10 to the power of 6 views of this blog!

thanks

“You are one in a million, One million to one, There isn’t your equal, Anywhere under the sun.”

Coinciding neatly with its tenth anniversary, this blog has today passed the milestone of one million views.

For a blog with a narrow focus, this feels like an achievement. 

We started in March 2011. Shortly afterwards, our firm converted to an LLP, and Paul Maclennan joined Mark as a partner. Lisa Allebone, who was then an associate, became a partner in 2014.

As this early article mentions, the blog was designed and built by our then new recruit, and trainee, AnnMarie Humphries. AnnMarie is nowadays a partner in the firm, as is Stephen Brett. Stephen joined at around the same time as AnnMarie did, and he has been the second most active contributor to this blog. He keeps promising some more articles. Promises, promises!

We have avoided adverts and paywalls, and used a free WordPress account.

Our three, most popular articles in the last decade have been:

this one on equitable remedies in confidentiality agreements;

this one on not making affiliates a party to an agreement; and

this one on 10 words and phrases to avoid in an IP agreement.

Lord Reith, the first Director General of the BBC, described its mission as being to inform, educate and entertain. We hope we have informed, educated and entertained our readers on the subject of IP contracts. We plan to continue doing so for the foreseeable future.

For a podcast of this article, see here.

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How to succeed if your face doesn’t fit

frownSome people seem born for success. They do well in exams, and are great at interviews. They often end up leading organisations.

Why are they successful? A crude way of putting it is to say that their face fits. The people who take decisions on hiring and promotion have an ideal in mind, and they are impressed by the qualities that this type of person shows.

As a society, we are starting to recognise that this approach is deeply flawed and unfair. Put simplistically, it favours the self-confident, white, male, gregarious, neurologically-mainstream conformist.

Organisations are being pushed and prodded to consider a more diverse range of candidates. Many employers are still at a very early stage in this process. It is a good start to consider the number of women and people of different cultural backgrounds that an organisation employs in senior positions. But it is only a start, and some organisations are not yet on solid ground on these criteria.

True diversity comes when recruiters are genuinely open-minded about the type of person they want for a role – when they see behind job-specific background and interview performance, and consider such factors as whether a person would bring different qualities, act in the best interests of the organisation, and be able to learn and improve. A good start in this process is to focus on a person’s strengths rather than their weaknesses. Of course, this involves looking at intangibles, which are not as easily measurable as whether someone is black or female.

In IP Draughts’ case, his route to success was starting his own firm. This enabled him to develop his career in his own way, without being judged against a narrow ideal. It also meant he could implement his own ideas on hiring criteria. Put simply, he tries to find people who meet a high threshold of competence and attitude, and have an engaging personality. That gets us to the shortlist. The successful candidate should also have a “superpower” – a positive quality that sets them apart, and which may well be different to the superpowers of other people in the firm.

He has started other initiatives. The annual UCL IP Transactions course has now been running for 9 years. This blog is close to its 10th anniversary. When he starts things himself, he can be successful.

When it comes to other people’s initiatives, IP Draughts’ experience has been mixed. He has been grateful to have been invited to chair or be a director of several organisations. When he gets these opportunities, he has had good feedback on his performance.

But when he applies “cold” to organisations that he thinks he could make a good contribution to, he has been spectacularly unsuccessful. His most recent application was to be a non-executive director of UK Research and Innovation, a public body which funds UK research. He thought he could bring a different and valuable perspective to this role, as well as 35 years’ experience working with the beneficiaries of UKRI funding. This week, he received a standard letter which included the following deadly lines:

“We received a very large number of exceptionally high-quality applications, and given the need to cover a wide range of sectors and disciplines, and bearing in mind the overall composition of the board, regrettably on this occasion you were not shortlisted.”

IP Draughts has had similar letters from other public bodies. He is coming to the conclusion that he is wasting his time with applications of this kind. He needs to be patient, and wait for people to approach him.

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Podcast of this article here.

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Long contracts will cause the heat death of commerce – revisited

IP Draughts was recently given the opportunity to have one of his blog articles turned into a podcast. When an experiment fails, try again. This time, he hopes to improve the listener’s experience, with a different topic and crisper writing.

There is a theory, attributed to the nineteenth-century scientist Lord Kelvin, that the increasing entropy of the universe will eventually lead to its heat death.

IP Draughts is currently researching a new theory of commerce: that the increasing length of contracts will eventually lead to the heat death of the business world. A time will come when all available energy for business activities is diverted into the negotiation of overly-complex contracts. The underlying business activities must inevitably cease, modern civilisation will freeze, and we will revert to an agrarian economy in which concepts such as intellectual property become meaningless.

On IP Draughts’ desk is a draft publishing agreement. It is for the fourth edition of one of his books. His contact at the publishing house has helpfully highlighted changes to the language since the third edition. According to a word count, the new contract will comprise nearly six thousand words, twice the length of the previous version.

IP Draughts wonders how often parties litigate publishing contracts for legal texts. The small sums of money at stake make litigation seem unlikely. So why does a publisher feel the need to more than double the length of the contract, and in the process incorporate aggressively one-sided terms?

Could it be that the publisher is now employing in-house lawyers, who are asked to review the company’s existing contracts? And that many lawyers, if not given clear direction and instructions, will tend to add clauses to protect their client’s interests, leaving it to commercial colleagues to decide whether the balance of the document is appropriate? And that many clients are not that interested in contracts, and will tend to follow their lawyer’s protective recommendations?

IP Draughts has no information on whether this has happened in the present case. He does, however, recall another legal publisher who presented a contract to him recently. They had also revised their standard contract. In that case, they had taken a policy decision to simplify their template and make it more even-handed. IP Draughts knows which publisher he is more inclined to contact with new projects.

Someone once said that to understand all is to forgive all. (The internet is divided as to whether the first author of this piece of wisdom was Voltaire, Madame de Staël or Evelyn Waugh.)

Viewed as a paper exercise, and from the perspective of protecting the publisher, one can understand the motivation behind many of the revisions in the current draft contract. But do the revisions result in a better contract? Consider the following example. First, the previous wording.

If in the Publisher’s view the Work as delivered requires amendment to become acceptable they shall give the Author the opportunity to make such amendments. If the Author is unable or unwilling to do the work him/herself …

And now the new version.

If in the Publisher’s sole view the Work as delivered is not professionally competent and/or does not conform in nature, scope, length, format and style to the specifications agreed with the Publisher and/or with any synopsis or proposal or other material upon which the Work was commissioned or acquired and/or does not comply with the warranties given to the Publisher hereunder the Publisher shall give the Author the opportunity to make such amendments or to make arrangements for this to be done at the Author’s sole expense. If the Author is unable or unwilling to do the work him/herself …

Usually, IP Draughts is a hired hand, reviewing contract terms for someone else who takes the commercial decision on what is acceptable. In this case, he is the principal, and he strongly dislikes being asked to sign a contract that is more than twice the length of the previous version, contains many provisions that worsen his contractual rights and obligations, and contains indigestible prose.

Podcast can be heard here.

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IP transactions: a complex legal framework

Seeing the recent review of IP Draughts’ flagship book, Technology Transfer, has reminded IP Draughts of the unusual mix of laws that affect IP transactions. The book is unique in focussing on those laws and discussing their application to IP-related agreements.

They include:

  • IP laws: a limited number of provisions in IP legislation affect IP agreements. They cover issues such as how to assign, license or charge IP, whether a licensee may sub-license, and the rights and obligations of joint owners. Unfortunately, these provisions are not entirely consistent between IP types. They focus on only a small selection of the legal issues that arise in IP transactions. Chapters 3-8 of the book consider these topics.
  • Contract laws: a very small number of provisions in contract laws are directly concerned with IP issues. See, for example, the implied warranty of quiet possession under section 12 of the Sale of Goods Act 1979, which has been held to be breached when a purchaser of a product is sued for IP infringement. See also the exception in Schedule 1 to the Unfair Contract Terms Act 1977; this states that sections 2 and 3 of that Act do not apply to “any contract so far as it relates to the creation or transfer of a right or interest in any patent, trade mark, copyright or design right, registered design, technical or commercial information or other intellectual property, or relates to the termination of any such right or interest”. On a separate contract law theme, the number of cases on the interpretation of IP contracts has grown in recent years. But the number is still small compared with traditional areas of commercial law such as shipping and insurance. Chapter 10 considers these and other contract law topics.
  • Property laws: IP is within the broad category of personal property. Personal property laws will usually apply to IP transactions unless overriden by specific IP laws. For example, to understand fully the nature of co-ownership of IP, it is useful to consider the difference between joint ownership and ownership in common under English law. Or, consider section 2 of the Law of Property (Miscellaneous Provisions) Act 1994. Under this section, certain warranties and obligations are automatically introduced when property is transferred “with full title guarantee”. These provisions apply to assignments of IP. Chapter 9 of the book considers these and other aspects of traditional property law that affect IP transactions.
  • Competition laws: UK and EU competition laws affect the terms that may be included in an IP agreement. Parties to IP agreements often try to fit within an EU block exemption regulation, such as the Technology Transfer Regulation. Chapters 12-15 consider these topics.
  • Tax laws: Payments made under IP agreements may be subject to various types of tax obligation. These include VAT, withholding of corporation tax, and (in some jurisdictions) stamp duty. In some cases the tax rules for IP transactions differ from those for general trading activities. The drafter of an IP agreement may wish to address the parties obligations to deal with tax issues. Chapter 17 of the book provides a brief, non-specialist overview of this subject.

An expert drafter and negotiator of IP agreements will have sufficient awareness of these and other legal issues to ensure that they can issue-spot when a point comes up that may have legal implications.

And, of course, the points mentioned above are concerned only with English law. Different issues may arise if the agreement is made under a law other than English law.

IP Draughts is keen to see an international code for IP agreements, similar in concept to the UN Convention on Contracts for the International Sale of Goods. If such a code were developed, parties could rely on it to provide a default set of legal rules for IP transactions, rather than the incomplete and inconsistent patchwork of national laws that exists at present.

IP Draughts has had preliminary discussions on the idea of developing an international code with UN officials and with Professor Jacques de Werra of the University of Geneva’s Faculty of Laws. But there has been no recent progress. If any reader can help with the diplomacy of interesting UN agencies (WIPO, WTO, and others) in pursuing an international initiative of this kind, he would be very interested to hear from them.

PS WordPress/Anchor offered to turn this article into a podcast. After playing with the settings, IP Draughts uploaded it, and it can be found here. Some of the sentences are far too long to be read out, and perhaps too long for the written version too. IP Draughts has since edited the text above!

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