Ten things I have learnt recently…

…or been reminded of, by recent work experiences.

1. US clients are interested in the 2012 case, Oracle v UsedSoft, in which the Court of Justice of the European Union confirmed that a licensee of software, where the licence is for an unlimited period, has the right to sell their licence, and the purchaser can use the software, despite any terms in the licence agreement to the contrary. Result: much head scratching to understand exactly how far this case affects different models of software licensing.
2. The approach of French lawyers in relation to confidentiality of communications between lawyers is very different to that of English lawyers.  It seems that, in France, a lawyer may not copy to his client a letter that he has received from the other party’s lawyer.  Result: effective communication with one’s clients becomes unnecessarily difficult.
3. If there is a way of signing an agreement incorrectly, parties will find it, like moths attracted to a flame.  Last week, we received two originals of a contract that had been signed by the other party.  The signature blocks in the contract clearly indicated that the party’s signature should be witnessed.  The other party’s lawyer had designed the signature blocks.  But the other party signed without witnessing, and without the other party’s lawyer apparently noticing the omission when they sent us the agreements for signing.  Result: extra work.
4. Large US corporations that acquire UK companies sometimes use standard employment contracts for their UK employees that unthinkingly bolt together US practice with UK practice, and with no real attempt to take into account UK employment or IP laws.  Result: conflicting terms and contractual chaos.
5. When parties negotiate an 11,000 word Memorandum of Understanding without full legal input and then want the MOU to be converted into a full agreement, there is a lot of work involved in clarifying the parties’ intentions, removing inconsistencies and cleaning up the text.  Result: headaches and additional legal cost.
6. When international groups of companies involve a dedicated procurement department in the purchase of complex software, negotiations can become very protracted if the procurement department has no authority to agree anything and must refer all issues of substance to the operating company.  Result: slower negotiations and additional legal cost.
7. Work referrals from other professionals (eg firms of patent attorneys) can be very hit and miss.  Two recent projects from the same firm, involving different clients: the first went very smoothly and the client and intermediary were very pleased with our advice; the second, where the client didn’t know what they wanted, was a nightmare throughout and bills are outstanding six months after the work was done.
8. Lawyers and accountants based in tax havens have a vested interest in persuading a client to move their operations to the tax haven.  Much as one wants to trust other professionals, one also needs to keep a weather eye out for whether their advice is entirely impartial and in the client’s best interests.
9. Some UK tax barristers take an unhelpful approach in refusing to advise on whether a proposed move from the UK to a tax haven is workable under both English law and the law of the tax haven.  By limiting themselves to English law they are not providing a useful service and drive work to the big international firms of accountants.
10. Australian solicitors, at least in IP Draughts’ experience, are generally of a high standard.  Anderson Law is delighted that Mario Subramaniam joined the firm this month as an associate.  He graduated and initially qualified as a solicitor in Australia before requalifying as an English solicitor.

10 tips when applying for IP lawyer jobs

In two weeks’ time, Anderson Law will be welcoming its eleventh (lawyer) employee.  The first joined about 15 years ago.  Of the first ten, eight are still with our firm, although one of the eight (Paul) is now a partner with Mark, rather than an employee.

Most of these lawyers joined us after responding to job adverts.  In the last 15 years we have considered several hundred job applications.  This is small beer compared with the number of applications that large firms receive every year, but it has given us an insight into how some applicants spoil their chances by making very poor applications.

Employers have different priorities, so this article makes no claim to universal truth.  The wise applicant will try to make their application attractive to a range of employer preferences.  For example, IP Draughts cares not a hoot whether an applicant, in his application letter and CV, splits an infinitive or ends a sentence with a preposition, but he would recommend that applicants avoid these practices in case other employers care about them.

Below is a set of recommendations that is likely to be relevant to many IP employers, but not all. Some of these points may seem obvious.  They probably are obvious to any candidate who is good enough to be called for interview.  But it is just possible that there are candidates who are good but naive, and who disqualify themselves by making ill-considered applications.

1. Follow the instructions for making an application

Our instructions are simple.  Provide a CV, covering letter, and written answers to the legal questions that we have set.  We set questions because we think this is a more useful way of finding a suitable candidate than some of the other methods that we have encountered, such as psychological assessment.  (But in case you get an interview with another type of firm, have ready your answer to the following question: if you were an animal, what species would you be?  Unless you are very confident of your talents or your interviewer, IP Draughts suggests a nice safe answer like dolphin rather than something more eye-catching such as pit bull terrier or locust.)

It is remarkable how many applicants waste our time by not sending in any answers to our legal questions.  For example, when we were recruiting a trainee in 2010, we received 27 such incomplete applications out of a total of 75 applications, or 36% of the total.  Why do they bother?  Their applications are not considered.

2. Go through your application documents and make sure they are relevant to the application

If you are applying, say, to a small IP law firm in Oxfordshire, do not mention in your application letter that you want to work for a large employment law firm in Liverpool.  Obvious, innit?  The laziness and pointlessness of applications that do this type of thing is quite staggering.  For example, we received an application recently that said the following:

My intact motivation for applying to your firm; Firstly, I am greatly interested in the firm’s substantial corporate and commercial practice. The firm has a reputation for providing an excellent client focused service to the most of Britain and Overseas clients. This is particularly evident in the firm’s Immigration practice, an area I am very much interested in.

This is not an isolated example.  We will pass over the poor quality of English language and grammar in this quoted paragraph.  Presumably the applicant had previously applied to a firm that did immigration work, and used the same covering letter when applying to us.  A few minutes’ care would have enabled the applicant to avoid this fatal error.

3. Do your homework about the firm, the qualification criteria, and the area of practice

The applicants who impress are the ones who have done their homework on our firm, on IP practice, and (if relevant) on qualification criteria, and demonstrate their understanding in their application letter and at interview.  The ones who don’t impress are those that give the impression that they are desperate for any job and have no special interest in us as a firm, in IP law as an area of practice, or even any particular interest in practising as a lawyer in the UK.

In our last recruitment exercise, a few months ago, we put a job advert on LinkedIn.  This resulted in several applications from lawyers based outside the UK.  If you are going to apply for a job with a UK law firm, make sure you understand the process for qualifying as a UK lawyer, and the immigration rules, and make sure you have a convincing explanation as to why you want to work in the UK.  Otherwise, your prospective employer may gain the impression that you are desperate for any job; once this impression takes root, your application is almost certain to fail.

4. Tell me why you want to work for my firm

It is not enough to demonstrate an interest in IP law.  You need to tell me what it is about my firm that has prompted you to apply for the vacancy.  If you are called for interview, you should have some pertinent questions ready (see below), but you also need to demonstrate interest in the firm in your application letter.  This recent application letter (name changed to spare blushes) doesn’t cut it:

Dear Sirs,

 I attach a CV for the legal trainee position.

 I have good languages and a paralegal background.

 Many thanks

 Annie Duff-Applicant

Ideally there should be a sentence or two in the letter that shows why you really want to work for my firm.  To be convincing, it must be based on understanding what is distinctive about the firm.  There is plenty of information on the Anderson Law website that will help any applicant.

It doesn’t need to be over-worked.  The following statements (from two separate trainee applications) are simple but give an impression of thoughtfulness:

I would welcome the opportunity to continue my training and develop my skills with Anderson & Co who have particularly impressed me due to their technology-based client list and their specialism in Intellectual Property law.  I feel that being involved in this area would provide for an interesting and highly stimulating working environment.

Reviewing the firm’s recent transactions and large deals provided great insight into the work of the firm. I was particularly drawn to the firm’s work with universities and SMEs, both in the UK and on an international platform.

5. But keep the application letter simple and avoid empty sentiment

Avoid the over-use of adjectives about your personal qualities.  Avoid padding generally.  Stick to the key points, ie a brief overview of the following:

• Which job you are applying for
• Why you are applying – what makes you want this job over others
• What are your main qualifications and experience

Avoid this kind of waffle:

I am a strong candidate for this position as I am energetic, enthusiastic and committed when carrying out any task. Through time, my self confidence and ability to take on responsibility has grown, while still valuing the importance of team work.

Although the letter should be simply written, it should be a proper business letter, laid out in a conventional way, with the address of the sender and recipient, date, salutation, etc.  Even if you were not taught to write a business letter at school, it is easy enough to find templates on the internet.  Transposing email text into a Word document doesn’t make it a letter!

6. Provide information about your qualifications and employment history

Your CV should state your academic and professional qualifications, including names of institutions and grades, in date order.  Conveniently missing out grades that weren’t as good as hoped is likely to draw attention to the omission.

Don’t have any mysterious gaps of several years in your employment and academic history.  Again, this will draw attention to the omission.

7. Tell me what relevant experience you have, but be selective

At Anderson Law, we are interested in candidates’ commercial experience, as well as their legal and scientific qualifications.  But we are not interested in seeing several pages about holiday jobs, such as working behind the counter in a video rental shop.  Nor do we care too much about your gap year trip to South America.  Keep that stuff brief.

8. Don’t make unrealistic applications

This is the hardest part of this article to write.  Law is a competitive profession, and poor A level subjects and grades, poor choice of university, and poor grades at university and in the professional exams, all add up to giving a bad impression.  While we don’t automatically reject candidates based on degree grades, unlike (we are told) some firms, there needs to be an overall picture of someone who is academically gifted.

For example, two Cs at A level in non-traditional subjects, eg media studies and law, a 2.2 from a local university, and a pass grade in the LPC: this is not a bad set of accomplishments, but it is unlikely to impress sufficiently, given the competition from much more accomplished candidates.  If there is no other ‘stand out’ item in the CV, such as very relevant commercial or IP experience, an application of this kind is very unlikely to win an interview with our firm.

9. Proof-read your application documents

Application letters and CVs should be checked to ensure that they don’t contain spelling mistakes, major errors of grammar, formatting problems, changes in font size, redlining showing, or other careless errors.

10. Be prepared to ask good questions at interview

The key to this is preparation.  If you have read and understood the parts of our website that explain what our good points are, and what makes us different to other firms, you should be able to think up some questions that demonstrate your understanding and your desire to work for us.  Don’t, whatever you do, give us the impression that you really want to work for a large City firm and that you are slumming it, or taking out an insurance policy, by applying to a small firm in darkest Oxfordshire.

Good luck with your interviews!

International patent licensing rankings for 2013

Although no official announcement has been made, the 2013 edition of IAM Patent 1000 is now available online.  This international guide to patent lawyers is one of the very few whose rankings coincide fairly closely with IP Draughts’ impressions of the market leaders in this field; all credit is due to the researchers.

This year, two of the contributors to this blog feature in the UK rankings: Mark Anderson and Stephen Brett.  It is a double celebration for Stephen, who recently married and is about to come back from honeymoon.  Mark makes it into the “highly recommended” top tier category for IP licensing, one of only 6 UK lawyers to do so.

IAM’s encomium for Anderson Law LLP reads as follows:

A slew of satisfied clients enthuse about the “considered and prompt approach” of this small but perfectly formed group. It provides an “excellent service that considers legal and commercial implications – it competes with the big boys in terms of quality, but is frequently able to undercut them on price”. Mandates are received from both the business and research communities, with licence agreements, consultancy contracts and revenue-sharing contracts its bread and butter. The group’s illustrious founder Mark Anderson is “technically brilliant”; his exhaustive knowledge of IP licensing was recently recognised by the EPO, which commissioned him to prepare training materials on the subject. Fellow expert Stephen Brett concentrates his busy practice on commercialisation issues for universities and the NHS.

Thank you very much to all the clients who provided these references.  They are very gratifying.  Now we have to live up to them – we will do our best to do so!

While on the subject of legal rankings, we should not overlook IAM’s companion guide to trade mark practitioners, WTR 1000.  Anderson Law’s consultant, Isabel Davies, features in the latest edition of this guide, with the following write-up:

“Grand name” Isabel Davies … “Incredibly experienced, dedicated and determined”, she enjoys significant prestige on the market.

Congratulations are also due to IP Draughts’ friends and colleagues who are volunteer speakers on the UCL course, IP Transactions: Law and Practice, who feature in these rankings, including:

Mark Lubbock of Ashursts

Ashley Roughton of Counsel

Chris Shelley of Manches

Sally Shorthose of Bird & Bird

Matthew Warren of Bristows

 

 

The folly of crowds in contract drafting

The crowd noise is deafening!

This article has been inspired by the words of Neil Wilkof, who recently posted an excellent article on the IPKat blog with the title: The IP Lawyer’s Nightmare: “But Everyone Else Does It”.

How true, thought IP Draughts.  There are many situations where some people rely on “group think” or, to use a more recent expression, the “wisdom of crowds“, when taking decisions.  Sometimes, the views of the many outweigh the views of the one.  IP Draughts supports the use of juries to decide facts in criminal trials.  But when the decision involves a legal issue, crowds can be a very unreliable source of information.

Several examples come to mind in the field of contract drafting:

1. The university senior manager who assumes, because no-one has sued the university before (or not in recent memory) for breach of contract, that the risk of being sued for breach of contract is low, and therefore (“on this occasion”) the university can enter into a contract without the limitation of liability clause that his contracts manager has recommended but the other party is refusing to accept.
2. The in-house lawyer at a well-known computer company who told IP Draughts in about 1989, during negotiations over the terms of a licence agreement, that he had discussed IP Draughts’ point at an internal meeting with 11 of his colleagues, and they all agreed that IP Draughts’ interpretation was wrong.  Therefore, said the lawyer, IP Draughts should back down in his wording request.
3. The persistence of US drafters who use the term “indemnify and hold harmless” because (they think) everyone else does, but they are unable to explain what the difference supposedly is between indemnifying someone and holding them harmless.

These examples illustrate different aspects of the same problem.  In the first example, a university president or vice-president may be relying on the collective experience of (UK) universities in not having been sued as justification for concluding that the risk of being sued and incurring liability is low and can be ignored.  But isn’t that what liability clauses (and, for that matter, insurance) are there for: the very small risk of a major event?

“Purple and black are so much more flattering to the older figure than scarlet.”

In the second example, the in-house lawyer was applying a very crude form of negotiating pressure based partly on the assumption that if a dozen people agree on something, the thirteenth person should question his own judgment and step into line.

In the third example, the drafter takes comfort from the fact that this form of words is commonly seen in indemnity clauses, and he doesn’t feel the need to question it or even, if truth be told, really understand it.  If, instead of following the crowd, the drafter read and followed the recommendations of some of the leading US texts on contract drafting, eg Tina Stark’s book on boilerplate clauses, or Ken Adams’ Manual of Style for Contract Drafting, he or she would stop using the expression “hold harmless”. (There is also an obscure UK book on boilerplate by Anderson & Warner, that comes to similar conclusions.)

Mummy, why is the Emperor wearing underwear when the story says he has no clothes?

In all of these examples, it may be better to analyse the legal or practice issue than to be distracted by social factors such as group experience or peer pressure.

An intellectual property example that came to mind when IP Draughts read Neil Wilkof’s article is the practice of putting customer logos on a corporate website.  This is a common practice.  A search on Google Images with the search term “our customers” revealed this example in the first line of the search.  This is provided for illustration purposes only; IP Draughts has no knowledge of the company in question and implies no wrongdoing.

Reproducing customer logos is fine if the customers have agreed, but (quite apart from questions of copyright infringement) in IP Draughts’ experience contracts with major companies often include terms expressly prohibiting the supplier from using the company’s logo.  Try pointing this out to a company’s marketing department!  If you do, IP Draughts predicts that some will ignore the advice and take comfort from the fact that “everyone else does it”.

The moral of this tale is that, when it comes to legal issues, following the herd can lead you into danger: crowds can be very unwise.