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 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 and canoeing. I met my wife Sara whilst cycling from Land's End to John O'Groats (1,100 miles) in 1991.

You say tomato, I say long-term industrial strategy

dameIP Draughts has come rather late to the news that the UK Government has commissioned another study on how universities and businesses can work better together. It is called the Dowling Review, after its leader, Professor Dame Ann Dowling, who (among many other illustrious positions) is both President of the Royal Academy of Engineering and Professor of Mechanical Engineering at the University of Cambridge. It is due to report soon.

According to her letter of appointment, “the objective is to help researchers to understand better the interests of industry”. The letter goes on to describe other things that Dame Ann should do, but this quoted sentence comes first. It seems to IP Draughts a poor start to a brief. It assumes that the reason why industry and academia are not working better together is a lack of understanding on the part of researchers, rather than a mutual incomprehension, and that researchers need the help rather than industry. It seems to reflect a view that, if only academia could be more focussed on the needs of British industry, the economy would improve. It fails to address the possibility that British academia is thriving and doing what it is supposed to do, and that the fault lies with British industry, for being too small, risk-averse and lacking in financial resources to make proper use of the output of universities, unlike industry in other countries, such as the USA or Germany. Some would say that British academia is has a much higher, international reputation than British industry.

IP Draughts has advised on many “strategic relationships” between universities and industry over the last 30 years. Some have followed a conventional path, governed by a research funding agreement. Others have tried to find a new way of working, through joint ventures, centres of excellence, high-level consultancies, embedding industrial staff in university departments, and many other models. Often, a rationale for these fancy structures has been to create an environment in which academic researchers and industry can work closely together.

half bakedWhichever model is used – and IP Draughts has wasted too many hours of his life trying to reduce half-baked, strategic visions into a meaningful, contractual form – the tension between academic objectives and business objectives remains. It may be mitigated by creative ways of working, but it cannot be removed entirely. Industry and academia have different, underlying objectives. The differences are not rough edges to be smoothed into a more efficient shape through the good offices of a junior minister at the Department for Business Innovation and Skills. They are meant to be different.

For some light relief from these thoughts, IP Draughts rewrote Dame Ann’s letter of engagement, focussing it on the legal disciplines rather than industry. It came out like this:

Dear Ann
You have kindly agreed to develop advice and recommendations for BIS on how Government can support relationships between practising lawyers and legal academics.
The objective is to help academics to understand better the interests of practising lawyers. Increased collaboration linking the long-term strategic needs of UK legal practice with our outstanding legal research capabilities can deliver broad based benefits. Researchers will be engaged in world-class research on identifying what is really needed by legal practitioners. UK legal practitioners gain a competitive edge in bringing innovative products and services quickly to market.
We recognise that for law firms to share their long-term commercial strategies with academic researchers requires the foundation of a trusting relationship at the level of individuals and their immediate teams.
We would like you to consider how Government can help initiate and support such relationships for a broad range of law firms of different sizes and types, and the implications of the varying characteristics of different sectors.

profitSome would say this is exactly what law professors should be doing. However, even IP Draughts in his most irritable moments would admit that there is a role for legal academics that is not focussed on making greater profits for the partners of Freshfields and other law firms. Even if this helps the UK economy as a whole: legal services are a small but steady contributor to the UK’s balance of payments.

Coming back to the needs of industry, IP Draughts would like to suggest that all parties engaging in large collaborations between academia and industry, including their business and legal advisers, should be required to attend an induction course in which they learn about the priorities of the other party in the collaboration. The course should take at least a couple of hours for each side of the collaboration, and should cover such topics as:

  • legal purpose of the organisation and associated constraints (eg charity laws, or Companies Act duties)
  • organisational and individual objectives and priorities
  • how this project fits within the larger objectives of the organisation
  • what individuals are judged on (eg peer-reviewed publications, helping make a profit)
  • management structures, including decision-making authority

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Filed under Commercial negotiation, universities

Courses on contracts and IP

teacherBelow are details of 5 courses that IP Draughts and his colleagues will be running in the next few months. The titles of the courses are:

 

  1. Drafting Legal Clauses in Commercial Contracts
  2. Intellectual Property Licensing: An Advanced Level Drafting Workshop
  3. Drafting Clinical Trial Agreements
  4. Transactional Skills Course (UCL LLM students only)
  5. Drafting and Negotiating an IT Supply Contract

Drafting Legal Clauses in Commercial Contracts

When and where?

Tuesday 2 June 2015 at University College London’s Faculty of Laws. One-day course. 6 hours CPD.

Who is it for?

This long-running course is designed for lawyers and experienced contract managers who wish to understand more about ‘legal’ clauses in contracts. In the morning we discuss warranties, indemnities and liability clauses. In the afternoon we consider a selection of boilerplate clauses, including entire agreement, assignment, law and jurisdiction. Practical examples are used to illustrate legal, drafting and commercial points that arise in each type of clause under discussion.

Where can I book?

Further details, including booking facility, can be found here.

Intellectual Property Licensing: an Advanced Level Drafting Workshop

When and where?

Tuesday 16 June 2015 at University College London’s Faculty of Laws. One-day course. 6 hours CPD.

Who is it for?

This course is designed for commercial and IP lawyers, and licensing managers, who already have experience of drafting and negotiating IP licence agreements. We go through the main terms of an intellectual property licence agreement in detail, focussing on grant, warranties, payments, performance, termination, law and jurisdiction. Practical examples are used to illustrate legal, drafting and commercial points that arise in each type of clause under discussion.

Where can I book?

Further details, including booking facility, can be found here.

Drafting Clinical Trials Agreements

When and where?

Thursday 16 July 2015 at Rembrandt Hotel, London (opposite V&A Museum). One-day course. 6 hours CPD. This course is run by Management Forum.

Who is it for?

This course is designed for lawyers and commercial managers who have responsibilities for drafting and negotiating agreements relating to clinical trials. We discuss investigator agreements, CRO agreements, and a range of other agreement types.

Given the importance of regulatory issues in clinical trial agreements, Mark Anderson is joined for the morning of the course by Christine Bendall, a regulatory consultant, who will explain various aspects of pharmaceutical regulation and their impact on clinical trial agreements.

Where can I book?

Further details, including booking facility, can be found here.

Transactional Skills Course

When and where?

Tuesday 21 July to Thursday 23 July 2015 at University College London’s Faculty of Laws. Three-day course.

Who is it for?

Run jointly by Mark Anderson and Jelena Madir, this course is in its first year, and is for UCL Laws’ Graduate Students only (but if you think it might have a wider audience, please let us know).

The focus of the course is on helping law students to understand commercial transactions, and the role of the lawyer in relation to commercial transactions. Over 3 days we discuss a range of topics, including contract drafting and the how principles of law affect the structure and content of contracts.

Where can I book?

Further details, including booking facility, can be found here.

Drafting and Negotiating an IT Supply Contract

When and where?

Thursday 22 September 2015 at Rembrandt Hotel, London (opposite V&A Museum). One-day course. 6 hours CPD. This course is run by Management Forum.

Who is it for?

This practical seminar is run by Paul Maclennan of Anderson Law, and Piers Clayden of Clayden Law Ltd. It provides an in-depth analysis of the main legal issues that arise in the course of contracting for large enterprise software solutions. It will be of interest to both customers and vendors/suppliers alike, as well as system integrators and consultants.

Where can I book?

Further details, including booking facility, can be found here.

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Do no evil …drafting

Four_wise_monkeysEarlier this week, Google invited us to sell them our patents. In their words, “the Patent Purchase Promotion is an experimental marketplace for patents that’s simple, easy to use, and fast.”

Apparently, selling your patents (but only your US patents) to Google will ensure that the patents don’t end up in the hands of “patent trolls”. All transactions are to be handled in a standardised way, using a Patent Purchase Agreement whose terms can be found here. In FAQs that accompany the promotion, Google declares:

…we aren’t going to negotiate with anyone. You set the price, we set the terms, and if things work out, we get you paid by the end of summer.”

Others have commented on whether you should take Google up on their offer, eg see this article: Google Says Trust Us and Sell Us Your Patents. (IP Draughts has just mis-typed this in a Google search, and found some web pages on the subject “Google Says Trust Us and Sell Us Your Parents”, which is quite a different promotional opportunity.)

Google asks us to remember that:

…this program is an experiment (think of it like a 20 percent project for Google’s patent lawyers)

And they emphasise that:

There’s some fine print that you absolutely want to make sure you fully understand before participating, and we encourage [you] to speak with an attorney.

So, what does this attorney think of the fine print?

The drafting of the Patent Purchase Agreement is so “experimental” as to make IP Draughts suspect that the promotion is not serious. It shows signs of being a rush job, performed by incompetent staff. Let’s be slightly charitable and say that the patent department didn’t have time to involve the legal department in the drafting. IP Draughts suggests a new research project for Google’s “patent lawyers”: learn how to draft contracts. Note to IP Draughts’ staff: if you ever draft something as terrible as this document, you won’t have a future with the firm. Yes, it really is that bad. Let’s take a few examples. Each one on its own might not be a sacking offence, but cumulatively they amount to gross misconduct.

  • the missing “not”

Agreement NonTransferable. The Seller may assign or otherwise transfer this Agreement, or any rights or obligations under this Agreement, to any third party without the prior written consent of Google.

  • the missing sentence

Governing Law; Venue/Jurisdiction. This Agreement will be interpreted, construed, and enforced in all respects in accordance with the laws of the State of California, without reference to its choice of law principles to the contrary. Seller irrevocably consents to the jurisdiction and venue of the courts identified in the preceding sentence in connection with any action, suit, proceeding, or claim arising under or by reason of this Agreement.

  • cutting and pasting text from another document. Badly. Eg section 5.1, which refers to the “Delivery Date”, or section 5.2 which refers to the “Closing” and the “Closing Date”. In all of these cases, IP Draughts suspects that the defined term “Effective Date” may have been what the drafter intended to use, if he had taken the time to clean up the draft.
  • double definitions, and confusion over whether the defined term should be “Seller’s Patent” (section 1.1) or “Seller’s Patent(s)” (section 2). This mental confusion results in some horrible phrases, such as “any of the Seller’s Patent”.
  • misuse of defined terms, eg section 6.6, which should refer to “Seller’s Patent” not “the Patents”
  • turgid or error-strewn drafting, eg:

…necessary or desirable for effecting completely the consummation of the transactions contemplated hereby

…represents and warrants to Google as follows that as of the Effective Date and as of Closing

  • use of the future-perfect tense (for goodness sake) and multiple verb pile-up:

Upon the Effective Date, Seller …shall have caused its Affiliates to sell, assign, transfer and convey to Google …

  • incorrect cross-references, eg section 7.2 cross-refers to section 3.4, which doesn’t exist.

The above examples focus on mistakes and the very worst kind of drafting. The document also contains plenty of examples of drafting that IP Draughts considers to be unacceptable, but not quite as bad as in the bullet points above. In the following examples, the point that (most) concerns IP Draughts is highlighted in bold text:

restrictions and encumbrances including without limitation any pledge, charge [etc] …or other restrictions and encumbrances (collectively, “Restrictions and Encumbrances”)

The Seller’s Patent has never been found invalid …

NEGLIGENCE (WHETHER ACTIVE, PASSIVE OR IMPUTED) … FOR COVER OR FOR ANY INCIDENTAL…

And there are plenty more.

There are also points of substance in the agreement that should concern any seller. Some of these indicate half-baked thinking on the part of the drafters, including the ridiculously elaborate warranty in section 6.3 which provides that, in respect of any licenses that the seller has previously granted under the patent:

…each such license is nontransferable (except solely in the context of acquisition of the respective licensee and in that case, the scope of each such license or rights in the Patents is limited to the activities of the licensee prior to the acquisition)

Or the provision that the seller can inform its existing licensees that it has sold the patent “provided that the Seller shall not identify Google”.

In its FAQs and other documents describing the promotion, Google emphasises “simplifying the process”, “better experiences for sellers”, “removing complications”, and “keeping it simple”. Yet the core document of the transaction fails to live up to these ambitions. This just doesn’t make sense. IP Draughts’ conclusion is that Google isn’t serious about this exercise, and that it has been dreamt up as a PR stunt on short notice. Either that, or Google’s competent contract drafter(s) didn’t get the memo.

 

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Filed under Contract drafting, Intellectual Property

Subject to the jurisdiction of the English courts: exclusive?

inclusiveA small, but important, contract-drafting point: imagine a contract clause that says that disputes will be subject to the jurisdiction of the English courts. Should we interpret this to mean that the English courts will have exclusive jurisdiction, or might it mean that the English courts have only non-exclusive jurisdiction?

A well-drafted contract will state explicitly which law and jurisdiction governs the contract, and whether the jurisdiction is exclusive or non-exclusive.

If the contract states that English jurisdiction is exclusive, the parties must go to the English courts. If a party starts an action in another court (let’s say in China), the English court may order that party to stop proceeding in the Chinese courts. If the order is not complied with, the English court may commit the non-complying party to prison for contempt of court.

If the contract states that English jurisdiction is non-exclusive, a party can ask an English, Chinese or any other court to hear the case. An English court is likely to accept, based on the jurisdiction clause. If there is no jurisdiction clause at all, an English court might accept jurisdiction simply because the contract states that English law applies. A Chinese court might accept, eg if there is a strong connection with China in relation to the parties, the place of execution of the contract, or the place of performance of the contract.The first court to hear an action over the contract may issue an order to prevent a party from starting an action in another court. This would be on the grounds that the first court is “seised” of the action, and not because of the (non-exclusive) jurisdiction clause.

csav2A recent case in the English Court of Appeal illustrates these points. Hin-Pro International Logistics Limited v Compania Sud Americana De Vapores S.A. [2015] EWCA Civ 401, was reported on BAILII last week.

The case concerned a shipping contract – a bill of lading. Cargo was carried by sea from China to Venezuela. The claim was that the cargo had been released without production of the original bills. The relevant part of the jurisdiction clause read as follows:

This Bill of Lading and any claim or dispute arising hereunder shall be subject to English law and the jurisdiction of the English High Court of Justice in London. If, notwithstanding the foregoing, any proceedings are commenced in another jurisdiction, such proceeding shall be referred to ordinary courts of law.

The Court of Appeal interpreted this clause as giving exclusive jurisdiction to the English courts, even though the word “exclusive” does not appear in the clause. The court reviewed a substantial body of case law that supported this conclusion.

Hin-Pro’s counsel argued that the second sentence of the clause showed that the parties accepted that they could start an action elsewhere, but the court disagreed. This sentence was concerned more with the situation where another country’s court did not accept the exclusive jurisdiction clause. It did not affect the interpretation of the first sentence by the English courts.

The interpretation point is clear, at least for the English courts. However, best practice in contract drafting requires you to state explicitly whether the jurisdiction is exclusive:

  • for the sake of clarity among the parties, not all of whom will have read the English case law
  • to avoid court disputes
  • to cater for the possibility that other courts may not agree with the English Court of Appeal (eg the UK Supreme Court, or a foreign court).

If this blog had any sense of decorum, it would stop there. However, IP Draughts cannot resist mentioning some other points that come up in the judgment.

  1. Catch me if you can. One of the parties in this case, Hin-Pro, was a Chinese company. It started court proceedings in China. At first instance in the English High Court, the judge ordered that Hin-Pro cease participation in the Chinese court proceedings because of the exclusive jurisdiction clause. Hin-Pro’s sole director was a Miss Su Wei. Apparently she ignored the order. The English judge committed her to prison for 3 months for contempt of court. As the Court of Appeal drily noted: “Miss Wei has not yet been apprehended.”
  2. csavContra proferentem rule. The contract was drafted by the other party, known as CSAV. CSAV is a long-established shipping company. The Court of Appeal considered whether the contra proferentem rule might assist Hin-Pro. In certain circumstances, this rule requires that an ambiguous contract term be interpreted against the interests of the party who drafted it. A version of this rule, in the US, seems to have led to a boilerplate clause being included in many US contracts, that states that the contract is a joint drafting effort and it should not be interpreted strictly against either party. The court’s conclusion was that the rule didn’t assist Hin-Pro in this case, for a variety of reasons, not least because the clause was not ambiguous, and it could benefit either party.
  3. No understand English? Hin-Pro’s counsel argued that many of the users of the contract would not have English as their first language, and many would understand the clause as granting non-exclusive jurisdiction. The Court of Appeal disagreed:

I do not accept Hin-Pro’s submission that the fact that the bills of lading will probably be issued to companies staffed by those whose first language is not English should affect the way in which they are to be interpreted, or that the court should endeavour to determine what the words would mean to a person in that category. This would be an exercise fraught with difficulty, not least because it would, potentially, produce different results according to the non-English first language chosen, and require a determination, in many cases incapable of ready resolution, of which first language the reasonable man is to be taken as speaking. In agreeing in English to an English law contract the parties must be taken to have agreed that it shall be interpreted with all the nuances of the English language and in the way that a speaker whose first or only language was English would do so.

But which version of the English language should Miss Wei be taken to understand? UK, US, Australian? IP Draughts has doubts over whether an intimate knowledge of idiomatic English helps you to know whether “subject to the jurisdiction” means exclusive or non-exclusive jurisdiction.

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Filed under Contract drafting, Legal Updates