IP in 2015 – Where we are vs. Where I thought we’d be

A couple of weeks ago our dear blogmeister Jeremy addressed the British Group of the Union of European Practitioners in Intellectual Property in the convivial setting of The Royal Overseas League on this topic.  Harking back to a time before fax, email, and before any of our intellectual property laws in the UK existed in their present form, when neither OHIM nor the EPO existed and WIPO was but a babe, he reminisced thus:

WHERE ARE WE v WHERE I THOUGHT WE’D BE

My first taste of IP came in 1973, when I found myself researching for a PhD on ownership of IP rights. It was a wonderful time, a decade for consolidation of that sense of emancipation which came from living in the Swinging Sixties.

What I’m going to do this evening is to say a bit about what IP looked like to a neophyte at the beginning of the 1970s, to give an idea of what we either hoped or expected would happen, and how right or, more usually, wrong I was.

Looking at the big picture first …

The first thing that none of us appreciated in 1973 was how slow the pace of life was, professionally speaking. Communication was by written correspondence that was typed by secretaries, who created and retained carbon copies of documents. While photocopiers were coming in, they were slow, expensive to use and required ventilation in order to release build-ups of noxious gases.

Post travelled slowly then

Once created, documents and correspondence were sent by post. While the postal service was a good deal more efficient than it is today, with all urban areas served by two deliveries a day and the City of London by a third, document transmission was still something of a lottery. The incidence of postal strikes, the scheme for using postcodes had not yet been finalised, electromechanical mail sorting was still being trialled in Norwich and the DX document exchange system was two years away from being introduced. Overseas mail took a long time to reach its destination and, in the case of letter sent to French law firms in early August, even longer to be read.

Litigation went slowly too

All of this had an impact on the speed of litigation. The time taken in discovering that an IP right had been infringed, gathering evidence, going through the pre-litigation formalities and then pleading a case meant various things. One was that the business decision as to whether to litigate was a very different one, since its outcome and the balancing of costs incurred against likely benefits was calculated against a far longer time frame. A second was that the question whether a plaintiff had been too slow to seek interim injunctive relief was answered in accordance with rather different factual criteria. A third was that, as it seems to me, a far greater proportion of IP infringement actions were conclusively decided at the interlocutory stage, since injuncted defendants were not inclined to freeze their business plans for what might be two or three years before a complex case came to trial. None of us foresaw Article 50 of TRIPS and the defendant’s right to have an interim injunction revoked if the plaintiff IP owner didn’t pursue the full trial within a reasonable period, 20 working days or 31 calendar days.

Articled clerks could go hungry ...

Life in IP was much more leisurely in the 1970s than it is now, and not just because when you’d sent a letter you knew you had some breathing space before the answer came back. For one thing, law firms were much smaller then – even the big ones – and the hours worked were far more regular. Some law firms were still charging people to become articled clerks and minimum salaries for trainees were not introduced until 1982. Mergers, growth spurts and an all-inclusive law firm culture are relatively new phenomena. It wasn’t until 1987 that Clifford Turner and Coward Chance merged, for example, and in 2004, when Slaughter and May celebrated its 125th anniversary, most of the people who had ever been partners were still alive. Giant firms with practitioners toiling all hours to earn impossibly large salaries were the stuff that American TV programmes were made of, so we had constructive notice of them, but we did not appreciate the scale of change or what it would mean.

The 1970s were also a period of innocence and ignorance. Annually there were very few full IP trials, and for practical purposes judicial decisions were for most practical purposes deemed not to have happened unless they were reported, often many months or years after the event. Electronic document search and retrieval via Lexis and Eurolex had yet to appear; there was no EIPR till 1978 or BAILII till 2000. What then was there? Cardboard boxes containing typescripts of relevant High Court and Patent Office decisions, in the Patent Office Library, which you could access if someone else wasn't using them and/or hadn't hidden them.

Some law books didn't
have much to say 

Practitioners’ books were really worth buying in those days, since they were so rarely updated: the 12th edition of Terrell (a classic exercise in vacuity), published in 1971, was not replaced by the 13th edition until 11 years later in 1982, and Kerly’s Law of Trade Marks had to grow whiskers before it ever got an upgrade. Loose-leafs proliferated since they were hugely profitable and IP lawyers had library stuff to break their nails updating them. I predicted their death once people had to insert the updates themselves and once the internet prevailed, and I’m pleased to say that there are now relatively few of these monsters left.

CPD was introduced only in the mid-1980s. Historical footnote: I chaired the first ever CPD training session on intellectual property for solicitors, at the Queen Mary College IP Unit, on Day 1.

Professional life was also very unregulated. IPReg was far from being conceived; solicitors and patent attorneys happily regulated themselves via their own professional organisations, and I’m not sure that anyone at all truly regulated trade mark attorneys (agents, as they were in those days). Barristers were, and still are, a law unto themselves and 1973 was a time when it was said that you could fit the whole of the Patent Bar into the back of a taxi. Judges were not so much remote as invisible. Barristers and solicitors did not fraternise. There was much speculation as to whether the Chartered Institute of Patent Agents and the Institute of Trade Mark Agents (as those bodies then were) would merge and many amicable feelers were put out, but it nothing happened.

On the organisational front MARQUES, ECTA, PTMG and the ACG did not exist. INTA was still the USTA and used to attract just 300 or so registrants, against the 9,000+ that attend today. Of other international organisations representing the professions and their interests, the AIPPI and FICPI did not have any visible presence in the UK. Oh, and WIPO was just six years old.

Trade secrets and breach of confidence

I for one was convinced that big things were going to be happening in this field of IP. It was only a few years since Seager v Copydex: in two seminal Court of Appeal rulings, Lord Denning established both that the hitherto equitable doctrine that a breach of confidence might be restrained was in fact an “equitable tort” and that a court might award compensatory damages just as it would for the commission of any other tort. Then the government set up the Younger Review on Privacy, to look at issues of secrecy, privacy and confidentiality overall with a view to law reform. The result however was a damp squib. The report, in 1973, suggested that the country’s mix of laws on breach of confidence, copyright, defamation, contempt of court and official secrecy –- to name but a few -– made the much hoped-for statute quite unnecessary. A Law Commission report on Breach of Confidence in 1981 raised hopes that legislation might happen, even appending a brief draft bill, but no-one was interested so that was that.

Patents

The 1949 Act, which was a masterpiece of simplicity, had a couple of provisions that always seemed to me to be quite advanced: one was the facility to get an extension of term if exploitation of the patent had not turned out to be profitable on account of the War or if there had been other genuine reasons for not being able to cash in on it. I never understood why this lovely provision had to be scrapped in 1977 since the principle seemed sound enough to extend to other limited-term rights too. Happily it made its return in the somewhat limited context of supplementary protection certificates (SPCs) for pharmaceutical and agrochemical products.

Europe 

1973: It was the best of times ...

Almost none of us appreciated what harmonisation was about: we mainly thought that Directives were only there to direct, and that it was right and proper to redraft the language of Directives –- cast in the continental style of broad principle –- in phraseology that was more appropriate to the British style of detailed drafting. That’s how curiosities like s. 10(6) of the Trade Marks Act 1994 came about. Critics of this approach, including Sir Hugh Laddie and his discerning followers, poured scorn on this parochial attitude, but most of us thought they were just having a good rant. The mechanism of the then European Court of Justice was also something of a mystery to us, since in 1973 the notion of a court to which questions could be referred into to get answers that we couldn’t work out for ourselves seemed novel and pointless (and in any event there surely weren’t any questions of European law we couldn’t answer to our own satisfaction!)

The courts

The courts were far more remote in the 1970s, like the judges, and there was little specialisation. IP disputes were mainly heard by Graham J (from 1969), joined by Whitford J in 1974. There was a Patent Appeal Tribunal and survey evidence was admitted so that it could be ignored. Hearsay evidence didn't seem to trouble the Patent Office until the 1990s, when it was established that hearing officers should apply the same rules of admissibility of evidence as everyone else. 

Human rights

Human Rights had not been invented, so far as the many branches of commercial law were concerned. The idea that a trade mark application might be "property" in which a human had a right and that the giant brewer Anheuser-Busch was a "human" for the purpose of asserting violations of its right to property was unthinkable. 

Copyright

... and the worst of times

In 1973, inconceivable as it now seems, copyright was all sorted. A truly modern piece of legislation, the Copyright Act 1956 was pretty much state of the art, seven years younger than the Patents Act 1949 and 18 years younger than the Trade Marks Act 1956. It was sleek, short – at only 51 sections -- perfectly intelligible, and amply explained and interpreted by a small and largely untroubled body of case law going all the way back to the Imperial Copyright Act of 1911. What’s more, it had features which made it very plaintiff-friendly (for we were plaintiffs in those days -- there were no bleating claimants), features that I was quite sure would be incorporated into the older, lesser, inferior Acts governing patents and trade marks.

• There was the opportunity to receive exemplary damages for the most egregious infringements
• Copyright owners were incentivised by being able to obtain conversionary damages under s.18. Note for young members of the audience: there is now a rather dull statutory tort of unlawful interference with goods. This replaced the splendid torts of conversion, detinue, replevin, trover and trespass to chattels. -
• Compulsory recording licences were available for musical works that had been made and sold as gramophone records: this stood at six and one quarter percent of the ordinary retail selling price.

In 1973 none of us saw the threat of the internet. Computers didn’t speak to each other and they weren’t even remotely intercompatible. The big threats to civilisation came from reprography, which wasn’t a problem because it was so slow and expensive, and in the 1980s the rise of the reel-to-reel cassette recorder. Copying in those days was never fast; nor was it perfect. Digital didn’t exist: we lived in the Land of the Analogue, as anyone who has ever had to read a photocopy of a photocopy of a photocopy will remember to their cost. Reprography was going to doom the printed publications industry to a slow and sticky death by enabling people to photocopy just the bits they wanted to read and not have to pay for the other bits. The US Supreme Court in Williams & Wilkins, in a major ruling in 1973, thought otherwise. One thing that our copyright law lacked was any specific provision on moral rights. We all knew that there was an international law obligation to protect authors’ moral rights, but ... 

Trade marks 

Service marks had not yet loomed large in our consciousnesses, though we were all concerned about the perils of trade mark trafficking.It was also an era in which token use by the trade mark owner was good enough to keep a registered mark alive and well. 

Competition, EU law and Articles 85, 86

The Six became nine on 1 January 1973 when Denmark, Ireland and the United Kingdom formally entered what was then the European Community. We didn’t really have a clue about competition. The Patents Act 1949 had as much competition law as we thought we needed, tackling tie-ins of non-patented products and post-expiry royalties. Patent pooling had not yet entered the stage of respectability which we now see with FRAND licences for standard-essential patents.

Public morality 

On the subject of respectability, it was still believed in 1973 that Glyn v Weston Feature Film was good law and that copyright would not be enforced in any work that might be said to have an improper moral content and that the courts would act, or rather refuse to act suo motu in respect of any work that was blasphemous, obscene, seditious or otherwise disentitled to the court's protection. This case was ignored by one and all in the 1980s litigation over Britt Ekland's Electric Blue films.  Morality applied to patents too: since they were granted via an exercise of the royal prerogative until the Patents Act 1977 put things on a more bureaucratic footing, an applicant might find his attempt to patent a contraceptive refused under the exercise of the royal prerogative on the basis that it might be used for the wrong purposes.

There then followed a lively period of discussion, which included the following issues.

Is the current system fit for purpose? Generally, unregistered rights were considered to work well, for example copyright adapting itself to the online world.  Unregistered design right, confidentiality and the law of contract were likewise fit for purpose.  However, registered rights were not considered to be working well.

Designs: we still do not know who is the informed user, and other difficult concepts introduced by the new law a decade ago remain unclear.

Trade marks should be quicker and easier to resolve disputes.  Legal proceedings lasting 10 years is an outrage.  Similarity should be seen as a question of fact and never of law.

Patents: the system is very complex, sometimes causing all hope to be lost on occasion.  And yet look at the incredible diversity of consumer products that we can buy now that were not available in the 1970s.  An imperfect system has provided outstanding commercial results. So the patent system, far from killing the goose that lays the golden egg, has encouraged it to lay even more golden eggs. Unless you are sure you can do better, better leave it alone.

Would you advise a fresh graduate to go into research or IP law? In the pharmaceutical business, go to the generic industry - that is where the money is.  In IP, we need more expertise that is sensitive to technology. In the 1970s it was thought we didn't need more people in the field of IP law, but history has shown that we do.

Always suggest to a graduate to take a year out and work in a business and see what people do before you go into research. Or indeed IP. Maybe patent examiners should do this too, as many do not know how business actually works.

The EPO when originally established wanted to respond to the needs of users, instead of having prescriptive rules that would cause rights to be lost for insignificant reasons, but over time the dead hand of the arbitrary has taken over.

On the pharmaceutical industry. Why is that originator companies are seen as unjustly taking money from sick people;  whereas generic companies are seen as helping people to get medicine? This public perception is wrong.

On the position of the Minister for IP. There has been a succession of IP ministers that have been ineffective.  We need someone who believes in value of intellectual property. Intellectual property is the lubricant of the world. We need an IP minister with such passion.

What parts of harmonised law should be kept if the UK leaves the EU? Generally, things should remain harmonised, even if the harmonised standard is poor, for predictability and stability.  But some EU doctrines are needlessly unclear eg exhaustion of rights.

On the duration of IP rights. Life plus 70 for artistic copyright has no justification.  Others seem about right, but maybe there is justification to make unregistered design right a little longer.

On the Examination speed at the EPO. A lot of delay is applicant-related and not EPO-related. Many applicants seem not to complain about the pendency times.  Maybe there is little demand for rapid grant.

On our IP judges. (Note that one was in attendance). Would dearly love to see shorter judgments: when as an editor a plea for judicial brevity had been made, it was pointed out that judges get paid more for judging than editors do for editing.

The current star of the English judicial system is the small claims track of the IPEC, which is making users very happy, and allowing creators such as photographers to enforce their rights.  Previously, such litigants had no cost-effective forum.  There are also good decisions coming from the Hearing Officers of the IPO and the Appointed Persons.

And the ones in Luxembourg. Difficulty that many have background eg in constitutional law, not a commercial background.  Off the record things are said which are not acknowledged officially, and the lack of possibility of dissenting opinions means that judgments sometimes show troubling signs of compromise. Allowing dissenting judgments would not only allow the disagreement to be aired, but also permit the main judgment to be clearer.

For example, early trade mark jurisprudence said that a mark must be assessed globally.  But while repeating this maxim (conveniently available pre-translated into all official languages), the Court actually now still salami slices the mark to analyse it -- precisely what is not supposed to happen.

And the UK IPO. Not convinced that developing machinery to license orphan works is a worthwhile exercise for the IPO to be undertaking, and use of certain characters from Aardman animations to publicise IP issues is also questionable.

Our dear blogmeister denies that any future presentation before his retirement will duplicate his presentation to Union.  Readers will now be able to check this for themselves.  Meanwhile this Kat, who had never previously attended a Union event, would like to thank Gwilym Roberts for kindly inviting him.