Category Archives: Employment

Would you like to train as a transactional IP lawyer?

In case you have missed it, our firm advertised a training contract earlier this week. Details can be found on the Anderson Law website here.

In the last 20 years, IP Draughts has provided training contracts to 8 talented lawyers. Of the 8, 6 continue to work at Anderson Law: two are partners (and recommended in Chambers Directory), one is an associate partner, one is a consultant, and two are associates. The other two have moved on to other pastures, one as an in-house IP lawyer with Wellcome Trust in London, and one as an in-house IP lawyer with Philips in the Netherlands.

We provide an intensive training in IP and contracts. IP Draughts’ view is that, on qualification, our trainees are at an equivalent level to a two-year associate in many commercial law firms.

Our staff are encouraged to take part-time, postgraduate qualifications. Presently, one is doing a part-time LLM, one is doing the Oxford IP diploma course, and others have gone through these and other courses, including IP Draughts’ IP transactions course at UCL.

Advanced technical skills provide a secure foundation for legal advice, but they are only the foundations. Our lawyers also need to be astute, engaging, and skilled in the practical arts of a legal adviser, including drafting, negotiation, tailoring advice to client needs, and helping our clients to achieve their commercial objectives. We all need to keep practising these skills and learning throughout our careers. There is no such thing as a perfect lawyer.

If you have the right mix of technical ability, personality, and ambition to improve, we would love to hear from you. And if you are already qualified and would like to work with us, please let IP Draughts know. Although we don’t have a formal vacancy for a qualified lawyer, we are always interested to hear from people who might add something to our team.

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Diversity in IP practice: what does it mean?

The IP professions, and the UK legal professions generally, are keen on promoting diversity in the workforce.

The Law Society and SRA impose diversity obligations on solicitors, for example requiring each firm to collate diversity statistics and publish them. IP Draughts’ firm’s statistics – now a little out of date – can be found here. Before being accepted as a member of a Law Society committee, would-be members must take an online course on diversity. Committee chairs are required to take further online courses on diversity and disability. Shortlisting of applicants for committee vacancies is done “blind” without seeing the names of the applicants.

The Chartered Institute of Patent Attorneys and other IP professions have formed IP Inclusive, and an increasing number of firms have signed up to its charter.

Some might say that such initiatives are particularly necessary in the legal professions, which are perceived as lacking diversity.

IP Draughts attended a meeting earlier this week – all the other participants were not lawyers – at which one of the people present referred to an initiative to help women to progress in the workplace, and another participant expressed the view that the best person should be chosen for a job, irrespective of gender. IP Draughts commented that how one defined the requirements of the job might affect who would be regarded as “best”. He cited the example of the UK Supreme Court, where only one woman has been appointed, and where traditional selection criteria may militate against certain types of candidate.

This exchange reminded IP Draughts that the legal professions may be ahead of some other sectors when it comes to talking about diversity. This is not meant to be a cynical comment. Talking is the first step in getting new attitudes embedded in an organisation.

An issue for IP Draughts is that diversity can mean so many different things, and that initiatives to improve diversity may tackle the most visible examples – gender and skin colour – while failing to improve the overall culture of an organisation. Measuring diversity through statistics is a very blunt instrument; it may result in improved statistics but not fundamentally change attitudes.

The UK Intellectual Property Office recently sent IP Draughts a copy of its corporate plan for 2017-2020. Most of the document is concerned with the IPO’s outward-facing activities. Among its high-sounding corporate objectives was the following statement on its internal values, which IP Draughts found very encouraging:

We believe we are an organisation where difference is valued and one where our people feel able to bring their whole selves to work. Nobody in the IPO should have to change who they are when they come to work just to ‘fit in’*.

*A 2013 study by Deloitte revealed that 61% of respondents covered up an aspect of themselves at work.

Giving people space to be themselves at work is, in IP Draughts’ view, an extremely important part of the larger diversity agenda, and it is good to see the IPO focussing on this aspect. Much earlier in his career, IP Draughts was in a job where he felt he had to suppress a significant part of his personality in order to ‘give the right impression’. It made him determined, when he started his own firm, to create a different atmosphere for staff.

Giving people space needs to be combined with recruiting people whose skills and attitudes will contribute to the common enterprise. For example, if ‘being oneself’ means being anti-social, disruptive, lazy or incompetent, then that contribution is not being made. But as long as the overall objectives of the organisation are being met, and the individual is making a positive contribution, they should have reasonable freedom to be themselves.

IP Draughts was interested to read the news that a leading international law firm, Linklaters, is offering people a 40-hour week in return for a one-third salary drop. This could be viewed as an initiative that will help to promote diversity, whether it be for the person who has caring responsibilities, or the person who simply isn’t cut out for 60-hour weeks (if that is what is usually required) or who isn’t interested in being a millionaire but wants to do good work in a prestigious firm.

Ultimately, valuing people as individuals, and reducing the expectation of social conformity, may lead to greater progress on all aspects of diversity than targets, statistics or policy statements.

 

 

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The perils of advising on contracts

perilA recent case in the English High Court illustrates several points: the need for care when advising on contracts; that proving negligence based on oral advice is difficult; that failing to meet the required standard of care doesn’t give the client a blank cheque for all commercial losses, some of which might have been incurred even if perfect advice had been given; and that people can be obstinate and spend far more on bringing a claim than is justified. Oh, and that coy references to a “former CEO” who is referred to repeatedly in the judgment but not named are fairly pointless in an era of online social media.

The case of Commodities Research Unit International (Holdings) Ltd & Or v King & Wood Mallesons LLP [2016] EWHC 727 (QB) (05 April 2016) was reported on BAILII last week. King & Wood Mallesons, formerly known as SJ Berwin LLP, had advised on the termination of the employment contract of an unnamed “former CEO”. (Hint: if you search on LinkedIn for CEO CRU Group, the identity quickly becomes clear: the individual in question has publicly stated his former employment at that company and the dates on which he was employed.)

Various allegations of negligence were made against Berwins, including allegations that advice was given in meetings. All of the allegations were dismissed except for one. CRU Group sent Berwins the employment terms of the CEO and asked for advice.

UK employment lawyers will be aware of the legal implications of including a clause in the employment contract that allows the employer to terminate immediately and make a payment in lieu of notice, sometimes known as a PILON clause. For reasons that need not concern us here, the omission of the clause potentially affects the enforceability of post-termination restrictive covenants as well as the tax treatment of severance payments. In the present case, the presence or absence of a PILON clause affected the date on which termination of the employment occurred, and whether certain rights under a long term incentive plan vested by that date.

no pylonesThe employment terms that were sent to Berwins did not include a PILON clause, and Berwins advised on that basis. However, the terms that they saw included a reference to “the company’s general terms of employment” which they failed to notice. At a later time, after the advice was given and used, the general terms of employment were identified, and they did include a PILON clause.

The court held that Berwins had been negligent in failing to pick up on this reference and ask for a copy of the general terms of employment at the time they advised.

The advice was used by CRU Group when negotiating an exit agreement with the CEO. In light of the commercial pressures of the negotiations, it might not have made any difference if CRU Group had received correct advice on this point. The court held that there was a 35% chance that, if correct advice had been given, the financial terms of settlement would have been more in CRU Group’s favour, to the tune of £337,500. On that basis, the court awarded 35% of £337,500 to CRU Group, or £118,125.

CRU Group had been claiming a much larger sum, well over £2,000,000, including the costs of litigation with the former CEO of nearly £1,000,000. IP Draughts wonders what the costs of the present case were, which involved 5 days of court hearings and the use of leading counsel on both sides, not to mention the professional witnesses who included leading counsel who had advised on the litigation with the CEO. He suspects that an award of £118,125 may be close to a Pyrrhic victory.

IP Draughts is left speculating why Berwins failed to pick up on the reference to general terms of employment. The responsible partner (Nicola Kerr) had, according to the judge, “a very high reputation as a solicitor providing advice on employment matters”. Was the omission caused by the partner relying on an advice memo from a junior associate, less than 2 years qualified (it appears, from another LinkedIn search) at the time? Was it because the client was apparently extremely difficult, and would not have reacted well to being asked to produce further documents? Was it because the employment terms were set out in various crappy documents, for which Berwins were not responsible, and which may not have been consistent with one another, so that a reference to other terms could well have been a drafting mistake?

Whatever the reason, this case shows the importance of “pushing back” to the client and either demanding further documents where they appear to be relevant, or making clear that advice has been given without the benefit of seeing them.

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Who owns copyright in an academic’s work?

butterflyRegular readers of this blog will know that IP Draughts is sceptical about the value of some of the articles in academic law journals. Too many of them seem to be engaged in a private conversation between academics that has very little connection with the world that IP Draughts inhabits.

A recent article in Legal Studies, the journal of the Society of Legal Scholars (SLS), bucks this trend. Make the butterflies fly in formation? Management of copyright created by academics in UK universities, by Dr Andreas Rahmatian of the University of Glasgow (Legal Studies Vol 34 No 4, 2014, pp 709-735) makes some interesting points about the ownership of copyright in works created by an academic employee. Not only are the points interesting, but they have practical relevance to anyone who is involved in drafting, interpreting or advising on IP ownership issues within a university. It is to SLS’s credit that it provided funding for the work that led to the article being written.

Astute readers may already be asking themselves: who owns the copyright in an article written by an academic, on the subject of who owns the copyright in articles written by academics? Does Dr Rahmatian, or his employer, the University of Glasgow? What does his contract of employment say on this subject?

In IP Draughts’ experience, it is often a term of an academic’s contract of employment that the university’s financial regulations (or similar) form part of the contract of employment. Many universities have adopted an intellectual property (IP) policy, and in many cases the policy is made a part of those regulations. In such cases, the IP policy is considered to be binding on the academic as it forms part of their contract of employment.

So what does the University of Glasgow’s IP policy say about ownership of copyright in academic works? IP Draughts looked on the university’s website, and couldn’t immediately find an official-looking document that appeared to have the status of an employment term. Instead, he found an explanation on the website (legal status unclear) which reads as follows:

The University owns IP generated by University staff in the course of or incidental to their employment, including teaching or university materials.  Ownership may, in part, be determined by the terms and conditions of any external funding.

The University waives its rights to ownership of any copyright in scholarly materials, except in relation to any work created by an employee of the University whose job description specifically includes the creation of printed or electronic materials.

This form of words reflects a set of broad principles that many universities seem to follow in their IP policies, and which Dr Rahmatian rightly criticises as flawed. As will be discussed below, these principles are woolly around the edges, but they seem to be commonly understood by universities as:

  1. The university owns IP created in the course of the employee’s employment. [This is the default position for UK copyright, but not for patents, and the position for patents can’t be overriden by contract terms, so the wording is defective. But today we are discussing copyright.]
  2. Pretty much everything the academic does is done in the course of their employment. [This is an extrapolation, but probably reflects the university’s position. As Dr Rahmatian’s article explains, it is doubtful whether this is true in the case of public lectures, and perhaps also in the case of other non-teaching materials.]
  3. This includes “scholarly materials”, but the university graciously “waives” its rights to these. Depending on who you ask, scholarly materials might include articles, books and public lectures, but not course materials. [The legal status of a statement that someone “waives” their ownership rights is unclear. Is this intended to mean (a) I own the IP but I won’t sue you, (b) I agree that you own the IP in the first place, or (c) I will assign the IP to you? The use of the word “waive” seems to be a fudge, to avoid tackling the ownership question head-on.]
  4. The terms of funding contracts may transfer ownership in the funder. [This assumes, of course, that (a) the funding contract assigns IP to the funder, and (b) that the funding contract is made with the original owner of the IP. If the contract is made with the university but the academic owns the IP personally, this won’t work.]

sls_logo_largeSo, who owns the copyright in Dr Rahmatian’s article: him or the university? According to a footer on each page of the article, the answer is that neither of them do. Instead, the Society of Legal Scholars does. The article does not reveal whether SLS obtained an assignment of copyright from Dr Rahmatian, or from the University of Glasgow, or from both of them. Or, indeed, from neither.

Dr Rahmatian’s article reports on a study that he conducted, in which he attempted to interview the custodians (IP Draughts’ name) of IP policies at several UK universities, to find out what the policies were and how they were applied. While he was able to obtain copies of several policies, it diffidenceproved to be more difficult to secure interviews, as the custodians were sometimes “diffident” about discussing the policies. The causes of this diffidence seemed to include (a) the custodian not wanting to show his ignorance by incorrectly describing the policy or its legal effect, (b) the policy had not been finalised or was not, in practice, followed, or (c) making comments about the policy could get the custodian into trouble, given its political sensitivity.

Dr Rahmatian did, however, manage to secure interviews with at least 8 universities.

Several themes emerge from the article that chime with IP Draughts’ experience, including:

  1. The issue of academic copyright is politically sensitive, and formulating a copyright policy sometimes involves negotiations with an academic trade union.
  2. The resulting wording is sometimes a messy compromise, and its drafting may not have involved a specialist IP lawyer.
  3. Many of the respective policies of UK universities have a similar look and feel. They sometimes use odd words like “the university claims ownership” or “the university asserts ownership”, which suggests an unresolved negotiating position rather than a clear ownership statement.
  4. Sometimes, it appears that the university considers that it owns all IP generated by the academic, without fully focussing on issues such as (a) what falls within the scope of the academic’s employment duties (the patent test, in summary) or (b) what is done in the course of employment (the copyright test).
  5. More generally, the university’s staff who administer the policy are not always clear on the detailed effect of the policy, or how it is affected by the underlying law on ownership of employee-generated IP.

Dr Rahmatian rightly refers to the case of Stevenson Jordan & Harrison v MacDonald & Evans (1952) 69 RPC 10, in which the court discussed the position of a university lecturer who delivers a public lecture. The following quotation, and in particular the word “inconceivable”, forms the basis of much of Dr Rahmatian’s premise in the article:

Lectures delivered, for example, by Professor Maitland to students have since become classical in the law. It is inconceivable that because Professor Maitland was in the service at the time of the University of Cambridge that anybody but himself, one would have thought, could have claimed the copyright in those lectures.

As Dr Rahmatian points out, this case has been cited in more recent cases such as the important patent case of Greater Glasgow Health Board’s Application [1996] RPC 207 @ 223.

IP Draughts has a feeling that Dr Rahmatian hinges a great deal on this one case, and it make him want to play devil’s advocate, while recognising that it may be right to rely on the case. Counter-points that might be made include:

  1. The comments are obiter dicta.
  2. The case is over 60 years old, and assumptions about academic duties have moved on since then, as have the terms of their employment contracts.
  3. The example given is of an even older set of lectures, and given at Cambridge, which has a distinctive approach to the ownership of academic IP, even today.
  4. The example seems to have concerned a public lecture, as distinct from a lecture given as part of a course. How far one should extrapolate from that example to articles and books is not clear.

Other parts of Dr Rahmatian’s article are less convincing to this practitioner. Mindful no doubt of SLS’s plea that articles in Legal Studies should include “particular reference to doctrinal, conceptual, theoretical, comparative or socio-legal analyses”, the author discusses the impact of “managerialism” on university IP policies, which “provides the technocratic illusion of seemingly rational and unquestionable managerial rules that replace substance by procedure …this military-like uniformisation is a typical effect of modern human resource management …the assertion of copyright ownership by universities can serve as a first step in this development.”

1984Wow. In other words, a university’s copyright policy is part of a Orwellian nightmare where a university’s central administration acts as “big brother” and treats academics as units of production. IP Draughts expects that this characterisation will appeal to many academic readers.

Coming back to the legal content of the article, the take-away message for IP Draughts is the reminder that university administrators sometimes have misguided views on the extent to which the university automatically owns the intellectual output of its academic employees; to put it mildly, there are some areas where the legal position is not clear. Prudent universities will obtain formal assignments from their academic inventors and creators before seeking to commercialise that output.

 

 

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