Cambridge IP Law Summer School 2019

Downing College Cambridge

Jane Lambert

Last week I was invited back to Cambridge by Knect365 to speak to the Cambridge IP Law Summer School at Downing College. I was asked to repeat the talk on IP disputes and bilateral investment treaties that I gave to the 2017 summer school and to mention the research on IP enforcement in the digital environment that Professor Frederick Mostert and I had carried out for the Advisory Committee on Enforcement of the WIPO (see Mostert and Lambert Study on Intellectual Property Enforcement Measures, Especially Anti-piracy Measures in the Digital Environment – Executive Summary and the full report). I also chaired the final day's session on "Contentious IP".

As in 2017, this year's course took place in Downing College's Howard Building.  That building consists of a ground floor common room with a licensed bar and an auditorium on the floor above.  Morning coffee, afternoon tea and some lunches and dinners were served in the common room.  Breakfast and all other meals were served in the dining hall which was the other side of a croquet lawn known as the West Lodge Garden.   Speakers and attendees were lodged in the Kenny Building which is occupied by undergraduates during term time.

The course was opened on Monday, 12 Aug 2019 by Darren Meale who chaired the first day's session on "Fundamentals". He talked about "Intellectual Property and Why it is important" from 09:40 to 10:30 and gave an "Introduction to the EU Legal Framework for IP." Geert Glas of Allen & Overy spoke of the fundamentals of copyright protection.  Mark Cruickshank of the Royal Bank of Scotland and Loren Raavenscroft of Simmons & Simmons discussed the general principles of trade mark law and practice.  Lunch was served in the common room and consumed on tables arranged around the edge of the West Lodge Garden. 

The first talk after lunch was on patents by David Knight of Fieldfisher. He showed the audience how to read a patent specification and construe a claim by reference to European patent (UK) EP1263291 entitled "Method for a New Doughnut." He took his audience through the formalities of the specification, the description of the invention and the claims.   He then circulated a page from a recipe book that pre-dated the application for the European patent and considered whether the invention was new. He asked the audience to consider whether any of the claims would have been infringed had the recipe appeared after the filing of the application. His was not an easy subject but he outlined his topic well.  It was one of the best introduction to patent law that I have ever heard.

Giles Pratt of Freshfields Bruckhaus Deringer discussed licences and assignments.  He explained the difference between exclusive, non-exclusive and sole licences and was the first of many speakers to alert attendees to the American use of the term "sole and exclusive" licence agreements.

As there have been several recent cases on standard essential patents such as Conversant Wireless Licensing SARL v Huawei Technologies Co., Ltd and others [2019] EWHC 1687 (Pat) (4 July 2019) which I discussed in The Trial - Conversant and Huawei Technologies and Others 7 Aug 2019 NIPC Law, I had been looking forward to listening to Dirk Weiler who chairs the board of ETSI.  He gave an introduction to standards.  Though this is not an easy topic as there are plenty of institutions with lots of acronyms, his talk lived up to expectations.  His presentation laid the foundation for the following day's discussion on patents and, in particular, FRAND and RAND licensing.

The opening session was rounded off nicely by a comprehensive discussion of IP due diligence from Timothy Powell of Potter Clarkson.  As there was an attendee from Nottingham, he greeted us with a cheery "Eh up, m' duck" which he translated into Korean for the benefit of two attendees from that country. As we also had attendees from Austria, Denmark, France, Japan, Romania, Russia and Thailand I am sure he could have greeted them in much the same way but that would have eaten into a fascinating discussion of the principles and pitfalls of due diligence.

There is in Cambridge an excellent dance studio called Body Work with a particularly good ballet teacher called Louise Howarth. I had attended her improvers' class in 2017and was keen to take another with her  (see Ballet Bodywork and BITs in Cambridge 15 Aug 2017 Terpsichore). Sadly, there was not enough time to make her 18:30 class as talks ended at 17:30 but I did attend the absolute beginners' class at 20:00 on Thursday with another lovely teacher called Savanna Madden. I met Louise on the way to Savanna's class and she remembered me from last time.  Bodywork offers evening classes in several styles of dance to adults.  I strongly recommend the studio to visitors to Cambridge in search of a workout.

Missing ballet left me free to take part in a pub quiz after dinner.  We divided into teams and I found myself in Dirk Weiler's which also included former board of appeal polymath David Keeling  Not surprisingly with such heavyweights, we took an early lead which we remained among the leaders until one of the last rounds which was on "GOT". "GOT" turned out to be an abbreviation for "Game of Thrones" which left us none the wiser. "Super respect to Team 5" consoled the compere as we came in last at the end of that round. "Clearly they don't waste their time." We still felt robbed.

The second day on  "Patents" was by far the best with some excellent presentations by Sean Leach, Hiroshi Sheraton, Matthew Shade, Pete Sadler, Timothy Powell, Dirk Weiler and Daniel Shaw. In one of the sessions, the audience was asked to identify inventions. After I had successfully identified a second medical use and a dosage invention I was asked to settle the claims for a patent for such inventions. I protested that I was a lawyer not a patent agent but I still had a go. I remembered the old formula for Swiss style claims and could even remember the reason for the long-winded wording. I had more difficulty with the dosage patent but I was assured that I would still get past the examiner. "So long as his first language is not English" I breathed to myself.  My favourite presentation was Dirk's on "TMT: A SEP & FRAND Overview". I learned a lot from that talk.

I missed Tuesday night's punting and Wednesday morning's talks by Gregor Pryor, Rebecca Swindells,  and Victoria McEvedy who spoke on copyright on the digital age and also those of Ciara Cullen and Paul Maeyaart who discussed trade marks but I learned about everything that they could possibly have said from Fabienne Brison who recalled every presentation in exhaustive detail in her closing remarks. In the afternoon we heard from Adrian Dykes of Allen & Overy who managed to cover registered and unregistered designs, registered and unregistered Community designs and artistic copyright in just over half an hour. David Keeling explored several recent decisions of the EU Intellectual Property Office's Boards of Appeal on design registration in intricate detail.  Victoria McEvedy gave a thorough presentation on recent domain name decisions which I found useful as a WIPO domain name panellist. Piers Strickland of Waterfront Solicitors took us through database rights.  Even though she occupied the graveyard slot, Liz Fitzsimons kept us awake with a very thorough, relevant and thought-provoking discussion of Data Protection and GDPR. Liz deserved a massive bouquet of roses for that talk.

We all donned our glad rags for a gala dinner in hall on Wednesday night.  It was an excellent repast in every respect. I found myself in the excellent company of Patricia McGovern of DFMG who chaired Thursday's session on "Transactional IP" Patricia has an encyclopedic knowledge of every aspect of IP, particularly in so far as it relates to the Republic of Ireland where she practises as a trade mark attorney and as a solicitor. Patricia introduced Fiona Nicholson as her first speaker.  I have known Fiona ever since she ran the Glasgow branch of the Licensing Executives Society. She always has something interesting to say. Her talk on "Purpose and Elements of IP Licences" was delivered with her usual flair. There were also great talks from Jo Farmer of Lewis Silkin, Kyriakos Fountoukakos and Peter Rowland of Herbert Smith Freehills, Yohan Liyanage and Anne Fairpo  The best presentation of the day by a country mile came from Clive Thorne who spoke without slides on passing off. I also spoke on claims against states for compensation for expropriation by not protecting intellectual assets taking my audience through Metalclad v Mexico, Philip Morris v Australia and Eli Lily v Canada. Clive politely told me that it was good. I derive some comfort from the fact that nobody threw rotten eggs or tomatoes. Or, if they did, they missed. 

I was lucky enough to have some excellent speakers for my session on Friday.

We began with Antoinette Graves of the Department for International Trade who told us about the Department's efforts to find lucrative new export markets for our businesses after we leave the world's largest trading bloc. I asked her how she would answer Larry Summers's observation that the UK has no leverage with the US in trade negotiations because it is desperate for a deal (see Rowena Mason "UK too desperate to secure US trade deal, says Clinton's treasury secretary" 6 Aug 2019 The Guardian). She did give me and the 35 or so members of the audience an answer but she asked me not to repeat it in my blog in case it gave away our negotiating position to the Americans.

Rebecca Halford-Harrison's advertised topic was "IP Strategy and Enforcement" but she began with a much more useful discussion of filing strategy. She stressed the importance of aligning IP strategy with the business plan. Something that I have been rabbiting on about for donkeys' years (eg "Why every business plan should take account of intellectual property" 3 April 2016).

Justin Watts of  WilmerHale delivered a cracking talk entitled "International IP Strategy and Enforcement". One of the best of the whole conference. He gave us all sorts of useful tips.  For instance, businesses sue in the UK to obtain descriptions of infringing products which is not available in other jurisdictions.  It is relatively easy to get a preliminary injunction in Germany but very difficult for a US non-practising entity (disparagingly called "trolls" by sone folk) to get a temporary restraining order.  I was gutted to have to cut him short as he was eating into the next speaker. 

Paul Abbott spoke about arbitration, arbitration agreements, the advantages and disadvantages of arbitration and other good stuff.  He also provided useful revision on bilateral investment treaties taking the audience through the Philip Morris and Eli Lilly cases. Happily, his analysis was very much the same as mine.

Paul England of TaylorWessing outlined the law of confidence and discussed in exhaustive detail the Court of Appeal's decision in Faccenda Chicken v Fowler [1986] Ch 117. He also mentioned the implementation of the Trade Secrets Directive.

The session was rounded off brilliantly by Patricia McGovern who took us through all possible civil and administrative remedies against counterfeiting which complimented perfectly my talk on my work with Prof Mostert on remedies against piracy.  As Justin had highlighted differences between the interim relief that was available in different countries Patricia and I invited the audience to share the practice and procedure in their own countries.  I could speak about England, Wales, Scotland and Northern Ireland, Patricia about the Republic of Ireland and members of the audience contributed their experiences in Denmark, Japan, Russia and Thailand. 

Having attended two of these courses from the start, I recommend highly.  My only criticism is that they expect too much from attendees not all of whom qualified in England and Wales and several of whom were not even lawyers.  I think a quick gander through the court system, the Civil Procedure Rules, the Business and Property Courts, the Intellectual Property List, the Patents Court and IPEC right at the start would not have gone amiss.  I think Paul England's presentation on confidence and trade secrecy should have been moved to the first day.  I would also have liked separate discussions on design right, design registration and artistic copyright.  A detailed talk on standards could not be described as "Fundamentals" and Dirk's talk on the subject should have been given on the second day.

But it was a great week and I met some lovely people. I can't have done too bad a job as speaker and chairperson as Knect365 gave me a flagon of Laurent Perrier at the end.  Should anyone want to discuss this article or my talks, call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.