Another evergreen topic in this golden oldie- what does it mean in legal terms to own and assign know-how?
First scenario: late at night in the final stages of a corporate transaction. You are asked to produce IP-related documents for completion (closing). The documents are to include a know-how assignment. You look on your office computer system but can’t find a suitable template. What do you do? It may be tempting to use a patent assignment, deleting the word patent wherever it appears and replacing it with the word know-how. But is this good enough?
Second scenario: negotiation of a contract to perform R&D services. The customer requests that a clause be inserted in the contract stating that the customer owns the data produced in the course of performing those services.
In both cases, the required assignment/clause appears to be based on the premise that know-how or data is property that can be owned and transferred. Under English law, our understanding is that know-how and data are simply…
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Mr Pettifog’s partners continue to be traumatised by Brexit, so this golden oldie still has some relevance…
Last week’s partners’ tea was stressful. Mr Pettifog couldn’t stop gloating about the result of the referendum. Soon we will be released from the shackles of a jackbooted superstate, he said, mixing his metaphors.
He has been like this ever since he was strongly advised to withdraw his application to become a judge of the Unified Patent Court. He did so, to avoid public embarrassment. But he hasn’t forgiven the Dutch member of the appointments panel who is reported to have joked that Mr Pettifog had all the judicial qualities of Mr Justice Peter Smith and all the diplomatic skills of President Benoit Battistelli.
In fact, though he refuses to admit it, much of Mr Pettifog’s income depends on the UK remaining part of the European Union. His main client is an American patent troll called Randy Duke III, who regularly instructs him to write obnoxious letters to small businesses…
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This golden oldie has a timeless quality, and gives IP Draughts another excuse to use a manicule. (No, not manicure, mr predictive text.)
Lord Denning MR was arguably the most important English judge of the twentieth century. As first-year law students at university, IP Draughts and his fellow student, Andy Livesey, sent Lord Denning a telegram to congratulate him on his 81st birthday, and received a very nice letter in reply.
In the area of contract drafting, one of the more striking of Lord Denning’s judicial comments was about the need for a “red hand” in the margin of a contract, to point to a one-sided contract term. This comment was made, obiter dictum, in the case of J Spurling Ltd v Bradshaw EWCA Civ 3. What he actually said was:
I quite agree that the more unreasonable a clause is, the greater the notice which must be given of it. Some clauses which I have seen would need to be printed in red ink on the face of…
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This evergreen blog posting discusses interpretation clauses – why are they so extensive and prominent in City law firm templates?
Many contracts have them. The clause that informs the reader that the singular includes the plural, the masculine embraces the feminine, and similar nonsense. Some lawyers like to put these provisions ‘front and centre’ in the contract, immediately after the definitions, in clause 1.2.
It has always amazed IP Draughts that lawyers would want to make these turgid provisions so prominent. His instinct is to hide them at the back of the contract, if he includes them at all. Putting them at the beginning forces the reader wade through them before they get to the heart of the contract. It feels like the drafter is showing off their legal expertise, signalling that contracts need formulaic legal language, which only lawyers can fully understand.
To illustrate the point, IP Draughts has reproduced below some clauses from the first contract he found in his files. The contract was drafted by a well-known…
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