a team of the finest intellects in the country (myself, Mrs Bizzle, and the cat) to consider this vexed question. After a week of hard thought and intense debate, we are delighted to present the Kilroy Scale.
Remember the US case of Stanford v Roche? Judgment was handed down by the US Supreme Court on 6 June this year and there has been a chorus of comment, including by IP Draughts himself here and by the all knowing IPKat here and here. The judgment itself is here.
You will recall that argument concerned the scope of the Bayh-Dole Act. Stanford argued that because some of the research that led to the invention was funded by the NIH (a Federal agency), Stanford could claim rights over the invention. But the case also considered the precise wording and effect of two different agreements. The first agreement to be signed was between an academic and Stanford, his university employer. It recorded that the academic “agrees to assign” his inventions to Stanford. The second agreement to be signed was between the same academic and a pharmaceutical company (the company was Cetus which was subsequently acquired by Roche) with whom he was collaborating in research. It stated that the academic “will assign and does hereby assign” his inventions to the company.
The Court held that the second agreement took precedence. It was an effective and present assignment whereas the first agreement, although earlier in time, was only an incomplete agreement to assign in the future. The invention had been assigned to Roche. Bayh-Dole could not be said to apply. The lesson learned was to be careful of how obligations to assign are drafted. Avoid agreements to assign and instead actually draft an assignment.
Attending a talk given by a US attorney (Sam Webb of Stoel Rives) yesterday, I was reminded that American patent law is currently being shaken up as the Leahy-Smith America Invents Act passes into law. Much of the Act is directed at reforming the patenting process in the US.
Section 4 of the Act caught my eye. Currently, a US patent application needs to be filed by the inventor. Section 4 changes this and permits patent applications to be filed not only by the inventor but also by “any person to whom the inventor has assigned or is obliged to assign the invention”. A useful change because it means that US institutions have an alternative open to them where recalcitrant or unavailable inventors cannot or will not sign the necessary paperwork.
But consider that change in the light of the facts of the Stanford v Roche case. If Section 4 had been in force, Stanford might have argued that because the earlier agreement obliged the academic to assign his inventions to Stanford, Stanford was entitled to file an application itself. The implication being that the first agreement might have been sufficient to pass ownership to Stanford. Which could turn the Supreme Court’s decision on its head….
Perhaps there is still hope for US universities that have employment contracts in place obliging their academic to assign inventions (in the future tense) rather than actually effecting an assignment (in the present tense)? Of course, this is speculation and does not alter the position in the UK (or indeed in the US!). Those of us in the UK still need to ensure that our assignments are properly drafted. Nonetheless, it will be interesting to see if anybody in the US argues the point.
Is there a US qualified reader out there who has a view on this?
Only a few days to go until this blogger attends the WIPO mediation course in Geneva. As previously reported on this blog, the course organiser is Professor Mnookin, Director of the Harvard Negotiation Research Project, and the author of Beyond Winning: Negotiating to Create Value in Deals and Disputes.
As a diligent student, your correspondent has been doing his homework, which consists of reading most of the aforementioned book, and preparing two case studies. The first case study consists of a complex biotech patent dispute arising out of a licensing transaction. The dispute has been referred to WIPO mediation, and I am assigned the role of counsel for one of the parties.
Part of the dispute concerns whether some of the licensed patents are invalid for prior disclosure, including whether the disclosure was made in confidence, whether it was made within the one year US grace period, and whether the 6 month EPO grace period for “evident abuse” applies.
Knowing from the book that Prof Mnookin is keen on preparing decision trees, I have prepared my own decision tree, showing the likelihood of the patents being held invalid in the US, EPO and rest of the world (ROW), respectively. I have had to make my own best guesses, based on the detailed facts given to us. The purpose of the decision tree is not to be a legal opinion, but rather to help the parties get to grip with the issues. My decision tree is shown below. The tree demonstrates that the percentage probability of the patents being held invalid is 0% in the USA and 21% in Europe. This is convenient, as I am counsel for the patent owner.
The second case study concerns a dispute between the author of a business book and a subcontractor hired to assist him write the book. The facts of this case are much simpler than the biotech example, and the issues at stake include who owns copyright and payment of fees. In this case study I have been allotted the role of mediator.
I am looking forward to seeing some friends and colleagues on the course, including Maxine Horn, founder of Creative Barcode, and a fellow member of the UK IPO’s Business to Business Licensing Committee. The B2B group has created some booklets on IP licensing subjects for SMEs, which appear on the IPO website, including this one.
We will bring you a report on the course next week.