IP Draughts is currently editing the 4th edition of his book, Technology Transfer. He hopes the publication date will be in about 4 months’ time.
In front of him is chapter 9, on personal property law. Although the content of this chapter has been extensively updated since the first edition was written about 25 years ago, parts of it remain unaltered since then. Also written around that time was an article for the European Intellectual Property Review, on the subject of applying traditional property laws to IP transactions. It can be found at  EIPR 236.
Most of IP Draughts’ writing has received very little feedback from readers. There has been a steady increase in sales over the years, and he has been asked to write more books, which provides a kind of feedback. People have told him they have his “book” on their shelves (which often means the red book, on Technology Transfer), and they were usually smiling rather than frowning when they did so. In fact, IP Draughts is responsible for several books, whose continued updating depends to a significant extent on the efforts of IP Draughts’ regular co-author and Anderson Law consultant, Victor Warner.
But there has been very little feedback about the detailed content of any book. No-one has said, you are on the right lines with that idea, or I thought you misunderstood the law on such-and-such. It is a little different with articles. Several people put him straight on early drafts of his article on FRAND licensing, and the content was greatly improved as a result. And some readers of this blog provide welcome reactions to the short articles contained here.
The chapter that he is currently editing mentions the statutory warranties that are implied into a transfer of property when the transfer is stated to be made “with full title guarantee”. For the last several years in his teaching, IP Draughts has pointed out that these provisions raise a number of legal and commercial practice issues, including:
- Property statute. Under section 1 of the Law of Property (Miscellaneous Provisions Act 1994, these warranties arise on a “disposition of property”, and property is defined for this purpose as including “a thing in action, and any interest in real or personal property”.
- IP statutes. Various UK IP statutes, discussed in the chapter, state that the type of IP under consideration is personal property.
- Application to UK IP assignments. Therefore, the implied warranties would apply to an assignment of IP. IP Draughts wonders whether they would apply (assuming the words “with full title guarantee” are used in the assignment): (a) to IP registered outside the UK in an assignment stated to be governed by the laws of England and Wales, or (b) to an assignment of UK IP that is stated to be governed by a law other than that of England and Wales. Then there is the question of actions brought in other parts of the UK, eg Scotland, which have their own property laws. The more one thinks about this subject, the more questions arise. Although the property law provisions mentioned in this chapter apply to personal as well as real property (the latter consisting of land and buildings), one senses that the focus of the drafter is on real property existing in England and Wales, which by its nature cannot exist outside the jurisdiction. Perhaps this is why the obscure issues that IP Draughts is raising have not been addressed explicitly in this legislation. Better lawyers than IP Draughts may have the ability or patience to find out the answers from other parts of English law.
- Use of magic legal words. Of more practical importance, in IP Draughts’ mind, is why people use the magic words (full title guarantee) at all. He has found that many lawyers and patent attorneys, and most non-lawyers, are not aware that their presence in an IP assignment has any particular legal effect. In principle, he is against using words in a contract that have a legal significance that is not obvious to the typical reader. Sometimes, use of legal terminology may be almost inevitable, as where people use terms like indemnify or best endeavours. Or they may have only a vague idea of its meaning but draw comfort from familiar legal jargon, as with the phrase “time is of the essence”. But that is a larger subject for another day.
- Use of office templates. The answer to this question often lies in the use of law firm templates. Nowadays, many large commercial law firms in England have their own favoured template agreements. Often, those templates will include a formal assignment of IP. Often, the IP assignment template will use the phrase “with full title guarantee”. And often, commercial lawyers are reluctant to change wording that appears in their firm’s template, particularly if they are not sure why that wording is there.
Where the IP assignment forms part of a larger transaction, the parties may already have negotiated detailed IP warranties. In such cases, it may be inappropriate to introduce further or different warranties via the back door through the use of the phrase with full title guarantee. When IP Draughts has raised this subject with experienced IP lawyers outside negotiations (eg on his UCL course), they have usually agreed with his way of thinking. But that may have just been their way of getting him to stop talking about such an obscure subject.
If his writing has done nothing else, it has forced IP Draughts to think carefully about the subject on which he is writing. Perhaps legal textbooks are unlikely to prompt debate and reaction, and it requires more direct discussion of the issues (or litigation where economic interests are at stake) before people change their approach. But the writing provide a foundation on which ideas can be secured.