Category Archives: Intellectual Property

IP policy advisers: a good use of public money?

An advert on Twitter caught IP Draughts’ attention. It is for a Senior Executive Officer with the UK Intellectual Property Office. The salary is around £40,000 per annum. The job title is “Oxfordshire Growth Hub IP Policy Advisor”. The role is to work at least partly within the Oxfordshire Local Enterprise Partnership (LEP). Applications close tomorrow.

There are 37 LEPs within the UK. They are vehicles for identifying the investment needs of their regions, working up plans and obtaining government funding. The Oxfordshire LEP covers the county and city of Oxford.

Given the fact that government money is being spent in Oxfordshire in support of the local economy, and given the importance of innovative businesses to that economy, IP Draughts can see the point of including an IP specialist within the policy team.

So far, so good. What puzzles IP Draughts is the list of the main duties of the IP policy adviser (or “advisor”; the IPO seems to prefer US spelling). These are listed in the job advert as:

• Support the delivery of the Local Industrial Strategy as the LEP aspires to be ‘one of the top three global innovation ecosystems’. This will involve:
o Including IP in the drafting of the LEP’s Investment Prospectus that will underpin the LIS, recognising the region has world-leading knowledge assets and IP whose value can be maximised;
o Focusing on the activities in Pillar 2 of the LIS (A Powerhouse for Commercialising Transformative Technologies) to ensure IP’s role in unlocking growth potential and commercialisation is realised;
o Developing interventions to support the proposed Oxfordshire Finance Hub to enable businesses to accelerate IP adoption and investment in R&D, considering where IP can help to de-risk breakthrough businesses.

• Embed support and raise IP capability in the Growth Hub to enhance the offer to both breakthrough and cornerstone businesses. Both the internal Growth Hub team but also Advisors who are working across all Oxfordshire ERDF funded business support programmes with a particular focus on ISfB and eScalate

• Provide 121 support to programme clients where appropriate. This external element is vital to accelerate IP adoption

• Work with the LEP and local partners to include IP in European Regional Development Fund (or UK Shared Prosperity Fund) programmes, representing IPO and the LEP on technical assistance groups and embedding the IPO offer into the Innovation Support for Business Programme;

• Collaborate with LEP partners to consider the role of IP in knowledge exchange, skills for entrepreneurship and access to finance, working across the Innovation Directorate’s policy teams to provide insight and evaluation;

• Ensure IPO is represented in wider Government initiatives in the region including the Cambridge-Oxford Arc, and working with the Cities and Local Growth Unit, British Business Bank, DIT and Innovate UK to meet objectives;

• Work between IPO’s International Policy Directorate, Department for International Trade and the LEP to develop capability of OxLEP’s global hubs and international clusters based in science and technology parks – providing a conduit to IPO attaches support in major overseas markets;

• Develop evaluation processes to measure the impact of policy interventions and local actions to identify best practice and impact IP capability plays in adding value to regional innovation support initiatives;

• Advise Ministers and IPO senior managers on IPO business support policy;

• To actively contribute to the Business Support Policy’s team objectives and to the wider ID objectives.

And all this for £40,000 per annum!

In IP Draughts’ mind, the above description is opaque, wordy, and jargon-filled. It is task-oriented, focussing on specific initiatives with fancy names, rather than goal-oriented, explaining what value the role brings. Is this deliberate – to make it difficult for anyone to criticise the value of the role or to judge whether the incumbent has performed well – or does it simply reflect the vagueness of the overall objective?

Boiled down, the role seems to comprise the following elements:

  • ensuring IP is thought about and included in regional investment policy documents
  • raising awareness of IP issues within the teams involved in developing and implementing such policies
  • providing a source of IP expertise within those teams
  • liaising with other parts of government including overseas IP Attaches
  • advising and informing government ministers and the senior management of the IPO about their work

It must be difficult to establish useful metrics on whether activities of this kind contribute beneficially to the Oxfordshire economy. But at one level, if government is investing hundreds of millions of pounds in the local economy, should taxpayers care too much about the size or composition of the civil service team that administers that investment?

The niggle that runs through IP Draughts’ head in relation to this role, and the IPO’s policy activities more generally, is whether awareness-raising on IP issues is a useful government activity. He doesn’t doubt that it is well-intentioned and in response to political direction, but is it ultimately productive and good value for money? He would love to receive reassurance from someone whose judgment he trusts that his worries are unfounded.

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Another step up the ladder

The 2019 edition of IAM Patent 1000 was published earlier this week. It is the only international set of rankings that focuses exclusively on patent lawyers and their firms.

Reading the names in the UK chapters of this publication prompts IP Draughts to reflect on something that is both banal and deeply personal: how, as professionals, we move up through the ranks, achieve greater or lesser degrees of success over a few decades, and eventually retire. Each fresh edition of a publication such as IAM Patent 1000 confirms this seemingly inevitable progression. People that IP Draughts respects and likes, such as Gill Grassie and Philip Westmacott, have retired in recent years, apparently at the height of their professional prowess. It is regrettable that there is no obvious career track into one’s mid-seventies for IP solicitors, unlike barristers who often become High Court judges, and sometimes end up in the Court of Appeal or (in the single case of David Kitchin) in the Supreme Court.

For the 2019 edition of IAM, IP Draughts is delighted to see that his partner, and former trainee, Lisa Allebone PhD is, once again, recommended as a leading UK practitioner for IP transactions. He hopes to see other deserving colleagues recommended in future editions.

IP transactions course

Several of IP Draughts’ stalwart colleagues on the annual UCL IP transactions course (which has been running now for 7 years) are recommended, including:

  • Mark Lubbock
  • Chris Shelley
  • Sally Shorthose
  • Matthew Warren

Book collaborators

He is also delighted to see that several of his international collaborators on his book on pharmaceutical agreements continue to be recommended, including:

  • Pamela Cox (USA – Illinois)
  • Christine Kanz (Germany)

BioLaw Europe

Another source of connections are the members of BioLaw Europe, an association of European lawyers that IP Draughts chairs. Members who feature in IAM include:

  • Stefan Kohler (Switzerland)
  • Denis Schertenlieb (France)

Bristows colleagues

It is remarkable, to IP Draughts’ mind, that so many of the patent litigators recommended in IAM are people whom he remembers as trainees or junior associates during the 7 years he spent at Bristows. Many of them are now leading lights at other firms. They include:

  • Simon Ayrton
  • Michael Burdon
  • Neil Coulson
  • Ralph Cox
  • Mike Gilbert
  • Penny Gilbert
  • Paul Harris
  • David Knight
  • Tim Powell
  • Justin Watts

The length of this list is testament to Bristows’ ability to recruit talented lawyers, in this case mostly during the 1980s and early 1990s. The firm continues to be a powerhouse of IP talent. But just think how much more dominant it might have been in the market today, if it had held on to some of the people in the above list. A strong culture is to be commended, but so is openness to new ideas and personalities.

Other names on the IAM lists (UK and overseas) are familiar from former dealings on transactions or policy work. It would be tedious to list them all.

Not appearing in the IAM lists is no disgrace – there are many talented lawyers that IP Draughts knows who would be at home in the company mentioned above.

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Filed under &Law Updates, Intellectual Property

Small claims of IP infringement

As a member of the UK-based Society of Legal Scholars, IP Draughts receives a copy, every few months, of the society’s journal, Legal Studies.

When he receives his copy, he skims the contents page looking for an article that focuses on practice-based issues in the field of IP or commercial law. Often he finds nothing of interest. Many of the articles seem to be academics talking to one another, and citing one another, in a closed loop.

The latest edition – volume 39 No 1 March 2019 – is different. It includes an article reporting on empirical research about the use of the small claims track (SCT) of the Intellectual Property Enterprise Court. It seems that this track or court is favoured by professional photographers to claim royalties for use of their photos without permission.

The correct citation for the article is: Cooper E, Burrow S (2019) Photographic copyright and the Intellectual Property Enterprise Court in historical perspective. Legal Studies 39, 143-165. IP Draughts doesn’t know whether the article is available to non-members, but with the trend to open-access scholarship he hopes it will become generally available soon.
The authors are from the School of Law of Glasgow University. The article is stated to be partly based on Sheona Burrow’s unpublished 2017 PhD thesis, Access to Justice in the Small Claims Track of the Intellectual Property Enterprise Court (IPEC): An Empirical Enquiry into Use by Creative SMEs.

The article is topped and tailed with a suitably academic focus on the theoretical framework for ‘property rules’ and ‘liability rules’, and with a discussion of certain historical developments on the subject of newspapers paying photographers for use of their photos. For IP Draughts, who is not part of the academic world, these discussions are of only passing interest, though he notes that the former topic is reminiscent of the Manchester Manifesto, mentioned briefly in an early article on this blog.

Where the article comes to life for IP Draughts is in its analysis of the cases brought in the SCT between October 2012 and 31 December 2015. Such cases do not usually make it on to BAILII, his usual source for reported case law, presumably because they are considered of low importance. And yet, anyone advising a client on an IP infringement matter in England and Wales needs to understand what the SCT is for, how it works, and how it is different from larger cases brought in the fast track and multi-track of IPEC, or even larger cases brought in the Chancery Division (including the Patents Court).

Here are a few points, in no particular order, that jumped out from a lengthy and thoughtful article:

  1. During the period studied, 261 claims were dealt with by SCT, of which 79% concerned copyright infringement. Of these, a majority (144) concerned the infringement of photgraphic copyright, of which 133 were about unauthorised use of a photo on a website. 122 of the claims (46% of the total of 261) were by freelance professional photographers or their agents.
  2. The SCT is the forum of choice for such photographers. It replaced an earlier route that they tended to choose, which was to issue an invoice for unpaid royalties and then bring a money claim in the County Court.
  3. In the vast majority of cases, the photographers were successful in their claims. They tended to seek damages rather than an injunction.
  4. These actions often involve claims of breach of moral rights as well as copyright. For example, it has been held in SCT cases that the right of attribution is breached when metadata is stripped out from the online image.
  5. Damages are often calculated by reference to a “going rate”. In some cases there is an uplift for flagrant breach, often by way of a 100% uplift on damages.

IP Draughts would be interested to read Dr Burrow’s PhD thesis. He idly wonders why there isn’t a branch of high-quality scholarship that avoids all the baggage of the “academy” and just focuses on research that affects practical issues.

 

 

 

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Filed under Intellectual Property, Legal practice

Implied terms in licensing: items 21-30

This is the third in a series of articles that proposes a set of standard terms for IP licensing as part of a commercial code. When IP Draughts started this exercise, he tried to track the sequence of clauses in the UK Sale of Goods Act 1979 (SGA).

Now that we are in the middle of the SGA, IP Draughts is finding it more difficult to follow the SGA’s sequence of provisions. Contracts for the sale of goods raise some significantly different issues to IP licensing.

Once the exercise is complete, he will review the entirety and may well restructure it. But for now, let’s see where we get to. As before, this is not a finely-honed set of proposed terms. It is just a rough first draft for discussion. Following a suggestion on an earlier list, it is assumed that somewhere else in the code is a general statement that the parties can agree different terms in their licence agreement.

  1. Improvements and new IP. There is no implied term in a licence agreement that the licensor will communicate to the licensee any improvements to the [subject-matter of the licence agreement] made after the date of the licence agreement. Nor is there any implied obligation to license any new IP created by the licensor in respect of such improvements.
  2. Dealing with infringers. (1) In an exclusive licence agreement, at the request and cost of the licensee, the licensor shall take, or permit the licensee to take, reasonable action against third party infringers of the licensed IP. Where the exclusive licence is limited by field, such action may only be taken in agreement with the licensor and its licensees outside the field. After deduction of all legal costs, any damages or monies paid in settlement of infringing activities in the licensee’s field will be for the licensee’s account and will be subject to any royalty or other obligations to the licensor as if the damages or settlement payment were the sales revenue of the licensee. (2) In a non-exclusive licence agreement, the licensor has no obligations to take action against infringers and has no responsibility for any losses suffered by the licensee as a result of such infringement.
  3. Activities by purchasers from licensee. (1) Where a licensee supplies to third parties (“purchasers”) goods or services under an IP licence, whether by way of sale, gift or other permitted transaction, the licensor may not bring action against purchasers or their successor in title (direct or indirect) of those goods or services for infringement of the licensed IP arising from the [legitimate] use of those goods or services. (2) Where any goods and services described in sub-section (1) are sold subject to an express contractual restriction on their use, the provisions of sub-section (1) do not prevent the licensor from bringing action for infringement against anyone who is bound by such a restriction in respect of use that breaches the restriction.
  4. Independence; third party claims. Where a licensee develops, markets, sells or supplies products or services under a licence, or conducts other activities under a licence, the licensee acts on his own account and not as an agent, representative or partner of the licensor. Accordingly, the licensee must indemnify the licensor in respect of any claims against the licensor by a customer or other person that concern the licensee’s use of the licensed IP, except to the extent (if any) that the claim arises from a breach by the licensor of a term (express or implied) of the licence, or arises from a contractual indemnity given by the licensor to the licensee.
  5. Good faith. The parties to a licence agreement are under a general duty to act honestly and in good faith in their dealings with one another. The duty of good faith does not imply any prohibition on a party developing or commercialising goods, services or intellectual property that compete with the licensed IP or with goods or services supplied under the IP licence.
  6. Assignment of licence agreement. (1) The licensor may not assign the licensed IP to a third party except on terms that the assignee agrees to be bound by the licence agreement and perform all of the obligations on the licensor under the licence agreement, including passing on these obligations to its successor in title to the licensed IP. (2) A licence agreement is personal to the licensee, and accordingly the licensee may not assign or transfer any of its rights or obligations under the licence agreement.
  7. Subcontracting. A party to a licence agreement may subcontract the performance of any or all of its obligations under the licence agreement, provided that such party remains liable to the other party for that performance. Subcontracting may not, however, be used as a disguised way of sublicensing or assigning a party’s rights or obligations in breach of any express or implied terms of the licence agreement.
  8. Sublicensing. A licensee does not have any implied right to grant sub-licences under the licensed IP. But this provision does not affect the rights of a purchaser as described in [section 23] of this code.
  9. Duration and termination of licence. There is an implied term in a licence agreement that, unless the licence agreement states when it will expire, an IP licence may be terminated [by the licensee] [by either party] on reasonable notice. This implied term does not affect any express rights of termination stated in the licence agreement such as for breach or insolvency.
  10. Consequences of termination. Upon termination of a licence agreement, all licences provided for in the licence agreement automatically terminate.

No doubt some of these terms will be thought controversial. IP Draughts is interested to hear readers’ thoughts.

More to follow…

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