Technology Transfer: The Good, the Bad and the Ugly

Book review: University Technology Transfer: What Is It And How To Do It, Tom Hockaday (Johns Hopkins University Press, 2020)

Would you like to work with leading academics, and help them to transfer their technology from the university to the market, for the benefit of society? What skills do you need for this work? How is your work environment organised? What pressures do you face? How do you measure success? These and other questions are answered in Tom Hockaday’s crisply written, compellingly argued, authoritative book.

At the time of writing, the World is rushing to develop treatments and products for Covid 19, to reduce the number of human deaths, perhaps by hundreds of thousands. Many of those treatments and products are being initiated in universities. IP Draughts knows several people, across universities and law firms, who have been working on Covid 19-related research and technology transfer (TT).

The state of TT today reflects its evolution over the last few decades. When IP Draughts started in practice, many academics were suspicious of the commercial world and its values. Commercial exploitation was, for some, a negative term; the emphasis was on the word exploitation. In 1985, the UK Government announced that universities would be free to manage their own TT activities, rather than assigning their IP to the British Technology Group (formerly the National Research and Development Corporation). Thus started the growth of TT departments in UK universities.

Tom Hockaday has been part of that growth for nearly as long as IP Draughts. Their paths have crossed many times. Tom’s first job in the sector was at University College London; although IP Draughts advised UCL at that time, he can’t remember working with Tom. Next, Tom moved to the University of Bristol, and IP Draughts worked on several projects with him during that time.

Finally, Tom moved to the University of Oxford, where he was promoted to managing director of the university’s TT company; he did this job for 10 years. The former head of Tom’s legal department,  Stephen Brett, is now a partner in Anderson Law LLP.

Tom’s book is packed with useful information, which would be of interest to anyone starting a TT function, or wanting advice on how to deal with the difficulties that a TT office faces. Reading the book, IP Draughts was reminded of how much knowledge one acquires over several decades in a professional role, and how that hard-learnt knowledge can be wasted when you retire. Writing a good book is one way of passing on the knowledge, as is building up and training a large team that will be your legacy, and providing consulting services to other TT teams. Tom has done, and is doing, all of these things.

The book is, as already mentioned, crisply written. It gets straight to the point that Tom is making. IP Draughts is drawn to the analogy of an intelligent staff officer briefing a group of impatient generals about how the battle is going. Colonel Hockaday is sensitive to his audience, has the facts at his fingertips, avoids waffle, is not afraid to express an insightful opinion, and is above all clear.

Although disciplined in his writing, Tom allows himself occasional bursts of humour, which IP Draughts greatly appreciates. One of Tom’s topics is the habit of universities to conduct periodic (and sometimes ill-informed) reviews and reorganisations of TT activities. He cites the example – genuine? apocryphal? it doesn’t really matter – of the head of the TT office who hears of his vice-chancellor’s plan to conduct a review of the office, and offers to resign immediately to save him the hassle.

One reason why Tom’s thesis is so persuasive is that it is expressed in reasonable terms, and backed up by evidence and examples. As one might expect, many of those examples are from his experience at Oxford, and sometimes IP Draughts was provoked to think that other ways of doing things were equally valid. But that in itself is useful – the book presents a point of view and implicitly challenges you to come up with a better alternative. This is what Ken Adams calls, in a different context, the marketplace of ideas.

The book is not all about Oxford, though. Tom is well informed about other leading UK universities and their approach to TT. He is not afraid to put the boot in where he thinks it is justified, as he does when describing Imperial College’s “interesting experiment” in hiving off its TT activities to a publicly-listed company.

The book provides extremely useful information to anyone who is involved in creating or developing a TT office, in the UK or overseas. It should be required reading for all presidents, vice-chancellors and senior managers of universities that have a TT office and are tempted to interfere in its activities.

TT4 has landed

Waiting for IP Draughts when he arrived home last night were two cardboard boxes containing his and Victor’s complimentary copies of the fourth edition of Technology Transfer (TT4).

He is very pleasantly surprised to see the book in print, a mere fortnight after the proofs went to the typesetters. His past experience has been a lead time of 2-3 months. Just-in-time manufacturing has finally reached the publishing industry!

IP Draughts’ longstanding colleague and former trainee, Victor Warner, has been responsible for updating most of TT4, and he has done a very good job. Much has changed in the laws affecting IP transactions since the third edition was published a decade ago. (It is nearly 25 years since the first edition was published, then a paperback under the Butterworths imprint, and then called Technology: The Law of Exploitation and Transfer.)

First edition, 1996

As with previous editions, the book considers law and practice issues through the lens of particular types of commercial agreement, particularly IP licences and R&D collaborations. This is still a relatively unusual way to write a serious law book – many law tomes are focused more on the perspective of the courts, or of academic enquiry, rather than on the commercial transaction.

The book is available direct from the publishers here, or from Amazon UK here.

Similar approach to teaching?

IP Draughts would like to see commercial law taught this way in leading law schools – teaching legal principles from the perspective of real transactions, rather than the other way around. If this had been done when he first studied law at university he would have been far more engaged in the subject. He felt that university law favoured people with very good memories and a capacity for learning dry principles, divorced from their practical context. He doesn’t dismiss those abilities, but it is not the way his mind works, and he suspects there may be many others who share his views, and his way of learning and thinking.

He would like to put this idea into practice, possibly at UCL, but it really needs some sponsorship to set up an institute that would also provide a setting for debate between practitioners, academics and judges – similar to the Institute of Brand and Innovation Law, but with more of a transactional focus. Please let IP Draughts know if you think your firm or organisation might be prepared to sponsor such a venture.

 

 

Learning legal stuff

IP Draughts is rebooting after a stimulating but exhausting week. He has been teaching, chairing, encouraging, filling in, deciding, answering questions and generally being present at the UCL one-week course on IP transactions. It is the 7th year that we have run the course. We had a good bunch of engaged students, an experienced team of expert speakers, and excellent support as usual from Lisa Penfold and her colleagues at UCL Laws. Plus a modern, well-designed venue in the revamped law faculty. It all added up to a very good outing of the course.

Thanks are due to several of IP Draughts’ colleagues, who helped with the course. Our associate Christopher Pollard did sterling work ahead of the course, encouraging the speakers to provide their updated materials and getting those papers organised for Lisa. Our newest employee, Christina, provided administrative support throughout the week. IP Draughts’ partners Paul and Stephen delivered a couple of the talks, during the Wednesday afternoon stream on university IP. And another of IP Draughts’ partners has kindly agreed to help with marking the exam.

IP Draughts will provide an update when the feedback is collated and assessed. He has still to write this year’s exam.

Books

It is easy to fall into the habit of thinking that people who know about our firm are familiar with everything that we do. We have written several books that are relevant to IP transactions, or to commercial transactions generally. Here is a quick recap.

Technology Transfer is the first book that IP Draughts wrote. The first edition was started when IP Draughts was still at Bristows, and he received some research support from juniors in the firm. Two of those juniors stand out for their dedication to the project. Take a bow, Helen Cline, now a legal director at Pinsent Mason, who researched case law on the interpretation of IP agreements, and Laura Reynolds, who is of Counsel at Bristows.

The £1,000 advance that he received for this book was spent on an early laptop computer, that had a half-sized screen – conventionally wide but only half as tall. He typed the book on that computer. In his eagerness to use its facilities he password protected the first chapter, only to forget the password and have to write most of that chapter again. Duh! The fourth edition of this book will be published later this year.

Drafting and Negotiating Commercial Contracts. This book was written with the objective of explaining some basic principles for commercial contract drafting, to help the junior lawyer or commercial manager. As well as setting out some simple ideas for clear drafting, it discusses the typical formats of contracts, words with a special meaning, how the courts interpret contracts, and similar practical subjects. It is now in its fourth edition.

A-Z Guide to Boilerplate and Commercial Clauses. This book started life as a short volume of the Encyclopedia of Forms and Precedents. It was reorganised and expanded as a book. When Butterworths sold off most of its books, this and the above two books moved eventually to Bloomsbury Professional. Now in its fourth edition, it has grown in length to become the longest of IP Draughts’ books now in publication, and probably the most popular (he hasn’t counted exact numbers of purchases). The book examines the detailed law and practice around a large number of boilerplate clauses, and provides examples of typical wording.

Drafting Confidentiality Agreements was conceived as a book that should have a broad appeal, not only to IP lawyers. IP Draughts thought the Law Society would be a suitable outlet for the book, as it has contacts with the (English and Welsh) solicitors’ profession. While the book has provided moderately popular and we keep being asked to write new editions (it is currently in its third), it has not taken off in the way that IP Draughts hoped. The book includes both a summary of the law and a detailed review of the clauses that are typically encountered in CDAs. We also include some template agreements for a variety of situations.

Execution of Documents. Around the time that Drafting Confidentiality Agreements was first published, we had regular conversations with publishing managers at the Law Society. During one of those conversations, IP Draughts foolishly commented on what he saw as the defects in a book that they published called, from memory Oaths and Affidavits. We could write a much better book than this, and broaden its appeal by covering a wider range of documents, he said. Of course, this prompted the publishing manager to invite him to do so. The book explains the legal requirements for executing various documents including deeds, and gives examples of wording. It is now in its third edition.

Drafting Agreements in the Biotechnology and Pharmaceutical Industries was commissioned by Oxford University Press in about 2006, and was first published in about 2008. The fee was large enough for IP Draughts to hire a full-time research assistant for a year to work on the book. Brendan Biggs, formerly an English don at Oxford, was then hoping to requalify as a solicitor. He did excellent work on this project. He is now a professional support lawyer at a leading firm in Bristol.

This book was structured as a looseleaf, and its main content was over 30 template agreements with commentary, including brief comments from lawyers in six other jurisdictions. It was popular within a niche market. Unfortunately the market was too niche. We wrote updates for it for about 10 years. After several years, OUP wanted to turn it into a small textbook, which didn’t make sense to IP Draughts, and eventually he recovered the rights tot he book. Since then it has sat on IP Draughts’ shelf as a project that he doesn’t quite know what to do with. It has provided us with excellent template agreements.

Technology Transactions. As well as the above books, IP Draughts and his colleagues have written several new volumes of the Encyclopedia of Forms and Precedents, published by LexisNexis, and chapters in other people’s books. The most recent chapter was in a book edited by Professor Jacques de Werra of the University of Geneva, Technology Transactions. It was recently reviewed on IPKat here. In his chapter, IP Draughts argues for the development of a UN standard for IP transactions, analogous to the UN Convention on Contracts for the International Sale of Goods.

In all of his books, volumes and chapters, IP Draughts has tried to combine simple, clear explanations of practical subjects with legal accuracy and thoroughness. As he tries to do when advising clients.

Writing legal textbooks

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 [1995] 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:

1. 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”.
2. IP statutes. Various UK IP statutes, discussed in the chapter, state that the type of IP under consideration is personal property.
3. 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.
4. 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.
5. 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.