Category Archives: Legal practice

Unconscious bias about lawyers

What do you think, if you see a lawyer applying for a non-legal role? Do you make assumptions about a lawyer’s skill-set? And are these positive or negative assumptions?

IP Draughts would be interested to know your views. At a time when more of us are receiving training to avoid unconscious bias, and to be more inclusive and diverse, so that we don’t just recruit people in our own image, and when the law prohibits bias based on gender, race, disability or age, is discrimination against lawyers the last-remaining, permitted prejudice in the workplace?

IP Draughts can almost hear the jokey, sarcastic responses. In the popular discourse, lawyers don’t attract sympathy, because they are perceived as being successful, and too-clever-by-half. Tall poppy syndrome demands that they are brought down to size.

But this doesn’t stop the same people who make these comments encouraging their children to do law degrees, or being grateful when they receive expert legal advice.

Somewhere between these two extremes of negativity and positivity, are some assumptions about the contributions that lawyers bring to business life. The job that many commercial lawyers are asked to do, is to identify, point out and help manage business risks, particularly those that may have been missed by their more enthusiastic, “let’s just get the deal done” colleagues.

The traditional lawyer culture emphasises independence and integrity over being a team player. They are also often asked to act as “bad cop” in negotiations, leaving their business colleagues to play Mr Nice. The cumulative effect of these roles and attitudes can be to leave the less thoughtful of their colleagues with unfavourable opinions of lawyers.

IP Draughts is not looking for sympathy. This goes with the territory, and a good lawyer can help to mitigate, if not overcome, the prejudices of their colleagues through a combination of excellent service and a solutions-focussed approach.

All of which is a long-winded introduction to what IP Draughts really wants to discuss today. Since retiring from being chair of the IP Law Committee, he has been applying for other, part-time chairing roles. Recently he has received feedback on two of these applications in quick succession. In both cases, he was told that the appointing committee had decided that they didn’t want a lawyer for the role.

Why the h*** not? is IP Draughts’ first reaction. What is disqualifying about being a lawyer? His second thought is to wonder whether this is a gentle way of saying they didn’t want this particular lawyer. And his third thought is to revamp his CV to help the reader see why his varied experiences are relevant to non-legal chairing roles. If you would like to see this new CV, please let IP Draughts know.

But the question remains: do you have negative or positive views of lawyers in general when it comes to applications for non-legal roles? It is a while since this blog conducted a survey, so here goes:

3 Comments

Filed under Legal practice

Predatory behaviour by lawyers – IP aspects

The Solicitors’ Regulation Authority (SRA) is the regulatory body for solicitors (the profession of most lawyers) in England and Wales. It has recently updated its guidance to solicitors on Balancing Duties in Litigation, in light of the recent controversies over extreme non-disclosure agreements (NDAs).

While the guidance is directed primarily to litigators rather than transactional lawyers, and across all sectors rather than being focussed on IP, it is striking that several examples from the guidance are of direct relevance to those of us who advise on IP matters including transactions. Three areas in particular are worth noting:

  1. Predatory IP litigation
  2. Drafting aggressive and unenforceable terms in NDAs
  3. Taking advantage of unrepresented individuals

As the executive summary to the guidance document makes clear:

…although solicitors must advance their clients’ cases, they are not ’hired guns’ whose only duty is to that client. They also owe duties to the courts, third parties and to the public interest.

This is a welcome change of emphasis from the SRA, which in the past has seemed to downplay these duties in favour of an overriding obsession with the interests of “consumers”.

This blog article doesn’t seek to summarise the overall content of the guidance, but instead highlights some points that jumped out as particularly relevant to IP practitioners.

Predatory litigation

One of the examples of predatory litigation cited by the SRA is the action brought by ACS:Law against downloaders of porn. Letters were sent out to multiple parties, in each case alleging copyright infringement and demanding several hundred pounds to settle the case. Though the law firm is not named in the guidance, it is clear who the SRA has in mind as the guidance refers to “blackmail” and includes a footnote linking to the transcript of a House of Lords debate where this firm’s activities were discussed by name.

The guidance includes the following paragraphs:

Predatory litigation generally involves solicitors bringing large numbers of claims with limited investigation of their individual merits or of the underlying legal background. The idea is usually that the cost in time and money of proceedings, or the threat of public embarrassment, will lead to opponents settling cases that might have no real merit.

For example, a law firm might send letters of claim to large numbers of individuals alleging, on limited evidence, that they have breached the intellectual property of their client. The requested settlement is usually significantly lower than the potential cost of fighting the claim, which encourages people to settle the claim before it goes to court and without first seeking their own legal advice.

IP Draughts was challenged about the SRA’s effectiveness in this area, when he gave oral evidence to a House of Lords bill committee in relation to what became the Intellectual Property (Unjustified Threats) Act 2017. His off-the-cuff, unprepared response was that there will always be outliers who break the rules, and it was better to deal with them in a regulated environment than an unregulated environment. He acknowledged that the SRA was like an oil tanker, taking a long time to change direction, but it did eventually take action against ACL:Law and its principal, striking them off the roll of solicitors.

Now the SRA has gone further and provided specific guidance to solicitors about this type of behaviour. Most IP lawyers that IP Draughts’ knows wouldn’t dream of behaving like ACS:Law but there are outliers in any profession, and the guidance is welcome.

Unenforceable terms in NDAs

The Harvey Weinstein case involving a UK member of staff was the subject of much press comment, and lawyers from the English law firms involved were hauled before a Parliamentary committee to explain their actions. Some of the details of that case were, to IP Draughts’ mind, extraordinary, including that a party was not allowed to retain a copy of an NDA that they had signed.

The SRA guidance on this subject includes the following statements:

The role of solicitors in drafting NDAs in relation to allegations of harassment has received public and political attention.4 This attention will continue. There are legitimate uses for these agreements, but solicitors must make sure that they do not draw up clauses that go beyond what is necessary to settle the claim. They must not threaten consequences that cannot legally be enforced. In particular, solicitors must not seek to prevent anyone from reporting offences or co-operating with a criminal investigation and other legal processes, including influencing the evidence they give. They must also not prevent someone who has signed an NDA from keeping a copy of the agreement.

There have also been allegations of employers threatening to give a hostile reference or otherwise to penalise a victim if they do not agree to sign an NDA.5 Other victims have reported being given the impression by the solicitor that they would be imprisoned if they did not comply with the NDA.6 People that have experienced some form of harassment might be vulnerable, in part because of the harassment itself. Solicitors need to consider this when communicating with them and when drafting an NDA.

The document cross-refers to a more specific guidance document on NDAs from the SRA.

Unrepresented individuals

When dealing with a party that is not legally represented, a solicitor should not “take advantage”. The only situation where IP Draughts comes across this on a fairly regular basis is where a university client is negotiating an IP transaction with an individual such as an academic who is forming a spin-out company to exploit IP. Sometimes, the academic does not take their own legal advice on the terms they are being asked to agree to, and IP Draughts recommends recording in writing, eg in an email to that person, that (a) the law firm is acting for the university alone (if that is the case), (b) neither the law firm nor the university is providing legal advice to that person in a personal capacity, and (c) they should consider obtaining their own legal advice.

The SRA’s advice in this area includes the following comments:

In advancing a client’s interests, solicitors must be careful not to take unfair advantage of the opponent or other third parties such as witnesses. Special care is needed where the opponent is unrepresented or vulnerable. Solicitors will need to consider this duty in all cases, but particularly when faced with a party showing a simple lack of legal knowledge or obvious procedural misunderstandings.

There can be a fine line between proper defence of the client’s interest and taking unfair advantage of others, usually highlighted by any form of deceit or misinformation.

Indicative behaviour 11.7 in the Code of Conduct highlights that taking unfair advantage of an unrepresented party’s lack of legal knowledge shows a failure to comply with duties to others. Special care should be taken when corresponding with lay or vulnerable opponents not to take advantage or use language that might intimidate them.8 Regulatory breaches can arise from any oppressive or domineering tactics, regardless of whether misleading information is included. These tactics include:

  • overbearing threats of claims or poor outcomes
  • legalistic letters to minors or others who might be vulnerable
  • threats of litigation where no legal claim arises
  • claims of highly exaggerated adverse consequences.

From memory, this is not the only guidance that the SRA gives on dealing with unrepresented parties, but the above is focussed on the specifics of litigation.

Conclusions

Some clients hire a large legal team

The bottom line is that an English solicitor is not supposed to go out “all guns blazing” in pursuit of their client’s interests, if this would result in a breach of the solicitor’s other professional duties. Care is needed, particularly with vulnerable or unrepresented individuals. Although the SRA’s guidance is primarily concerned with litigation, it may also affect those of us who draft IP agreements and are regulated by the SRA. IP Draughts expects that the other regulators of UK IP professionals, including the Bar Council and IPReg, would follow a similar line to the SRA.

Some clients will be disappointed with this approach, and see it as “pulling your punches”. They may prefer the US approach where attorneys are expected to represent their clients in a “zealous” manner.

Leave a comment

Filed under Confidentiality, Contract drafting, Employment, Intellectual Property, Legal practice

Turgid EU documents and Hollywood actresses

This week’s blog posting will be relatively short. IP Draughts is recovering from reading a long, turgid document issued in Brussels. No, not the draft withdrawal agreement in relation to Brexit, though readers with insomnia may want to take a look at Articles 54-61 of that document, which concern IP issues.  The IP terms seem largely as expected. IP rights in existence at the date of Brexit and covering both the UK and the rest of the EU will continue, in some cases by the creation of new UK rights to mirror the existing EU rights.

Of course, this agreement is mostly concerned with the mechanics of how the UK will disentangle itself from the EU, and not about the future trading relationship between the UK and EU – to be covered in a separate agreement, yet to be negotiated. IP Draughts is more interested in what this future agreement will say about new IP rights coming into existence after Brexit, including whether the UK will be able to participate in EU IP systems.

In fact, the document that IP Draughts has been trying to read is the 2017 EU Regulation on medical devices (and its equally-weighty companion Regulation on in vitro medical devices). He is scratching his head trying to decide how to summarise this 194-page document into useful, bite-sized information for the busy technology transfer managers. If you have any suggestions, please let IP Draughts know.

Claim 3 is ridiculous, darling…

On a separate and perhaps less weighty topic, IP Draughts is wondering about the overlap between patents and Hollywood actresses. We all know about the inventive exploits of Hedy Lamarr, who invented and patented a spread spectrum technology that was later used to encrypt military communications. Today, IP Draughts stumbled across another connection. It seems that Bette Davis’s father, Harlow Morrell Davis, was a leading US patent attorney. Do readers have any other names to add to this rather short list?

4 Comments

Filed under Intellectual Property, Legal practice

IP lawyers for start-ups

In an interesting article on LinkedIn, US-based patent adviser Jackie Hutter considers the different types of patent attorney that she has worked with, on behalf of technology-based start-up companies. Her conclusion seems to be that many of the conventional types of patent attorney simply don’t provide value for money to smaller, entrepreneurial companies.

The types of attorney that she describes include:

  • the attorney in the blue-chip firm who prefers to deal with major clients and delegates work for the unprofitable start-up to an inexperienced associate
  • the attorney who treats all clients the same, has an “assembly line” approach to drafting patent applications and can’t adjust for the special needs of the entrepreneur
  • the attorney who is conservative and risk-averse in litigation strategy, and is not willing to shake things up with high-risk lawsuits that contain commercially-aggressive but legally-weak claims that a smaller company may need to bring large companies to the negotiating table
  • the attorney who has their own way of doing things and is used to dealing with the CEO or other senior management, and doesn’t take well to being asked to work in a different way or take instructions from an intermediary

IP Draughts’ experience is primarily with transactional IP rather than IP filing or litigation, but he recognises some of these types. He has dealt with the major firms that provide their services in a particular way, which may be suited to major companies and investors but unsuited to smaller companies. He has seen external lawyers who are quite open about by-passing the in-house legal team and speaking only to the CEO. He has been on the receiving end of lawyers who, when asked to do things differently, point out that they are experienced and know what they are doing. He has seen lawyers who wouldn’t dream of taking high-risk legal strategies for fear of prejudicing their reputation or that of their firm.

Now he comes to think of it, many of his experiences of the above behaviour come from the same firm, which some people consider to be the best commercial law firm in London.

Part of the problem for smaller companies is the unusual, and potentially contradictory, mix of their requirements. IP is a specialist subject, and the lawyer needs to have high technical standards. IP Draughts would say that this is an essential first quality – without technical expertise, the IP lawyer is nothing.

At the same time, the entrepreneur may want their adviser to be street-wise, flexible, pushing the boundaries, able to think into the mind of the enterpreneur, and not charge too much.

Many of the technically-good IP lawyers that IP Draughts encounters are conservative, academic, and have no background in small business. Reputation is important to them, and this may make them risk-adverse rather than risk being criticised by their peers.

They may find it easier, temperamentally, to work with major companies and with academic institutions. It probably doesn’t come naturally to them to put themselves in the shoes of the entrepreneur.

And, naturally, they expect to be well paid for their specialist services. If there is a choice between working for a large client that doesn’t query the bills, and a smaller one that needs more time-consuming hand-holding and can’t afford “City rates”, it is understandable that many choose the former rather than the latter.

IP Draughts is fortunate to have grown up in a family that ran several small businesses, so he finds it easier to work with entrepreneurs than some people might. But he can see the issue from both sides – smaller companies can be much harder work than large companies.

Much of his career has been spent working for intelligent clients who know what they want from their advisers, and don’t subscribe to the maxim “no one got fired for choosing IBM” or its legal equivalent. But there are many companies who take comfort from a blue chip name. Sometimes, hiring the big-name law firm is the right thing to do. But sometimes, it ain’t.

 

Leave a comment

Filed under Intellectual Property, Legal practice