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.

Mr Pettifog, international trade negotiator

risk assessmentThe air was so thick with smugness that a health and safety officer, conducting a mental risk assessment, would have ordered an immediate evacuation of the room. Fortunately there were no health and safety professionals at partners’ tea last week.

Mr Pettifog was telling us about his recent trip to Nigeria as a government envoy. “The Secretary of State gave me a letter to hand personally to President Buhari”, he said. “They serve very good tea at Aso Villa”, he added, aware that no-one else in the room would be familiar with the name of the President’s official residence. But no-one rose to take the bait. We were too stunned by the idea that Mr Pettifog had been employed as a diplomat.

Incredibly, it appears that the UK government considers him to be a “senior and respected figure in the field of commercial law” – to quote a letter from a civil servant at the Department for International Trade that he gleefully passed around the room. The letter invited him to participate in trade negotiations in Nigeria as a personal representative of the Right Honourable Dr Liam Fox MP, Her Majesty’s Secretary of State for International Trade.

“Are you both in the Masons?” asked Jim Rough-Diamond, head of our commercial litigation department, as a look of utter bewilderment settled on his craggy Northern face. Mr Pettifog pretended not hear the question, and continued with his account of the trip. “Of course, the main negotiations were held in Lagos, but we were flown to Abuja for the diplomatic niceties.”

range rover“I nearly didn’t make it to last day of negotiations, as the door on the embassy’s bullet-proof Range Rover wouldn’t open and I was stuck in the car for nearly an hour. I didn’t make a fuss, though. I just suggested they might want to oil the hinges.”

“So, did you agree the terms of a trade treaty?” asked Bright Spark.

“Not yet”, replied Mr Pettifog. “But we have agreed an agenda for discussing the procedures to be followed in future negotiations. And I insisted that the quorum for future meetings should always include a senior UK legal representative. Without proper legal advice they are bound to cock it up. Of course, intellectual property will be one of the key themes when we get into substantive negotiations”, he added, looking at IP Draughts.

It looks like Mr Pettifog will have British Airways Gold Club status for a while.

 

 

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Antitrust issues in IP licensing: competing guidelines

ftcVia the IP Finance blog comes news of a proposed update to the current US Antitrust Guidelines for the Licensing of Intellectual Property, which date from 1995. Although he has read the US guidelines in the past, IP Draughts is much more familiar with the equivalent European Commission Guidelines and the associated block exemption regulation for technology transfer agreements.

The European rules seem to require much more attention for run-of-the-mill licence agreements than the US rules require. He doesn’t recall ever having had a US lawyer refer him to the US guidelines in relation to a transaction under negotiation that included a US territory, whereas European lawyers working on a licensing transaction will frequently have recourse to the EU guidelines and block exemption regulation when the territory of the licence includes all or part of the EU.

Looking at the redline version of the proposed US guidelines, issued by the Department of Justice and Federal Trade Commission, IP Draughts had several thoughts:

  1. The US guidelines are more positive about the pro-competitive effects of licensing than the EU guidelines. To take one detailed example, bans on the licensee selling competing products may be acceptable under the US rules (eg see section 4.1.2.1 of the guidelines), but would ring alarm bells in an EU setting, particularly if the competing product was developed by the licensee (eg see section 4.2.7 of the EU guidelines and Article 5(2) of the block exemption). In the absence of careful and detailed economic analysis, IP Draughts would need strong persuading that such a restriction could safely be included in an EU licence agreement.
  2. Many of the proposed changes to the 1995 US guidelines are technical and don’t make major changes to the antitrust analysis of licence agreements. Where substantive changes are made, they tend to move the guidelines in a more liberal direction, that is to say taking a more positive attitude to licensing. For example, the discussion of resale price maintenance indicates that vertical price restraints in licence agreements will be treated under the rule of reason rather than as per-se illegal, following an important Supreme Court decision in 2007.
  3. Particularly helpful to the practitioner are comments in the US guidelines about the main concern being horizontal agreements between competitors. As most IP licensing is not between competitors, and often has no horizontal element, this provides a very useful context to the analysis set out in the document. By contrast, though the EU guidelines express greater concerns about agreements between competitors, there are plenty of rules about agreements between non-competitors, eg in the block exemption, and no general suggestion that vertical agreements are to be treated much more favourably than horizontal ones.
  4. Not only are the US guidelines more positive about IP licensing, they are also more helpful than the equivalent EU guidelines in explaining, with numerous illustrative examples, where no significant antitrust issue will arise. By contrast, the EU guidelines use up far too much space in simply regurgitating what is permissible under the technology transfer block exemption.
  5. Where shall we three meet again? In Brussels or in Luxembourg?

    Where shall we three meet again? In Brussels or in Luxembourg?

    IP Draughts has heard it said that the thinking of those in the European Commission who are responsible for antitrust policy is strongly influenced by the approach of the US authorities. Certainly some of the economic concepts that are seen in the US guidelines, such as innovation and technology markets, have found their way into the EU guidelines and block exemption. But the way in which those concepts are used has a very different flavour in the EU model. It is as though the US concepts have been mixed up in the cooking pot with the desire to promote the EU single market, deep suspicion about IP rights generally as a monopolistic  right, a lack of experience of routine licence agreements, and a Mediterranean statist approach.

  6. IP Draughts was reminded that the US guidelines include a “safety zone” for certain types of agreement, which could be viewed as analogous to the EU block exemption regulation or to the EU Notice on Agreements of Minor Importance. Section 4.3 of the US guidelines places in the safety zone, among other agreements, licence agreements that meet both of the following criteria: (1) they are not “facially anticompetitive” – ie don’t include really bad terms; the equivalent expression in EU law is “hardcore clauses”; and (2) the collective market share of the parties does not exceed 20%. Where market shares cannot be determined, eg in some technology or R&D markets, an alternative to item (2) is that there are at least 4 competing technologies or 4 other parties that can engage in competing R&D.
  7. However, IP Draughts doubts whether this safety zone will be used much, given the more tolerant approach of the US guidelines to most IP licence agreements.

The differences between the US and EU approaches are sometimes found surprising by US clients and their US lawyers. Two points in particular may cause surprise: (1) the extent to which EU lawyers spend time looking at what is permissible under the relevant block exemption (there are other block exemptions for R&D agreements and for distribution agreements, among others), and (2) the difficulty of achieving legal certainty as to whether particular terms will be acceptable under EU antitrust laws. The unsatisfactory state of EU law may make it impossible for their lawyers to provide a quick, cheap and reliable answer to the antitrust questions that arise.

 

 

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A shrewdness of courses later this year

apesThe collective names for animals throw up some oddities. Actually, park that thought. Did you know that the origin of the name Grosvenor (the family name of the Dukes of Westminster, who have vast wealth from owning expensive bits of London) is gros venor, also rendered as grand veneur, which is Norman French for head huntsman? Apparently an early member of the family was a loyal servant of William the Conqueror and received this honorary title. A thousand years later, his descendant the 7th Duke has inherited a £9 billion fortune, and is a friend of the Royal Family. Who said that we lived in a meritocracy with equality of opportunity?

The link above is for a Wikipedia page for “terms of venery” or hunting. Which reminded IP Draughts of the Grosvenor name.

Are you familiar with a shrewdness of apes, or a kettle of hawks? A congregation of magpies, or a lamentation of swans? No matter, unless you participate in pub quizzes.

All of this is displacement activity, to avoid the mercantile business of today, which is to advertise some courses that are being run at UCL Faculty of Laws this Autumn, most of them involving IP Draughts. Details of them can be found on the UCL Laws website here. Or you can go directly to the booking pages on the Eventbrite website, which are linked here.

235The one highlighted below in red is a free evening panel discussion, lasting an hour and a half, and followed by a drinks reception. Panel members include Mr Justice Flaux, former judge in charge of the Commercial Court (the main venue for major contract disputes in London). We have 235 bookings so far; don’t leave it too late to book, as a suitable room will be selected soon based on bookings at that time.

The others are all-day commercial courses, for which a fee is charged. The one in green below is Ken Adams’ course; the others are being given by IP Draughts.

  1. Tue, 4 Oct 09:00 Drafting, Understanding and Working with Contracts: An Advanced-Level Workshop
  2. Tue, 18 Oct 09:00 Drafting and Negotiating Intellectual Property Terms in Research Contracts
  3. Tue, 1 Nov 09:00 Drafting ‘Legal’ Clauses in Commercial Contracts
  4. Mon, 7 Nov 09:00 Drafting Clearer Contracts Course 2016
  5. Tue, 8 Nov 18:00 Dysfunction in Contract Drafting: Are the Courts, Law Firms, and Company Law Departments Stuck in a Rut?
  6. Tue, 15 Nov 09:00 IP Licensing: An Advanced-Level Drafting Workshop
  7. Tue, 29 Nov 09:00 Drafting and Negotiating Contracts with Universities

 

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The technology transfer profession: does it exist?

professionals1When IP Draughts started in practice, many of those who worked in research contracts and technology transfer at universities were drawn from the pool of administrators. Many were not graduates. Most would not have regarded themselves as belonging to a technology transfer profession.

Their skills lay in working with academics over many years, and dealing with all the issues that academics tend to dislike (while believing they could do them better than those responsible for them), and which are bundled together under that dismissive name, administration. Some became highly skilled at managing relationships with industry, and rose to senior positions within leading universities (in one notable case, receiving an honour for doing so); some others probably deserved the opprobrium that academics hurled in their direction.

The people who work in technology transfer nowadays (or, if we are being inclusive or fashionable, knowledge transfer) tend to have many paper qualifications. They may have several university degrees – a PhD and MBA are not unheard of – and many will have attended professional training courses such as those mentioned below. Some have law degrees or are qualified lawyers.

administratorsYet a significant part of their jobs has not changed from the early days. They are still required to work with academics, and liaise with industry. Their work is sometimes still referred to as administration, though there is greater recognition that it requires specialist skills. It is not a purely commercial role, though it requires many of the skills that business development managers in industry possess.

When a specialist work activity grows in scale, the people who perform that activity tend to come together for mutual support. IP Draughts has noticed a pattern to these activities across different disciplines. First, people come together and start to run national conferences and training courses. Next, they establish a professional qualification. At some point, this professional qualification becomes, de facto or de jure, a necessary condition of working in the sector. Finally, the body that oversees the qualification achieves recognition as a professional body. In the UK, this tends to be done by obtaining a Royal Charter.

IP Draughts has seen this happen in the UK investment community, which in the last 30 years has introduced professional exams and continuing education. In 2009, the Chartered Institute of Securities and Investment received its Royal Charter, thereby (according to the CISI website) “join[ing] the ranks of professional bodies such as accountants, lawyers and bankers.” In 2016, the Institute of Trade Mark Attorneys received its Royal Charter.

practitionerThe variety of roles within technology and knowledge transfer, and the variety of types of organisation that do these activities (eg a few research-intensive universities and a larger number of organisations that have a smaller throughput of TT or KT deals) may reduce the likelihood of reaching the final stage of this process soon. But progress is being made with some of the earlier stages.

Organisations such as PraxisUnico (in the UK) and ASTP/Proton (across Europe) have been running training courses and annual conferences for well over a decade. Disclosure: IP Draughts and his colleagues have taught on some of these training courses for many years, and IP Draughts’ partner Paul Maclennan is currently on the training committee of PraxisUnico.

In the last few years, membership organisations of technology transfer managers in different countries have come together to form the Alliance of Technology Transfer Professionals. ATTP has established a professional qualification, the Registered Technology Transfer Professional (RTTP).

Some technology transfer managers may also consider themselves licensing executives. A few years ago, the Licensing Executive Society (USA and Canada) formed an independent body to administer a new qualification, the Certified Licensing Professional (CLP).

A few weeks ago, a new qualification appeared. The European Knowledge and Technology Transfer Society appears to have grown with funding from the European Commission. It has established a certification for TT managers, at 3 levels.

expertA mixture of curiosity and professional pride led IP Draughts to apply for these qualifications (or should they be called certifications or registrations?). He is now entitled to put the letters CLP, RTTP and EuKTS (Expert) after his name. In reality, his qualification as an English solicitor (attorney) is the one from which he makes his living, but these other qualifications are nice to have.

TT practitioners are clearly travelling in the direction of professional status. But whether they want or need to reach that destination is far from clear. In IP Draughts’ view, a true profession has several attributes:

  1. A set of skills that are not easy to learn, and formal qualifications that must be obtained to demonstrate competence in those skills. Those skills should be maintained for as long as the individual remains actively involved in the profession.
  2. A shared understanding of what it means to be a member of the profession, and a shared set of professional values – an ethos. These professional values should be maintained in the face of pressures from employers, clients and others, and there should be a mechanism for ejecting people from the profession if they don’t adhere to these values.
  3. Protection for the public in the form of compulsory insurance and compensation schemes.

travelUsing this definition, TT practitioners are making good progress with item 1. Many will feel they have elements of item 2, but not the formal processes. As most TT practitioners are employed rather than self-employed, item 3 may be less relevant.

It will be interesting to see where TT practitioners go next on their professional journey.

 

 

 

 

 

 

 

 

 

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