Category Archives: Legal practice

Rankings for IP lawyers 2015

top dogRegular readers of this blog may recall that IP Draughts has strong views on the value of publications that rank lawyers. Most are a version of vanity publishing, where you pay the publication for an entry and in return are given a grandiloquent title, such as European Plant Varieties Lawyer of the Decade. Sometimes, the publication plays a dance of the seven veils, in which they tell you have been shortlisted or that you have won an award, but they are coy about what the award is, and invite you to pay for an entry in their publication. The award tends to evaporate if you don’t play ball.

In recent months, IP Draughts has received numerous awards or would-be awards from publications that he has not heard of (or has heard of only because they contacted him in earlier years). Emails from these publications tend to be quickly deleted.

It is tempting to damn all legal rankings as useless and self-serving. But that would be wrong. Some are very useful, and IP Draughts has used them to help him find lawyers in other jurisdictions or in other disciplines. As with restaurant reviews, the trick is to distinguish between the useful ones and the mere puffs.

Within the UK and Europe, and within the intellectual property field, he rates only three: Chambers Directory, Legal 500 and IAM Patent 1000. He has used all of these to find lawyers that he has subsequently instructed.

IP Draughts’ firm is still relatively small, though we have grown in recent years. So far we have taken the view that we don’t have a large enough client base to make submissions to all three of these directories. Making submissions involves naming client referees, who are often contacted by the publication in question. We prefer not to try the patience of key clients by asking them to act as referees for 3 publications. To date, we have omitted Legal 500 from our submissions.

iam 1000IAM Patent 1000 has just released its rankings for 2015. The paper copy of the 2015 edition arrived in the post today. At the time of writing the IAM website is still showing the 2014 rankings.

We are delighted to be ranked for UK patent transactions again. Mark Anderson and Stephen Brett receive individual recommendations. The editorial commentary on our firm for 2015 includes the following text:

 Now a decade old [actually two decades] and home to nine professionals [ten now, and eleven from August], Anderson Law has reaped the benefits of its carefully developed blueprint. It is one of the few UK outfits to specialise exclusively in transactions, serving a specific clientele composed of universities, research bodies and SMEs [and the occasional large, multi-national]. A nuanced understanding of the lifecycle of a startup ensures that its advice is on the money from inception to exit. Government bodies are another key source of instructions; in 2014 it drafted a suite of template agreements and guidelines for Enterprise Ireland…

“Everyone at the firm is knowledgeable, flexible, personable, and able to deliver a quality outcome on time and to budget.” [Thank you – that sums up what we want to do!]

[There is then some blurb about IP Draughts, which he is too embarrassed to quote.]

 

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You can’t always get what you want (from your lawyer)

Lawyers come in all shapes and sizes...

Lawyers come in all shapes and sizes…

IP Draughts has just returned from Barcelona, where he attended the inaugural meeting of BioLawEurope, a referral network of European lawyers who advise the life-sciences sector.

The network currently comprises lawyers from Belgium, Denmark, France, Germany, Italy, the Netherlands, Poland, Spain, Sweden, Switzerland, and the United Kingdom. Many of the member firms are small, specialist practices. Many are listed in Chambers Directory and other reputable guides.

One of the conclusions that we came to at our meeting, was that BioLawEurope is not intended to be a vehicle for attracting new work – it is not a marketing organisation. If it is successful, it will help us to provide more and better services to our existing clients.

The value of such a network depends to a large extent on trust. Just as a client trusts you to provide a good service, you need to trust the other members of the network to provide an equally good service. If you refer work to them and they don’t provide a good service, your reputation suffers.

For this reason, we are not going to ‘promise the world’ for this network until we have had time to get to know one another better, and worked together on a few projects. Let’s take stock in 2, 3 or even 5 years’ time, and see whether it has been successful.

In the meantime, many of our clients are engaged in international activities, whether it be conducting research or clinical trials in several European countries, or licensing IP for an international territory. Despite some international harmonisation, many of the laws affecting such activities remain resolutely national. Even in the largest firms, multi-jurisdictional legal advice on life-sciences agreements is hard to obtain. And even harder to obtain to a consistent standard. For many large firms, there simply isn’t the volume of work in a niche area like life sciences, to justify hiring teams of specialists in every jurisdiction.

Some clients rely on the brand name of an international firm, and don’t think too closely about whether the service they get is consistent across jurisdictions. As the saying goes, no-one got fired for choosing IBM – or its equivalent for legal services. Many of the firms in the BioLawEurope network have made a living out of sophisticated clients who know what they want, and who find the best lawyer for the job, wherever they are located.

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Who practises IP in the UK?

IP lawyers have their own niche, and defend it with zeal

IP lawyers have their own niche, and defend it with zeal

Intellectual property is thought of as a niche subject within the broad category of commercial laws. Yet an increasing number of people, both in the UK and internationally, make it their profession to advise and assist clients on IP matters.

To assist us to understand the make-up of the IP professions, IP Draughts has done some simple research using public registers, including those of the Law Society of England and Wales, IPReg (the regulator for patent attorneys and trade mark attorneys), the IP Bar Association, and the UK Intellectual Property Office’s register of IP business advisers. Some of the results are surprising.

 

law societyBy far the largest number of IP lawyers practising in the UK are within the solicitors’ profession. According to the Find a Solicitor website of the Law Society of England and Wales:

9,466 solicitors practise IP law, of whom 3,901 are in private practice (in 1,618 firms), and the rest work in industry, government and other settings. (A further 390 solicitors practise IP law in Scotland, according to the Law Society of Scotland’s Find a Solicitor search engine.)

ipregThe next highest number practise as patent or trade mark attorneys. According to  the handy spreadsheet provided by IPReg, last updated in December 2014:

1,984 individual patent or trade mark attorneys offer services to the public. (A separate list from IPReg suggests that they work in approximate 220 firms.)

barAccording to the IP Bar Association list, updated in January 2014:

128 barristers practise IP from 30 chambers. (Well, places of practice might be more accurate, as the latter list, although mostly sets of barristers’ chambers, includes a firm of patent attorneys, a firm of solicitors and a Japanese law firm.)

ipoThe UK Intellectual Property Office maintains a list of people who have “completed the accredited IP Master Class” for business advisers and are therefore considered competent to offer IP Health Checks to businesses. (Thankfully, the IPO seems to be no longer listing people who claim adherence to a misguided British Standard for IP advisers.) According to the current list:

56 individuals have completed the IP master class. The relevant part of the IPO website includes the following statement “Many business advisors understand the importance of IP within a business. Reach your potential with this CPD certified quality IP advisor training for business professionals.”

The last of these lists might be viewed as a list of unregulated, but IPO sponsored, IP business advisers, unless they are regulated by one of the other bodies mentioned above.

There is, inevitably, some overlap between the above lists. Nevertheless, they provide an interesting snapshot of who is practising in the field of intellectual property in the United Kingdom.

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Are universities difficult to negotiate with?

difficultThere is a strand of opinion among companies that deal with universities, that the latter (and in particular their technology transfer departments) overvalue their technology; that they are difficult to negotiate with; and that contractual discussions take for ever.

IP Draughts discussed this point earlier this week with a poacher-turned-gamekeeper, who used to work in a university TT department, and now works for a company that in-licenses IP from universities. As this person freely admitted, it was difficult for a university to trust complaints of this kind, when made by a company in the course of negotiations, particularly if, in the next breath, the company demands very wide commercialisation rights that could be viewed as a “land grab”. The company in that situation is not an objective witness.

And yet the accusations persist. They are not just made in the heat of negotiations. They feature in national reports on university technology transfer. They are usually anecdotal rather than being based on solid, statistically-valid data. By repetition, the comments acquire a reputation for accuracy, and an impression of objective truth. But how much substance is there in them?

common mythAt one level, it hardly matters whether the accusation has any universal truth, or is just a convenient whinge to lower a university’s commercial expectations. The fact is that the rumour has taken hold in some quarters, and needs to be recognised and addressed. And universities are sometimes their own worst enemies: no matter how good their intentions, a lack of resource in TT offices, and the oddities of the university decision-making process, can conspire to make contract negotiations less commercially-focussed than they would be in a business environment.

Bad impressions can be countered in a number of ways: by providing data to demonstrate that the accusation is false; by acting in a way that is designed to give a positive impression; and by employing the dark arts of public relations. The most productive of these alternatives is to demonstrate that you are easy to deal with. But easiness comes in different forms. An easy manner may help the flow of commercial discussions. Easiness about the substance – the commercial terms on offer – may be appreciated by the licensee, but is it in the university’s best interests? Is there a danger that eagerness-to-please on deal terms may result in the university not getting market value for its valuable IP? Might this be a breach of charity laws? In a European context, could it amount to an unlawful State Aid under EU laws?

easy skankingThis blog has commented before on an initiative that started at the University of Glasgow, and has since been copied by an increasing number of universities, particularly in the UK and Australia. The initiative is called Easy Access IP, and it is designed to make the process of negotiating technology licences with industry as painless and simple as possible. Typically, the licence is free of upfront payments and is either royalty-free or requires the payment of a small royalty on commercialisation. A simple, one-page licence agreement is used, that doesn’t require negotiation.

Advocates of the initiative point to the non-licensing benefits that can result from offering licences on easy-access terms, including PR/reputational, supporting local industry, and demonstrating industrial “impact”. In some cases, easy-access licensing results in increased funding of university research. Cynics may suggest that technology tends to be offered on easy-access terms after it has languished on the shelf for several years, unable to attract buyers on full commercial terms.

easyThe initiative has been running now for about 5 years, and it is a good time to take stock of what it has been achieved. Various organisations in the university sector have clubbed together to commission a study by independent consultants on whether Easy Access IP has been successful. The study has resulted in a report, and the report was published earlier this week. It is worth a read.

Among the points that IP Draughts took from the report (and in his own words):

  1. Small data. Most of the universities that claim to offer easy-access licences only do so with a small minority of their available technologies (perhaps 10%). Licensing on easy-access terms has been on a relatively small scale. The majority of easy-access licences have been granted by just two universities: Glasgow, where the initiative was born, under the management of Kevin Cullen; and New South Wales, where Kevin now works.
  2. Soft benefits. There are soft benefits in offering easy-access licences. It demonstrates that you care about being seen to be easy to deal with, and counters the lazy impression that all university support departments are bureaucratic and negative in their approach.
  3. Not the main issue. Offering easy-access terms does not make a huge difference to the time it takes to get university technology out into the community. In reality, the negotiation of commercial licence terms is not a slow or difficult process, when compared with other factors, such as the difficulty of marketing university technology and finding licensees. It is easy to blame the lawyers but they are not really the problem.
  4. Uptake by SMEs. The main recipients of easy-access licences are small businesses located near the university. For them, any contractual terms are difficult, because they don’t have much experience of negotiating them, nor much of a budget for obtaining legal advice. A non-trivial proportion of those local-business licensees are start-ups formed by the academic who created the technology. In other words, easy-access licensing is sometimes used as a way of letting the academic commercialise the technology.
  5. No thanks. Large companies tend not to like easy-access licence terms, because they have their own template licence agreements that they prefer to work with. These are usually more complex than the one-pager that the university offers. Similarly, investors in spin-out companies are not willing to accept the simplified terms of an easy-access licence, and want to include detailed warranties and other provisions to address legal risk.
  6. Gotcha. At one level, offering easy-access licence terms could be viewed as calling industry’s bluff. You think we are difficult, and we understand that and want to help – here are some very easy terms. Oh, you don’t want easy terms after all? You actually want detailed and complex terms, you just want us to be amenable to those terms.
  7. Where’s my money? Some other stakeholders dislike easy-access terms. Where university research has been funded by an external agency such as a funding charity, the funder may consider it important to see a financial return from its funding. Offering free licences doesn’t achieve this objective. Similarly, some academic inventors dislike easy-access terms, for the same reason – they want to generate a financial return from industry’s use of their technology.
  8. Yeah, whatever. Another important stakeholder is the university itself. The technology transfer manager may be a convert to the new religion of easy access licensing, but is the university finance director still following the old theology where TT offices are expected to maximise the financial return from IP commercialisation? Are TT staff still incentivised to maximise income, eg through bonus arrangements? Easy access programmes work best where senior management actively supports the idea of easy-access licensing. In some universities it is difficult to get senior management support for, or interest in, any aspect of technology transfer activities.

Dear reader, what are your thoughts on easy-access licensing? Is it a really important initiative, or a minor diversion? Is it a nice idea, like the Lambert Agreements, that hasn’t really achieved what its advocates hoped?

Finally, a drafting point. At the end of the report is an example of an easy-access licence agreement. Is IP Draughts alone in thinking that the drafting of this agreement is terrible? Perhaps the author wanted to avoid having the agreement written in a “legal” style that might be offputting to some readers. But surely we can do better than this example, which is poorly written by any standard.

 

 

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