Honest IP: an interview with Sir Robin Jacob

At this year’s International Trademark Association annual meeting, the Rt. Hon. Professor Sir Robin Jacob estimated that 81 million business cards would change hands over the course of the meeting if every attendee exchanged cards with everyone else. This figure may seem outrageous, but it does highlight how prominent IP has become.

When Jacob started out in intellectual property law, large UK law firms had no IP practices; IP litigation was left to a small band of boutiques. The IP legal sector has grown substantially in the UK and abroad since then. Try counting the number of IP practices there are today in a jurisdiction such as the US, and Jacob’s business card figure may seem plausible.

“I don’t think anybody realised that IP was going to change, but then it did, partly because of a new High Court judge who started finding for plaintiffs, and partly because the world changed,” says Jacob. “I think it changed in the UK first before anywhere else in the common law world.”

The UK’s IP framework may now act as an inspiration to emerging jurisdictions looking to meet demands for IP protection, but this has not always been the case. “Britain was considered to be a backwater when I started out,” says Jacob. The UK has grown to love IP, making changes to its IP framework as and when it has needed to, whether through legislation or the courts.

IP review

At Prime Minister David Cameron’s request, Professor Ian Hargreaves, a former journalist, made 10 recommendations to the UK’s coalition government for improving the country’s intellectual property framework, on May 18.

Hargreaves said that he had found the UK’s IP framework to be “falling behind what is needed” to boost innovation and growth in the UK economy.

"JACOB IS NOT CONVINCED THAT HARGREAVES WAS THE RIGHT PERSON TO BE MAKING RECOMMENDATIONS ABOUT THE UK'S IP SYSTEM IN THE FIRST PLACE."

Hargreaves’ recommendations included copyright exceptions that would allow copyrighted material to be parodied, archived by libraries and used in non-commercial research. He also recommended that ‘format shifting’—the transfer of a copyrighted work from one medium to another—should be allowed, and legislation should be enacted to make ‘orphan works’ available for licensing, ensuring that nothing is unusable because a rights owner cannot be found.

The UK government has accepted all of the recommendations and plans to implement them during the current parliament, which is due to end in 2015. But Jacob is not convinced that Hargreaves was the right person to be making recommendations about the UK’s IP system in the first place. “There’s no reason why Professor Hargreaves could say anything useful,” he says. “He talked about the litigation system, but he’s not said anything useful and is not going to solve the litigation system for a moment.”

Redrafting

Jacob is also wary of Hargreaves’ recommendation that the UK’s copyright laws should be reformed. “I think that’s been due for some time, frankly,” he says. “But if that isn’t drafted properly, we’ll end up with a mess.”

The UK’s 1988 Copyright, Designs and Patents Act was given to a parliamentary draftsman—a legal counsel who prepares legislation that is to be passed into law—who did not have a specialist knowledge of the subject. Jacob doesn’t understand why. He says: “I don’t think it was a useful exercise. The 1988 Act changed a lot of things around in form, but it didn’t change much in substance, and you don’t want to do that.”

This problem is reflected in Europe, according to Jacob. He says that the quality of European IP legislation is “extremely poor”. He explains: “Not one of the pieces of legislation is much good, frankly. For example, the quality of the European Patent Convention (EPC) compared with the trademark and design directives and regulations is very marked indeed.”

"THE SENSIBLE THING TO DO IS TO SAY THAT IF YOU WANT TO USE A COPYRIGHT WORK AND YOU CAN'T FIND THE OWNER, THEN YOU MUST MAKE REASONABLE EFFORTS TO FIND THE OWNER."

He says that the EPC was drafted with due care and attention—over a number of years—by specialist committees that “actually knew about the subject”. EU legislation, however, looks like it was “written on the back of an envelope on a Friday afternoon when they all could hardly wait to go and have a drink”. He adds: “They really need to reconsider how they draft this legislation. It’s not just a question of lobbying; it’s a question of decent drafting for what you’re actually trying to do.”

SMEs

Making the UK IP litigation system more accessible for small and medium-sized enterprises (SMEs) was one of Hargreaves’s recommendations, but Jacob says that this was already being done.

The UK’s Patent County Court (PCC) was reformed in 2010 in the hope of making it more affordable for SMEs. Reforms included a two-day time limit for trials and a £50,000 ($82,500) recoverable costs cap on final liability determinations. Jacob says that the introduction of His Honour Judge Colin Birss QC to the PCC increased the county court’s accessibility.

Jacob says: “He has done one really big thing; he has said he is going to run this court for small cases only, which no previous Patent County Court judge did. Big cases will get booted upstairs to the High Court. There are genuine little cases and he can deal with them, and he will deal with them. So far, so very good.”

Copyright orphans

Hargreaves’ Digital Copyright Exchange will not solve the orphan works problem, according to Jacob. Hargreaves said that a network of interoperable databases to provide a common platform for licensing transactions should be created to “boost UK firms’ access to transparent, contestable and global digital markets”. Licensing the copyrighted works of unknown authors through such a system may make them more visible and so increase the chances of them being spotted by their rightful authors.

“The sensible thing to do is to say that if you want to use a copyright work and you can’t find the owner, then you must make reasonable efforts to find the owner,” he says. “Having done this, if you haven’t found the owner, then there should be no injunction and there may be a royalty to be assessed by the Copyright Tribunal.”

Jacob says that this would “actually crack the problem”, because “if you don’t look after your property as a copyright owner then you can’t expect anyone to respect it.”

Patent harmony in Europe

All businesses want their patents to be valid throughout the whole of Europe, which is something the EU has been trying to do for decades.

It wants to introduce a unitary patent and a European patent court, despite objections from some national governments and the Court of Justice for the EU’s (CJEU) rejection of the draft agreement proposing a European patent court in March. In theory, the unitary patent would grant protection to an inventor in all the jurisdictions that sign up to it, but in practice, Jacob says, this might not be possible.

“They’re not going to have a European patent without a European patent court. It’s just not going to happen. The Commission has made it fairly clear that it isn’t going to happen,” says Jacob. He also says that the proposed European patent court that was rejected by the CJEU needs to be changed.

Jacob says: “It is very important that the CJEU does not have jurisdiction, by reference or otherwise, on substantive patent law. If they start pronouncing on obviousness, the construction of patents or some sort of doctrine of equivalents, there will be chaos in Europe. And it will take forever. Nobody wants it.”

Jacob says that the CJEU is a good court and cites its decisions on the unification of the EU and Value Added Tax as proof of this. But the CJEU, he says, does not do well in commercial law. “It’s not a commercial court, and when it comes to its commercial decisions, it’s really not that good,” he explains. “And that’s not surprising, because there’s hardly a commercial lawyer amongst them.”

Intellectual property has changed beyond recognition during Jacob’s career, but the same old problems persist. Growth still needs to be boosted, authors still need to be protected and European patent enforcement still needs to be harmonised. These issues will not be solved in a day, but the UK and Europe’s IP frameworks are going in the right direction, and demand for IP has never been higher.