Category Archives: Intellectual Property

Skill set for transactional IP lawyers

Are the skills required for an IP litigator different to those required for a transactional IP lawyer? And are the skills for the latter different to those required for an M&A lawyer? What has happened to the general commercial practitioner who can turn his or her hand to anything that comes through the door, of a contentious or non-contentious nature?

Recent posts on this blog have focussed on drafting techniques, but they are only a part of the overall skill set required by many lawyers who advise business clients (using the term “business” loosely to distinguish from consumers).

The skills and attributes that IP Draughts tries to help his junior colleagues develop include (some of these overlap, and in no particular order):

  1. A foundation of technical accuracy, developed by continuous learning. Our UCL course on IP Transactions, as well as the Oxford diploma course, helps to supports this long term objective.
  2. Drafting skills, in commercial contracts and more generally in legal documents including notes of advice.
  3. Clear and purposeful communication with clients and others. The purpose will vary, and in individual cases the communication may need a particular mix of (a) analysis of what is needed, (b) organisation of material, (c) helpfulness, including understanding how the intended reader processes information, (d) conciseness, (e) completeness and accuracy, (f) bullet-proofness, (g) advocacy, (h) directing or recommending, etc.
  4. Ethical conduct and regulatory compliance.
  5. User-friendliness.
  6. Negotiating skills and tradecraft.
  7. Recognition of the different roles, character and temperaments of parties and understanding their needs and priorities.
  8. Risk management.
  9. Mutual cooperation in a supportive working environment.
  10. Self-motivation and motivation of others.
  11. Participation in the wider community of lawyers and clients, eg through writing, teaching, committee work.
  12. A passion for excellence in all of the above.

The skills for commercial litigators will overlap with the above list but include other items. IP Draughts sometimes gets involved at the margins of litigation, eg knowing how to select, instruct and manage a barrister, or how to write a letter before action, but rarely gets involved in the core activity, including working within the civil practice rules and directions.

Has IP Draughts missed anything important for a transactional IP lawyer?

 

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Congratulations to IP winners

Twice a year, the UK state recognises outstanding contributions to society through national awards. Known as the New Year’s Honours, and the Queen’s Birthday Honours, these awards come in different ranks and classes. There are civil lists and military lists, home and overseas, and a personal list for loyal servants of the Queen.

There are the most important honours, such as the Order of Merit (limited to 24 individuals), Companion of Honour (limited to 65 individuals) and knighthoods of various kinds. Most award recipients receive one of the different classes of the Order of the British Empire – the name now seems quaint. In order of rank, you might be made a GBE, KBE/DBE, CBE, OBE, MBE or BEM. In this traditional, hierarchical world, concepts such as egalitarianism and flat organisations have yet to make their presence felt.

Today’s Birthday Honours List includes several people from the world of IP and commercialisation.

Professor Ruth Annand has been awarded a CBE (Commander of the Order of the British Empire) for services to intellectual property. Professor Annand is an Emeritus Professor at the University of Bristol and is, or was, an “Appointed Person” – a judge who hears trade mark appeals. She was also, for many years, the host of the IP Diploma course that was run at the University of Bristol until her retirement, and is now run at the University of Oxford.

Colin Adams is a recently-retired Director of Commercialisation at the University of Edinburgh. He has been awarded a CBE for services to innovation and entrepreneurship.

And last, but certainly not least, is Andrea Brewster, former President of the Chartered Institute of Patent Attorneys, prime mover behind the IP Inclusive initiative, and author of the only bit of the CIPA Journal that IP Draughts reads carefully – the humorous Secret Diary. Andrea has been awarded an OBE (Officer of the Order of the British Empire) for services to intellectual property.

Congratulations to all of you!

 

 

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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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Terminating licence agreements for breach: how not to do it

At some point, IP Draughts will get around to reviewing and commenting on the recent English court decision on FRAND licensing. Mr Justice Birss’s 87,000-word decision is considered to be of great significance by those who are involved in this area. But that is a topic for another day.

Instead, IP Draughts’ eye has been caught by another Chancery Division decision, this time by Mr Justice Warren, on the subject of trade mark licence agreements. Judgment in the case of General Nutrition Investment Company v Holland And Barrett International Ltd & Anor (Rev 1) [2017] EWHC 746 (Ch) was published last week. This is another lengthy judgment (only 51,000 words rather than 87,000!) which has something for everyone – the effect of IP assignments, notices, contractual interpretation, and implied duties of good faith are just some of the topics that the judge has to address.

Readers based in the UK will be familiar with the Holland & Barrett (H&B) shops that sell health supplements. H&B is also the UK licensee of the “GNC” and “GNC Live Well” trade marks, which are owned by a US corporation, General Nutrition Investment Company (GNIC). It appears from the judgment that GNIC has a reputation in the USA, inter alia, for selling “sports nutrition” products to body builders, though GNIC has sought to broaden its appeal beyond this market.

Part of the dispute between the parties seems to have related to H&B’s focus on selling GNC-branded products to the body building market, rather than the broader market that GNIC was seeking to cultivate, both in the USA and other countries. In the words of Warren J:

Much of GNIC’s complaint appears to me to be about an alleged change in the brand image of GNC in the UK.  According to GNIC, H&B has changed the brand image of GNC from being a general health and wellness brand, to being a sports nutrition brand.  Frequently, and pejoratively, that latter description is juxtaposed in the presentation of GNIC’s case with “body building” with a view, it seems to me, of tainting the brand image actually developed (sports nutrition) with something which would be perceived by some as less savoury (body building) and thereby to demonstrate a breach of clause 3.1(b) of the [Licence Agreement].

Various other breaches were alleged. Warren J concluded that there had been no material breaches that entitled GNIC to terminate.

The real interest of this case to IP transactional lawyers lies in some of the other topics that were discussed in Warren J’s judgment. In brief summary:

  1. Legal or equitable assignment. If you are not the original licensor under the licence agreement, you need to take care that the licence agreement (and therefore the right of action for breach) has been validly assigned to you, and that the licensee has received notice of that assignment. Under English law, notice of a legal assignment must comply with section 136 of the Law of Property Act 1925. If such a notice has not been given, the most you can have is an equitable assignment, and any action for breach (in the case of assignment of a contract) may require the assignor to be joined as a co-claimant. Warren J dismissed the claimant’s case on the ground that effective notice had not been given, but went on to consider other aspects in case he was overruled by the Court of Appeal on this point.
  2. Notice of breach. Notices of breach must be clear to be effective. This includes being clear as to which legal entity is giving the notice and what breaches are alleged. In the present case the party alleging breach had the same name and was incorporate in the same US State as the original licensor, but was in fact a different legal entity and this was not clear from the notice.
  3. Relational contracts and implied duties of good faith. The English courts have been prepared, in some cases, to imply a duty of good faith into certain types of contract where the parties have an ongoing relationship and need to cooperate with one another to make the contract work. The law in this area is still evolving. The category of contracts where such obligations have been implied are sometimes referred to as “relational contracts” and might, for example, include a long-term distribution agreement. IP Draughts has long considered that IP licence agreements are potentially within this category, particularly since he obtained a written opinion from the late Christopher Carr QC, some years ago, that his client (a licensor) was entitled to sue for breach of an implied obligation of good faith by the licensee under a patent licence agreement. In the present case, Warren J seems to pour cold water on the idea that a trade mark licence agreement is a relational contract.

On the relational contracts point, Warren J states (at paragraph 321:

In my judgment, no general obligation of good faith is to be implied into the LA.  I do not consider that the LA is a relational contract in the sense in which that term has been used in the cases.  Although the LA is a long-term contract, it is one where there ought to be no need for any ongoing communication of the sort envisaged in the cases and required to enable the contract to operate effectively.  In any case, even if the LA is relational in the required sense, it is not necessary to imply an obligation of good faith.  Such control as GNIC has over the use of the marks is already subject to express provisions making an implied term in relation to those aspects unnecessary.

The judgment also includes a small point of contractual interpretation. In the following clause, do the words “to an extent likely to cause material loss to the Licensor” qualify the whole of the previous wording of paragraph (a) or only qualify the words “otherwise infringes the Licensor’s rights under the Trade Marks”?

5.2       The Licensor may terminate this Agreement immediately by notice in writing if:

(a)      The Licensee materially breaches this Agreement or any other member with the H&B Group commits an act which would amount to a material breach of this Agreement or (without prejudice to the Licensor’s other rights to terminate under this Agreement) otherwise infringes the Licensor’s rights under the Trade Marks to an extent likely to cause material lost to the Licensor; or …

Sensibly, the judge concludes that the words highlighted above in red qualify only the words highlighted above in blue and not the words highlighted in green. Of course this dispute could have been avoided if the drafter had been more careful, eg by drafting the above wording (with some additional editing – IP Draughts can’t resist it) as follows:

5.2       The Licensor may terminate this Agreement immediately by notice in writing to the Licensee if:

(a)      the Licensee materially breaches this Agreement;

(b)      any other member within the H&B Group commits an act which, if committed by the Licensee, would amount to a material breach of this Agreement; or

(c)      (without prejudice to the Licensor’s other rights to terminate under this Agreement) the Licensee [or any other member within the H&B Group] otherwise infringes the Licensor’s rights under the Trade Marks to an extent likely to cause material lost to the Licensor; or …

The case provides some useful reminders of the need to deal with legal housekeeping points, as described above, before attempting to terminate a licence agreement for breach.

On the format and text of the judgment, IP Draughts is reminded of the frustration he feels that:

  1. High Court judgments have become so long; and
  2. They adopt a very old-fashioned approach to setting out key terms of the contract that they are being asked to interpret. It would be much better, in IP Draughts’ view, if a new convention were adopted in which the full agreement is pasted as an annex to the judgment so that the reader can see its terms in context. If it is considered appropriate to highlight particular terms, this could be done through colour-coding or some other modern method. IP Draughts would have liked to see, for example, whether the licence agreement in this case included any term restricting assignment.

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