Category Archives: News

Feedback

After a flurry of posts over the Christmas period, IP Draughts is feeling lazy, so will just note some feedback on recent posts.

First, his poll on whether Captain May should enter the neutral zone to rescue the Kobayashi Maru – an imperfect analogy for the current political dilemma over Brexit. The results are in:

  • 55% of readers who responded to the poll favour abandoning the Kobayashi Maru / Brexit. If this involves a mutiny against Captain May, so be it.
  • 10% think she should continue with her deal with the Klingons / European Commission.
  • 17% think she should go all-guns-blazing into the neutral zone / no-deal Brexit.
  • 17% favour other solutions (with no single theme emerging, as far as IP Draughts can tell).

Readers of this blog may not be entirely representative of the country as a whole. The above figures add up to 99% due to rounding.

Next, you heard it first from IP Draughts. A week after his post on the legal aid solicitor who was ordered to pay back £22 million to the Legal Aid Fund, the national press has finally picked up the story and adorned it with colourful details about the central character, Mr Blavo. See, for example, these stories in the Times and the Daily Mail.

Finally, and again on the subject of polls, IP Draughts’ poll about unconscious bias against lawyers produced some interesting results.

  • 48% of people who responded thought many lawyers have highly relevant skills for chairing roles – a reassuring result for IP Draughts in his quest for an interesting chairing role.
  • 44% were neutral on the subject – they thought it depended on the individual. That kind of objective, analytical stance is also welcomed.
  • 6% were sceptical about lawyers as chairs of committees and boards.
  • 2% (1 person) had another answer, namely “Should make no difference, diffent people bring different skills.” IP Draughts is inclined to add this result to the “neutral” response mentioned above.

While the results sound very sensible to IP Draughts, he is conscious that the readership of this blog may have a different approach to some of the appointing bodies for chairing roles.

Best wishes for 2019 to all of IP Draughts’ readers, whatever their views.

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Not much for IP in New Year Honours

The UK’s New Year’s Honours List for 2019 is published today. There are slim pickings for lawyers (other than those involved in “law and order”, i.e. the criminal justice system), and even slimmer pickings for IP lawyers.

The closest that IP Draughts was able to find to a bona fide IP specialist was David Gareth Watts, who has been awarded an MBE. The citation states that he is a business analyst at the UK Intellectual Property Office, and his contribution is summarised as “For services to the Economy, charity and Mental Health Services”. (What is it with the random distribution of capital letters?)

Congratulations to Mr Watts. The citation indicates that his contribution is wider than IP. IP Draughts has not been able to find much else about him. His LinkedIn profile (if IP Draughts has found the right one) is very brief.

Has IP Draughts missed anyone? He wondered about mentioning the knighthood for Professor Jonathan Montgomery, Professor of Healthcare Law at UCL, but it is rather a stretch; the prof is interested in ethics and regulation rather than IP.

IP Draughts acknowledges that there are many other areas of public life where contributions deserve to be recognised, and that IP law is a small part of the picture. But this field of law contributes significantly to the UK economy. The honours system is happy to recognise contributions to business from dozens of people whose jobs are as varied as florists and civil servants.  There are even a few entrepreneurs in technology-based fields, eg Stephen Coleman, CEO of Codebase, who has been awarded an OBE for “services to Technology Entrepreneurship”.

In a list with around 1,150 names, it is disappointing that there aren’t a few more names from the field of intellectual property law.

 

 

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Writing legal textbooks

IP Draughts is currently editing the 4th edition of his book, Technology Transfer. He hopes the publication date will be in about 4 months’ time.

In front of him is chapter 9, on personal property law. Although the content of this chapter has been extensively updated since the first edition was written about 25 years ago, parts of it remain unaltered since then.  Also written around that time was an article for the European Intellectual Property Review, on the subject of applying traditional property laws to IP transactions. It can be found at [1995] EIPR 236.

Most of IP Draughts’ writing has received very little feedback from readers. There has been a steady increase in sales over the years, and he has been asked to write more books, which provides a kind of feedback. People have told him they have his “book” on their shelves (which often means the red book, on Technology Transfer), and they were usually smiling rather than frowning when they did so. In fact, IP Draughts is responsible for several books, whose continued updating depends to a significant extent on the efforts of IP Draughts’ regular co-author and Anderson Law consultant, Victor Warner.

But there has been very little feedback about the detailed content of any book. No-one has said, you are on the right lines with that idea, or I thought you misunderstood the law on such-and-such. It is a little different with articles. Several people put him straight on early drafts of his article on FRAND licensing, and the content was greatly improved as a result. And some readers of this blog provide welcome reactions to the short articles contained here.

The chapter that he is currently editing mentions the statutory warranties that are implied into a transfer of property when the transfer is stated to be made “with full title guarantee”. For the last several years in his teaching, IP Draughts has pointed out that these provisions raise a number of legal and commercial practice issues, including:

  1. Property statute. Under section 1 of the Law of Property (Miscellaneous Provisions Act 1994, these warranties arise on a “disposition of property”, and property is defined for this purpose as including “a thing in action, and any interest in real or personal property”.
  2. IP statutes. Various UK IP statutes, discussed in the chapter, state that the type of IP under consideration is personal property.
  3. Application to UK IP assignments. Therefore, the implied warranties would apply to an assignment of IP. IP Draughts wonders whether they would apply (assuming the words “with full title guarantee” are used in the assignment): (a) to IP registered outside the UK in an assignment stated to be governed by the laws of England and Wales, or (b) to an assignment of UK IP that is stated to be governed by a law other than that of England and Wales. Then there is the question of actions brought in other parts of the UK, eg Scotland, which have their own property laws. The more one thinks about this subject, the more questions arise. Although the property law provisions mentioned in this chapter apply to personal as well as real property (the latter consisting of land and buildings), one senses that the focus of the drafter is on real property existing in England and Wales, which by its nature cannot exist outside the jurisdiction. Perhaps this is why the obscure issues that IP Draughts is raising have not been addressed explicitly in this legislation. Better lawyers than IP Draughts may have the ability or patience to find out the answers from other parts of English law.
  4. Use of magic legal words. Of more practical importance, in IP Draughts’ mind, is why people use the magic words (full title guarantee) at all. He has found that many lawyers and patent attorneys, and most non-lawyers, are not aware that their presence in an IP assignment has any particular legal effect. In principle, he is against using words in a contract that have a legal significance that is not obvious to the typical reader. Sometimes, use of legal terminology may be almost inevitable, as where people use terms like indemnify or best endeavours. Or they may have only a vague idea of its meaning but draw comfort from familiar legal jargon, as with the phrase “time is of the essence”. But that is a larger subject for another day.
  5. Use of office templates. The answer to this question often lies in the use of law firm templates. Nowadays, many large commercial law firms in England have their own favoured template agreements. Often, those templates will include a formal assignment of IP. Often, the IP assignment template will use the phrase “with full title guarantee”. And often, commercial lawyers are reluctant to change wording that appears in their firm’s template, particularly if they are not sure why that wording is there.

Where the IP assignment forms part of a larger transaction, the parties may already have negotiated detailed IP warranties. In such cases, it may be inappropriate to introduce further or different warranties via the back door through the use of the phrase with full title guarantee. When IP Draughts has raised this subject with experienced IP lawyers outside negotiations (eg on his UCL course), they have usually agreed with his way of thinking. But that may have just been their way of getting him to stop talking about such an obscure subject.

If his writing has done nothing else, it has forced IP Draughts to think carefully about the subject on which he is writing. Perhaps legal textbooks are unlikely to prompt debate and reaction, and it requires more direct discussion of the issues (or litigation where economic interests are at stake) before people change their approach. But the writing provide a foundation on which ideas can be secured.

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IP Draughts’ table of tables 2018

It’s that time of the year again, when the nights are drawing in, and IP Draughts prepares his traditional table of UK IP transactional lawyers. As in previous years, this table simply identifies UK lawyers who appear on both the IAM Patent 1000 list of UK patent licensing lawyers and the Chambers Directory list of UK transactional life science lawyers (which was published earlier today).

This year, the following individuals make it on to the list:

Highly recommended in IAM Patent 1000, recommended in Chambers UK Life Sciences
Laura Anderson – Bristows LLP
Mark Anderson – Anderson Law LLP
Malcolm Bates – Taylor Wessing LLP
Patrick Duxbury – Gowling WLG
Daniel Pavin – Covington & Burling LLP
Chris Shelley – Penningtons Manches LLP
Sally Shorthose – Bird & Bird LLP
John Wilkinson – Cooley LLP

Recommended in IAM Patent 1000 and recommended in Chambers UK Life Sciences
Richard Binns – Simmons & Simmons LLP
Allistair Booth – Pinsent Masons
Alison Dennis – Fieldfisher LLP
Jim Ford – Allen & Overy LLP
Michael Gavey – Simmons & Simmons LLP
Mark A Lubbock – Ashurst
Nicola Maguire – Cooley LLP
Lucinda Osborne – Covington & Burling LLP

There are two new names compared with last year: Richard Binns and Allistair Booth (both of whom are leading practitioners and IP Draughts thinks they should be in this table). Stephen Reese of Clifford Chance has dropped off the IAM list so does not make it into the above table. Some other worthy licensing lawyers fail to make the table as they are not recognised life science specialists, including Matthew Warren of Bristows. And some, such as IP Draughts’ partner Lisa Allebone, have made the IAM list and are recommended as “up and coming” in the IP section of Chambers, but have not yet made the UK Life Science list.

Congratulations to all of you!

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