TT4 has landed

Waiting for IP Draughts when he arrived home last night were two cardboard boxes containing his and Victor’s complimentary copies of the fourth edition of Technology Transfer (TT4).

He is very pleasantly surprised to see the book in print, a mere fortnight after the proofs went to the typesetters. His past experience has been a lead time of 2-3 months. Just-in-time manufacturing has finally reached the publishing industry!

IP Draughts’ longstanding colleague and former trainee, Victor Warner, has been responsible for updating most of TT4, and he has done a very good job. Much has changed in the laws affecting IP transactions since the third edition was published a decade ago. (It is nearly 25 years since the first edition was published, then a paperback under the Butterworths imprint, and then called Technology: The Law of Exploitation and Transfer.)

First edition, 1996

As with previous editions, the book considers law and practice issues through the lens of particular types of commercial agreement, particularly IP licences and R&D collaborations. This is still a relatively unusual way to write a serious law book – many law tomes are focused more on the perspective of the courts, or of academic enquiry, rather than on the commercial transaction.

The book is available direct from the publishers here, or from Amazon UK here.

Similar approach to teaching?

IP Draughts would like to see commercial law taught this way in leading law schools – teaching legal principles from the perspective of real transactions, rather than the other way around. If this had been done when he first studied law at university he would have been far more engaged in the subject. He felt that university law favoured people with very good memories and a capacity for learning dry principles, divorced from their practical context. He doesn’t dismiss those abilities, but it is not the way his mind works, and he suspects there may be many others who share his views, and his way of learning and thinking.

He would like to put this idea into practice, possibly at UCL, but it really needs some sponsorship to set up an institute that would also provide a setting for debate between practitioners, academics and judges – similar to the Institute of Brand and Innovation Law, but with more of a transactional focus. Please let IP Draughts know if you think your firm or organisation might be prepared to sponsor such a venture.

 

 

Hopeless student IP disputes

Complaints between PhD students and their supervisors seem to be on the rise. IP Draughts has been instructed on several in recent years, both on behalf of the student and on behalf of the supervisor and university (but not all at the same time!)

Memories of these cases came flooding back when IP Draughts read the recently-published court judgment in the case of Ukoumunne v The University of Birmingham & Ors [2020] EWHC 184. This was a preliminary decision in the Intellectual Property Enterprise Court (a low-cost court for smaller disputes) on whether to strike out the former student’s claims against various supervisors, the university and an academic publisher.

Nearly all of the claims were struck out, and those that remained were in the “last chance saloon” – the claimant, who was not legally represented, was required to be more specific as to what she was claiming.

An interesting feature of this case for IP Draughts is the discussion of the difference between plagiarism (copying ideas, not attributing them, etc, in breach of academic norms) and infringement of copyright (typically copying lines of text rather than underlying ideas, though occasionally the organisation and structure of a work can be the subject of a copyright claim). In IP Draught’s experience, academics are sometimes unclear about the differences between plagiarism and copyright infringement. Plagiarism claims may be referred to an academic committee (eg if there is a claim of research misconduct) – this happened in the present case and the claims were dismissed.

Copyright claims are ultimately for a court of law to decide. The claimant in this case was unable to persuade the judge that she had an arguable case on copyright infringement. This claim was struck out, as were claims of negligence, racial harrassment, bullying and sex discrimination by the university .

The claimant also made allegations of breach of confidence in relation to her thesis, and breach of contract (seemingly the terms on which she became a PhD student, though this was unclear to the judge). On these allegations, the judge gave the claimant one last chance to improve her case (clarity of argument and supporting documents), failing which these claims would also be struck out.

IP Draughts wonders whether the claimant really thought she had a good legal case, or was just hoping for the best, and determined to pursue her dispute. He also wonders whether any attempt was made to negotiate a settlement or refer the matter to mediation. Sometimes, people just want to be heard, and there may be less expensive ways of enabling that to happen than going to court. The money saved might be better spent on a settlement with the student than on court fees and lawyers.

Sexagenerians of the world, unite!

IP Draughts’ tripometer of life has recently shifted its gears. The second wheel from the right now displays a 6. If the algorithms of WordPress, Twitter and LinkedIn will permit him to say so, he is now a sexagenarian.

He has been studying the law for over 40 years, and practising commercial and IP law for over 35 years. He enjoys his professional life, and has no plans to retire, or to stop his other current roles, including teaching and writing.

He would like the next 15 years or so to count, though. Not cruising along, but building on past experiences to take on new challenges. He has a few irons in the fire, such as trying to raise interest in developing international standards for IP agreements. And recently qualifying as a mediator. He has some experience of policy work and chairing organisations. And his client work has been taking some interesting new directions.

But where these strands will take him is unclear. Searching to find a project can be frustrating. It is great when a new project has started, and one can apply thought and effort to make it a success.

Please consider IP Draughts for any interesting new projects that you may have.

 

It’s all go, in the IP world…

On the day after the night before – when the UK left the EU – there are too many distractions for IP Draughts to get maudlin. A small sign is the more than 50 work-related emails which came into his inbox yesterday.

1. Technology Transfer, 4th edition: the final proofs of our ‘flagship’ book went off to the typesetters yesterday morning. It is now over 1,000 pages – a real tome. It is 10 years since the last edition, and much has changed in the law surrounding TT agreements. While you are waiting for it to be published, you could always read one of our other books.
2. IP Transactions course: Or, you could book on our annual, 5-day course on IP transactions, which has its 8th outing at UCL Laws in April. Or, on one of our one-day courses at UCL, most of which can also be run as in-house courses.  Applications for the 5-day course are now coming in thick and fast – IP Draughts approved several applications yesterday.
3. Consequences of Brexit for IP registrations. This is a huge subject, which we hope will be fully and appropriately addressed as part of the negotiations over the UK’s future relationship with the EU. One point of difficulty emerged last week – it seems that the European Plant Variety Office has a notice on their website, alerting organisations who have plant breeders’ rights that that they need to have a representative based in the EU, (i.e. not the UK) from the end of January 2020. Colleagues assure me that this is incorrect and that UK representatives are acceptable until the end of the transition period, i.e. the end of December 2020. Thanks to PraxisAuril for alerting IP Draughts to this issue.
4. Model term sheet for spin-out transactions. While on the subject of PraxisAuril, IP Draughts is disappointed (to put it mildly) that certain members of the Board of PraxisAuril have delayed adoption of the model term sheet for university spin-out transactions that a working group of PraxisAuril finalised last year, after many months of work. The Board was consulted at various stages in the development of the term sheet, as were representatives of universities and the investment community. It is frustrating that there is an issue at this late stage in the process, but he hopes it can be resolved soon. Disclosure: IP Draughts and Paula Alessandro of QMUL co-chaired this working group.
5. Mediation of IP agreements. Flushed with his success in passing the CEDR assessment to become an Accredited CEDR Mediator, IP Draughts has produced a Profile or flyer for his mediation services, and may in due course dedicate part of his firm’s website to ADR services. The Profile is available here: msa mediator profile 2020. Please consider naming IP Draughts as your chosen mediator in the dispute resolution clause of your contracts.
6. Negotiation techniques – great book: IP Draughts is grateful to Gill Mansfield, whom he met when attending a mediation course at WIPO in Geneva several years ago, for her recommendation of the following book: Never Split the Difference: Negotiating As If Your Life Depended On It. The book is written by a former FBI hostage negotiator, Chris Voss. It is very readable, and IP Draughts thoroughly recommends it. Many of the techniques described in the book, such as active listening and asking open questions, overlap with the techniques that CEDR teaches on its mediation skills course. But the analogy shouldn’t be taken too far. Working as an outsider – mediator – to get two parties to agree is ultimately a different skill to working as a participant in a negotiation to get a good deal.

Finally, IP Draughts hopes that his friends and colleagues in the EU will continue to think of the UK as a reliable partner. More than half the population seems to want to be in the EU, and far more than half of business people and professionals do.