Category Archives: Legal practice

Finding an overseas lawyer

This blog recently mentioned the network of high-quality, overseas lawyers that IP Draughts has built up over many years. It is with mixed feelings that he announces that his network reduced by one yesterday.

Eric Runesson, who first provided Swedish-law comments on our book about biotech transactions over 10 years ago, has left private practice and therefore must be scratched from IP Draughts’ list. The reason he has left private practice is that he is taking up a position as a judge of the Swedish Supreme Court. Congratulations, Eric!

As one door closes, others open. Last Monday, IP Draughts was in Copenhagen, moderating a panel discussion on GDPR at the American Bar Association conference on life sciences. The discussion went well, and he was impressed by the quality of the panel members, namely:

  1. Holger Bielesz, an Austrian lawyer, mainly a commercial litigator, with the Vienna firm, Wolf Theiss.
  2. Christina Hultsch, a German national and US-qualified lawyer who practises at Porter Wright in Ohio. She has a life-sciences practice with an emphasis on regulatory and transactional matters.
  3. Susanne Kudsk, a Danish lawyer who works at the University of Aarhus and has been very busy helping Danish universities and hospitals with GDPR issues recently.
  4. Jorg Rehder, a dual-qualified US and German lawyer, now practising in Frankfurt, who previously lived and practised for many years in the USA. Jorg has an international transactional practice, in the course of which he has become knowledgeable about GDPR.
  5. Amie Taal, who runs her own consultancy in the UK, which advises companies on electronic data issues, including GDPR compliance programmes. She previously worked at Deutsche Bank in New York, so she is also familiar with US data privacy rules.

Finally, on the subject of people, IP Draughts is sad to be coming to the end of his 3-year term as chair of the IP Law Committee of the Law Society. He will miss working with the talented group of English IP lawyers who make up the committee. He has to retire under Law Society rules, which remind IP Draughts of the film, Logan’s Run.

The committee’s annual dinner last week was a de facto retirement party for IP Draughts. He was very touched to receive, as a retirement gift, a framed poster (or word cloud) of kind remarks by members of the committee about him. It is now hanging on the wall of his study.

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Lawyer rankings for IP transactions 2018

Your name is on the list

It’s that time of the year again, when the international rankings for patent lawyers, produced by IAM Patent 1000, are published.

IP Draughts’ firm makes submissions to IAM Patent 1000 and to Chambers Directory. These guides, together with the Legal 500, have some credibility and value, in IP Draughts’ view. They take up references from clients, and ask lawyers in the sector for their views on their peers and competitors. If IP Draughts were looking for a lawyer in another discipline or jurisdiction, he would use these guides to assist him to find someone. (Some of the other guides, he would simply ignore.)

He is delighted to see that the UK chapter of IAM 2018:

  • lists Anderson Law LLP as “highly recommended” for transactions (along with 5 very large and well-known firms);
  • lists Mark Anderson as “highly recommended” for transactions; and
  • lists Lisa Allebone PhD as “recommended” for transactions.

And describes Anderson Law as follows:

“Anderson law provides excellent support on contractual arrangements with third parties, including licence and shareholder agreements and consultancy and revenue-sharing contracts. Its service is very professional, with clear, prompt responses to all enquiries and excellent knowledge not only of the legal issues but also of the long-term commercial implications actions might have.” Name partner Mark Anderson is the go-to lawyer for entrepreneurs, start-ups, research institutes and private companies in the United Kingdom seeking top-notch transactional support. “A real thought leader,” he has three decades’ experience under his belt. His teammate Lisa Allebone has her fair share of fans; a seasoned pro at setting up spin-out companies for universities, life sciences is her favourite technological space.

It is also good to see that some of IP Draughts’ colleagues on his annual course on IP transactions, held at UCL Laws, are recommended in IAM, including:

  • Chris Shelley
  • Sally Shorthose
  • Matthew Warren
  • Mark Lubbock

On the international stage, it is good to see that some of IP Draughts’ fellow members of the BioLaw Europe referral network are listed in their country chapters of IAM, including:

  • Denis Schertenlieb (France)
  • Stefan Kohler (Switzerland)

And that some of the non-UK contributors to his looseleaf work, Drafting Agreements in the Biotechnology and Pharmaceutical Industries are recommended by IAM, including:

  • Pamela Cox (USA)
  • Christine Kanz (Germany)

If you are looking for an IP lawyer, we may be able to help you in the search.

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Making progress in the legal profession

In some ways, barristers have it easy. It may not seem like it, while you are slogging through the ranks. But there is a clear career path, if you are talented and hardworking, and want to follow it. You build up a practice. After 15 to 20 years, you become a Queen’s Counsel. After a few more years, you combine this with being a deputy High Court judge. In the IP field, you might also become a judge in one of the specialist tribunals, such as the Copyright Tribunal. Perhaps you take on the role of judge in the Intellectual Property Enterprise Court, as long as it is clearly understood by all concerned that this is not the end of your ambitions.

Eventually, if you want it, you become a judge in the High Court, and get the knighthood or damehood that goes with this role. If you still have energy and aptitude, you do this for a few years and demonstrate your growth in the role, before being promoted the Court of Appeal. At 70 you are forced to retire. What do you do next? Perhaps you become a professor of law, and help train the next generations of IP lawyers and judges.

In other words, there is a career path that will enable you to ‘grow’ professionally, but also provide variety and change every few years. For solicitors and patent attorneys, there is not the same sequence of well-established roles. For many, being made up to partner is an important stepping-stone. Perhaps at this point you settle into a long-term role with your firm, which ends only with your retirement. Other IP lawyers prefer to move every few years to a new firm, or to take the leap into industry. In some firms you may be forced to retire at 60, and have to find pastures new. At this point, some practitioners join a US law firm, where there appears to be less formal ageism. Others change career mid-stream. One noble soul, whom IP Draughts has known for over 30 years, recently became a science teacher in his 50s.

Several of the young lawyers that IP Draughts has interviewed for jobs over the years have commented on being content as long as they keep making progress. IP Draughts is not immune from this desire. He mentioned the point to David Greene last week. David has just been elected as Deputy Vice President of the Law Society of England and Wales (the national bar association for English solicitors), which means that in two years’ time he is very likely to become President. When IP Draughts started in practice, Presidents were typically awarded knighthoods, but this practice was abandoned in 1990, after the Law Society membership elected an ‘unclubbable’ radical to be President.

In response to IP Draughts’ expressed wish to find another role, David replied “we’re all the same”. In other words, we all want to keep making progress, whatever level we have reached. What does a Law Society President do after his term of office has concluded, if he doesn’t want to retire?

At a less exalted level, IP Draughts has to retire as Chair (and as a member) of the IP Law Committee of the Law Society this Summer. He has been a member since 2006. He would like to find another part-time position to fill the gap. He has other roles (eg he is co-chair of a PraxisAuril working group that will be seeking to develop a standard investment agreement for university spin-out companies) but none of the same intensity and seniority as the IP Law Committee.

He has applied, and been interviewed, for a couple of chairing roles with public bodies. Although unsuccessful, the process has scraped some of the rust from IP Draughts’ interview technique.

If you are in a position to recommend a part-used IP lawyer in his late 50s for a senior role, please would you do so? Skills that the candidate believes he has include:

  • legal and commercial skills and experience
  • planning, designing, creative thinking, long-term thinking
  • preparing, listening, explaining, moderating, mediating
  • independent-minded, but very willing to work as part of a team for a common purpose
  • chairing, organising and leading groups of talented, strong-minded professionals, building up trust
  • clear, well-structured, persuasive writing (eg of reports)

One role that IP Draughts would be interested in is the Law Commissioner for commercial law. But there isn’t currently a vacancy, and anyway the role is full-time, which wouldn’t suit him for the next few years as he wants to continue running Anderson Law. And no doubt there will be plenty of talented candidates when a vacancy does arise.

The ‘tap on the shoulder’ or ‘quiet word in your ear’ technique has been discredited, sometimes wrongly in IP Draughts’ view, as a method of recruitment. Everyone has to go through an application and interview process. But even so, a favourable word might just help…

 

 

 

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G-whizz. Wake me up after May 25!

At this year’s UCL course on IP Transactions, many of the speakers commented to IP Draughts about how busy they were, advising clients on the EU General Data Protection Regulation (GDPR), which is due to come into force later this month. Except for one lucky speaker who said that her firm had a separate department dealing with such matters.

For many IP lawyers, it seems to go with the territory to advise on data protection issues. Perhaps it is because they are really IT and IP lawyers, and GDPR is part of the regulatory regime that protects the “I” part of IT. Or perhaps because they are EU laws, and who better than an IP lawyer to advise on EU laws, when most of the IP laws in the UK are at least tinged with EU influence, even if they are not directly derived from EU legislation.

IP Draughts is not immune from this trend, and has recently been the partner-in-charge of several GDPR projects, advising clients on compliance with the new regime, or revising contracts to take account of the new law. Fortunately we have some GDPR gurus within the firm, so that IP Draughts can be “young Mr Grace”, wheeled out as a figurehead, but sometimes a bit redundant when the detailed discussion starts.

He has picked up enough on the subject to recognise the issues that seem to come up time and again. This is fortunate, as he has agreed to be the moderator of a panel discussion on data protection at an American Bar Association conference in Copenhagen in June.

IP Draughts would appreciate your help, dear reader, in putting together a list of incisive questions (or themes) to ask the panellists, who are a mixture of US and European lawyers and data protection managers. Here are some crude, general questions to get us going. Under the new regime:

  1. Is the definition of personal data broader than at present?
  2. Should organisations rely on consent, or another lawful basis for processing? Is consent less likely to be used under the new regime than it is at present?
  3. Are existing consents going to be sufficient to comply with the new law, or will we need to get fresh consents?
  4. Can you rely on more than one lawful basis of processing? Eg if you start off with consents, but the consents are not compliant, can you switch to another basis of lawful processing as a back-up?
  5. Is it realistic to suggest that employees can give consent freely to their employer? Won’t they feel pressurised to give consent and won’t this make the consent invalid under GDPR?
  6. Do we need to rewrite our privacy statements? Can we rely on small print on website terms and conditions, and if not how “in your face” do we need to be?
  7. If you make the right noises, and try to institute new processes to comply with GDPR, will that get you off the hook if the regulator knocks on your door, even if your processes are not, in fact, compliant? Is the sensible course to treat GDPR a bit like many companies treat health and safety issues – going through the motions, without conviction – until you see some case law that shows you exactly what you need to do?

Alas, poor [Y]! I knew him, [H]…

There are many more general questions, though they can only sensitise you to the issues, rather than show you how to comply.

Are these questions on the right lines for a panel discussion? Or should IP Draughts take a different approach? Assume that 60% of the people attending the conference are US lawyers and 40% European, and that some, perhaps many, of them will not have much clue about the subject.

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