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.

A batch of IP and contract courses

Steering a good course requires some planning and skill

Today, IP Draughts is teaching at UCL Laws on the first of series of 6 one-day courses for practitioners that he runs periodically. It is too late to book on today’s course, Introduction to Contracts, but you can still book on the other 5, which run over the next 5 Tuesdays and are:

  • Drafting Legal Clauses in Commercial Contracts
  • IP Terms in Research Contracts
  • IP Licensing: an Advanced-Level Drafting Workshop
  • Drafting Clinical Trial Agreements
  • Contracts with Universities

Details of the courses, including dates, location, prices and content, can be found on the UCL Laws website here, or by booking directly on the Eventbrite page for IBIL (Institute of Brand and Innovation Law) events. In most cases, an alternative date in the Autumn is also available.

All of these courses have been run before, in some cases for many years (with suitable updating!). If you can think of another subject in the IP/contracts field that you think would be suitable for a one-day course – that you would be willing to book on, and which you think others would too – IP Draughts would be happy to hear from you.

Most of these courses have also be run as in-house courses. IP Draughts is asked to do in-house courses in the UK or northern Europe perhaps 6-10 times per year.

 

Leave a comment

Filed under courses and training

IP policy advisers: a good use of public money?

An advert on Twitter caught IP Draughts’ attention. It is for a Senior Executive Officer with the UK Intellectual Property Office. The salary is around £40,000 per annum. The job title is “Oxfordshire Growth Hub IP Policy Advisor”. The role is to work at least partly within the Oxfordshire Local Enterprise Partnership (LEP). Applications close tomorrow.

There are 37 LEPs within the UK. They are vehicles for identifying the investment needs of their regions, working up plans and obtaining government funding. The Oxfordshire LEP covers the county and city of Oxford.

Given the fact that government money is being spent in Oxfordshire in support of the local economy, and given the importance of innovative businesses to that economy, IP Draughts can see the point of including an IP specialist within the policy team.

So far, so good. What puzzles IP Draughts is the list of the main duties of the IP policy adviser (or “advisor”; the IPO seems to prefer US spelling). These are listed in the job advert as:

• Support the delivery of the Local Industrial Strategy as the LEP aspires to be ‘one of the top three global innovation ecosystems’. This will involve:
o Including IP in the drafting of the LEP’s Investment Prospectus that will underpin the LIS, recognising the region has world-leading knowledge assets and IP whose value can be maximised;
o Focusing on the activities in Pillar 2 of the LIS (A Powerhouse for Commercialising Transformative Technologies) to ensure IP’s role in unlocking growth potential and commercialisation is realised;
o Developing interventions to support the proposed Oxfordshire Finance Hub to enable businesses to accelerate IP adoption and investment in R&D, considering where IP can help to de-risk breakthrough businesses.

• Embed support and raise IP capability in the Growth Hub to enhance the offer to both breakthrough and cornerstone businesses. Both the internal Growth Hub team but also Advisors who are working across all Oxfordshire ERDF funded business support programmes with a particular focus on ISfB and eScalate

• Provide 121 support to programme clients where appropriate. This external element is vital to accelerate IP adoption

• Work with the LEP and local partners to include IP in European Regional Development Fund (or UK Shared Prosperity Fund) programmes, representing IPO and the LEP on technical assistance groups and embedding the IPO offer into the Innovation Support for Business Programme;

• Collaborate with LEP partners to consider the role of IP in knowledge exchange, skills for entrepreneurship and access to finance, working across the Innovation Directorate’s policy teams to provide insight and evaluation;

• Ensure IPO is represented in wider Government initiatives in the region including the Cambridge-Oxford Arc, and working with the Cities and Local Growth Unit, British Business Bank, DIT and Innovate UK to meet objectives;

• Work between IPO’s International Policy Directorate, Department for International Trade and the LEP to develop capability of OxLEP’s global hubs and international clusters based in science and technology parks – providing a conduit to IPO attaches support in major overseas markets;

• Develop evaluation processes to measure the impact of policy interventions and local actions to identify best practice and impact IP capability plays in adding value to regional innovation support initiatives;

• Advise Ministers and IPO senior managers on IPO business support policy;

• To actively contribute to the Business Support Policy’s team objectives and to the wider ID objectives.

And all this for £40,000 per annum!

In IP Draughts’ mind, the above description is opaque, wordy, and jargon-filled. It is task-oriented, focussing on specific initiatives with fancy names, rather than goal-oriented, explaining what value the role brings. Is this deliberate – to make it difficult for anyone to criticise the value of the role or to judge whether the incumbent has performed well – or does it simply reflect the vagueness of the overall objective?

Boiled down, the role seems to comprise the following elements:

  • ensuring IP is thought about and included in regional investment policy documents
  • raising awareness of IP issues within the teams involved in developing and implementing such policies
  • providing a source of IP expertise within those teams
  • liaising with other parts of government including overseas IP Attaches
  • advising and informing government ministers and the senior management of the IPO about their work

It must be difficult to establish useful metrics on whether activities of this kind contribute beneficially to the Oxfordshire economy. But at one level, if government is investing hundreds of millions of pounds in the local economy, should taxpayers care too much about the size or composition of the civil service team that administers that investment?

The niggle that runs through IP Draughts’ head in relation to this role, and the IPO’s policy activities more generally, is whether awareness-raising on IP issues is a useful government activity. He doesn’t doubt that it is well-intentioned and in response to political direction, but is it ultimately productive and good value for money? He would love to receive reassurance from someone whose judgment he trusts that his worries are unfounded.

Leave a comment

Filed under Intellectual Property, Legal policy

Dealing with overseas legal issues

Driving in France: do you have a high-vis vest, a warning triangle, and a breathalyser in your car?

Anyone involved in negotiating IP agreements is likely to come across this issue: how do you deal with a different law to your own? This question arises in different ways, including:

  • when negotiating which law and jurisdiction is to apply to your contract, or advising a client on this subject.
  • when deciding, during negotiations, whether to modify contract wording that appears to have been drafted to reflect another country’s laws.
  • when interpreting the wording of an existing agreement.

On the first point, the traditional approach of a law firm, such as the one in which IP Draughts spent 7 years, was to drum into associates the need to push the decision firmly back to the client as a commercial, rather than legal, issue, and to make clear that advice should be sought from lawyers who were qualified to advise on any law that the client might be contemplating as the law of the contract.

That advice is sound but sometimes less than helpful, particularly on smaller-scale transactions where the client cannot justify the costs of instructing a second set of lawyers. It is also true that junior associates cannot be expected to have experience of what legal issues arise in other jurisdictions, or when contractual language has been tailored to address the specifics of another country’s commercial laws. In the absence of support from a partner or more experienced colleague, it may be unrealistic to expect much support from the junior associate.

But clients aren’t always thoughtful enough to realise the limitations of their individual adviser. They may just think of them as representatives and mouthpieces of their firm, and expect them to know and communicate what the most knowledgeable lawyer in the firm knows. This is, frankly, unrealistic in most cases.

These thoughts are prompted by several recent experiences:

  1. Negotiations over a research collaboration agreement with a Belgian lawyer, who was keen to clarify that a contractual obligation should be expressed as a contract of means and not a contract of results. IP Draughts’ past experience of this distinction in the wording of civil law contracts (both in negotiations and when writing one of his books with the support of lawyers in other countries) was helpful in understanding what the Belgian lawyer wanted to express, which in fact was a reasonable request in context, though the contract was to be made under English law.
  2. Preparing material for an in-house version of IP Draughts’ talk Introduction to Contracts. The talk is to be given to research contracts staff in a Scottish university, and he thought it would be useful to include a few slides on the differences between Scots and English law; thanks are due to our work experience law student, Francesca Conroy, for her research on this point. His standard materials for this talk were written from the perspective of English law. He has learnt that there is an expression used by lawyers called “kilting a contract” to make a (typically English law) contract suitable for use under Scots law, and that the differences include issues such as an absence of deeds, signing formalities, limitation periods, and a less well-established meaning for the expression “subject to contract”. He was already aware that Scots law doesn’t require consideration for a contract to be valid.
  3. Over the last two or three years, IP Draughts and his partner in Anderson Law, Lisa Allebone PhD, have been commissioned to write template agreements and commentary for use by Irish universities and industry, in collaboration with various Irish lawyers. There seem to be fewer differences between Irish contract law and English contract law than there are between Scots contract law and English contract law. But in both cases the differences are not of major significance, at least compared with the differences between a civil law regime, such as Belgian law, and English law.

Knowing when to query the wording of a contract drafted by a lawyer in another jurisdiction, and when to live with it, when to object to a proposed contract law and when to live with it, and how to interpret a contract made under another country’s law: these are practical skills that are acquired over decades, where any knowledge gained is inevitably partial, and where there is often no absolutely right or wrong answer. Instead, these skills are part of the added value that an experienced lawyer can bring to international contract negotiations, which fall outside the domain of strict legal advice, and are not really something the client can expect their lawyer to know (or blame them for if they don’t know). Despite these limitation, the skills are nonetheless of real value, particularly for a client who wants their lawyer to be part of their commercial team.

2 Comments

Filed under Contract drafting

Read our 600 posts

This image illustrated a blog post that referred to Mr Pettifog throwing badly-drafted contracts on the fire.

This blog has an archive of over 600 articles, most of which are just as relevant today as when they were written, up to 8 years ago. If you want to read some commentary on IP clauses, indemnities, or other contractual points, why not use the search function on this site?

Some of our posts continue to be very popular – it is a mystery to IP Draughts why some catch people’s attention and not others. Below is a screenshot from the admin pages of this website, showing the most popular pages overall, since 2011.

Go on, you know you want to…

Leave a comment

Filed under News