Category Archives: Legal policy

IP and Brexit

may1So, at last the UK Prime Minister has spoken. In a speech today, she set out her 12-point plan for Brexit. The point that seems most relevant to IP commercialisation is the tenth:

10. The best place for science and innovation

A Global Britain must also be a country that looks to the future. That means being one of the best places in the world for science and innovation.

One of our great strengths as a nation is the breadth and depth of our academic and scientific communities, backed up by some of the world’s best universities. And we have a proud history of leading and supporting cutting-edge research and innovation.

So we will also welcome agreement to continue to collaborate with our European partners on major science, research, and technology initiatives.

From space exploration to clean energy to medical technologies, Britain will remain at the forefront of collective endeavours to better understand, and make better, the world in which we live.

jojoThe UK’s Minister of State for Universities, Science, Research and Innovation, Jo Johnson MP, has recently added the job of IP Minister to his portfolio, which is a recognition that these subjects are connected. IP Draughts hopes that the above reference to collaborating with European partners on technology initiatives will be interpreted, within government, as including collaboration on European IP initiatives such as the Unitary Patent.

There are some signs that it might be. The government has announced its intention to ratify the Unified Patent Convention. That announcement was accompanied by the following, careful wording:

We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the Single Market – and let European businesses do the same in the UK.
But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.

A possible stumbling block to UK participation in the UPC post-Brexit is the requirement for participants to recognise the supervisory jurisdiction of the Court of Justice of the European Union (CJEU). This potentially runs up against the Prime Minister’s determination, albeit focused on other areas, for the UK to cease to be subject to the CJEU. As she put in point 2 of her speech today:

2. Control of our own laws

That means taking control of our own affairs, as those who voted in their millions to leave the European Union demanded we must.

So we will take back control of our laws and bring an end to the jurisdiction of the European Court of Justice in Britain.

Leaving the European Union will mean that our laws will be made in Westminster, Edinburgh, Cardiff and Belfast. And those laws will be interpreted by judges not in Luxembourg but in courts across this country.

Because we will not have truly left the European Union if we are not in control of our own laws.

Thus, there appears to be a conflict between the Prime Minister’s desire to collaborate with EU countries on science and technology (assuming this extends to the legal protection of science and technology through IP rights such as the UPC) and her desire to escape the jurisdiction of the CJEU.

Some commenters have assumed the worst and concluded that this makes post-Brexit, UK participation in the UPC (and, for that matter, participation in pan-EU IP rights such as trade marks) impossible.

There is, however, a potential way through this tricky issue, if there is the political will to pursue it. Our former IP Minister, the astute Baroness Neville-Rolfe, caused the following statement to be added at the end of the announcement about ratification of the UPC:

Notes to editors
The UPC itself is not an EU institution, it is an international patent court. The judiciary appointed include UK judges.

This point was repeated by the new IP Minister when he gave evidence to the House of Commons’ Science and Technology Committee last week. In IP Draughts’ view, it is a coded signal to the Brexiteer faction within government, and it is reasonable to extrapolate from this slightly obscure statement as follows:

  1. The political objective of “taking back control” by removing the jurisdiction of the CJEU is concerned with how domestic UK laws are made and interpreted, as distinct from cooperation on international trade.
  2. The UPC is an add-on to the European Patent Convention, which is separate from the European Union. It forms part of the UK’s arrangements for cooperation on international trade.
  3. The main courts of the UPC are being established separately from the CJEU and will include British judges (and indeed a retired British judge is leading the recruitment process).
  4. Yes, the UPC will involve a supervisory CJEU jurisdiction, but this should be viewed as a hybrid arrangement concerned with international trade and not part of EU membership. In other areas of international trade, the UK accepts the jurisdiction of international bodies (eg arbitration of WTO disputes) and this is not considered to damage national sovereignty.

dsbThere are some technical weaknesses in these points (which IP Draughts prefers not to dwell on, as it will only muddy the case), but the broad thrust is a reasonably strong argument.

Ultimately, whether the argument is accepted by the government and argued for strongly will depend not on its detailed, technical merits but whether it is acceptable to enough Tory MPs and right-wing newspapers. There are plenty of other areas of international trade where similar arguments are being raised. For example, representatives of the Law Society and English Bar made similar points about the mutual recognition of court judgments in the UK and EU, post-Brexit, when they gave oral evidence to the House of Lords’ Justice Sub-Committee recently.

IP Draughts hopes that, in Brexit negotiations, the international trade card, and the protecting science and technology card, will be used to ensure that there is continuing international cooperation on IP laws, despite the faint spectre of the CJEU lurking in the background.

Leave a comment

Filed under Intellectual Property, Legal policy

Lessons from visiting Parliament

commons-appearanceLast Wednesday morning, from 9.30 am, IP Draughts and Daniel Nelki of Wellcome Trust spent an hour answering questions from the House of Commons’ Science and Technology Committee, in relation to their investigation on the subject “Managing Intellectual Property and Technology Transfer”. A recording of the event can be found on the Parliament TV website here.

With recent experience of giving evidence to a House of Lords committee, IP Draughts knew roughly what to expect, which reduced the stress levels considerably. He is grateful to Iana Vidal of the Law Society’s public affairs team, who chaperoned him during both of his recent visits to Parliament. Daniel had his own chaperone, from the Wellcome Trust’s public affairs team. IP Draughts wonders how many people give evidence to Parliamentary committees without such a supporter. He suggests that the Parliamentary authorities should ask witnesses whether they will be accompanied, and offer such a service to those who attend on their own, including collecting them from outside Parliament, guiding them through security, escorting them to the committee room, and making conversation with them until they are called in to be grilled.

The committee rooms in the Palace of Westminster are on the second floor, all overlooking the river. Next to them is a corridor, several hundred yards long, with an entrance half-way down. To the left of this entrance are the Commons’ committee rooms, many of which are named after former Prime Ministers. To the right, the Lords’ committee rooms. The rooms themselves (or at least the two IP Draughts has seen) are Victorian, wood-pannelled, tall-ceilinged, and well-designed for public conversation.

IP Draughts learnt several new things this week about Parliamentary committees, including:

  1. The importance of the chairman setting a relaxed tone to proceedings. From this witness’s perspective, Stephen Metcalfe MP did a good job. Last month, Lord Saville did his best, and came out to speak to the witnesses before the hearing, which was appreciated, but he was rather ‘hands off’ and remote.
  2. Elected MPs are more engaging than members of the House of Lords.
  3. But some members of the House of Lords are more focussed on the core issues at hand than some members of the Commons, and more familiar with the subject-matter. A few of the questions that IP Draughts was asked last week were, shall we say, peripheral to the subject of university/industry collaborations.
  4. Unlike the Lords’ proceedings that IP Draughts attended, where the questions were set in advance and written down, in the Commons’ committee the witnesses had no advanced notice of the questions. This has some advantages of spontaneity, but it risks gaps emerging, where key questions are not asked by anyone. With hindsight, IP Draughts regrets not being asked about Dame Ann Dowling’s assertion that negotiations over IP are a major source of frustration among all the players – particularly industry and academics – other than the TTOs themselves. She gave evidence immediately after IP Draughts’ session finished and repeated this contentious point. Fortunately her fellow witness, Professor McMillan, gave a different view on this issue (as he did in his written report to HEFCE).

dowlingThe other main point that IP Draughts learnt, and he is still recovering from this insight, was that after the evidence hearing had finished, several MPs rushed to have a selfie taken with Dame Ann Dowling. No-one asked IP Draughts for a selfie.

If you watch Dame Ann’s evidence, you will see one of the committee members asking her, a little sycophantically, whether she can remember all the initials and qualifications that appear after her name. No-one asked IP Draughts this question.

While he cannot compete with Dame Ann’s academic and professional eminence, for the record, IP Draughts received in the post this week a certificate from the European Union Knowledge and Technology Transfer Society stating that IP Draughts has been awarded the title of Expert. One of IP Draughts’ partners reminded him that, according to a former Lord Chancellor, “we have had enough of experts“, and that he might want to keep quiet about this EU qualification.

 

4 Comments

Filed under Intellectual Property, Legal policy

National reviews of IP are universally poor: discuss

radio-4Until a month ago, the closest IP Draughts had come to participating in national affairs was asking a question on the UK radio programme, Any Questions, in about 1981. The question he (neutrally) asked, which was whether a system of student loans should be introduced for UK students, provoked loud boos from some members of the audience, who were mostly fellow students at the University of Durham. As it happens (but nothing to do with IP Draughts’ intervention), a few years later the government introduced such a system, which is still in force today.

Last month, after 35 years of well-deserved obscurity, IP Draughts gave oral evidence on behalf of the Law Society to a House of Lords Public Bill Committee, which had been convened to consider the Intellectual Property (Unjustified Threats) Bill. The Bill was approved by the committee in its original form. It then proceeded to the Report stage, where the government proposed a few drafting amendments to deal with points that had been raised in committee by the Law Society, Chartered Institute of Patent Attorneys, and Professor Sir Robin Jacob, respectively. IP Draughts was pleased to see that the House of Lords voted in favour of the Bill with only these few amendments. We are now awaiting the third reading in the House of Lords, which should be a formality, before the Bill moves to the House of Commons for consideration.

commonsNext week, IP Draughts has another, unexpected public assignment. He has been asked by the House of Commons’ Science and Technology Committee to give oral evidence in relation to its enquiry into “managing intellectual property and technology transfer”. Details here.

As part of his homework for next week’s assignment, IP Draughts is re-reading last year’s Dowling Review of Business-University Research Collaborations, and  this year’s McMillan Review of University Knowledge Exchange Framework: good practice in technology transfer.

Dame Ann Dowling and Professor McMillan are giving evidence to the committee immediately after IP Draughts and his co-grillee, Daniel Nelki of Wellcome Trust.

Clearly, a great deal of work has gone into these reviews, and many of their comments seem sensible. But parts of these reviews, and of earlier national reviews of IP (Gowers and Hargreaves spring to mind), give the impression that they simply report views that have been expressed to them, or which appeal to their imaginations, rather than engaging in deep analysis of whether those views are:

  • objective, rather than promoting sectional interests
  • workable, in the views of experts who understand the subject
  • affordable and likely to be funded

Examples from (if IP Draughts remembers correctly) the Hargreaves Review were the ideas of having a national Digital Copyright Exchange or “hub” for making licences easily available, and of having standard IP licence agreements. The first soon died a death (a successor is still just about alive), while the latter resulted in the IPO forming a committee to work on licence agreements, of which IP Draughts was an inaugural member. At the first meeting, IP Draughts and one or two other members expressed strong doubts about the feasibility of this task, and the committee’s remit soon morphed into one of providing guides to licence agreements for SMEs.

Perhaps the review process doesn’t lend itself to, or have the budget for, this type of critical analysis. In the case of IP-related reviews, it is noticeable how rarely the composition of the review panels includes specialist IP lawyers, who might be expected to know something about the subject and have a degree of independence from the sectional interests who make representations to the reviews.

These thoughts are prompted by re-reading some of the Dowling Review’s recommendations. For example, recommendation 22 reads:

Innovate UK, in consultation with the IPO, should explore the establishment of an independent source of advice and expertise that SMEs could call upon for support in negotiating contracts with universities.

IP Draughts’ first reaction to this was that there is already such a source of advice: IP solicitors. Then he wondered whether the recommendation was more about getting advice on the commercial terms being proposed. Or getting free advice. Later in its report, the Dowling Review explains that it has in mind a kind of commercial mentoring service for inexperienced SMEs.

ipoWe have been there before. Following the Hargreaves Review, the UK IPO was tasked with finding inexpensive sources of IP advice for SMEs. 5 years ago, IP Draughts described that idea as half-baked and, as expected, it didn’t get anywhere. But the poor IPO spent time and taxpayer’s money in various initiatives, including the ill-advised promotion of a British Standard for Commercial Intellectual Property Services. It really isn’t part of the IPO’s skill set or function to set up new professions to provide cheap advice.

IP Draughts is left with a sense that these repeated IP reviews are being conducted on the basis that if they produce several dozen recommendations, at least a few of them will “stick” and prove useful. This is a terrible way of conducting public business. Please could we have a decent pause – say 10 years – before another national review of IP policy is conducted. And when the next review is conducted, could it be written into its terms of reference that it may not produce a report unless:

  1. The report has no more than 5 recommendations.
  2. Each of those recommendations has been reviewed by a specialist IP lawyer or IP contracts manager who advises in writing that he or she considers the recommendation to be workable.

 

2 Comments

Filed under Intellectual Property, Legal policy, universities

Why we need a Royal Academy of Innovation

raeSome readers may be aware that the British House of Commons has a Science and Technology Committee. Some of those readers may be aware that this committee is currently holding an enquiry that has the title “Managing Intellectual Property and Technology Transfer“. The enquiry has received both written and oral evidence, and is due to hear further oral evidence in December.

The enquiry appears to have been prompted partly by the publication of the Dowling Review. One paragraph in particular from its executive summary (how many people have read the full report?) seems to have caught the committee’s attention:

Universities have rightly become more aware of the importance of intellectual property and have significantly professionalised their knowledge exchange activities. However, there is a tension between the desire to earn short-term income from their IP and the need to deliver wider public benefit, and potentially greater long-term return on investment from this IP. The emphasis needs to shift towards the latter, and this must be reflected in technology transfer office funding models and success metrics. Notwithstanding the substantial work already undertaken to improve approaches to establishing contracts and IP agreements, this area remains a major source of frustration for both academics and businesses.

(emphasis added; only the bold text is quoted in the committee’s terms of reference)

raaSee also paragraphs 110 to 125 of the main report. Let’s unpick what, in IP Draughts’ view, the highlighted parts of this paragraph are saying.

  1. Universities shouldn’t be so concerned about making money from their IP, as long as there is a benefit to [UK?] society from its commercialisation.
  2. Universities shouldn’t judge their technology transfer (TT) offices on whether they make a profit.
  3. Academics and businesses are frustrated by the behaviour of TT offices in requiring complex agreements that give too much financial benefit to the university and take too long to negotiate.

IP Draughts’ reactions to these assertions (as reformulated by him) are as follows:

  1. Sometimes yes, sometimes no. IP Draughts would like to see technology transfer opportunities routinely triaged into (a) those which are worth investing in, and having detailed agreements for; (b) those which are best licensed for free or low cost, with a simple agreement, under an “easy access” type of model; and (c) those for which no commercial opportunity is identified, which the inventor(s) should be allowed to deal with as they see fit, with minimal university involvement. We should also be careful to avoid equating the benefitting of society with the interests of one company. IP Draughts has heard the benefit-to-society point being used in negotiations by a company that wants more favourable terms.
  2. Agreed. It is pure chance whether a commercially valuable technology crosses the TT officer’s desk, and very few TT opportunities make a significant amount of money. IP Draughts said as much to the project team on the Dowling Review.
  3. IP Draughts is highly suspicious of comments of this kind. Academics sometimes behave very badly in siding with the company to put pressure on the TT office to accept the company’s preferred terms. Often, the frustration arises through the company not understanding the university’s objectives, which may be very different to those encountered in business-to-business agreements. In particular, the company may not understand the university’s needs to ensure public benefit and avoid legal risk. It is also true that, sometimes, universities are their own worst enemies, through failing to have a clear “bottom line” or a clear hierarchy and process of decision-making on legal and contractual issues. There is also the issue that companies are not neutral observers of the process: their “frustration” with the university’s approach in resisting the terms that the company proposes is aligned with their desire to achieve the best commercial outcome for the company.

ramStanding back from these issues, it seems to IP Draughts that there are human factors that need to be considered:

  • Vice chancellors and their teams. Universities are primarily concerned with research and teaching, and TT activities take second place to these priorities. Senior management of universities tend to understand research and teaching and not to understand TT.
  • Academic researchers. Academics tend to be concerned solely with their research and its funding, and not to be so concerned with the larger institutional interests of the university, including those which come into play when negotiating commercial contracts.
  • TT and contracts staff. TT and research contracts offices tend not to have high status within the university, and their staff are sometimes thought of as support workers rather than leaders of the university.
  • Business representatives. As mentioned earlier, companies sometimes lack understanding of the institutional, legal and other drivers of university behaviour. Often, it is not a case of the TT staff being “difficult”; rather, their behaviour is perfectly logical if you understand the context in which they are working.

So, what can be done to increase mutual understanding among the actors in TT, to raise the status of innovation and creativity as a discipline, so that it is no longer a “poor relation” of the university’s research and teaching activities, and to provide a focus for national policy initiatives in this field?

IP Draughts would like to suggest the formation of a Royal Academy of Innovation and Creativity (RAIC).

rsRoyal or national academies are a tried-and-tested way of developing a discipline, encouraging professionalism, and promoting the discipline at a national level, all for the benefit of society. Their core activities seem to vary across disciplines. Some of the science-based academies have a strong focus on academic research (eg the Academy of Medical Sciences or the Royal Academy of Engineering). Some of the arts-based academies seem to be more like national conservatoires, focussed on excellence in teaching (eg the Royal Academy of Music).

Drawing on the common features of some national academies, IP Draughts would like to see a Royal Academy of Innovation and Creativity that (adapting the words of Wikipedia’s article on national academies):

  1. is a voluntary, non-profit body with which government has agreed to negotiate, and which may receive government financial support while retaining substantial independence.
  2. has a core membership of “fellows”. The fellowship is elected, on the basis of excellence, by existing fellows. The number of fellows is restricted either to a total number or to a rate of accretion.
  3. has a governance structure that is democratic and “bottom up”. The fellowship is the ultimate source of the academy’s authority.

One of the functions of national academies is to bring together diverse bodies representing different aspects of a discipline, with a single national body. In the case of UK TT activities, there are bodies representing parts of the community, from PraxisUnico/AURIL for university TT and research contracts managers, to the British Inventor’s Society for individual inventors, as well as scientific and professional organisations.

The RAIC would provide a national focus for policy, education, research and excellence within the fields of innovation and creativity. It would raise the status of innovation and creativity in the academic and business communities, and provide an authoritative voice when dealing with government. It would be cross-disciplinary, in the sense of including among its members eminent representatives of academia, industry, TT leaders, investors and, dare one suggest it, professional advisers.

For this initiative to get off the ground, suitable individuals would need to act as midwives and perhaps form the first batch of fellows. Possible candidates, if they are interested, might include:

Academia: Professor Anthony Finkelstein (UCL, and Chief Scientific Adviser for National Security), Professor Sir Tim Berners Lee (MIT)

Industrial inventors and creators: Jonathan Ive (Apple), James Dyson (Dyson)

Industrial managers: Sir Howard Stringer (Sony), Malcolm Skingle CBE (GSK)

TT community: Jeff Skinner (London Business School), Alison Campbell OBE (Knowledge Transfer Ireland)

US National Academy of Inventors

US National Academy of Inventors

No doubt, others can think of different names. Does this idea have legs? Should the House of Commons’ Science and Technology Committee be pushing it as a way of improving the development of national policy and mutual understanding in university/industry relations and technology transfer?

Leave a comment

Filed under Legal policy, universities