Category Archives: News

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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Stallone praises London IP Crime Unit

expendables3Celebrity endorsements are nothing new. Mr Pettifog is fond of telling us all that his Great Uncle, Adolphus Pettifog, earned ten guineas for providing a quotation to the Carbolic Smoke Ball Company, which read “I found the Carbolic Smoke Ball most efficacious for treating my piles”.  Thus, the first public proof of the Pettifog family’s skill at blowing smoke… But enough of that.

In IP Draughts’ copy of The Times this weekend, a report that Hollywood legend Sylvester Stallone has thanked the UK’s Intellectual Property Crime Unit for arresting a Yorkshireman on suspicion of leaking Stallone’s latest cinematic oeuvre, Expendables 3, to internet streaming sites. Sly is reported to have said:

I’d like to thank the Police Intellectual Property Crime Unit at the City of London Police for working with US Homeland Security Investigations to apprehend the suspect. It is important to protect the rights of creatives around the world.

city of london policeIP Draughts applauds Mr Stallone for his comments. For those of you who are not au fait with the IP Crime Unit, it was set up in 2013 with funding from the UK Intellectual Property Office. Its 20-strong team of detectives, analysts and researchers forms part of the City of London Police, a small police force that should not be confused with the Metropolitan Police.

Although not reported by The Times, it appears from the Crime Unit’s website that its very own Detective Inspector Mike Dodge also commented on this successful operation. He said:

Today’s operation demonstrates the international remit of the Police Intellectual Property Crime Unit (PIPCU). PIPCU has a remit to protect the UK’s creative industries but we are also committed to ensuring the UK is not a safe haven for criminals seeking to attack international businesses from our shores.

…PIPCU is coming down hard on criminals exploiting intellectual property for their own financial gain and today’s action should serve as a warning to online pirates.

As a Lancastrian by birth, it would be very wrong of IP Draughts to make comments about the piratical tendencies of Yorkshiremen, particularly after the Law Society was good enough to pay for his recent diversity training. So, let’s just leave it at that.

IP Draughts wonders whether the UK IPO might capitalise on the goodwill shown by Mr Stallone, and ask him to encourage his fellow stars in Expendables 3 to support the UK IPO’s activities by starring in films with an IP theme? Could Mr Schwarzenegger be persuaded to star in a new film, The Trollenator, in which he plays a ruthless non-practising entity from a future world?  Or could Mel Gibson be enticed to play the role of a heroic trade mark attorney living in a distopian world, in Mad Marks?

 

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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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Slim pickings for IP in the New Year Honours

downing streetGovernments claim to be interested in intellectual property, but their interest in sporadic. Sometimes, the interest is aligned with a greater commercial or political interest, such as protecting and promoting the national economy. This blog never tires of praising the Prime Minister, David Cameron, for personally negotiating to have the UK as the location for the life science part of the central division of the unified patent court. This is a rare example of political capital being used at the highest level to further an IP-related national interest.

At other times, the UK Government’s interest in IP seems all fur coat and no drawers. Every New Year’s Day, the Queen, on the advice of the Prime Minister, makes awards to people who have contributed to Britain. Sometimes, a few people from the IP world are honoured.

In passing, we should recognise that not everyone thinks the honours system has merit. For some, it smacks of an outdated, cosy, “establishment” view of the world. Others dislike the hierarchical nature of the awards, with knighthoods for the toffs, and the lowly British Empire Medal for salf-of-the-earth types. There is a feeling that it honours mainly civil servants, donors of cash to bennettpolitical parties, and celebrities, none of whom “deserves” an award. Yet the system continues to be popular. In the words of the UK playwright and national treasure, Alan Bennett, in his play, An Englishman Abroad, “In England, you only have to be able to eat a boiled egg at ninety, and they think you deserve the Nobel Prize.” This quote, though it uses the example of a private, Scandinavian honour, sums up both the enthusiasm and the scepticism that Britons variously feel about the honours system.

The 2015 New Year’s Honours List names 1,164 award recipients. Searching the list for IP-related words sometimes reveals a clutch of interesting names. This year the pickings are slim.

A search of “intellectual property” produces just one name, Trevor Baylis, the inventor of the wind-up radio in the 1990s, and more recently the founder of a company that provides services to small-scale inventors. He received an award in 1997 and might not have expected another, classier one, in 2015. Is it impertinent of IP Draughts to mention that Mr Baylis is now aged 77?

Searches using terms such as “patent”, “copyright” and “technology” revealed nothing that caught IP Draughts’ eye.

Two other names in this year’s list attracted IP Draughts’ attention, though the awards were probably not IP-related. The first is the award of an MBE to Ralph Antony Smith for legal services to the British Embassy in Madrid, Spain. IP Draughts assumes this is the Ralph Smith with whom IP Draughts worked at Bristows over 20 years ago, and who now works in Spain; if so, congratulations Ralph! The citation doesn’t state whether the legal services provided to the embassy concern IP.

The second name that IP Draughts spotted was that of Philip Wood, formerly a prominent banking partner at the major London law firm, Allen & Overy, who receives a CBE. IP Draughts recalls seeing, in the late 1980s, a copy of an internal Allen & Overy document, prepared by Philip Wood, that provided drafting notes on a wide range of contract clauses. The notes were well ahead of their time (nothing like them existed then at Bristows), and helped to inspire IP Draughts to write several books on contract drafting issues.

Readers, have we missed anyone in this year’s list who should be mentioned?

Happy New Year, everyone!

 

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