Category Archives: Legal practice

League table of UK transactional IP lawyers 2016

leagueFor the fourth year in a row, IP Draughts presents his annual table of tables, which lists transactional IP lawyers who are recommended in both IAM Patent 1000 and Chambers Directory. The latter was published today.

In IP Draughts’ view, this super-table is a crude but useful way of identifying most of the leading UK practitioners in the field of IP transactions. As Chambers does not specifically recommend UK transactional IP lawyers (as distinct from IP lawyers generally, and then only on a regional basis), its closest available listing is the UK national listing of transactional life science lawyers.  Although not perfect, and having a life science bias, the resulting list feels mostly right.

The 20 lawyers who feature on both lists in Autumn 2015 are as follows:

Laura Anderson – Bristows
Mark Anderson – Anderson Law
Malcolm Bates – Taylor Wessing
Richard Binns – Simmons & Simmons
Allistair Booth – Pinsent Masons
Alison Dennis – Fieldfisher
Patrick Duxbury – Wragge Lawrence Graham & Co
Jim Ford – Allen & Overy
Michael Gavey – Simmons & Simmons
Sarah Hanson – CMS Cameron McKenna
Gary Howes – Fasken Martineau
Mark A Lubbock – Ashurst
Nicola Maguire – Reed Smith
Lucinda Osborne – Covington & Burling
Daniel Pavin – Covington & Burling
Stephen Reese – Olswang
Chris Shelley – Penningtons Manches
Sally Shorthose – Bird & Bird
Julian Thurston – Baker & McKenzie
John Wilkinson – Reed Smith

Congratulations to all of you!

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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.



Filed under Intellectual Property, Legal policy, Legal practice

Protecting the public from non-lawyers

office1According to popular culture, and therefore according to populist politicians, lawyers use their privileged position to charge too much and do too little. They provide their services in an old-fashioned way that is out of step with the service methods of banks, department stores, airlines, holiday companies and other mass-market providers. They are also too clever by half –  a particularly British, social sin. This negative feeling seems to operate mainly at the group level. Ask someone to comment on the service that their lawyer provides, and a more appreciative response is often given.

Prejudice against gender, race, religion or age is now outlawed. Prejudice against professions ticks no forbidden box. It is not only lawyers who are disparaged. Other professions, including doctors and teachers, are fair game for public hostility. This leads politicians to chip away at the the legal mechanisms that protect and promote professional services. Why do you need a lawyer to sell your house, when any Tom, Dick or Harriet could do it? Let them do it, and let them call themselves lawyers, it doesn’t harm anyone except overpriced solicitors.

Making these comments almost invites a sarcastic response. Another strand of popular sentiment is that well-paid professionals can look after themselves. Perhaps they can, but consumers of professional services can’t, and they are the ones that need protection.

The public benefits from having highly-regulated professions, and from laws that control the performance of professional activities, whether it be cosmetic surgery or investing people’s money. But who will point this out and stand up for the professions when they are under attack from politicians? If professionals do so, their comments are dismissed as the product of self-interest.

financial adviserThese gloomy thoughts are prompted by a letter that an elderly relative of IP Draughts received recently, on which IP Draughts’ advice was sought. The letter was written by a “financial adviser”. It offered to help this relative to create a “tenancy in common” of her house, and thereby avoid the house being compulsorily sold to pay local authority care home fees, if the relative needed to go into a care home in the future.  The adviser offered to charge a fixed fee for this work, and another fixed fee for creating a “mirror will” and trust to support the change of ownership.

This is not an area of law with which IP Draughts is familiar, but some Googling soon revealed the basic idea behind the proposal. In essence it is a scheme for ensuring that the surviving spouse, after the first spouse dies, can avoid selling their home to pay the care home fees. Apparently this works when the first spouse has set up a legal mechanism to ensure that their “half” of the property does not pass to the surviving spouse when they die. As a result the property cannot be sold, or is unlikely to have a market value.

For the benefit of readers who are not English lawyers, property can be jointly owned by two people in two different ways. The two ways are known as “joint tenancy” and “tenancy in common” and they have different legal consequences. When a joint tenant dies, the property automatically passes to the surviving owner. A tenancy in common passes in the deceased person’s will.

The scheme assumes that:

  • the spouses originally own the property as “joint tenants” (which many spouses do, including IP Draughts)
  • they convert their ownership to “tenancy in common”
  • the spouses do not pass their half-shares to each other in their wills but instead provide that they pass to someone else, eg trustees of a family trust
  • protection is sought from selling the house when the second spouse goes into a care home

IP Draughts was surprised that a financial adviser should be offering to transfer property, draft wills and create trusts, rather than directing the client to a solicitor. But she told IP Draughts’ relative that she has a law degree, so of course she understands these things.

severeHe was even more surprised by the letter, which appeared to be a modified version of a template letter. The template uses some pompous legal expressions like “sever the [joint] tenancy”, but because the writer doesn’t really understand what she is doing, phrases like “we will severe your tenancy” appear.

For several reasons, this scheme is unlikely to help IP Draughts’ relative:

  1. Her husband died many years ago, so it is too late to set up the scheme between husband and wife.
  2. She owns her property outright – there is no current joint tenancy.

If a solicitor offered garbage of this kind, they could be referred to the regulator – the SRA. They could be sued for negligence when the scheme doesn’t work, and they would have compulsory insurance that would cover any losses that might arise. Any competent solicitor would know that they have to check the client’s circumstances meticulously before offering a scheme of this kind. IP Draughts’ experience of local solicitors in the area where this relative lives is that they tend to err on the side of caution.

When a “financial adviser” dabbles in a subject that they don’t fully understand, and when they haven’t checked the facts properly before offering a service, who knows whether the client will be fully protected.

Situations like this one need to be explained to politicians when they engage in periodic bouts of lawyer-bashing. Financial advisers should not be allowed to offer legal services. It hurts the consumer when they do so. Old-fashioned, slightly stuffy solicitors are much better protectors of consumer interests.

This example concerns consumer law, which is what politicians tend to understand. For those of us advising business clients, we may think that situations like this don’t directly affect us (except when our relatives suffer from them). But misguided de-regulation in the consumer arena tends to have effects that are felt across the professional spectrum.


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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!]



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