IP threats in the House of Lords

hl-committeeThis weekend, IP Draughts has a note from the school doctor that he is excused long runs, contact sports or blogging. He has to prepare for what may be a once-in-a-lifetime event, namely appearing as a witness before a House of Lords committee next Monday afternoon.

The committee is known as a Public Bill Committee, and has been convened as part of the passage of the Intellectual Property (Unjustified Threats) Bill through Parliament. It is chaired by Lord Saville, a retired Supreme Court justice. Previous witnesses to have appeared before this committee include Baroness Neville-Rolfe, the IP Minister, Sir Robin Jacob and Sir Colin Birss.

The committee hearing, which will be taking place on Monday 24 October at about 3.30 pm, is recorded on camera, live-streamed and saved on the UK Parliament website, so if you are a glutton for legal minutiae feel free to stop by. Details of the hearing can be found on the Parliament website here. IP Draughts believes the streaming will be accessible here.

IP Draughts will be giving oral evidence as chairman of the Law Society’s Intellectual Property Law Committee. Also giving evidence will be fellow IPLC member, Matthew Harris, and Vicki Salmon, representing the Chartered Institute of Patent Attorneys.

Now IP Draughts has to do some homework, and prepare for some difficult questions from Baroness Bowles, who is a member of the committee and a patent attorney, possibly the only patent attorney in Parliament.


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IP laws after Brexit: what would be best?

brekApples is apples. All are of the dust, and all turn to dust again. And Brexit means Brexit.

A large proportion – perhaps 70 to 80% – of UK IP laws are based upon or affected by EU laws. What is to happen to these laws when the UK leaves the EU? According to a recent announcement by the UK government, there will be a Great Repeal Bill, which will continue EU laws in existence as domestic UK laws until they are individually revised or repealed. This announcement is welcome, but it leaves many questions in the IP field unanswered. Some of these are listed below.

  1. What about laws that are in the pipeline of EU legislation and come into effect after Brexit? For example, what about EU directives currently in place that require member states to implement national legislation by a future date that falls after Brexit?
  2. What about pan-European IP that is currently in existence, such as EU trade marks and EU registered designs? Will they continue to exist as UK rights after Brexit, and if so, how? As purely national rights or as part of a larger EU system?
  3. Will it be possible for the UK territory to be included in pan-EU IP rights that are registered after Brexit? Could there be a new treaty that extends these rights to non-EU countries including the UK and Switzerland?
  4. Or if the answer to question 3 is no, will the UK introduce equivalent rights in the UK? For example, will the UK introduce UK-only database rights, supplementary protection certificates, data exclusivity laws and orphan drug rights?
  5. If the UK does not agree with the EU to be part of a future pan-European IP system, but introduces equivalent UK rights through domestic laws, will the UK courts follow EU case law on the interpretation of those laws?

dustIP Draughts attended a meeting of practitioners last week, at which the consensus was that it was in the UK’s commercial interests for future UK IP laws to be aligned, as closely as possible, with equivalent laws in EU countries. But how will this be achieved, if the case law of the EU and the UK diverges over time?

One answer would be for the UK courts to follow the approach taken by the CJEU and other senior EU courts. But recent statements by UK government members suggest that it is a central part of Brexit that the UK will be relieved of any obligation to act in accordance with the judgments of the CJEU. If that continues to be the UK government’s position, even in technical commercial subjects such as IP, then the most we might hope for is that the UK courts will take notice of EU judgments and seek alignment were possible. This could be by an informal nod-and-a-wink on the part of the UK judges, or could be enshrined in UK legislation that says, in effect, we are free to do our own thing but if we think it is sensible we will follow EU law. Would this approach be politically acceptable? Who knows.

A similar question arises in relation to the Unified Patent Convention. According to a recent opinion by Richard Gordon QC, it is technically possible for the UK to participate in the UPC after Brexit. But this would require agreement among various stakeholders, and would almost certainly require the UK to accept the supervisory jurisdiction of the CJEU. This last requirement is likely to stick in the craw of the Brexiteers, at least according to some of their recent pronouncements.

applesPerhaps, in time, the UK government will realise that, in some areas of international trade, giving jurisdiction to EU institutions is in the UK’s commercial interests and does not significantly dilute the principle of sovereign independence. Coming to this realisation will require a suppleness of thinking that is currently lacking in those responsible for Brexit in the UK government.




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New standard agreements for universities are published

Sir Richard Lambert

Sir Richard Lambert

Have you had sleepless nights? Have you found it difficult to concentrate on Brexit or the US presidential elections, through wondering when the new Lambert agreements, promised many months ago, will finally be issued?

Worry no more: over a dozen new agreements and term sheets are waiting for you on the UK IPO website.

How are they different from the old Lambert agreements, IP Draughts hears you ask. In fact, he is one of those asking. Well, it’s difficult to say, without a line-by-line comparison. Has anyone done such a comparison? The Lambert committee, for example? And could they share the mark-ups? That would be very helpful for the university community.

Comparing the new and the old agreements won’t provide a complete picture, as some of the new documents are completely new, and don’t have an equivalent in the old set. In particular, there are now 7 bilateral agreements, numbered 1-6 (yes, that is confusing – there is a 4A as well as a 4). The old set comprised 5 bilateral agreements. There continue to be 4 multi-party agreements, numbered A-D.

A European consortium: Queen Victoria and Albert, the Prince Consort

An early European consortium: Queen Victoria and Albert, the Prince Consort

IP Draughts prefers to call the documents bilateral, or two-way, agreements, and multi-party agreements, though the documents themselves are named “collaboration agreements” and “consortium agreements” respectively. In IP Draughts’ mind, these official names are not descriptive. Some bilateral research agreements don’t involve a true collaboration, and are merely one party paying another to do research. And most multi-party research agreements are collaboration agreements, as that term is normally used. The name consortium agreement seems to have become popular through its use as a term of art in EU funded research projects, and in this context is synonymous with collaboration agreement.

Sometimes, universities will instinctively select Lambert 2 as a starting point. Its terms are similar to those used by US universities in most cases, ie the university owns the resulting IP, and grants the sponsor a non-exclusive use licence plus an option to negotiate an exclusive licence to commercialise.

From a quick scan through the new Lambert 2, and without the benefit of a line-by-line comparison with the old one, IP Draughts spotted the following:

  1. Many or most of the terms are familiar from the old document.
  2. There seem to be more optional terms, marked in square brackets.
  3. One of the clauses mentions the need for the university to demonstrate public impact in its research, and to disclose certain information for this purpose. “Impact” as an important policy objective for UK universities post-dates the date of publication of the old Lambert agreements.
  4. There are some tediously lengthy schedules that set out policies on issues such as anti-bribery, non-use of child labour, etc. Many large companies now seem to require references to such policies in their standard agreements.

As with the old agreements, the main “variable” between them is their different IP terms. Below is a summary of the IP terms in each case.

Bilateral agreements
No Terms IPR owner
1 Collaborator has non-exclusive rights to use in specified field/territory; no sub-licences (Institution)
2 Collaborator may negotiate further licence to some or all Institution IP (Institution)
3 Collaborator may negotiate for an assignment of some Institution IP (Institution)
4 Institution has right to use for non-commercial purposes (Collaborator)
4A Each party has right to exploit certain results created during project and takes assignment of those results. Institution has right to use for academic and research purposes, Collaborator for research purposes (Both)
5 Contract research: no publication by Institution without Collaborator’s permission (Collaborator)
6 Institution has right to use for academic and research purposes (Collaborator)

Multi-party agreements
No Terms
A Each member of the consortium owns the IP in the results that it creates. They grant each other party a non-exclusive licence to use those results for the purposes of the project and any other purpose.
B The other parties assign their IP in the results to the lead exploitation party (or the lead exploitation party is granted an exclusive licence).
C Each party takes an assignment of IP in the results that are germane to its core business and exploits those results.
D Each member of the consortium owns the IP in the results that it creates. They grant each other party a non-exclusive licence to use those results for the purposes of the project only. If any member of the consortium wishes to exploit another’s IP they must negotiate a license or assignment with the owner of that IP.

A new feature in the 2016 Lambert agreements is that two templates for term sheets are provided, one for Lamberts 1-6, and one for Lamberts A-D. In IP Draughts’ view, these are not particularly useful documents. They are very detailed and lengthy. If one is going for that amount of detail, it will often be better to move straight to negotiation of the actual agreement. IP Draughts has previously commented on his preference for term sheets, MOUs, heads of agreement and similar documents to be brief, perhaps no more than 2-3 pages. For instance see this article: Keep the Term Sheet Simple. Pretty please…?

IP Draughts is aware that some UK universities use modified versions of the (old) Lambert agreements. It will be interesting to see if those documents are updated to reflect the new Lambert terms. If not, we may end up with a proliferation of versions, and the original Lambert message – that parties should use the Lambert agreements rather than their own, favoured documents – may be further diluted.


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Why we shouldn’t teach children that infringing IP is immoral

ip-crimeThe UK Intellectual Property Crime Group and the UK Intellectual Property Office have just published their 2015-16 IP Crime Report.

Actually, it is not clear who is taking editorial responsibility for the report, as it comes with a 400 pound disclaimer:


The IP Crime Group is a collaboration among various bodies, including many that lobby on behalf of the owners of IP, particularly the types of IP that are commonly counterfeited, such as images, designs, consumer goods and software.

IP Draughts continues to be uncomfortable about the UK government appearing to act as a cheerleader for certain types of IP owner. There seems to be a several-step process:

  1. Government is understandably sympathetic to the concerns of IP owners about counterfeit goods.
  2. Government listens to lobbying by these IP owners as to the need for more laws, more enforcement, more education of the public about obeying the law, etc. Perhaps because the main focus of this lobbying is on counterfeit goods, there is no counter-argument by IP users. After all, who would lobby for counterfeiters?
  3. Government strengthens the law, eg there has been a recent change to make it a criminal offence to intentionally infringe a registered design.
  4. Lobbying groups tick that off the list and argue that, to be consistent, intentional infringement of other types of IP should be a criminal offence.

For example, the following paragraph appears in the above-mentioned report and appears to have been contributed by ACID:

Anti-Copying in Design (ACID)

Current Concerns – Unregistered Design Rights (UDRs)

The lack of criminal provisions for UDRs is no longer in step with
the criminal provisions for Registered Designs (RDs). Despite
improvements to the Intellectual Property Enterprise Court
(IPEC) and Small Claims Track, this route can be cost prohibitive
for micro and SME designers anxious to take infringement
action. As the majority of designers rely on UDRs the door is open
for organised criminals seeking to infringe UDRs.

lobbyistsIn IP Draughts’ view, this is a very slippery slope. It reminds him of a meeting that he attended last year, with representatives of ACID and other lobbying bodies, the IP professions, and the UK government. The topic under discussion was educating children about IP. Until IP Draughts spoke up, there seemed to be a consensus in the meeting that children should be taught that IP infringement was bad and that they shouldn’t do it.

IP Draughts’ recommendation was that children should be taught about the consequences of IP infringement, but should not be fed a “moral” view on the subject. This immediately met with a heated response from some of the people present. One representative said it was like burgling someone’s house – of course you shouldn’t do it.

After a few moments, IP Draughts responded that of course one should be taught to obey the criminal law, but most IP infringement claims are based on the civil law. (Of course, this argument is weakened if some of the lobbying bodies have their way, and extend the range of criminal IP offences.)

If he had been quicker-witted, he might have followed up the burglery analogy with one about civil trespass. Should children be taught not to trespass? IP Draughts is not so sure. The famous mass trespass in 1932 on the Duke of Devonshire’s land at Kinder Scout was controversial at the time, but is now celebrated by the Ramblers Association and others who support the “right to roam”. To quote Wikipedia:

On 21 and 22 April 2007, the Ramblers celebrated the 75th anniversary of the illegal trespass of Kinder Scout and the imprisonment of those who participated.

IP Draughts is not siding with IP infringers. He just thinks it isn’t always obvious where “right” lies, particularly with civil torts of IP infringement. And some people campaign vigorously about this subject, eg those in the open source movement who are hostile to software copyright. By all means, educate children and adults about IP and about the consequences of IP infringement. But without the element of moral instruction.

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