Author Archives: Mark Anderson

About Mark Anderson

I am an English solicitor (attorney) who qualified originally as a barrister in 1983. After working as an in-house lawyer and with Bristows in London, I formed Anderson & Company (now Anderson Law LLP) in 1994. Our offices are based in Oxfordshire, on the banks of the River Thames, 50 miles west of London. Outside work, I enjoy walking, swimming and canoeing. I met my wife Sara whilst cycling from Land's End to John O'Groats (1,100 miles) in 1991.

Which is more important – experience or ability?

Everyone has to start somewhere. In entry-level jobs, the candidates tend to have limited experience, so an interviewer is inevitably focused more on ability, and potential, rather than their track record. Academic achievements sometimes get undue prominence, simply because there is nothing much else to go on.

The more senior the role, the greater and broader the expectations on the candidate. A senior associate in a law firm may be expected to have have several years’ experience of practising law, interacting with clients, managing projects, and so on. There is more data on which to assess whether the candidate is good at the technical aspects of the job, at getting on with clients and colleagues, at working hard, and at achieving the client’s objectives. Candidates for partnership need these skills but, depending on the firm, they may also need an ability to run and build a business, work with fellow owners, manage budgets, hire and fire, and so on.

It doesn’t stop there. IP Draughts has recently applied, unsuccessfully, for two part-time roles chairing organisations in the legal field. He thought he had the ability to do both jobs well – he wouldn’t have applied otherwise – and that he had relevant experience. But it seems that his CV lacked certain elements that were considered important. Sometimes, these elements are not fully brought out in the job specification and only become clear when the recruitment panel considers the candidates who have applied.

For one role, the feedback after the first interview mentioned various desirable traits. On several, he thought he had a strong or reasonable case. The one on which he probably had least experience, and which had only briefly been discussed at interview, was “holding the Chief Executive to account”. It is true that his various chairing roles haven’t included that responsibility, though he does have experience of managing people. Whether this means he couldn’t have performed that role well is, of course, a different question.

For another role, the recruitment exercise was re-run without interviewing the candidates who had applied the first time. The stated reason was that the candidate pool wasn’t sufficiently diverse to enable the recruitment panel to make a choice. This sounds, of course, like a polite way of saying that they didn’t like any of the candidates.

But taking it at face value, what does it mean? Are white, middle-aged men no longer suitable candidates? Having gone through compulsory diversity training at the Law Society, IP Draughts is aware that diversity comes in many forms. If he had known that this was going to be an issue, he could have laid it on thick about how his parents left school at 15 and 16, how he was the first person in his family to go to university, etc. But this wasn’t one of the stated criteria when he applied. As a good lawyer, he answers the questions that are asked, and isn’t so good at anticipating and answering the questions that are not asked.

IP Draughts’ message for anyone applying for a job (including our current vacancy for a trainee) is that you just have to give it your best shot, and hope that the job advert is an accurate reflection of the selection criteria. Beyond that, it is out of your hands. We all experience rejection, and we just have to keep plugging away.

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10 tips when applying for IP lawyer jobs

As we are currently advertising for a trainee, and are always on the look-out for more experienced lawyers who want to work for us, it is timely to re-post this golden oldie, which is one of the more popular articles on this blog.

IP Draughts

giggsIn two weeks’ time, Anderson Law will be welcoming its eleventh (lawyer) employee.  The first joined about 15 years ago.  Of the first ten, eight are still with our firm, although one of the eight (Paul) is now a partner with Mark, rather than an employee.

Most of these lawyers joined us after responding to job adverts.  In the last 15 years we have considered several hundred job applications.  This is small beer compared with the number of applications that large firms receive every year, but it has given us an insight into how some applicants spoil their chances by making very poor applications.

Employers have different priorities, so this article makes no claim to universal truth.  The wise applicant will try to make their application attractive to a range of employer preferences.  For example, IP Draughts cares not a hoot whether an applicant, in his application letter and CV…

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Our debate on Modern Contract Drafting is now on YouTube

Some readers may be aware – some may even have attended – the debate that we ran at University College London last week on the subject of Modern Contract Drafting. A recording of the event has now been uploaded on to UCL TV, which is hosted on YouTube.

Chaired by IP Draughts, the stellar cast of debaters comprised:

  • Ken Adams, author of a Manual of Style for Contract Drafting, which has recently appeared in its 4th edition. (Humble brag: one of IP Draughts’ books, Execution of Documents, gets a mention on page 158).
  • Iain Biddle, Cisco Systems
  • Dan Deacon, Clifford Chance LLP
  • Alex Hamilton, Radiant Law
  • Marcella Sampic, Orange SA
  • Andy Wishart, Contract Express

Thanks to Marcella for the photo below of the debaters.

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My brain hurts. Just tell me what this case means…

Doing his usual Saturday morning trawl through recent cases on BAILII, IP Draughts today stumbled across the case of Accord Healthcare Ltd v Research Corporation Technologies, Inc [2017] EWHC 2711 (Ch) (07 November 2017).

In the middle of the case report (starting at paragraph 53), Birss J goes into some detail on the subject of rights of priority and assignments of inventions.  Oh no, not this subject again! Why? Because, in the words of the judge:

Accord took a wide range of points prior to the trial but by the opening its case came down to a single point.  Accord contends that the assignment of 4th February 1997 only took effect as an assignment of the bare legal title to the invention and priority claim.  What it did not do was assign the equitable or beneficial title to that property to RCT.  That equitable or beneficial title was with the University of Houston (“Houston”).  It may (or may not) have ended up with RCT later but that does not matter.  Accord submits that as a matter of law, what is required for the priority claim to be accepted in this court at this trial is that the substantive right to priority, also known as the equitable or beneficial title to that right, was with the correct party on the correct day.  The correct party was RCT and the correct day was 17th March 1997 when the international application was filed.  Accord contends that this did not happen and so the claim to priority should fail.

In very simple terms the issue that sometimes comes up is this:

  1. You file a patent application (PA), claiming the priority date of an earlier application (EA).
  2. But at the time you make PA, you were not the owner of EA. So how can you claim the priority date?
  3. If you are later party to a back-dated assignment of the EA (known in the US by the Latin name of nunc pro tunc assignments), is this good enough, if you weren’t the owner at the time that PA was made?

The isssue in the Accord case seems to be a variation on this theme, but the same underlying question arises. On the law, Birss J quoted the decision of Kitchen J in the landmark, 2009 case of Edwards v Cook Biotech, where he said:

In my judgment the effect of Article 4 of the Paris Convention and section 5 of the Act is clear. A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application. If he is neither the person who filed the earlier application nor his successor in title then he is denied the privilege. Moreover, his position is not improved if he subsequently acquires title to the invention. It remains the case that he was not entitled to the privilege when he filed the later application and made his claim. Any other interpretation would introduce uncertainty and the risk of unfairness to third parties.

Nunc pro tunc! Squawk!

The Edwards case caused much fluttering in the dovecots of US patent firms, where backdated assignments seem to have been the norm.

Later UK cases qualified the Edwards case, by focusing on the English law distinction between legal ownership and beneficial ownership (a distinction that seems not to exist in the laws of many countries). In Accord, at paragraph 69, Birss J quotes himself in an earlier case (HTC v Gemalto) where he said:

Mr Mellor submitted that this [Arnold J’s reasoning in KCI] showed that as long as an applicant had, at the relevant date, what English law would characterise as a beneficial title to the invention, even if the bare legal title had not been acquired, then the applicant was a successor in title in the relevant sense. I did not understand Mr Tappin to dispute that and I think he was right not to. In my judgment if the relevant person has acquired the entire beneficial interest in the invention at the relevant time then that should be enough to satisfy the law.

Birss J cites various English patent cases to show that this is the current position under English law. This line of thinking is a bit of a fudge, as it may be possible to show beneficial ownership in the absence of a formal assignment document. It only works in countries where the law recognises a distinction between legal and beneficial ownership (a common law concept) such as England and the USA.

In Accord, Birss J heard evidence on US law from a galaxy of stars, including several retired US patent judges and Mr Chisum of Chisum on Patents fame, about beneficial ownership and what was required under US law to transfer it. On the facts, he held that RCP was the beneficial owner of the priority right at the time it made the later patent application. So, Accord failed in their challenge to the assignment.

On the priority right issue, IP Draughts thinks Accord simply affirms the position in Edwards v Cook, as softened by the later cases that allow beneficial ownership of priority right, and gives guidance on what this means in the context of US patent rights.

But this subject seems unnecessarily complex and convoluted. The simple solution is to make sure you obtain an assignment of the priority application (formally, in writing, etc) before you file a later application. IP Draughts would be interested to know whether US patent attorney firms have changed their practice since the Edwards case, so as to get their clients to execute assignments at an early stage, or are still relying on executing them after the event.

 

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