Category Archives: Book review

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.

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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.

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Nice review for new edition of our book on contract drafting

IP Draughts’ first book for legal practitioners (Technology: The Law of Exploitation and Transfer; the current edition is titled simply Technology Transfer) was published in the mid-1990s. Since then, he has been asked to write further books, and the requests keep coming. We are currently in discussions with a legal publisher to take over a well-known book on exclusion clauses. Our sterling consultant, Victor Warner, spends most of his time writing and updating our publications, under IP Draughts’ editorial supervision.

Most of our books are now in their third editions, and one – Drafting and Negotiating Commercial Contracts – has reached its fourth edition, with others in the pipeline. We have just received a great review of that fourth edition, from the German-British Chamber of Commerce, which is reproduced below.

Drafting and Negotiating Commercial Contracts gives a comprehensive overview on the legal formalities and the structure and format of contracts along with explanation of legal terms. It illustrates drafting techniques and provides concise information on issues affecting contract drafting as well as the interpretation of contracts by the courts. By incorporating a chapter about practical measures to secure documents from unwanted alteration and remove metadata and sensitive information, the book also addresses today´s legal, practical and technical challenges with the use of electronical means.

With its practical insight, drafting techniques and various samples this book does not only facilitate the access to Commercial Contract Law for those who have not yet specialized in that field of law, but also provides indispensable detailed information for commercial lawyers and contract managers.

In the 4th edition of Drafting and Negotiating Commercial Contracts the reader will find an essential update taking into account changes in consumer legislation and important court decisions focusing on the interpretation of a contract´s wording.

This book is mandatory reading for both novice and expert and an essential manual for those who wish to stay up to date with the latest developments of drafting and negotiating commercial contracts.

Thank you very much! Details of the book and how to buy it can be found on the publisher’s website here and on Amazon UK here.

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World IP Day: inheritance books

world ip dayRhoda Baxter is the nom de plume of a UK-based IP practitioner who also writes romantic fiction. Her first novel, published in 2012, was originally called Patently in Love. It was reviewed on IPKat here. In the words of the book’s Amazon blurb:

A job in a patent law firm is a far cry from the glamorous existence of a popstar’s girlfriend. But it’s just what Jane Porter needs to distance herself from her cheating ex, Ashby, and the press furore that surrounds the wreckage of her love life.

Patently in Love was reissued in 2014 under the title Girl on the Run, presumably for sound commercial reasons. Is there a lesson here about the lack of appeal of IP to the general public?

Rhoda also writes a blog about creative writing. As a regular feature of the blog, Rhoda interviews other writers about their ‘inheritance books’. These are books which have some personal associations for the interviewee, and which they have inherited from a previous generation, or which they would pass on to the next generation.

To coincide with World IP Day 2016, Rhoda interviewed IP Draughts about his inheritance books. The results can be found here.

zitherIn the interview, IP Draughts refers to the books of the late Graham Greene, who was possibly the leading British novelist of the 20th century. IP Draughts is not aware of any major IP issue associated with Greene, but Greene was involved in at least one law suit. In 1937, Twentieth Century Fox successfully sued him for libel, for writing an article that suggested a sexual connotation to the film Wee Willie Winkie, which starred an 8-year-old Shirley Temple.

There is no charge for this valuable piece of information.

 

 

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