Course on IP transactions: quinquennial review

In April this year, University College London’s Faculty of Laws ran the fifth, annual outing of  Intellectual Property Transactions: Law and Practice. This 5-day course qualifies for 29 continuing education hours.* We have approximately 30 volunteer speakers on the course, and typically the students number in the mid-30s. The course seems to be well-established and to be achieving its purpose, which is to provide a mixture of doctrinal and practical teaching for early-stage practitioners in IP transactions. We hope it will run for many years to come.

Date for your diary: the course will run next year from 16-20 April 2018. Details, including a link to the course brochure and application form, can be found here.

After 5 years of the course, IP Draughts hopes readers will indulge him in some reflections about establishing and running what some attenders have described to him as the only course of its kind, anywhere in the world.

IP Draughts had thought about running a university course on IP transactions for many years. In 2003, he decided to do something about it. He sent out lots of emails to people who might be interested in hosting or participating in it, including law schools and business schools. He received good feedback from potential speakers, but nothing concrete from any institution that might host it.

He decided to approach IP law professors at leading UK universities. He had polite conversations with several, but nothing of substance resulted until in 2006 he contacted the late Hugh Laddie, former patents judge and then a newly-appointed professor of IP law and UCL. This led to some positive discussion in 2008, but very sadly Hugh died before the idea could be taken much further.

In 2010, IP Draughts contacted Robin Jacob, who had just been appointed as a replacement for Hugh Laddie as professor of IP law at UCL. Discussions followed over the next 2 years. Meanwhile some momentum had built up in finding speakers, helped by some very positive write-ups on the IPKat blog. (IP Draughts attributes these write-ups to having been one of Jeremy Phillips’ students in about 1981.) We also had some discussion on this blog. In 2012, we held a successful meeting of potential speakers at UCL, hosted by Robin Jacob.

Finally, the course started in 2013, and received very good feedback. It has run every year since then. UCL Laws seems to be very happy about it.

Here are some reflections.

1. It took 10 years to get the course started. As someone with no academic track-record, but plenty of experience of teaching commercial courses for practitioners, IP Draughts found it very difficult to get universities to understand how good the idea was and why it would be beneficial to the faculty to run it. The route-in proved to be to engage with IP professors who straddled the academic and practitioner worlds, in the form of two IP judges who, on retirement, had moved into academia. Even then, it took several years of discussion. Universities just aren’t naturally set up to take practitioner courses seriously, no matter how much they may protest to the contrary. It is only a few, such as UCL, that have the outward-looking interest, and employ the necessary staff, to run courses of this kind – Lisa Penfold, take a bow.
2. A key to making this course work is to have an individual directing it, who has a clear idea of what he wants to do and who understands what the intended audience wants and needs. In principle, this function could be done by a committee, but it is important to have a strong, directing hand. This feeds into the structure and content of the course, the appearance and content of course materials, and generally in the ‘tone’ of the course. From the outset, we have ensured that speakers don’t just give their ‘standard’ talk, but instead focus on topics that fit with other topics that are discussed throughout the week.
3. At the same time, we do respond to feedback, and have tweaked the content over the years. This will always be a work in progress, but we hope we have got the basics right.
4. Another important element is the setting for the course. Although it is normally held at the law faculty, for the last 2 years we have had to find alternative accommodation while the law faculty is renovated. This year’s outing, at another academic department, was more successful than last year’s, at a busy hotel. There seems to be something about the academic environment that encourages concentration and learning.
5. So far, we have avoided making the course part of the ‘official’ courses of UCL – degrees and diplomas. This was recommended to IP Draughts during the planning of the first year’s course. There have been some benefits in this route, as it avoids us having to fit within university procedures that may not have been designed with a practitioner course in mind. But on the other hand, it would be good to give students the option of making the course part of a larger LLM or diploma course. The Oxford IP diploma course has gone the other route, of being an official diploma course of the University of Oxford, and IP Draughts understands that this has created some tensions. We are keeping this topic under review.
6. IP Draughts is grateful to UCL Laws for welcoming the course, and recognises that they are ahead of many other, leading UK universities in running practitioner-led courses. And he welcomes positive noises from the central university hierarchy about engaging with practitioner training. But he feels that they (and other universities) have yet to engage fully with practitioners. Practitioner training and research are still a sideline, nice to have for the revenue it generates, and for demonstrating ‘impact’, but it shouldn’t get in the way of the ‘higher calling’ of the academy. In IP Draughts’ opinion, a practitioner focus has just as much place in a university as a pure academic focus, and should be given equal treatment.

 

* For those UK legal professionals who are still required to do a set number of hours. UCL Laws is registered for CPD purposes with the Law Society, Bar Council, and CIPA.

Know how royalties: are they ever justified?

The sentiments expressed in the final paragraph of this golden oldie re-emerge every few years. The Gowers recommendation led to the UK IPO forming a Business to Business Licensing Committee, on which IP Draughts was a member for several years. The committee quickly concluded that developing a standard licence agreement was impractical.

IP Draughts returned to the theme in the chapter that he wrote in Research Handbook on Intellectual Property Licensing, ed De Werra, Edward Elgar Publishing, and he sketched out some ideas on what an international set of rules for licensing might look like.

Now, he hears that a United Nations committee is looking into this subject, with a view to possibly developing something similar to the UN Convention on the International Sale of Goods. He has seen  a reference to this endeavour on another IP blog, but has been unable to track down the minutes of the relevant UN committee. IP Draughts would be interested in participating in that committee, if and when it gets down to detailed work.

IP Draughts

When patents and know-how are licensed together, a question that often comes up is whether there should be a know-how royalty.

In other words, should the licensee be required to pay royalties on products that are not covered by a licensed patent in the country of manufacture or sale, but whose manufacture or development benefitted from the licensed know-how.

Licensees argue that, unless the know-how provides a clear competitive advantage for the licensee’s product over other products, it should not attract a royalty. This argument is particularly acute where the product can be easily reverse-engineered by a competitor; for example, the chemical composition of many pharmaceutical drugs can be established by a competent chemist once the product is on the market. An additional argument, sometimes, is that the upfront payment is, in effect, a payment for access to the licensed know-how, and that a royalty on the use of know-how…

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Skill set for transactional IP lawyers

Are the skills required for an IP litigator different to those required for a transactional IP lawyer? And are the skills for the latter different to those required for an M&A lawyer? What has happened to the general commercial practitioner who can turn his or her hand to anything that comes through the door, of a contentious or non-contentious nature?

Recent posts on this blog have focussed on drafting techniques, but they are only a part of the overall skill set required by many lawyers who advise business clients (using the term “business” loosely to distinguish from consumers).

The skills and attributes that IP Draughts tries to help his junior colleagues develop include (some of these overlap, and in no particular order):

1. A foundation of technical accuracy, developed by continuous learning. Our UCL course on IP Transactions, as well as the Oxford diploma course, helps to supports this long term objective.
2. Drafting skills, in commercial contracts and more generally in legal documents including notes of advice.
3. Clear and purposeful communication with clients and others. The purpose will vary, and in individual cases the communication may need a particular mix of (a) analysis of what is needed, (b) organisation of material, (c) helpfulness, including understanding how the intended reader processes information, (d) conciseness, (e) completeness and accuracy, (f) bullet-proofness, (g) advocacy, (h) directing or recommending, etc.
4. Ethical conduct and regulatory compliance.
5. User-friendliness.
6. Negotiating skills and tradecraft.
7. Recognition of the different roles, character and temperaments of parties and understanding their needs and priorities.
8. Risk management.
9. Mutual cooperation in a supportive working environment.
10. Self-motivation and motivation of others.
11. Participation in the wider community of lawyers and clients, eg through writing, teaching, committee work.
12. A passion for excellence in all of the above.

The skills for commercial litigators will overlap with the above list but include other items. IP Draughts sometimes gets involved at the margins of litigation, eg knowing how to select, instruct and manage a barrister, or how to write a letter before action, but rarely gets involved in the core activity, including working within the civil practice rules and directions.

Has IP Draughts missed anything important for a transactional IP lawyer?

 

Hanged on a comma: drafting can be a matter of life and death

Some tweets today about the US definition of treason brought this old blog post to mind. It seems that the US legislative drafters followed the English definition but avoided the problem that arose in the Casement case.

IP Draughts

Sir Richard

The news that Britain’s fourth-richest man, Sir Richard Branson, is a tax exile and has been for 7 years (which presumably means that he claims to be domiciled abroad as well as resident abroad, for tax purposes) prompts a line of enquiry that leads indirectly to Sir Roger Casement, who was hanged as a traitor to Britain in 1916, and on to a question of interpretation that depended on a comma. [Heraldry alert: several knights of the realm feature in this story.]

Sir Richard’s public persona is not to everyone’s taste.  He left school at 16 and consorted with rock stars.  He has promoted himself and his businesses in a very un-British way.

Sir George

And yet his family background is far from bohemian. His father, grandfather and great-grandfather were all barristers.  His grandfather, Sir George Branson, eventually became a High Court judge and a Privy…

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