Category Archives: Legal policy

Is elitism justifiable in IP?

no go areaLast week, IP Draughts briefly put his head above the safety of the trench by suggesting that professional knowledge and experience were necessary to take good decisions on IP issues. This week, he jumps out of the trench entirely and runs across no-man’s-land, wearing a large red arrow on his back.

In IP Draughts’ view:

  1. There is a collective attitude among some specialist IP practitioners, including judges, solicitors, patent attorneys and barristers, that could be described as an elitist approach to practising IP law. It is difficult to write down the precise recipe, but it is a mixture of academic aptitude, technical skills, professional attitudes, peer status and social conformity.
  2. Providing a good service to clients and taking good decisions in court doesn’t need this particular mixture of attributes. It acts as a barrier to diversity in the profession and as a barrier to communication with clients.

A couple of examples from IP Draughts’ experience will illustrate the point.

  • The selection of junior IP judges in the Copyright Tribunal and as Appointed Persons in trade mark and design matters. The individuals who were appointed to the latter role a few months ago are all talented individuals. But it is notable that they are all barristers, at least one of whom seems to be destined for higher office. IP Draughts knows talented and experienced solicitors who could do the job well but may not fit into the self-perpetuating ‘IP elite’ mould. IP Draughts wonders whether the selection process favoured IP barristers, despite the senior judiciary’s vocal support for solicitors to become judges. (For the record, IP Draughts did not apply and has no interest in applying for these roles, but he does know someone who was unsuccessful in the last round of applications.)
  • The diversity of the IP professions can be shown to have increased in recent years, when measured by things that are measurable, such as the number of women, non-whites, first generation graduates, and so on; but more needs to be done. An interesting take on this subject from Daniel Alexander QC appears in his interview with New Africa Analysis. In the areas that cannot be measured so easily, such as adherence to a set of self-perpetuating values that exclude people who don’t share those values, it is more difficult to determine whether progress is being made. One might assume that diverse people will mean diverse values, but is that the case? The Chartered Institute of Patent Attorneys has had two women presidents recently, and the current president, Andrea Brewster, is leading steps to improve diversity in the profession. But she recently felt obliged to stop writing a regular article in the CIPA Journal, which she had written for years, because of pressure from certain CIPA members. These light-hearted, self-deprecating, humourous articles presented a different view of the IP profession and made it seem less dour and serious. But some members considered that it gave a bad impression of UK patent practitioners, particularly when written by the president of their profession, and complained loudly about it. It was inevitable that the articles stopped. IP Draughts hopes they will resume once Andrea’s term of office comes to an end.

To IP Draughts’ mind, these small examples illustrate a set of narrow, collective attitudes in which there is felt to be a single ‘right way to do things’. This is not to say that everyone in the IP professions shares these attitudes. But enough people do to make the attitudes influential.

eliteThe attitude is not unique to IP lawyers: it can be seen in other areas of commercial law. An extreme example, perhaps, was the appointment of the ‘brilliant’ Jonathan Sumption QC direct to the UK Supreme Court. Other current justices of the Supreme Court worked their way up through the ranks from (in the case of lawyers practising in England and Wales) the High Court to the Court of Appeal and then on to the Supreme Court.

Lord Sumption has also illustrated the point through his recent comments about the need to increase the number of women in the Supreme Court. He favours selection of the ‘best’ judges, rather than taking more active steps to increase the number of women.

Leaving aside the question of whether there should be any positive steps to improve diversity (and thankfully Lord Neuberger, the President of the Supreme Court, takes a more enlightened view than his colleague) Lord Sumption’s approach assumes that there is a clear and objective set of criteria for ‘best’. No doubt he would advocate criteria that play to his strengths, such as intellectual brilliance, long experience of courtroom advocacy at the highest level, and please don’t discriminate against Old Etonians. Alternative criteria, such as reasonable intellectual powers, moderate experience, social diversity, good judgment, commitment and a desire to learn and do the best job possible, may not cut much ice with someone of his traditional cast of mind.

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Amateurism doesn’t work for IP

amateurismScenario 1: A university employs specialists to negotiate intellectual property (IP) contracts. But they tend to be relatively junior in the university hierarchy, and don’t have the ultimate decision-making authority, particularly if the academic most interested in the contract objects to their approach. Decisions are pushed upstairs to senior management who have little or no understanding of IP or contractual issues.

In some cases, the university thinks it has solved this problem by forming an IP committee to take decisions. But the members of the committee, if they have any understanding of IP, perceive it from a very high level, and tend not (in IP Draughts’ limited experience) to fill the professionalism-deficit. Alternatively, some universities appoint a senior member of the management team to be responsible for enterprise activities; however, the person who is chosen tends to be an academic rather than a professional. A Deputy Vice Chancellor for Enterprise once complained to IP Draughts that he hated looking at contracts. IP Draughts is still mentally reeling from this statement, years after it was made.

Scenario 2: A trade organisation lobbies on a wide range of issues that affect their members. An IP policy issue comes up. Somewhere deep in the organisation is a person or team who understand IP, and they make sensible suggestions. But the lobbying is fronted by people who don’t have a deep understanding of the subject. They think they can handle it with their usual toolkit of personal charm and a two-page briefing note. But they don’t understand the subject well enough to do a competent job.

Scenario 3: A commercial lawyer, who has no real experience of thinking about and negotiating IP issues, negotiates an agreement that incorporates IP ownership and licensing terms. Unless they are very careful, they are likely to do a sub-optimal job on the IP terms. They will probably modify a template that they have found that contains IP terms. In one case that is on IP Draughts’ desk at present, they have used a published precedent that IP Draughts and his colleagues drafted, and some of the original wording of the precedent lies undisturbed, surrounded by devastation.

cioIn the business community, there have been debates about whether company boards of directors and senior management teams should include information technology (IT) specialists, given the importance of IT for many businesses and the complexity of the subject which makes it difficult for a non-specialist to understand. There are many published examples of large organisations spending millions on IT systems that don’t work. In US corporations, which sometimes appear obsessed with job titles that subtly discriminate between levels of seniority (president, vice president, executive vice president  and so on), this debate has sometimes focussed on whether corporations should have chief information officers, or CIOs.

This debate has some similarities with the issue that faces IP practitioners. IP Draughts knows dozens of IP lawyers who have the necessary IP experience and commercial insight to make high-quality business and policy decisions, whether in the context of universities, commercial companies or trade organisations. But rarely does he see them in general management roles. Perhaps they are not suited to those roles. When it comes to decision-making on IP-related topics, perhaps general managers should recognise their limitations, and delegate authority to the professionals.

How this should be done is not always clear. It is probably not workable to expect external law firms to take business decisions on behalf of their clients. An alternative model might be for organisations to delegate decision-making authority on technical subjects to an individual or committee. This could work if (1) genuine professionals are appointed, who have the necessary professional skills to understand the subject and take sound decisions on behalf of the organisation, and (2) their decisions are supported by the body that appointed them.



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IP policy for SMEs – but which SMEs?

plan5According to some, national IP policy should support the creative and innovative sectors. The individuals who work in these sectors are often employed (or self-employed) in small and medium sized enterprises (SMEs). They include designers, photographers, artists, musicians and authors. Their creative output is protected by IP rights, including copyright. Often, they lack the financial resources or business scale to challenge misuse of their IP rights by ‘big business’ or by consumers who download their works from the internet.

In a slightly different category are the business sectors that depend on innovation in science and engineering, including computer software. Again, many of the innovators in these sectors are based in SMEs, but others are in major companies such as Apple or GlaxoSmithKline.

Reading the UK Intellectual Property Office’s draft 5-year strategy document, and the Conservative Party’s 2015 Manifesto, it is clear that the current UK Government has sympathy for the creative and innovative sectors. Encouraging the growth of new businesses generally, and IP-focussed businesses in particular, is seen as a route to improve the state of the national economy. The Manifesto includes ringing statements such as “With the Conservatives, Britain will be the best place in Europe to innovate, patent new ideas and set up and expand a business.”

The IPO’s draft strategy document reflects these priorities. It refers, for instance, to:

  • making the IP system simpler and less costly
  • ‘encouraging’ creators through the IP system
  • ensuring that businesses understand how to manage their IP effectively to support growth

These points, and others in the strategy, seem to IP Draughts to be focussed on the needs of small-scale creators and innovators, as distinct from major UK companies such as Dyson whose success depends partly on strong IP laws, or UK businesses that make use of IP rather than creating it, and whose commercial success could be prejudiced by IP laws if they became unbalanced in favour of the small-scale IP creator.

Assuming, for the sake of the argument, that it is right to direct Government policy to the needs of IP-dependent SMEs, which types of SME should be the focus of Government attention and support? SMEs vary widely in their scale, ambitions, financial resources, understanding of technical issues, and dependence on the protection of IP laws. Over the years, IP Draughts has seen Government attempting to ‘reach out’ to SMEs via regional development boards and other quangos, usually with limited success. Many SMEs have no interest in engaging with bodies of this kind; they are too busy running their businesses.

In IP Draughts’ view, if IP-related Government support is to be given to SMEs, it should be focussed on the types of SME that are most likely to produce a return to the UK economy from providing that support. This is not a call for a 1970s-style financial support for ‘strategic industries’, but rather is saying, if we are going to spend Government money on creating new IP systems that support SMEs, let’s take a hard-headed look at which types of SME are most likely to produce a benefit to the UK economy when they receive this support, and design the IP systems to be suitable for them.  For example, focussing on the needs of the ‘inventor in a shed’ may be less useful for the economy than focussing on university spin-out companies. Of course, this assumes that the purpose of Government policy in relation to SMEs is to improve the UK economy, rather than to increase the number of its supporters or out of sympathy for the SME ‘underdog’.

To focus the discussion, let’s take three, fictional examples that represent some of the categories of IP-dependent SMEs that IP Draughts has encountered. Should the Government target its IP policies on Xavier, Yvonne or Zac?


Xavier is a self-employed designer and photographer. Most of his work is for large companies, helping them with advertising campaigns and branding projects. He is often asked to provide ideas for campaigns ‘on spec’ (and without charge to the client), on the understanding that if his ideas are selected, he will be commissioned to do further work.  This unpaid work can be very time-consuming, and depressing if the ideas are not accepted. Sometimes, companies ‘steal’ his ideas and use them to create campaigns in-house, without any acknowledgement or financial compensation. Although he has heard that the Intellectual Property Enterprise Court is considered a good and cost-effective court for smaller disputes, he has been told that it might cost him £50,000 to sue a company that takes his ideas, and he might be liable for another £50,000 if he loses the case and the court orders that he has to pay the company’s legal costs. He cannot afford anything like £100,000. The profit on each project is typically in the region of £5,000-£10,000.


Yvonne is the founder of a medical devices company, which is a ‘spin-out’ from the University of Rummidge, where Yvonne is Professor of Bio-Engineering. The company is developing a kit for non-invasive blood glucose monitoring, ie a means of helping diabetics to control their blood sugar levels without the need for taking blood samples or inserting tubes into the blood stream. There is a huge worldwide market for blood testing devices. Non-invasive devices have been attempted over the years but have never succeeded, on technical grounds. The company has received £500,000 in funding from a ‘business angel’. Yvonne knows nothing about  intellectual property. The business angel has indicated that the company will need another £5-£10 million to develop the product to the point where it can be licensed to a major company such as Boehringer, and that raising this amount from venture capitalists should be achievable if the company keeps hitting agreed milestones for developing the product and validating it.


Zac runs a health-food store in Islington, London. He started the shop after leaving university. Business was very slow for the first 7 years, but he has gradually built up a loyal following for his range of ‘detox drinks’. He would now like to expand the business and a friend has suggested to him that franchising across the UK may be the way to go. He has looked at the IPO’s website and learnt that he should apply for a trade mark for the drinks, which he calls SupaCleanse. He calls up the IPO’s helpline and they guide him through the steps for applying for a UK trade mark. They put him in touch with a commercialisation adviser (not part of the IPO) who confirms that he complies with the British Standard for Commercial IP Services, and who says he can arrange for the drafting of a franchise agreement and a ‘bible’ of technical information on how to run the franchise.

ynotOver to you, dear readers. If you were in charge of Government IP policy, which of these individuals (and their companies) would you target as a ‘type’, when designing SME-friendly IP systems? Or should it target all three? Will it help the economy to focus on the needs of Xavier, Yvonne or Zac? If the Government has limited resources, where should its priorities lie?


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Strategy meetings – are they worth having?

strategySelect a dozen or so people who have a common interest but different perspectives on a subject, say intellectual property or legal services. Select people who represent ‘stakeholders’ in the subject. Give them a draft document that you wish to discuss with them. Hold a meeting lasting an hour and a half, at which you canvass their views on the document.

Last week, IP Draughts participated in two such meetings. The first was a meeting of solicitors to discuss the Law Society’s corporate strategy. The second was a meeting of various trade bodies to discuss national IP strategy.

The two meetings were very different in their participants, subject-matter and the way they were run. But in some ways the meetings felt very similar. You may think that some of the following points are obvious, but they only became obvious to IP Draughts after reflecting on how the meetings went, and how they differed from the meetings of IP lawyers and business people that he is used to attending.

  1. It is very difficult to develop any coherent conclusions on a topic when (a) the topic is complex and multi-faceted, and has numerous points of detail, (b) the meeting participants have widely-differing interests and personalities (and in many cases have not met before), and (c) you only have an hour and half to discuss the topic.
  2. Getting people to stick to an agenda, and to discuss their pet subjects under the relevant agenda headings rather than download their ideas all at once, is much harder than one might expect.  Strong chairmanship is required.
  3. Meetings develop ‘group-think’. The nature of that group-think depends on who has been invited to the meeting.

These comments make some tacit assumptions as to the purpose of the meeting, eg that they are intended to find solutions to problems through discussion. But what if the purpose of the meeting, at least on the part of the people who called it, is to ‘engage’ with stakeholders in the wider sense, without necessarily expecting (or needing) that engagement to lead to any consensus?

By contrast, meetings of the Law Society’s Intellectual Property Law Committee seem much more productive. This may be partly because:

  1. Under our current Chair’s guidance, the IPLC has been good at sticking to an agenda in its meetings. Preparatory work is done outside meetings, eg through the development of draft submissions on proposed legislation, and sufficient time is given in the meeting to discuss each point in a focussed way.
  2. Members of the IPLC get to know one another over several years, and develop a productive working relationship.
  3. Members of the IPLC are not representing ‘interests’, other than in the very general sense of all being specialist IP lawyers.
  4. IP lawyers tend to take what IP Draughts calls an ‘engineering approach’ of trying to find workable solutions to problems.

Similarly, client meetings that IP Draughts has attended, eg of the executive committee of a listed biotech company, have been focussed, kept to an agenda and produced relevant conclusions.

It is not surprising that strategy discussions take more of a ‘blank sheet of paper’ approach, and this inevitably leads to a looser discussion. But IP Draughts is left wondering about exactly what the purpose was of the meetings he attended this week and whether, in the minds of the organisers of each of those meetings, the purpose was achieved.



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