The burning issue for IP lawyers

ucl-lawsIP Draughts and his colleagues are putting together the final programme for this year’s outing of the week-long course, IP Transactions: Law and Practice, which will be held at University College London from 3-7 April 2017. This will the fifth year that the course has been run.

As part of a refresh of the course, we are replacing a few of the sessions, and revising some others. As a result we have a 30 minute slot at 4.30 pm on Wednesday 5 April, that has not yet been filled.

burning-bushReaders of IP Draughts are creative, thoughtful, intelligent people, with their fingers on the pulse of what is important and topical in the worlds of IP transactions. So, what would you suggest for this slot? Is there a burning issue that IP transactional lawyers should be familiar with? Assume that the rest of the course deals with conventional subjects like IP and contract laws, IP contract drafting, practice in different sectors, etc.

If no-one comes up with a better solution, IP Draughts may have to fall back on discussing the implications of Brexit, including the importance of not making politically naive comments in a public forum.

drafting-book-4th-ednThe provider of the best answer (either on this blog or provided privately), as judged by IP Draughts, will receive a free copy of our latest publication, Drafting and Negotiating Commercial Contracts (Anderson and Warner, 4th edition, December 2016, Bloomsbury Professional Publishing, 378 pages).

6 Comments

Filed under Uncategorized

6 responses to “The burning issue for IP lawyers

  1. Hi Mark

    As a Contracts Graduate Intern at a University I am relatively new on my path to a legal career so please excuse the following hypothetical suggestion as I suspect it is probably not so relevant to your request.

    I was fascinated reading the cases of Moore and Henrietta Lacks in America where cells taken from donors which were later developed into a cell line and commercialised, and although Moore tried he was not entitled to any return or share of profits. While I understand that he had no novel intellectual input I found it difficult to weigh this up against the fact that the researcher would not have been so successful in the first place but for his cells.

    It would be a standard term in an Material Transfer Agreement that the Original Material may not be used for commercial purposes without written consent or a license and that there would an equitable return to the Provider should there be successful commercialisation of the results derived from the use of the Original Material.

    Assuming all consents are in place, hypothetically if a University took cells from a donor, transferred these to another organisation under an MTA who then make something novel and later commercialise and there was a return to the University, does the University have more entitlements to the Original Material than the donor as they entered into contract?
    I appreciate that this is all very unlikely and there would be no appetite for it in the first place but should a savy donor insist on including a clause in consent forms that entitles them to some return?
    Lastly, if a similar case to Moore or Henrietta Lacks was brought today in the UK would the courts here arrive at a similar decision?

    Kind regards
    Breandan

    • Dear Breandan
      Thanks for your suggestion. In my experience consent forms, if they address the issue at all, tend to include wording to the effect that the donor waives all rights. As for how a UK court would decide on ownership, your guess is as good as mine – it would be breaking new ground. Bear in mind, though, that on policy grounds there is no property in body parts.

  2. Tozzi, Sabrina

    Dear Mark

    I attended this course in 2016 and greatly enjoyed it – rather jealous of the people getting to go this year!

    For the half hour slot you mention, I wonder whether a specific session on how to deal with unregistered IP might be welcome? A number of the IP-focussed deals I have worked on recently have involved formulae and other forms of know-how and ensuring all relevant agreements are in place and third-party contractors have assigned over any rights etc can make it something of a minefield (accepting of course that contracts can only go so far when key know-how is in a specific person’s head!)

    Alternatively, something I have been thinking about a lot recently is the best way to exploit one’s IP. I have been think about assignments versus licences and how while assignments may be the go-to in intragroup scenarios in particular, exclusive licences can effectively operate as de facto assignments if they are sufficiently broad enough and may have other benefits from e.g. a tax perspective.

    Best of luck with this year’s course.

    Best regards
    Sabrina

    Sabrina Tozzi
    Associate, Intellectual Property
    Baker & McKenzie LLP

  3. Hello Jacques, thanks for your comments and suggestion.

  4. jacques vesin

    hello mark i’m glad to receive your message every saturday:i bought your first book (i believe) on contracts in 1988(about) at a time when books on r&d agts were very scarce in eu; for your “empty” slot i would suggest the topic “joint ownership of ip:what are the rules in the absence of clauses in a cooperation agreement?Are the rules of exploitation of a joint patent (in a foreign country) those in accordance with the law governing the contract or the law of the foreign country(eg the french code of ip has “suppletive” dispositions in the absence of specific dispositions in the contract-L613-29/32) non patent attorney lawyers are usually lost on this question. regards jacques vesin (from France of course!)

    2017-02-11 13:41 GMT+01:00 IP Draughts :

    > Mark Anderson posted: “IP Draughts and his colleagues are putting together > the final programme for this year’s outing of the week-long course, IP > Transactions: Law and Practice, which will be held at University College > London from 3-7 April 2017. This will the fifth year that t” >

Leave a Reply

Please log in using one of these methods to post your comment:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s