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Book Review: ‘Inside Intellectual Property – Best Practice in Intellectual Property Law, Management and Strategy’

Keltie LLP

K2 IP Limited

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MikeJewess‘Inside Intellectual Property’ is written by a true ‘insider’ . Mike Jewess is the quintessential IP insider, his impressive career in IP having spanned private practice at a major London IP firm, senior in-house roles across a range of industries (including telecoms, packaging, aerospace and defence), and heading departments. He is a sought-after speaker, commentator and mentor in the IP community. If that isn’t enough, his comprehensive book is also informed by an in-depth survey of 25 UK IP practices. The result is a text that should become a seminal reference work.

The intended reader

For whom? The sub-title of ‘Inside Intellectual Property’ is ‘Best Practice in Intellectual Property Law, Management and Strategy’, indicating that the work is not just aimed at lawyers, but also at managers and strategists. Mike presents it as a management text, and as a practical tool for IP practitioners, both in-house and in private practice. The book should also be a valuable resource for academics and policy-makers, who can find a rare and informative insight into how decisions are made about (for example) patent strategy and similar real-world IP decisions. Mike’s own views on IP public policy questions, informed by a long and distinguished career in the field, are also given an airing.

For the lawyers and attorneys, the text delves into matters such as professional privilege, the nuts and bolts of patent applications, branding choices, and drafting IP agreements. For managers, there are chapters on systems specifics, people management and disaster recovery. The strategists may learn how to avoid disputes, manage IP portfolios, and license for money.

The forgoing list is a just small taste of the topics covered in a rich and comprehensive discussion. Others include the role of IP within a company, educating the client (and your staff), information security, people and organisations, IP policies and a chapter devoted to IP lobbying.

Thus, ‘Inside Intellectual Property’ is an invaluable resource for IP practitioners across all types of practice, from the new manager who needs a primer on ‘The Basics’ (Part A), to those concerned with over-arching IP policy questions. In between, the daily practice of the in-house attorney, or the private practitioner aiming to provide practical and exemplary advice to clients, will benefit from Mike’s generous sharing of the wisdom and experience gained from over twenty years heading the IP departments of multi-national companies. It’s not often we get to ‘pick such a brain.’

Though the text naturally encompasses the workings of the legal jurisdictions it discusses (and has a UK focus in particular), its usefulness is not restricted to practice in any particular country. R&D strategy, benchmarking, university academics as inventors, brand architecture, commercial aspects of IP agreements, IP and tax issues, delivering educational presentations, financial models, practitioners and their “comfort zones”, case studies of lobbying — all these topics and more carry Mike’s wisdom across national boundaries.

The style and content

‘Inside Intellectual Property’ is also witty, frank and erudite. The author’s easy and articulate style permeates his advice and commentary. He warns that strategy is difficult; he insists on maintaining standards. We get a lot of straight-talk, illustrated with many case examples and personal anecdotes. We even share a wry chuckle at the insightful observations of Adam Scott’s ‘Dilbert’ cartoons. Dilbert, it transpires, has much to say about intellectual property. For example, in a passage discussing the plague of “patent trolls” feeding on weak ICT patents in the US, Dilbert is, appositely, quoted:

According to my analysis, all future ideas are already covered by over-general patents. Our best strategy is to get out of this business and become…patent infringement lawyers.” [214]

Dilbert has also encountered the problem of “trade mark cluttering” – registers full of un-used marks, many in unnecessary classes (especially CTMs) [182]; and he lampoons management jargon [354] – on the subject of which our author is also rather scathing. There’s a pleasing absence of the obfuscation of management jargon in Mike’s text, replaced instead with clear, practical writing.

The text is arranged clearly, with logical paragraph numbering, a detailed table of contents and a helpful index. The book is divided into three parts: Part A is entitled “Basics”, Part B “Casework”, and Part C “Other Topics” – a catch-all for some of the most interesting bits.

Part A – ‘Basics’

From the beginning, in Chapter 1 “Legal Professional Quality”, we hear the author’s straight-talking voice:

In areas where the client relies strongly on the practitioner’s judgement, the practitioner can become slack without the client’s noticing for a considerable time because of the extremely specialist nature of the work…but the practitioner needs to behave as though each job is important…” [5]

The basis of all legal work is precise use of language, and this requires attention…Unlike a scientific paper or for that matter this book, a patent specification or contract needs to be fit for testing in court…”[14]

The author then goes on to give plenty of specific advice on how to meet these obligations – legal and technical information sources, keeping up to date with scientific and technical knowledge, continuing education and quality standards. The “Basics” section of the text then goes on to discuss issues around ethics and privilege; then in impressive detail sets out how an IP practice can – indeed must – utilise good systems to ensure the proper running of the practice. As Mike quotes at the head of this chapter, “the devil is in the detail.”

Part B – ‘Casework’

As Part B opens, research and development are discussed, and the difference between invention and innovation explained. Dilbert crops up again when his CEO, being near retirement, decides to “fire the research and development group” to increase the value of the company’s stock, facilitating his imminent retirement, though dooming the company to ultimate failure:

Adams’ cartoon embodies a truth about R&D in technology-intensive companies. The time lag between (a) performing R&D and (b) making money out of it…is sufficiently long that, if a company suddenly ceased to do R&D, the profit of the company would increase in the short term. However, many companies are living now off the distinctive products and services that came out of past R&D…” [89]

The longest chapter in the book, Chapter 5 “Patenting”, covers many practical questions for patent practitioners and all those who advise hopeful inventors:

Deciding what inventions to file on with what territorial coverage and what patents to maintain (“patenting strategy”) is far harder than making many business decisions.” [105]

The chapter covers a wide variety of issues in great detail, including searching and filing routes, contents of claims and descriptions, “drafting for the world”, and remarks on substantive applications in the US, the EU and Japan. Mike also proposes some clear guidelines for patenting strategy, and although he warns that some will seem “contrary to many managers’ instincts” he makes a clear case for each of them. Employee inventors are discussed, including university academics as inventors; and it’s strongly recommended that no truck be had with UTSs – unsolicited technical suggestions (they are usually “contrary to well-established natural laws”; or “made by eccentrics”, or “accompanied by aggressive…demands” or basically not up to scratch.) [172]

Trade marks and branding get a chapter [8], and it covers both an analysis of this more ephemeral world, and some practical suggestions on handling a brand portfolio. On the ephemeral side, Mike compares some brand valuation numbers, and concludes that the reputation and value of brands is highly sector-dependant (for example, COCA-COLA is ‘worth more’ than SHELL – because consumers of petrol are more likely to buy on price and convenience than on brand); and that trying to put a meaningful number on brand value is probably not a worthwhile exercise – (”Branding by its nature attracts hyperbole”. [182]) After discussing the basic questions of choosing a brand and clearing it for use with searches, including avoid potential problems, Mike suggests that brand owners consider the “brand architecture” they should best adopt. The choice he gives is between “one-brand, one-product” as exemplified by FMCGs and pharmaceutical companies; and a “monolithic” approach utilising one overarching brand with descriptive additions as necessary (think BMW, VIRGIN or GUCCI).

Of course, a practical branding chapter wouldn’t be complete without a warning about checking on negative or undesirable associations, allowing a re-telling of the anecdote about General Motors’ NOVA for new cars being unacceptable in Spanish-speaking countries, where ‘NO VA’ means “won’t go”. Mike adds a couple more: MIST for spray-on deodorants was unfortunate in German-speaking countries where the word means “dung” — which also explains why the Rolls Royce car name SILVER MIST was wisely abandoned for SILVER SHADOW.

Company names and domain names are covered, as is trade mark portfolio management. Mike makes the very good point – which might not occur to a private practitioner pestering his or her client for proof of use or a decision on renewal after ten years – that “the [in-house] practitioner may have lost track of the mark, and his previous [in-house] client contact will probably no longer be in place…an in-house practitioner can spend many hours trying to obtain information and instructions on a mark, and…a business unit willing to pay…” [199]

Part B continues the review of casework issues with mention of other IP rights, such as second-tier patents, industrial designs, unregistered design rights, copyright and certain specialised sector rights. Chapter 10 spends time on IP disputes, both how to avoid them (“for the client to end up in court [in a branding dispute], except as a victorious party, is in the author’s view a failure of practitioner persuasiveness” [215]); and handling them (e.g. “possible countersuits should be considered before any threat is made” [223].) There is an erudite, detailed and eminently practical review of the keeping of a practitioner memorandum (detailed notes) in the case of litigation.

Intellectual property agreements are also covered in exceptional detail in Chapter 11, a part of the text that should probably remain open on the desk of any practitioner drafting IP agreements on a regular basis – and even more so if they are drafted only infrequently. To the mind of this reviewer, the value of this chapter cannot be over-stated:

A good understanding of IP, contract, and competition law is the sine que non of being a competent IP agreements practitioner. In addition, the practitioner must be prepared to interrogate the client very carefully as to the factual background and as to his commercial objectives, and constructively to challenge the client’s view of the future….To be a plausible and challenging interrogator, the practitioner needs technical understanding and commercial awareness appropriate to the case.” [237]

But if those requirements seem daunting – don’t be too concerned, as Mike goes on to take us through, step by step, selected legal and drafting technicalities, identification of the parties, drafting definitions, defining “IP rights” in agreements, errors to watch out for, and confidentiality matters; then discusses management, commercial and strategic aspects of some types of IP agreements, including non-disclosure agreements, licensing for money, paying contractors to generate technology, sales procurement between businesses, R&D collaboration agreements, and strategic patent agreements. He crowns this with a comprehensive discussion of IP in M&A agreements, and taxation issues.

Part B concludes with some comments on the phenomenon of “patent trolls”; and on intellectual property within a company structure or group (including taxation considerations). With the hefty work now done, the text turns to Part C, merely entitled “Other Topics.”

Part C – ‘Other Topics’

Within this final section, Mike has a very useful chapter on “Educating the Client”, giving practical suggestions on what type of information the IP trainer should provide for R&D workers, marketing people, commercial and contracts people, general lawyers and those who control or influence the funding of IP – another crucial chapter to flag if part of your role is to explain to others what you do as an IP practitioner.

I’ll linger a moment on the next topic – financial models for IP departments or private practices – and recommend it for attention if you have an interest in matters such as hourly rates v fixed charges, aligning charging with the interests of the client, vulnerability to losing formalities work to specialised agencies (renewals is an obvious example), and – for in-house departments – the best model for funding and how to handle budgeting (some “departmental assertiveness” is indicated, according to Mike.) [313]

Part C then goes on to address information security and disaster recovery – both subjects which are “wearisome and thankless” [321], it seems, but nevertheless vital; and the detail given should be of great help in implementing and maintaining suitable procedures. The chapter on ‘People and Organisations’ in the IP context is practical and straightforward, discussing client expectations (and ideals), training and supervising paralegals and formalities staff, deciding between ‘client-facing’ and ‘functional’ organisation of IP departments, and training for problem-solving and decision-making.

The final chapter addresses IP Lobbying. Here we shift focus from the everyday work of the IP manager and practitioner to the bigger picture – public policy. After discussing the merits of lobbying through professional associations, lobbying by academics and finding a balanced personal view, Mike concludes with some case studies, and a set of thoughtful “Guidelines for Lobbying”, along with comments. Here’s a small sample:

“…try to spot all the angles…be straightforward…show how your position coincides with the overall public interest…beware of politicians’ and civil servants’ genuine ignorance…do not give up in response to mere assertions that the battle is lost…be persistent generally…” [372]

The book concludes with a number of appendices (seventeen, in fact) providing a real depth of detail and further leads for those who want to follow up a particular subject. The comprehensive references and excellent index conclude a masterly volume, recommended for the desks of IP practitioners everywhere.

Annette Freeman 11 August 2015

———————————————————————————————————————————

THE BOOK

‘Inside Intellectual Property – Best Practice in Intellectual Property Law, Management and Strategy’  by Michael Jewess

Published and sold by CIPA, UK (2013)

Available at: www.researchinip.com/iip.htm

THE REVIEWER

Annette Freeman worked as an Australian solicitor and trade marks practitioner with a major Sydney firm of IP attorneys for many years. During that time she was an adjunct professor at the University of Technology Sydney, served on the Australian Patent Attorneys Professional Standards Board, and on the Board of the International Trademarks Association (INTA). She also co-authored the Fourth Edition of ‘Shanahan on Trade Marks & Passing Off’, the seminal Australian text on the subject, so she is well-acquainted with the enormous amount of work that goes into producing a quality IP text. Annette is now an independent IP consultant, working with the London-based K2 IP Ltd www.k2ip.com


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