In Conversation with Simon Thorley, QC

An Interview with Simon Thorley QC

An Interview with Simon Thorley, QC

In a rare opportunity, our colleagues from the Intellectual Property Office of Singapore got to sit down and chat with distinguished advocate, Mr Simon Thorley QC. The discussion covered the gamut of Intellectual Property topics – from patents systems, to Singapore’s position as an IP dispute resolution hub – but was always enlightening. Read on for more…

Mr Simon Thorley QC is a well-regarded practitioner of Intellectual Property (‘IP’) with over 40 years of experience under his belt. Mr Thorley made his foray into the practice of law in 1972 and has since clinched top spots in UK life sciences, patents and trademarks research.

He was appointed a Queen’s Counsel in 1989, and held a number of high-stake positions including, Deputy High Court Judge (England and Wales) and Deputy Chairman of the Copyright Tribunal (UK).

 

Amongst his innumerable accolades, respected publication Chambers & Partners described him as “the best advocate in the Patent Bar” in 2014. Since 2015, he serves as one of the high-calibre international panel judges of the Singapore International Commercial Court (‘SICC’), a forum designed to deal with transnational disputes.

____________________________________________________________________________________________

IPA: What first got you interested in intellectual property?

Mr Thorley: Like many things in life, a total accident. I was about to go into university to read chemistry, when I suddenly realized I wanted to do something else.

I started talking to a father of a great friend of mine who worked for a firm of solicitors that did a lot of patent work. He told me, “If you are a chemist that could be very useful for you as a technical background if you become a patent solicitor.” So I said to him, “Can you tell me what a patent is and what a solicitor is.” He duly did so I applied to university to read law.

That move was more or less unheard of in my day. People who read law usually had studied English or history, and scientists didn’t do that sort of thing. Nobody taught IP at university when I was there. IP simply didn’t exist, not even as a post-graduate course.

I found out about barristers through an interview with a solicitor. He said that it was very difficult to move from being a solicitor to a barrister, and that it was somewhat easier to move from being a barrister to a solicitor. He suggested that I try being a barrister first, and if I didn’t like it then be a solicitor. And that’s what I did! I became a barrister – not realizing that 42 years later I would still be a barrister.

I was terribly lucky as I entered the IP world in 1972 when it was slowly becoming a growth industry. A lot of inventions came out in the 70s and 80s; coloured TV, personal computers, new pharmaceuticals and so on. I sat on the top of a very nice wave. It was a very interesting time for the IP world.

IPA: Are today’s patented inventions more incremental or disruptive?

Mr Thorley: There is always a challenge of whether you should allow patents that would still permit other industries to develop; or should you allow patents which in effect replace one industry with another.

Take digital cameras for instance. They have almost totally replaced film cameras. Kodak and Polaroids have almost disappeared. If you ask me whether it has anything to do with patents, or if it’s a good thing, I would say that I think that is just the way it is. The patent system undoubtedly promoted such progress, but I don’t think it is the cause of it.

Is it disruptive? I don’t see patented inventions as being more incremental or disruptive. As mentioned, they’re part of progress. A necessary part of having a patent system.
IPA: IP rights are a 2-sided coin. IP lawyers call IP rights “protection”, while competition lawyers call them “monopolies”. In your opinion, on which side of the coin does the balance truly lie?

As IP practitioners, we often lose sight of the fact that patents are an exception to the general rule of free trade. Thus, they should not be handed out lightly. The role of patent examiners is not to grant patents. Their job is to scrutinize the granting of patents, as they are acting as a gatekeeper of giving people monopolies against the freedom of trade. On the other hand, there are people who think that the patent system is open to unjust manipulation by people with deep pockets; that this manipulation set the industrial revolution back by decades.

I think that’s slightly overstated. I haven’t looked at it in much detail but undoubtedly patents can be used as a tool to impede economic progress. One has then to look at it and ask if we can we get anything from history.

The first patent code came out of Venice in 1474, a time with many great Venetian traders. In the UK, it was the Statute of Monopolies in 1623. In 1790, President Jefferson opposed monopolies in America, and only recognized the value of limited monopolies. In the 19th century, there were many countries that opposed patents, for example, Germany and Switzerland. In fact, the Swiss rejected patents in their law on a couple of occasions and pressure groups arose. Finally, in 1883 the Paris Convention came about, followed by the Berne Convention on Copyright, then the watershed Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS’) in 1995.

That was not a complete history lesson, but what I have observed is that the system has survived and evolved and has become accepted worldwide, notwithstanding the fact that from time to time, certain powerful people have said that it shouldn’t exist. By the 20th century, world economies realized that there are benefits in having a patent system.

IPA: What, then, makes a good patent system?

Mr Thorley: There are four issues to address. First, does the patent system adequately reward inventors? That is the starting point of the patent system. There must be an incentive for the inventor to publish his information rather than to keep it secret for as long as he can.

Second, does it promote investment in research and development (‘R&D’)? There must be willingness to spend money on a particular line of research. As such, there must be a hope of getting a patent at the end of the research process.

Third, we must ask ‘to what extent does the patent system distort technological progress’? R&D should promote progress, but in some respect it may also stultify progress as you may not get compensated adequately for the money you put in.

Biotechnology is a particularly worrying area. Everyone knows we want a cure for Alzheimer’s. All the companies invest all the R&D into a cure for that. Would it not be better if they pooled resources and one did research for Alzheimer’s, and the other did research for Hepatitis B?

Finally, one has to be very cautious against abuse. We have seen that recently with the rise of patent trolls. I think it’s fair to say that in United States (‘US’) and Europe there have been too many patents being granted. There are many trolls claiming that a manufacturer must be infringing one of the thousands of patents out there.

I think one needs to have a robust system of examination. The patent system has to keep a close eye on itself, to ensure that the patent offices are not offices for granting patents, but offices for scrutinizing patents and doing so as fast as they possibly can. The default position should be that you do not get a patent, except for a good invention. Only then will the system work. That is utopia – I accept. But that is really the last part on abuse. I think the way to cure the abuse is to make sure the scrutiny of patent applications and granting of the patent is rigid and fast.

IPA: How attractive is Singapore as a forum for international dispute resolution?

Mr Thorley: I recently spoke at a conference in San Francisco on ‘Dispute Resolution in Asia’. What was totally apparent is that the SICC is the only arbitral court which has transnational jurisdiction. That is an enormous advantage. The extent to which people will use it I don’t know, but we will just have to wait and see. For now, there seems to be an awful lot of interest in it.

It is certainly a ground-breaking step by the Singapore legislature to set up a court which has the power to hear these transnational disputes. Hopefully, the system of enforcement will become much simpler with The Hague Convention on Choice of Court Agreements (‘Hague’) that Singapore recently ratified, as there is a provision within Hague on the “Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters” which governs the enforcement of decisions in other signatory nations. If the US can come on-board, that would be a very valuable addition to the SICC.

Singapore is currently recognized as being a sound dispute resolution centre and an attractive forum because of the Singapore International Arbitration Centre (‘SIAC’), which has proved itself over the years. Hence, this may well be the case with the SICC, which will hopefully prove itself over the years.
IPA: How can Singapore increase its attractiveness?
Mr Thorley: I think publicity is the answer to that. People have got to realize that the SICC system is there, and what it can do for them. I was speaking to US lawyers at the conference and they had not appreciated that there was this possibility of using Singapore as a centre for dispute resolution within a court system.

Like all new ventures, it has got to prove itself by its results. I think the idea will be appreciated, because I believe it’s very attractive to industry at large.

Stepping back, I’m of the opinion that the industry wants certainty. They don’t want legal disputes even though they are an inevitable part of commerce. Things are going to go wrong. People want to blame somebody. People want to enforce their rights. Other people think they have no rights to enforce. People are going to need to have recourse to some form of dispute resolution mechanism. But on the whole, they want to get an answer. Of course there are always going to be litigants that will use the litigation system as a weapon for commerce. They use it to delay, to create uncertainty, to create expense. That aside, many litigants want an answer and be able to move on.

To have a well-recognized tribunal, whether SIAC or SICC, that has the ability to produce a judgment in a relatively short period of time, is definitely an enormous advantage to industry.

I cannot emphasize enough that people as a whole want legal disputes behind them. They do not want to lose. In some cases, however, they would prefer to lose quickly than to win slowly.

____________________________________________________________________________________________

Interview conducted by Chung Siqi of The IPA Beacon Editorial Team