Amateurism doesn’t work for IP

amateurismScenario 1: A university employs specialists to negotiate intellectual property (IP) contracts. But they tend to be relatively junior in the university hierarchy, and don’t have the ultimate decision-making authority, particularly if the academic most interested in the contract objects to their approach. Decisions are pushed upstairs to senior management who have little or no understanding of IP or contractual issues.

In some cases, the university thinks it has solved this problem by forming an IP committee to take decisions. But the members of the committee, if they have any understanding of IP, perceive it from a very high level, and tend not (in IP Draughts’ limited experience) to fill the professionalism-deficit. Alternatively, some universities appoint a senior member of the management team to be responsible for enterprise activities; however, the person who is chosen tends to be an academic rather than a professional. A Deputy Vice Chancellor for Enterprise once complained to IP Draughts that he hated looking at contracts. IP Draughts is still mentally reeling from this statement, years after it was made.

Scenario 2: A trade organisation lobbies on a wide range of issues that affect their members. An IP policy issue comes up. Somewhere deep in the organisation is a person or team who understand IP, and they make sensible suggestions. But the lobbying is fronted by people who don’t have a deep understanding of the subject. They think they can handle it with their usual toolkit of personal charm and a two-page briefing note. But they don’t understand the subject well enough to do a competent job.

Scenario 3: A commercial lawyer, who has no real experience of thinking about and negotiating IP issues, negotiates an agreement that incorporates IP ownership and licensing terms. Unless they are very careful, they are likely to do a sub-optimal job on the IP terms. They will probably modify a template that they have found that contains IP terms. In one case that is on IP Draughts’ desk at present, they have used a published precedent that IP Draughts and his colleagues drafted, and some of the original wording of the precedent lies undisturbed, surrounded by devastation.

cioIn the business community, there have been debates about whether company boards of directors and senior management teams should include information technology (IT) specialists, given the importance of IT for many businesses and the complexity of the subject which makes it difficult for a non-specialist to understand. There are many published examples of large organisations spending millions on IT systems that don’t work. In US corporations, which sometimes appear obsessed with job titles that subtly discriminate between levels of seniority (president, vice president, executive vice president  and so on), this debate has sometimes focussed on whether corporations should have chief information officers, or CIOs.

This debate has some similarities with the issue that faces IP practitioners. IP Draughts knows dozens of IP lawyers who have the necessary IP experience and commercial insight to make high-quality business and policy decisions, whether in the context of universities, commercial companies or trade organisations. But rarely does he see them in general management roles. Perhaps they are not suited to those roles. When it comes to decision-making on IP-related topics, perhaps general managers should recognise their limitations, and delegate authority to the professionals.

How this should be done is not always clear. It is probably not workable to expect external law firms to take business decisions on behalf of their clients. An alternative model might be for organisations to delegate decision-making authority on technical subjects to an individual or committee. This could work if (1) genuine professionals are appointed, who have the necessary professional skills to understand the subject and take sound decisions on behalf of the organisation, and (2) their decisions are supported by the body that appointed them.



Filed under Intellectual Property, Legal policy, Legal practice

6 responses to “Amateurism doesn’t work for IP

  1. Andy Johnstone

    Exactly the same issues apply to those who make our laws: the Parliamentarians. Few MPs have the requisiite knowledge to scrutinise the legislation put put in front of them by the IPO, although I am happy acknowledge that the House of Lords contains a number of individuals who are very knowledgeable on the subject.
    This allows the pressure groups who lobby Parliament to hold great sway over what comes out in the final Act. But more worryingly, in recent times we have seen a good deal of policy being relegated to seceondary legislation which was previously there just to fill in the details and nitty gritty. These Regulations then generally fail to get the sort of rigorous scrutiny which is applied to primary legislation, when they come before Parliament (in the form of the scrutiny committee), and such scrutiny as they do get is hobbled by the dearth of IP knowledge and experience amongst MPs.

    • Agreed. Not sure what the solution is though, other than suggesting to prominent IP practitioners that they stand for Parliament. Should we Increase the resources of the Law Commission and get them to draft the legislation when it concerns very technical subject matter, as they are doing on the revisions to the IP Threats laws at present?

      On your comment about the Lords, it was gratifying that Lord Clement-Jones, in a debate on the recent IP Bill, thanked the Law Society for its briefing notes, which my IP Law Committee had written.

      Thanks for your comments.

  2. Mark identifies a real problem.

    IP illiteracy is galling. You can come across it anywhere, including e.g. on an OHIM or UKIPO research team brought together to research IP issues.

    Part of the blame lies with the IP professionals who maintain the intimidatory mystique that inhibits IP creators and managers, in universities and SMEs, and impedes their ability to make the right decisions about when they need to bring in an IP professional.

    Consider our attitudes to personal health care. We learn at an early age how dangerous it is to cross the road, we keep a basic first aid kit in the house, we use NHS direct if we think we have a problem we can handle at home, we read avidly online. But none of these lessens our respect for or dependence on the GP, the surgeon, the clinician, the consultant.

    Now consider our IP health care. We are not exposed to good IP principles at an early stage, nor are we taught how to use the freely available resources that could help us develop an awareness for when mistakes are likely to happen. So if we develop an ‘IP condition’ on a par with a personal health one (i.e. one that would send us to the doctor) we feel ignorant and embarrassed – and more likely to self-medicate, listen to quacks, or do nothing at all.

    Education could provide a medium to long term solution. Graduates of all disciplines could be exposed to the nature and relevance of IP healthcare, in a way that leaves them confident to call in an IP professional of the right sort at the right time when necessary Then, as they make their way up the management ladder, they will recognise and respond appropriately to the IP challenges that come their way, by engaging an IP professional.

    • Excellent suggestion, and similar to one that I have made in Law Society submissions to Gowers and Hargreaves. I am delighted to see that this forms part of the latest 5 year strategy document from the UK IPO, and that the IP Minister and IPO are engaged in talking to universities about introducing an IP course into non-law undergraduate degrees. It will, however, need to be “owned” by the universities and developed with IP professionals, rather than being a purely in-house IPO effort.

  3. Mark surely with all your university experience you’re aware by now that IP is overrated, and that all issues can be solved through joint ownership? 😉

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