Category Archives: Legal policy

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?

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Impressions of Parliament

traitors-gateLast week, IP Draughts (together with his colleagues Matthew Harris and Vicki Salmon) gave oral evidence to a House of Lords Public Bill Committee. Details of that event can be found in the previous posting on this blog.

There is more work to do, as the committee has asked us to provide written comments on all the drafting proposals on the Intellectual Property (Unjustified Threats) Bill that have been made by others, as well as deal with some further questions that members of the committee have raised. We need to get those comments in by Wednesday evening, to meet a formal closing date for submissions.

Rather than focus on the substance of the Bill, this posting will give IP Draughts’ impressions of appearing as a witness in Parliament.

The only other Parliament that IP Draughts has spent time in is the New Zealand one, which he had a guided tour of, last year. By comparison the UK one is much larger. We came in through the ancient Westminster Hall, in which Henry VIII held his coronation banquet, and in which Sir (later St) Thomas More, Guy Fawkes and Charles I were (at different times) tried and sentenced to death.

corridorCommittee Room 2 of the UK Parliament is at the end of a long corridor of committee rooms, most of which seemed to be in use when we were there. There were crowds of people outside some of the rooms, and large TV screens listing the day’s events. Fortunately, we had an experienced guide in the form of Law Society public affairs representative (and KCL law graduate), Iana Vidal, so we didn’t need to worry about finding our way.

Waiting outside our committee room, IP Draughts was pleasantly surprised to meet some of the committee members. The chairman, Lord Saville, made a point of coming out and briefly chatting to the three of us who were due to give evidence. Iana told us this was rare, in her experience of Parliamentary committees. After the hearing, we again spoke to some of the committee members.

Some readers may have seen Parliamentary committees on television, and perhaps may have noticed that some hearings are held in plain rooms with modern furniture and abstract art on the walls, while others are in traditional Victorian rooms with wood panelling. Our committee room (and, IP Draughts assumes, all of the committee rooms nearby) was of the latter kind.

Committee room 4, rather than 2, but similar in style

Committee room 4, rather than 2, but they are similar in style

IP Draughts was struck by how intimate the space felt, compared with how it looks on TV. It was well lit, both by electric lights and by leaded windows that overlooked a grey River Thames. It felt well-designed for its purpose, and more conducive to discussion than many court rooms.

The members of the committee have a variety of backgrounds, but are all of mature years. As well as a patent attorney, in the form of Baroness Bowles, there was a current IP Minister, Baroness Neville-Rolfe, and a former IP Minister, Baroness Wilcox. The chairman, Lord Saville, is a retired Supreme Court justice. Lord Plant, who spoke briefly, is a professor of jurisprudence and political philosophy, though his interests seem to lie more on the philosophy side than on law. Other members of the committee seemed to have had less direct involvement with IP or the law, though Lord Lucas clearly has some direct experience of IP threats and how they were dealt with by the regulatory authorities.

The hearing itself was, overall, interesting and stimulating. At first, IP Draughts found it difficult; later he started to enjoy it. Their lordships weren’t trying to catch us out, or belittle us, and seemed genuinely interested in our replies.

The tone of the proceedings was polite, conversational, and yet concise and focussed. Reading back through the transcript, IP Draughts felt that both grillers and grillees mostly kept  to the topic at hand. He has learnt a little about the skills of political debate, or at least the polite version that is conducted in the House of Lords.

 

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IP threats in the House of Lords

hl-committeeThis weekend, IP Draughts has a note from the school doctor: he is excused long runs, contact sports or blogging. He has to prepare for what may be a once-in-a-lifetime event, namely appearing as a witness before a House of Lords committee next Monday afternoon.

The committee is known as a Public Bill Committee, and has been convened as part of the passage of the Intellectual Property (Unjustified Threats) Bill through Parliament. It is chaired by Lord Saville, a retired Supreme Court justice. Previous witnesses to have appeared before this committee include Baroness Neville-Rolfe, the IP Minister, Sir Robin Jacob and Sir Colin Birss.

The committee hearing, which will be taking place on Monday 24 October at about 3.30 pm, is recorded on camera, live-streamed and saved on the UK Parliament website, so if you are a glutton for legal minutiae feel free to stop by. Details of the hearing can be found on the Parliament website here. IP Draughts believes the streaming will be accessible here.

IP Draughts will be giving oral evidence as chairman of the Law Society’s Intellectual Property Law Committee. Also giving evidence will be fellow IPLC member, Matthew Harris, and Vicki Salmon, representing the Chartered Institute of Patent Attorneys.

Now IP Draughts has to do some homework, and prepare for some difficult questions from Baroness Bowles, who is a member of the committee and a patent attorney, possibly the only patent attorney in Parliament.

 

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IP laws after Brexit: what would be best?

brekApples is apples. All are of the dust, and all turn to dust again. And Brexit means Brexit.

A large proportion – perhaps 70 to 80% – of UK IP laws are based upon or affected by EU laws. What is to happen to these laws when the UK leaves the EU? According to a recent announcement by the UK government, there will be a Great Repeal Bill, which will continue EU laws in existence as domestic UK laws until they are individually revised or repealed. This announcement is welcome, but it leaves many questions in the IP field unanswered. Some of these are listed below.

  1. What about laws that are in the pipeline of EU legislation and come into effect after Brexit? For example, what about EU directives currently in place that require member states to implement national legislation by a future date that falls after Brexit?
  2. What about pan-European IP that is currently in existence, such as EU trade marks and EU registered designs? Will they continue to exist as UK rights after Brexit, and if so, how? As purely national rights or as part of a larger EU system?
  3. Will it be possible for the UK territory to be included in pan-EU IP rights that are registered after Brexit? Could there be a new treaty that extends these rights to non-EU countries including the UK and Switzerland?
  4. Or if the answer to question 3 is no, will the UK introduce equivalent rights in the UK? For example, will the UK introduce UK-only database rights, supplementary protection certificates, data exclusivity laws and orphan drug rights?
  5. If the UK does not agree with the EU to be part of a future pan-European IP system, but introduces equivalent UK rights through domestic laws, will the UK courts follow EU case law on the interpretation of those laws?

dustIP Draughts attended a meeting of practitioners last week, at which the consensus was that it was in the UK’s commercial interests for future UK IP laws to be aligned, as closely as possible, with equivalent laws in EU countries. But how will this be achieved, if the case law of the EU and the UK diverges over time?

One answer would be for the UK courts to follow the approach taken by the CJEU and other senior EU courts. But recent statements by UK government members suggest that it is a central part of Brexit that the UK will be relieved of any obligation to act in accordance with the judgments of the CJEU. If that continues to be the UK government’s position, even in technical commercial subjects such as IP, then the most we might hope for is that the UK courts will take notice of EU judgments and seek alignment were possible. This could be by an informal nod-and-a-wink on the part of the UK judges, or could be enshrined in UK legislation that says, in effect, we are free to do our own thing but if we think it is sensible we will follow EU law. Would this approach be politically acceptable? Who knows.

A similar question arises in relation to the Unified Patent Convention. According to a recent opinion by Richard Gordon QC, it is technically possible for the UK to participate in the UPC after Brexit. But this would require agreement among various stakeholders, and would almost certainly require the UK to accept the supervisory jurisdiction of the CJEU. This last requirement is likely to stick in the craw of the Brexiteers, at least according to some of their recent pronouncements.

applesPerhaps, in time, the UK government will realise that, in some areas of international trade, giving jurisdiction to EU institutions is in the UK’s commercial interests and does not significantly dilute the principle of sovereign independence. Coming to this realisation will require a suppleness of thinking that is currently lacking in those responsible for Brexit in the UK government.

 

 

 

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