Welcome!

Welcome to my page.

This site contains details of my past and current activities, publications, conferences and other engagements, providing links wherever possible. I update it regularly (the date that appears on this notice shows when I most recently revised the site as a whole) and I welcome any comments or corrections.

Data on this site can be found under the following headings:

* Current status
* Personal data
* Education and past activities
* Main current activities
* Research in progress and thoughts on future research
* Books and chapters of books
* Articles
* Journal of Intellectual Property Law & Practice editorials
* Conferences
* Forthcoming events and engagements
* Guidance for anyone who wants me to act as a referee

Current status

Intellectual Property Consultant, Olswang, solicitors
Director of Research, Intellectual Property Institute (since January 2007)
Visiting Professor, Faculty of Laws, University College London, UCL (since 1998)
Professorial Fellow, Queen Mary Intellectual Property Research Institute (on-and-off: currently since 2007)
Editor, Journal of Intellectual Property Law & Practice (since 2005)
Editor, European Trade Mark Reports (since 1996)
Founding co-blogmeister and current blog team member, IPKat intellectual property weblog (since June 2003)
Founder/manager, Class 46 trade mark weblog (since November 2007)
Co-founder, Afro-IP African intellectual property weblog (since December 2007)
Founder/manager, IP Finance weblog (since January 2008)
Team member, SOLO-IP weblog (since February 2008)
Founder/manager, IP Tango Latin American IP weblog (since June 2008)
Co-founder, The SPC Blog (July 2008)

Personal data

Birth date: 25 December 1951
Nationality: British
Terrestrial address: 42 Saint George's Road, London NW11 0LR, United Kingdom
Telephone 07802 701059 (from outside the UK: +44 7802 701059)
Email: jjip@btinternet.com


Education and past activities

I graduated from the University of Cambridge (Clare College) with a BA (Law) in 1973 and earned my PhD from the University of Kent at Canterbury in 1977 for my thesis on the allocation of intellectual property rights between employers and employees. From 1975-1976, while I was writing up my thesis, I was a Special Fellow at the University of California at Los Angeles (UCLA).

I have taught law full-time at Trinity College Dublin (1976-1980), University of Durham (1980-1984) and Queen Mary (1984-1987), returning to Queen Mary in 1991-1992 as Herchel Smith Senior Research Fellow. More recently, from 2003 to 2006, I was Professorial Fellow at the Queen Mary Intellectual Property Research Institute.

In addition, I spent two years as Managing Director of the publishing house that founded Trademark World, Patent World and Copyright World. I also launched Managing Intellectual Property magazine, which I sold to Euromoney Publications in 1991. Between 1992 and 1996 I was Registrar of the Court of the Chief Rabbi.

For 13 years, from 1994 to 2007, I served as Intellectual Property Consultant to leading London-based magic circle law firm Slaughter and May, before moving to my present consultancy with the Holborn, London, practice of Olswang.

In 1999 I became the founding editor of the Sweet & Maxwell series of European Copyright and Design Reports (ECDR), which I edited until the end of 2006. In January 2007 I handed over the editorship to Dr Uma Suthernanen, but remain an active member of the Editorial Board.

Forthcoming events and engagements

Here is a list of some of the events I'm involved in over the near future:

Tuesday 23 September 2008: Third Annual Intellectual Property Law and the Fashion Industry conference, organised by CLT: venue - somewhere in Central London. I shall be in the chair for this action-packed programme. Full details available here.

Monday 18 May, 2009, INTA Annual Meeting, Seattle: I am moderating this year's professorial panel. Our subject is privilege and the attorney-client relationship, viewed from Cyberspace, from the perspective of a new WIPO treaty and from the United States.

If you are attending any of these events and want to be sure of saying hello - or even if all you want are further details - email me to let me know.

My main current activities

My main activities at present include the following

Olswang

Founded in 1981, Olswang has grown rapidly and is now a respected force in intellectual property, media and communications circles. The firm is known for its bright, imaginative approach to IP problem-solving and for its enthusiasm for a challenge. My appointment as Intellectual Property Consultant from 1 June 2007 provides me with an ideal opportunity to pursue my interests in IP at all levels, from the theoretical to the purely practical.

More information on Olswang and contact details here.


The Intellectual Property Institute

Since January 2007 I have been Research Director, Intellectual Property Institute, London, with particular responsibility for Innovation. I am a member of the IPI Council and participate actively in its many projects.

I have already worked together with Florian Leverve on a research project on the surgical and medical exceptions to patentability under the European Patent Convention; this project was completed in the autumn of 2007 and is now published (you can buy it here). I also supervised research by Dr Roya Ghafele on perceptions of IP as a brand. This research led to the submission of a report in March 2008 that is being used for ongoing discussion by marketing experts.

On a less formal note, in 2006 I auctioned three autographed rubber ducks for the benefit of the Institute, which welcomes funding for its many and varied projects.


The Journal of Intellectual Property Law and Practice

The Journal of Intellectual Property Law and Practice ("JIPLP") is published monthly by Oxford University Press - a leading intellectual property law publisher and one of the oldest publishing houses in the world. JIPLP, which carries peer-reviewed articles, current intelligence notes and reviews, is accessible to subscribers both in hard copy format and online; it has a searchable archive too.

I am proud to have been invited to be JIPLP's founder editor and I am committed to its aim of providing first-rate, intellectually rigorous but accessible comment and analysis of issues arising from the practice of intellectual property law and the exploitation of IP rights. With the support of a strong team of Editorial Panellists I look forward to delivering the publisher's objectives and invite contact from prospective authors.

Information for prospective contributors here; subscription details here; receive a sample issue here; contents of current issue here.


European Trade Mark Reports

I have edited the Sweet & Maxwell series of European Trade Mark Reports (ETMR) since its inception in 1996. This series, originally issued bimonthly, is now published monthly and furnishes full-text English-language coverage of trade mark litigation and office decisions drawn from the European Court of Justice, the Court of First Instance of the European Communities, the EFTA Court, OHIM, national courts and national trade mark registries.

The ETMR is unusual among law reports in that each issue comes with a succinct editorial, highlighting one or more of the legal topics covered in it. The main contents of each issue are summarised each month on the IPKat weblog.

If you have been involved in any interesting European trade mark litigation or office action and think that it merits reportage in the ETMR, please contact me and let me know.


The IPKat weblog

The IPKat intellectual property weblog is the longest-established European intellectual property blog. Founded in June 2003, it is composed by a team of four human bloggers, of whom I am one, and a cat. As of March 2008 the IPKat was receiving over 50,000 casual visitors a month; in addition, it has an email circular list of nearly 1,800 practitioners, IP owners, academics, students and enthusiasts from all around the world and is also read by a large number of RSS users.

The IPKat features news and comment on recent cases, legal and commercial developments, books, periodical publications - and lots more too. The weblog has also campaigned vigorously for swifter and more complete access to English-language versions of European Court of Justice, Court of First Instance and OHIM decisions.

In 2005 the IPKat was listed as one of the 50 most influential people in IP worldwide by Managing Intellectual Property magazine - the first time a fictional character has ever achieved a listing. A Wikipedia entry for the IPKat may be found here.


MARQUES

Founded in the 1980s to address the needs of European trade mark proprietors, MARQUES is a thriving international organisation that encompasses some of the world's leading trade mark owners. A member of one of its Project Teams, I have been privileged to assist MARQUES in the development of its Case Law Database.


Other editorial and publishing functions

I'm on the editorial board of Managing Intellectual Property (which I founded and edited for some years) and I'm the IP correspondent for the Journal of Business Law. As editorial consultant I have some involvement with the Information Technology Law Reports (which I also edited for a couple of years).

A member of the IP Consultation Board of Practical Law for Companies, I also contribute to Globe White Page's World Trademark Report and World Media Report.


Academic roles

My academic involvement in IP began in 1973 when I started by doctoral research on the ownership of rights in IP created by employees. Since then I have taught, researched and written on most areas of intellectual property.

My first teaching posts were at Trinity College Dublin and the University of Durham, following which I took up a dedicated IP appointment at Queen Mary.

At present I am Visiting Professor at the Faculty of Laws, University College London, and have a deep and meaningful relationship with the Queen Mary Intellectual Property Research Institute (Centre for Commercial Law Studies). Until 2007 I was an examiner for the University of London External LLB.

Books and chapters of books

Books and chapters of books

Intellectual Property and International Trade: TRIPs Agreement

Edited by Abdulqawi A. Yusuf and Carlos M. Correa, this is the second edition of a work that seeks to analyse the provisions of the Agreement on Trade-related Aspects of Intellectual Property Rights not just in terms of their basic meaning but in terms of their economic, political and commercial context. My chapter "Protecting Values in Industrial Designs", covers the TRIPs provisions dealing with design rights -- in practice one of the least significant areas of TRIPs/IP law on account of the paucity and lack of specificity of the relevant TRIPs Articles.

Bibliographic details: published April 2008. ISBN 9041124292 , ISBN 19789041124296v. Hardcover, 496 pp. £150.

The Exclusion of Surgical, Therapeutic and Diagnostic Inventions from Patentability Under Article 52(4) of the European Patent Convention

This is a report which was prepared for the Intellectual Property Institute (IPI) by Florian Leverve and me. It seeks to explain the principles on which treatments of the human and animal body by way of surgery, therapy and diagnosis were not regarded as suitable subject-matter for the patent grant, then it reviews the decisions of the European Patent Office Boards of Appeal over the past 30 years to see how those principles have been put into practice.

Bibliographic details: published April 2008 by the Intellectual Property Institute. 28 pp (A4), paperback £30, inclusive of postage and packaging. ISBN 978 1 874001 95 9. You can order the report from the IPI here.

Teaching of Intellectual Property: Principles and Methods

Compiled by and on behalf of the World Intellectual Property Organization (WIPO), this book consists of a collection of essays written by scholars who have been heavily involved in intellectual property teaching. Its editors are Yo Takagi, Larry Allman and Mpazi Sinjela, all of whom are involved in WIPO teaching and training programmes. My chapter is "Teaching Trademark Law".

Bibliographic details: publisher Cambridge University Press, February 2008, xxvii + 330pp. Paperback 978 0 521 71646 8. Price £95 (with online discount, £76).

Detailed table of contents here. More about the publishers here.

Emerging Issues In Intellectual Property: Trade, Technology and Market Freedom

This is a collection of Essays in Honour of Herchel Smith, a great philanthropist and benefactor of intellectual property causes, which is edited by Guido Westkamp. My chapter is "The Confusing Case of Mr Smith – Herchel Smith as Litigant", a slightly whimsical concoction that gives a brief account of the man and the surname with which he was indissolubly associated.

Bibliographic details: publisher Edward Elgar, October 2007, 432 pp. Hardback 978 1 84542 775 7. Price £95 (with online discount, £76).

Detailed table of contents here. More about the publishers here.


Trade Marks at the Limit

A collection of contemporary essays by people who are passionately concerned about trade mark law and practice, Trade Marks at the Limit was published by Edward Elgar Publishing in April 2006.

The subject matter of these essays is a topic that unites trade mark owners, practitioners and potential infringers alike – the fine borderline that separates permitted use of another business’s trade mark from a use that constitutes trade mark infringement. Apart from editing this book, I also wrote the introductory and concluding chapters.

Detailed table of contents here. More about the publishers here.

Bibliographic details: 320 pages, hardback. ISBNs 1 84542 738 6/13 978 1 84542 738 2. Price £69.95. Price direct from the publisher £62.96.


Enforcement of Intellectual Property Rights Through Border Measures

Edited by Olivier Vrins and Marius Schneider and published by Oxford University Press early in 2006, Enforcement of Intellectual Property Rights through Border Measures: Law and Practice in the EU is a major comparative work that addresses the approaches taken throughout the European Union towards the detention and subsequent treatment of goods which are detained at their point of entry into the European Union on suspicion of being infringing products. I co-wrote the chapter on UK law with Professor Alison Firth, as well as writing "Intellectual property: borders and crossroads", a concluding chapter which seeks to ask questions and to explain the problem area in terms of game theory.

Full details of contents and contributors here.

Bibliographic details: cxxxiii + 1,282 pages. ISBN-10: 0-19-928879-8, ISBN-13: 978-0-19-928879-3£175 (hardback).


Trade Mark Use

Published by Oxford University Press in 2005, Trade Mark Use is a collection of essays which I co-edited with Ilanah Simon. The central theme of this book is that the concept of "use" is crucial to many different areas of trade mark law - registrability, infringement, revocation to name but three. However, the meaning of the word "use" seems to change in accordance with its context. Does it really change its meaning or is this merely an illusion? This book provides some highly-focused analysis from practitioners, academics and senior adminstrators of the trade mark system.

Full details of contents and list of contributors here.

Bibliographic details: lxxi and 363 pages. Hardback. ISBNs 0-19-928033-9
and 978-0-19-928033-9. Price £85.


Copyright and free speech: comparative and international analyses

Oxford University Press published this collection of conference papers in the spring of 2005. Edited by Jonathan Griffiths and Uma Suthersanen, Copyright and free speech: comparative and international analyses brings together a pool of disparate opinions in reviewing this controversial and sensitive subject. I write on free speech and the (relatively) new EU sui generis database right - looking at why it hasn't hitherto been recognised as having a freedom of speech dimension.

Details of contents and other contributors here.

Bibliographic details: 474 pages. ISBN-10: 0-19-927604-8, ISBN-13: 978-0-19-927604-. £80 (hardback).



Butterworths Intellectual Property Law Handbook

The eighth edition of the Butterworths Intellectual Property Law Handbook was published in late 2007. I am the Consultant Editor of this and the previous six editions of this utilitarian, if somewhat inaptly named, handbook. In it you will find the texts of a wide range of intellectual property treaties as well as primary and secondary legislation from the United Kingdom and Europe.

This book is designed for interactive use - once you've bought it, you can insert stips of adhesive coloured paper to mark the legislation to which you most frequently refer. You can also highlight the text in yellow, orange or pink with fluroescent marker pens.

Search for electronic details of this and other LexisNexis titles here.

Bibliographic details: 1,952 pages, soft covers. ISBN 1-4057-1585-0. Price: £106.


Butterworths E-Commerce and IT Law Handbook

The fourth edition of the Butterworths E-Commerce and IT Law Handbook came out in early 2007. I have been Consultant Editor of this title since its inception. This volume, a companion to the IP handbook (above), also contains treaties and both UK and European primary and secondary legislation on a variety of topics including data protection, broadcasting, distance trading and telecommunications.

Search for electronic details of this and other LexisNexis titles here.

Bibliographic details: 2,030 pages, soft covers. ISBN 9781405715829. Price: £116.


Trade Mark Law: a Practical Anatomy

I think that Trade Mark Law: a Practical Anatomy is the best thing I've ever written. The book was welling up inside me for a long time before I wrote it and if eventually poured out during 42 eventful but exhausting weeks from September 2002 and June 2003. It was published in December 2003 by Oxford University Press. A second edition is currently planned, further particulars of which will be made available as soon as they are known.

Bibliographic details: hardback £87.50, paperback £80. 832 pages. ISBN-10: 0-19-926796-0; ISBN-13: 978-0-19-926796-5. Lots of illustrations.

Full contents, reviews and other details of the book here
You can sample 45 pages of this book here

Recent articles

A keen writer, I enjoy expressing my thoughts and ideas online and in the print media. Apart from the IPKat weblog and a string of editorials for JIPLP, the ETMR and the ECDR, I also write articles and case notes. Here's a selection of relatively recent ones:

“Strong trade marks and the likelihood of confusion in European law” [2006] 5 JIPLP 385 (abstract here)

"Evidence, shapes, profits receive courts' attention", 159 MIP 70

“An agenda for Europe’s trade mark regime”, (2005/2006) 155 MIP 43

“Summary judgment in intellectual property litigation—the Three of Harts”, [2005] JIPLP 64 (abstract and full text here)

“Trade mark law and the need to keep free” [2005] 36 IIC 389

“Going down in history: does history have anything to offer today’s intellectual property lawyer?” [2005] IPQ 225 (with Ilanah Simon)

“Pouring oil on troubled waters or inflaming the passions? Comptrollers’ opinions and the quest for happiness“ [2005] EIPR 226

“The thin end of the wedge” [2005] EIPR 31

“No marks for Hitler: A radical reappraisal of trade mark use and political sensitivity” [2004] EIPR 327 (with Ilanah Simon).

If you'd like further details of any of these titles, email me here.

Journal of Intellectual Property Law and Practice editorials

Starting in November 2005, I have provided monthly Editorials for the Oxford University Press Journal of Intellectual Property Law and Practice. These Editorials - which are typically between 700 and 800 words long - focus on matters that seem interesting or important at the time. If you'd like to read the editorials for the past year, you can do so here by clicking the icon next to the relevant issue:

*** August 2007: "A bid for recognition", discussing reactions to the first experiences of auctioning IP rights rather than disposing of (or acquiring) them in more conventional ways

*** September 2007: "The patent lottery", on recent controversy as to whether patents are really worth having

*** October 2007: "Killing the orphans", a discussion of how best to deal with copyright works whose owners cannot be traced

*** November 2007: "IP: the universal lubricant", introducing the journal's special focus on transactional issues in IP by striking a positive note as to how IP exploitation can improve the world's condition

*** December 2007: "In the slipstream", a perspective on fair and unfair competition -- both in the world of sport and in the world of IP

*** January 2008: "Office politics", a plea for a more mature approach towards the reform of IP administrative structures, based on cooperation rather than conflict

*** February 2008: "Strength or weakness?", reflecting on whether the United States should be more preoccupied about whether reform of its patent law benefits the Chinese than whether it benefits its own domestic users

*** March 2008: "No room for Asia-Pacifists?", posing the question whether the time has come to ditch the term 'Asia-Pacific' in favour of something that reflects less lazy, more directed thinking

*** April 2008: "Intellectual property and Africa: the agony and the entropy", a review of the problems facing the continent of Africa as it seeks to become more IP-savvy

*** May 2008: "Good stuff, shame about the bad press" explains why IP is seen as a "tainted brand" and considers what can be done about it

*** June 2008: "Paying for the privilege", written in the aftermath of the UK's most costly patent action to date, raises the issue of who pays -- and whether it's worth the money

*** July 2008: "New leader, new problems", a comment on the tasks facing the next Director-General of the World Intellectual Property Organization

Recent conference papers

I often participate in conferences, whether as a speaker, a panellist or as chairman. My interests cover pretty well all of intellectual property law, though recently I find myself asked to speak more often on trade marks than on other topics. Some of my recent papers are listed below:

For the good of the nation: educational, charitable and other non-profit uses of IP, CLT Trade Mark Law Conference, Café Royal, 23 March 2006

Your trade mark: use it or lose it? 11th Annual International Trade Mark and Designs Conference, Millennium Hotel Knightsbridge, 14 February 2006

Could any external non-European features be imported into the European system?, Past, Present and the Future: the Development of Trade Marks, Designs and Related Rights in Europe, 25th Anniversary Conference of the European Communities Trade Mark Association, London, 9 June 2005

Five not-so-easy pieces: trade mark infringement today, CLT Trade Mark Law Conference, Café Royal, London, 5 April 2005

Strong trade marks and the likelihood of confusion in European Law, Fordham 13th Annual Conference on International Intellectual Property Law and Policy, New York, 1 April 2005

I'm happy to participate in any type of conference - whether it's run by a professional body, a trade association or a commercial company. For further particulars, contact me here.

Guidance for anyone seeking a reference

I am usually both able and willing to write references for students and former students, colleagues and anyone else with whose work I am familiar. If you'd like me to act as referee for you, please observe the following points:

* If you are not in regular contact with me, please gently refresh my memory as to who you are. It often happens that people change their surnames; some people have the same names as other people for whom I write references, or names that are confusingly similar. Also, to my deep regret, I cannot identify people from their email names alone. If your name is not gender-specific, remind me if you are the male or female of the species.

* If I don't have a copy of your current curriculum vitae, please send me one. I don't want to miss anything that might strengthen your application. Nor do I wish to write anything that is contradicted by events in your life that occurred after we last made contact.

* Please leave extra time if I have to obtain an official college stamp for the reference. I'm not in college on a daily basis and have to organise myself.

* If I'm likely to incur postal expenses, I'd appreciate a stamped addressed envelope. I don't have access to free postage and, while the cost of posting each individual reference is not great, the cumulative cost in the course of a year can be quite a lot.

* Do be prepared for me to say "no". Sometimes I cannot recommend a candidate for a position, either because I consider that a candidate is really unsuitable or because I have already agreed to write a reference for a far stronger candidate and don't want to condemn a subsequent applicant by providing relatively faint praise. In such circumstances, a reference from someone else may prove advantageous.

* Finally, please let me know whether you get the position or not. I write so many references for people who never let me know. If nothing else, I'd like to offer my congratulations or commiserations, as appropriate.