How has the patent landscape changed over the last 40 years and how has this impacted IP case law globally?
In the latest podcast in our 'In Conversation with Gowling WLG' series, global intellectual property partner Gordon Harris speaks to the Right Honourable Professor Sir Robin Jacob - a veritable legend of the IP world.
In the first half of this special two-part episode, we delve deep into the world of patents, exploring some of Sir Robin's most important and challenging cases over an illustrious career spanning 40 years.
In Part 1, we explore:
- Sir Robin's route to the Patent Bar, from Cambridge graduate to career litigator, reaching the post of Lord Justice of the Court of Appeal for England and Wales;
- precedent-setting and influential cases spanning Sir Robin's renowned career, including musings on Norwich Pharmacal Co. & Others v Customs and Excise Commissioners , and the changing nature of IP law;
- Sir Robin's judicial career at the forefront of patents, his most difficult cases and preparation for trial, and thoughts from the sharp end of IP disputes;
- lecturing, authorship and knowledge sharing, to support the next generation of patent lawyers; and
- much more.
The Patent Bar and beyond: In conversation with Sir Robin Jacob
Gordon Harris: Good day to you wherever in the world you may be watching or listening to this. My name is Gordon Harris from the Gowling WLG International Leadership Team and this is the latest in our series of interviews with leading figures in the IP World. It is hard to imagine anyone to whom the expression leading figure applies more than my guest today, over the last 40 years in law he has been one of the best known and most influential figures in IP World as a leading Barrister in the field, Judge, Lord Justice of Appeal and more recently as Professor of IP Law at one of the World's leading universities, University College London. I am delighted to welcome the right honourable Professor Sir Robin Jacob. Good morning Robin, how are you?
Sir Robin Jacob: Good morning.
Gordon: So what are you up to these days? What is keeping you busy at UCL?
Robin: Well a lot, I am only a part time Professor at UCL so I am doing some arbitration, mediation and big new trade from just the last five years of mock trials of big cases, expert witness in foreign proceedings, international advisory work. That is what I am doing outside UCL. Usually at UCL I do not actually take a formal series of classes I go to other people's classes sometimes and join in and ask difficult questions and tell war stories and jokes.
Robin: I thought the academics that run the course would not like it but it turns out they rather enjoy it. It breaks up the two hour session, or it used to be when it was all live, now we are going to do 20 minutes, they said people's attention span is not any longer than that. I do not believe it but that is what they say.
Robin: We have out moot team for the Oxford IP moot, I am very proud, my very first team and one is my old chambers and one is in 11 South Square.
Gordon: Oh wow
Robin: So I mean giving a few kids a big boost is quite fun, people gave me a boost years ago and there is something in that.
Gordon: Indeed yeah. I did my degree at UCL and I remember the very first day there was a Dean called Jim Stevens who said you are now going to train to be lawyers which means in three years' time when I say good morning you will say what is your criteria for good and please define morning which was quite depressing but probably true.
Robin: No I do not mean anything like that! My brother was at UCL in fact my whole family were at UCl. My father was at UCL, my brother at UCL, my brother in law at UCL, my brother in Law's wife was at UCL. I did not get in.
Gordon: No you went to Cambridge instead. So how did you get into the world of IP in the first place?
Robin: Well because nobody else wanted me. It all goes back actually an experience at School in some ways. I had a friend called Robert, Alan Roberts and his daughter was Alice Roberts. He was very keen on flying and he joined the Air Cadets when we were in our A level years. Must have been my last year because I had already got into Cambridge because that is the point of the story, he took me to Biggin Hill on the back of his motorbike and we went up in a two seater Tiger Moth with biggles helmets and things. I was all shaken up with that and then I had to come back and in those days families went to the theatre together so my parents organised these trips to go and see Shakespeare at The Old Vic and I came back from Biggin Hill via South London and I had to go and see my dad first because he was in the Law Courts and I was a bit too early so he said I have got to go to a party, just go and stand in the corner it was in One Pump Court, so I did and it was a retirement party of a very distinguished commercial sort called D.N. Pritt he was obviously top top top, they did not make him High Court Judge because he was very left wing. Everybody was there Denning, Helsing, all sorts of people, I did not know who the hell they were, but anyway I got talking to this short fellow in the corner he turned out to be the chap called R.G. Lloyd and he said what are you doing and I said I am going to Cambridge, what are you reading and I said Science and he said are you already finished? Come to the Patent Bar, I had never heard of that, and come and see me. So the degree at Cambridge, my degree was not going to good in my second year and I was not going to be the Nobel Prize winner I had ambitioned to be and so I had a lot of friends who were lawyers and so I rang up my dad and said I am going to be a Barrister but still did not think of the Patent Bar, I thought I would be a real Barrister and he did that at Grays Inn and then the Grays Inn student adviser said you should do a law degree, I was very lucky he said go do an evening course and I went and told my father and said 'ridiculous, I'm doing the Bar exam', and he said I will pay for it. So I wend and did the evening course and I was taught by a young lecturer called Bill Cornish who didn't know about patents either, at that time and that went really well that degree and then I did a pupillage at the same time, I took a year off and taught at Kingston University, polytechnic in those days and my Dad got me pupillage, you just did it in that way those days with Nigel Bridge treasury junior and I did even dare ask him although looking back on it if I had asked they would have taken me, he told me that. I did not even ask to go into those Chambers and I sort of I said I will go to the Patent Bar because that is a completely backwater, very boring, very dull.
It was the best thing that ever happened and it was all because R.G. Lloyd suggested I did go and see him, he wanted to pay me a lot of money. That was suspicious, he was still paying for pupillage in those days and I found later he got people to write his speeches and so on and so forth. He was a politician. I did not go there, I did go to, first of all I tried Edmontons Chambers and Grahams Chambers but they would not have me and suggested I went to somebody in Francis Taylor Buildings so I wrote to him and he said he was retiring and go and see Walter. The place was practically falling apart when I went there, there was just four of them.
Gordon: I remember Francis saying the building was very old because I mean I arrived in IP though not quite such a securitous route but still by happen stance, I do not have any particular background really but I was working as a junior lawyer with a partner called Rupert Hughes who instructed you on the UK case and referral to the ECJ as it then was in Bay and Volvo if you remember all that.
Robin: I do not remember the case very much, what I remember, I remember coming to Birmingham, we had a meeting in Birmingham and that was quite unusual to go out for a meeting, I think Isobel Davies was there too.
Gordon: Yes she was. Yes yes that is it.
Robin: I remember having a meeting and I never got to the ECJ.
Gordon: No you did not, I went with Peter Prescott.
Robin: I always think they got that wrong. There was something very fishy going on with our copyright law at that time. Copy protecting spare parts. The House of Lords answer we cannot have that, was awful. I mean it was a disgrace. They found on the ground and then they argued, never put to the parties and was completely wrong.
Gordon: Well yes that can happen even now can't it but ......
Robin: Yes it can.
Gordon: So what was the first case you handled as a Judge, can you remember that?
Robin: Yes I can remember the first one as a Judge, I mean they put me in an Order 14 Part 24 these days, summary judgment application in a case of fraud, alleged fraud which had only recently, the rules had been changed you could not do summary judgment in a case of fraud but you could now and I remember reserving the judgment. I heard it on the Thursday, Friday coming in the weekend writing it and saying what the bloody hell have I got myself in for here. I found fraud and they took it to the Court of Appeal as of rights you could, I heard that Andrew Leggett, Lord Justice Leggett said at last the Chancery Judge recognises a fraud as soon as he sees one.
Gordon: That is a good start isn't it.
Robin: I heard that through the back door of course.
Gordon: In your early days as an IP Judge, you were very much seen by the profession anyway as part of the team with Hugh Laddy, did it feel like that? Did you work together? Did you talk about the cases with him?
Robin: Hugh and I had a very strange, we were kind of like brothers at the Bar and we saw things, we hardly ever had to finish sentences because I knew what he was going to say and he knew what I was going to say, but like brothers we also were quite rivals and it was a very not always easy relationship but of course while we were in the Court we did although in a sense I think I ran it differently from him. I was very disappointed when I came back from circuit that he had been running in the Court. It had slowed down, he used to worry too much, he wanted to read all the papers, he would read the patent right round to the little bit at the back of the patent which they had in those days, the Queen's Printers name at the very bottom on the back of the patent. So there was a rivalry, we had a comic story, we were never going on the Bench and we solemnly wrote a document, an agreement which said if either of us goes on the Bench we will buy the other one dinner at a restaurant of his choosing and we put it in the Chambers safe, he didn't sign at the beginning, I do not know why but I think it is still in the Chambers safe. It must be.
Gordon: I am going to be talking to John Caule in a few weeks' time on one of these so I will ask him if he can go and look it out for me. John Caule being the Clerk of course in those days.
Robin: I stole him from what is now 3 New Square and 6 Pump Court. He was the junior Clerk there, I was really impressed with him and basically the Chambers was not run terribly well, Blancow was head of Chambers, let everything just run, Sidney was getting on, he had been the Clerk he had been in Chambers since 1927 and he was ageing a bit even collected fees and I had to invent the fee system and you could do all those things and we could not get a decent junior Clerk because Sydney was so primed that anybody interviewed got the job on the grounds that they were interviewed and we had a bunch of really useless junior Clerks and I thought we have got to get that guy and apparently Sydney rang up John the Clerk over there and said I have been dreading this call.
Gordon: There we go, well you know it was obviously a good short because he had been around a long time hasn't he
Gordon: When you look back what do you think is the most important case you have been involved in.
Robin: Oh no doubt about it, Norwich Pharmacal.
Robin: Anthony Walden's genius idea you had not seen it all through but it was a hell of a battle as no other Chancery judge but Pat Graham would have found for us. We got the Court of Appeal they thought it was ridiculous and threw us out. Then we had an application for leave to appeal which took all day in the Moses room of The House of Lords, we were very interested in a thing called Section 3 of the Finance Act which never surfaces in the main case at all. We got ourselves organised it was a huge amount of work but the first time anyone had ever photocopied authorities was that case. We did it because we were photocopying lots of ancient books and lots of things that they did not have copies of and the client's said they would do it, solicitors could not do it and they did it and then they said well why do we not do the lot? I think they still have the five volumes in Chambers. You can ask John that too. We said we thought they were soft on what they would call crowd privilege (public interest) the Government protecting wrong doers did not sound a very attractive proposition we thought we could win that one first and then they want to fine us down. We got to the House of Lords and Anthony got up and Lord Reed said Mr [unclear 13:32] first. And off we went and it went on for about the whole first week and a bit of the second week.
Gordon: Week, wow!
Robin: Oh we have not finished yet. The story went on into the second week and I think on the Wednesday of the second week we finished and they said they would in early morning, because we walked up and down the corridor and they sat in there, you know that long corridor in the House of Lords, they walked up and down and lunch came and lunch went and at quarter to four the door rang and the usher came out, Counsel! We all came in and Reed said, by this time, they had lost one of them Kilbrandon had been sick and they just carried on with four and Reed said Mr Walton, Mr Olivier the lordships are evenly divided we want you to come back next week and re-argue it and Lord Kilbrandon will be back.
Gordon: And did you?
Robin: We won five nil, we never knew which two had changed their mind.
Gordon: Wow, so when it was two all you did not know how that split happened?
Gordon: Well you can always sell an important case when it applies its name to something and has stuck with it ever since so you know we still talk about Norwich Pharmacal ordersto this day.
Robin: I know, it is better than calling them whatever they called now.
Gordon: Well indeed it is like the Anton Piller which is now search and seizure and how very prosaic and unromantic that is but there we are.
When I was a student in London I used to go and watch Lord Denning in the Court of Appeal, I used to love listening to his voice and I have always felt like there was a little bit of Lord Denning about you, you have a pretty strong sense of justice and willingness to make the law fit around the needs of justice where necessary. Is that fair?
Robin: I do not actually think it is really. I think I follow the law much more than Denning did. If ever a star felt fast it was Denning.
Robin: I mean I reckon, you told me you were going to ask this question, I look back and I can only think of he was sighted to be in my entire judicial career maybe three of four times.
Robin: By the time I had got on the bench his star had gone.
Gordon: It is interesting isn't it, you still have a bit of him around Estoppel I suppose but yeah it is a fair point. The case I had in mine was one of mine actually that you may or may not remember, a very long running entitlement case called Simpress and Malaya which was argued in front of you in the Court of Appeal by Peter Prescott and we were dragging up 19th century authorities and I think you knew who was right and who was wrong. You called both the main protagonists liars in your judgement actually and they were but I was always very grateful to you because I felt like we did bend things a little bit to get the right outcome. Do you have any recollection of that?
Robin: I remember the name but I cannot remember what it was about at all. Was that the one where there had been a previous finding?
Gordon: That is it
Robin: Yeah well that was a very plain case it was not an injustice I do not think I was bending anything.
Gordon: The guy had gone off and had one of those moments when he decided he did not want to go to his death bed having lied.
Robin: That is right and he confessed well that was new evidence, it was immiscible and what was the matter with that? You do not often get a witness later on who will get believed by the judge coming on and saying well as a matter of fact I was lying then.
Gordon: I know, yeah. So we have talked about you know the most important case was Norwich Pharmacal, what are you most proud of?
Robin: Well it actually is a sort of follow on, of all the things the biggest accolade I ever got came out this way. I got Tom Bingham to lead me in a case called Columbia Trademark in the European Court of Justice, the first big reference, the second reference from this country, with references from Germany and Denmark too. He came over a bit late and we were in the bar of the hotel I think it was a Holiday Inn at that point opposite the Court and he was pretty upset because he had just lost in the Court of Appeal in his favour and the other two Denning in his favour and somebody else against him in a case called Dee and the NSPCC and the NSPCC for whom Tom appeared had been ordered to disclose the name of an informer who had said that somebody was, the plaintiff was beating up her kid. She had brought a negligence action and she was wanting on discovery. The master had ordered the name and disclosure with my Father. The Judge had said no and in the Court of Appeal two one and said yes. I said I am sure we had some stuff about all this in the search we did for Norwich, public interest and we saw everything possibly it could be in Norwich. We just discussed it and went on as we did against Columbia and then a week or so later I got a telephone call from Tom would I be his junior in the House of Lords. We won five nil then.
Gordon: That is fascinating how that comes about. Do you and you may not want to answer this question it is up to you really. Do you, can you think of a judgment which with hindsight you might had got wrong and you wish you had....
Robin: I know one I did get wrong, that was Connor and Angiotech and I plainly got that wrong and Hopman was right, he reversed me a number of times, I think I was also completely wrong in the case about inventorship, partly because the simple point which they knocked me over was inappropriate, it was all done just in some other way. Then I think I brought in in the end. I cannot think of any others I got definitely wrong.
Gordon: I remember Connor and Angiotech because at the time it felt like a real high watermark in obviousness and then the House of Lords sort of rode it back a bit but...
Robin: it was ridiculous I mean I am now thinking about writing an article about plausibility at the moment and I think they got all that wrong, I don't see why an inventor has got to be implausible why should why is it more important, is it bigger the invention may be. If it works.
Gordon: I am going to look forward to reading that because I must admit the whole concept has developed a knife of its own. It is not exactly new news I mean it has turned up in judgments all down the years but it has suddenly become the buzz word. Obviously you are still taking that kind of level of active interest in what is going on in the law but now you are retired as a Judge when you look at the cases now are there any current issues where you would love to go back and have your say, I mean I do not know how fascinating you find the whole set friend stuff.
Robin: I do not feel that I want to stay on set friend frankly. It has got to the position which I put out in a paper in 2014, I run these international conferences which I have been running every two years run on patents and telecoms or patents and now telecoms and internet ate things which was due to happen of course this year but it is not going to, I did manage to do it last year in Tokyo. Any way I put out a paper for that in 2014 and we were doing it with George Washington around the world and in DC and it is what I said, it is contract law, third party can enforcement the contract under French law the rate has to be perfectly sensible, the big problem in that branch of law now is competitive jurisdictions anti-suit and anti anti-suit and may be anti-suit cubed injunctions.
Gordon: Yes but of course the sort of resurgent Chinese jurisdictions are having their sya as well and that completes matters mightily.
Robin: Yes I mean also China itself cannot make up honestly they want to pay anything in the first place and not that simple now Huawei is one of the big holders of SEPs for 5G, may be the biggest.
Gordon: Yes, quite right.
Robin: I always wonder whether they think they won or lost the Supreme Court case.
Gordon: Well that is one of a number of recent Supreme Court judgments that have been a bit ambiguous and I going to ask you about that because in your day, there was Lord Hoffman in what was then the House of Lords, you had Willie Alderson in the Court of Appeal, you, High Laddy, Nicholas Pumpfrey in the High Court, it was a pretty formidable team, now we have got Lord Kitchin, we have got Colin going to the Court of Appeal, we have got Richard Meade appointed, do you feel that we are getting another contingent of strong IP Judges at the moment?
Robin: Yes we are, they are probably stronger, overall than may be a big strong than it was then. I think we are very well placed and we may not have seen the end of it.
Gordon: No there is a strong rumour and I am not going to ask you to speculate about that but there are various rumours, no neither do either of us. It is unbelievable, unbelievably cloak and dagger these days.
Robin: Well it is ridiculous, I mean the appointment system is completely barking mad.
Gordon: It is not transparent I give it that.
Robin: No it is also incredibly ponderous.
Gordon: Yes there seems to have been so many hurdles to jump these days before you can get anywhere, I mean it is .......
Robin: You have to apply, I mean I did not have to apply, I got sent form, I got a letter from the Lord Chancellor's permanent secretary. Dear Robin, as you know from time to time I discuss matters with senor members of the Bar. Perhaps you would be kind enough to get your Clerk to make an appointment with my secretary for tea.
Gordon: Then you know what that...
Robin: I had no idea that is what he had in mind actually
Gordon: Are you glad you did?
Robin: Oh yes, it is a fantastic job, I mean the Bar is bloody hard and Patent Bar particularly hard partly because you are expected to do Trials and that means cross examining Professors, Nobel Prize winners on their own subject.
Gordon: Right yes it is when I see the level of preparation that goes in the last few weeks and during a Trial it is awesome, I am amazed that people are not God knows what sort of performance enhancing drugs get taken at that time.
Robin: I tell you what we get, my last case was Kyron and we had a very good team at Bristows, everybody in that team did well afterwards, one of the secretaries became a solicitor, I think the fellow was a paralegal, I think he has quite a successful business not in IP, everybody did fine except one person. Anyway I got this team together, my junior was David Kitchin and my second junior was Richard Meade and I said we are going to have to work on weekends partly because the solicitors had meetings with the clients and you have to actually get on with it sometimes and just get more out. Richard came in with a small volume over that, the World's Filthiest Jokes, he said we are going to be reading from this every hour. So that is how you keep yourself sane. There is a follow up story too because Peter Prescott was one of the Silks on the other side and when we finished this Richard got hold of one of the standard Bristows looking dollies, and marked it up as volume 50 and took all the papers out, it was a redundant volume and put it through a hole maker and stuck this thing inside and went up to the clerk and said next time some papers come down for Mr Prescott would you put this in. We learnt Peter was not always reading his papers and he never found out as far as we know. I think that the trial Simon Thorley was in desperate [straits wanted to put up a volume about worms and what the hell they had to do with the virus I do not know, never did find out, but anyway he put it up and he said may we call this volume 50. Three of us broke into laughter nobody else knew what why we were laughing.
Gordon: I did a couple of big cases with Peter and the thing was the fact that he would arrive for a 10:30am start at 10:29:57 you would just be thinking he would not make it and then the door would open and he would sweep in but yeah it was all good fun.
So let us end this section of our discussion on a high note, you know you told a few funny stories down the road but what was the funniest thing that happened to you in Court?
Robin: Well I do not know I think that volume 50 one was actually one of them. There was a moment where I cannot remember what the joke was, it does not really matter, but whatever it was Jeffery Hobs made the joke, I was the judge and I could not stop laughing. It was a case about dirty books. I do not know what Jeffery said but I was in a fit of giggles and I finally managed to stop and I said Mr Hobs I am supposed to make the jokes and you are supposed to laugh.
Gordon: When a fit of giggles descends it can be infectious cant it round the whole Court. Well thank you very much indeed Robin, I am delighted to tell you we are not stopping there. Robin has kindly agreed to make this a double header so we will be back for a second session moving onto a few more contemporary topics maybe but not least the fatal plight of the undivided Patents Court and I will look forward to that very much but in the meantime thank you very much again to Robin and to all of you for listening in.
Thank you very much.
Part 2 - coming Wednesday 27 January
In Part 2, Gordon Harris continues his conversation with the Right Honourable Professor Sir Robin Jacob, as the pair talk:
- Sir Robin's Professorship at University College London, and what he is seeking to achieve in his post;
- patents post-Brexit and the survival of the European judicial collaboration following Britain's departure from the EU;
- the implications for IP professionals and the UK patent office if the UK is to drop the EPC system;
- opportunities for the next generation of intellectual property lawyers entering patent litigation;
- the influence of Artificial Intelligence (AI) in IP and how AI is changing the approach to copyright and patents; and
- much more.
In Conversation with Gowling WLG
Our 'In Conversation' series delves into the world of intellectual property, speaking with leading figures in industry. Throughout the series, we build a picture of how the title="intellectual property">IP world works, gathering insight into the latest trends and developments.
Missed the earlier episodes? Listen to:
- Episode 1: ' Inventor or creator: How is AI's rapid development influencing the evolution of IP protection?'; and
- Episode 2: 'Blowing away the competition: design evolution, and what it's like to be head of IP at Dyson'.
- Episode 3: ' Interviewer to interviewee: intellectual property journalism, evolving media with an ever-evolving sector, and what it's like to be managing editor at MIP?'.
- Episode 4: The UK Supreme Court, patent infringement, and the challenges of judging IP cases: In conversation with Lord Neuberger.
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