BOOK REVIEW: Guidebook to Intellectual Property

Authors: Sir Robin Jacob, Daniel Alexander QC and Matthew Fisher

Publisher: Hart Publishing

How should we view intellectual property? As a set of legal rules, derived mostly from legislation, to be studied at university? Or as a business asset, to be valued, packaged, exploited and recorded on a balance sheet? Or as a professional mystery, which initiates – patent attorneys – take many years to master? As they journey to enlightenment, European patent attorneys are required to take and pass (on the Nth attempt) some of the toughest exams in the known world. The 10,000 hours rule seems pitifully inadequate for such a demanding profession.

Or should we view IP as a threat to the marketplace, as anti-trust authorities would have us believe? Or as a route to economic development, as recent British prime ministers have vaguely seemed to hope, which has led them to commission a fleet of half-baked policy reviews. These reviews, led by journalists and academics – Gowers, Hargreaves and Wilson spring to mind – have gone out of their way to avoid contamination by IP lawyers, who might actually know something about the subjects under discussion.

Or should we recognise that IP is a weapon to be used in a battle for commercial supremacy between competing businesses, whether they are giants like Apple and Samsung, or the small businesses for whom the Intellectual Property Enterprise Court has been devised? The warring parties will use whatever weapons they have to hand, and they often include IP rights. Sometimes, the parties don’t even know what weapons they have until their IP lawyers investigate and report.

Depending on our perspective of the IP world, we may require a particular mix of knowledge of IP law and practice. We may need a wide but shallow overview, or a deep insight into points of detail. We may need to focus on pure legal issues, or on practice points, or on commercial objectives. Or we may want an accessible blend of all of these aspects, as an introduction to the subject.

Where can we get the particular blend of knowledge that we require, other than by learning on the job?

Guidebook to Intellectual Property gives us part of the picture. It provides an introduction to IP law. In the words of the frontispiece, ‘it is aimed not only at law students… but also at interested users of IP – business people, inventors, scientists, designers and the like’.

The book is suitable as an introductory text for law students, and it is written by experts who have academic credentials: two of them have established positions at the UCL Faculty of Laws and the third has a visiting appointment there. But the perspective of the book is that of the practitioner, rather than the academic. Or rather a particular type of practitioner, the English IP barrister. This reflects the history of the book and the background of most of its authors.

The book was originally written as a set of pamphlets in the 1940s by Thomas Blanco White QC, a barrister who went on to be head of a leading set of IP barristers’ chambers in London. His successor as head there, Robin Jacob QC (more recently a lord justice of appeal and now professor of IP Law at UCL), is one of the authors of the present, 6^th edition, along with Daniel Alexander QC (a senior member of the same chambers) and Matt Fisher, a senior lecturer in Robin’s team of IP academics at UCL.

This practitioner perspective is one of the book’s strengths. The book explains some of the context of IP laws, and how they are used in practice, particularly in litigation. Every so often, the authors (or, we might guess, mainly the senior author) express an opinion in terms that are the opposite of mealy-mouthed. Whether you agree with these opinions or not, they bring the subject to life in a way that many legal textbooks fail to do. For instance, consider the following choice quotes from the book:

• The USA… has some bizarre aspects like jury trial in patent cases.
• [IP legislation] is a mishmash of compromise, some of it the result of effective lobbying by particular interest groups, some a result of muddled thinking or questionable drafting by legislators and some which is actually sensible and practical.
• One can tell this area of law is still in need of clarification when our own Supreme Court is unable to be sure whether it is an infringement of copyright to read articles on the internet.
• Even larger cases do not need more than the addition of a good solicitor and perhaps one assistant.  Sensible businessmen will ask why their lawyers want to use so many people on their case.

This last point might provoke some comments among experienced IP litigation solicitors, and raises a wider point, which is that we are all the products of our own, partial experiences. Barristers and judges tend to see litigation from a different perspective to that of the solicitor, and both tend to have a different perspective to that of the business client. The book benefits from the practitioner and academic perspectives of its authors. But there are other perspectives to be had.

A distinctive feature of this book is that it is written in a classical style, in the sense that it is simply a stream of well-written prose, interspersed with short headings. It does not pander to the internet generation. There are no text boxes, case studies, diagrams, bullet points or other aids to comprehension. There are no statistics culled from the internet, quotations from ‘thought leaders’ (other than occasional references to court cases), or other attention-grabbing features, as might be found in many a management textbook.

In other words, the authors stick to what they know, which is the oral and written tradition of English courtroom advocates. They have a great deal of useful information to impart, and they put it across well.

Occasionally, I wish they would go to the next level. For example, the book briefly discusses the pros and cons of filing a patent application with the UK Intellectual Property Office or with the European Patent Office. I wanted the authors to discuss the statistic that 85% of UK patents are now filed via the European route rather than the UK route.

What are the implications of this extraordinary statistic for the inventor who has to decide which route to take? That sophisticated patentees generally use the European route? That the UK route is mainly used by small-scale UK inventors who don’t know any better? That the UK Intellectual Property Office as a stand-alone entity is a busted flush and that the UK government should wind it up or make it simply a branch office of the EPO? Or none of the above? Perhaps it is unrealistic to expect the authors to comment on such a sensitive topic; perhaps this point is outside their direct experience.

Another distinctive feature of the book is how little it says about IP transactions. There is brief mention of competition laws affecting IP transactions, and of compulsory licensing, but hardly anything on what might be called voluntary licensing. There is slightly more in the copyright chapter than in the patent chapter. In this respect the book reminded IP Draughts of the content of Terrell on Patents or Kerly on Trade Marks , both of them serious, leading textbooks written by IP barristers, including some of the present writing team, but neither of which has much to say about licensing. 

For example, the 13^th edition of Kerly , of which Robin was the consulting editor, devotes five pages to the licensing of registered trademarks, out of a total of 1,600 pages. This is understandable (perhaps) in a heavyweight textbook on the details of IP laws, less so in an introductory guide that takes a wider approach to the subject.

In summary, Guidebook to Intellectual Property is an excellent introduction to IP, well-written, interesting and insightful, and several steps above the typical student textbook. Most newcomers to IP, whether as lawyers or business managers, will find the book very useful, both as an introduction to IP law and as a practical overview of how the IP system works, particularly in relation to applications for IP and IP litigation.

Mark Anderson is managing partner at Anderson Law LLP

This article was first posted on the blog www.ipdraughts.wordpress.com