By Andrew Currier, P.Eng., LLB
Andrew Currier is CEO and co-founder of PCK and provides IP solutions to global organizations. PCK is Toronto based with offices in the United States and worldwide associations.
PCK is a trusted intellectual property consultancy for all businesses that creates and facilitates critical thinking and innovation for people looking for meaningful intellectual property advice.www.pckip.com
Make IP part of your business and brand plan
Intellectual Property is a collection of intangible legal rights associated with creations of the mind. Because it is a creature of law and relatively obscure, it is a complicated and poorly understood area of law. At the same time IP is an absolutely critical aspect of running a business. For this reason, consumers of IP services can find it very difficult to find IP firms and practitioners that provide excellent value and relationships. The IP market can be compared to the so-called “Lemon Market”, which references the difficulties for buyers in assessing the quality of used cars. This can lead to cynicism toward the IP system as a whole. In the end, however, such cynicism becomes self-defeating in a competitively fierce global economy where creations of the mind can have staggering value.
The good news for companies is that there are a lot of IP service providers out there. In this post I attempt to provide some guidelines for helping companies to assess IP counsel and choose the right one.
Originating drafter vs. associate filer / Global perspective vs. domestic perspective
This is a huge but subtle distinction between IP professionals who on the surface have the same qualifications. In short, some firms primarily focus on “originating drafting” while others focus on “associate filing”.
An “originating” firm has its critical mass of professionals and business focused on helping innovators and brands to create patents and trademarks from scratch. The very best of these practitioners also have a very strong grasp of business fundamentals and will work with the client to capture IP assets in a manner that creates meaningful barriers to entry. An “originating” firm also tends to have a strong understanding of IP regimes in several jurisdictions and how to coordinate IP strategy across those jurisdictions.
An “associate” firm tends to specialize in taking IP that has originated in a foreign jurisdiction and getting that IP registered in their local jurisdiction. An “associate” firm is an expert within its local jurisdiction. An “originating” firm in one country typically instructs an “associate” firm in another country.
Nearly all firms do a blend of both, however, the culture and strengths of each firm can vary significantly depending on whether the firm emphasizes “originating” vs. “associate” work.
To find out a firm’s strengths, ask them the ratio of patents and trademarks that they file domestically on behalf of foreign entities in comparison to applications that they draft and file internationally. Alternatively, you can query patent office databases such as uspto.gov and cipo.gc.ca and look for your firm’s name.
Flat fee schedule vs. hourly rate
The IP system is relatively mature and so the main question for any client is being confident that value is being delivered for the fees they are paying. IP firms have historically used some blend of “flat fees” and “hourly rates”; however, as process engineering principles are applied to IP, it is increasingly possible to set flat rates for the vast majority of all IP services being rendered.
It is therefore important when interviewing an IP firm to clearly understand how they bill. While there are hourly rate firms that do provide excellent value, of late it is more common and reasonable to expect that firms will adhere to an agreed flat fee schedule.
Be mindful of pretend-flat-fee schedules. I.e. Firms that say they bill on flat fees, but have many hidden fees and still do many tasks on hourly rates.
Ideally, a flat fee schedule has no hidden charges and the firm should only bill on completion of an event. Flat fee schedules of this nature can make budget planning much more predictable and assessment of value-delivered clearer, thereby helping the business owner to properly plan their business.
Overall it is completely reasonable to ask your IP firm to be totally transparent with how it charges and when it charges.
Ability to file directly before various patent offices
The primary value for a client is the creation of IP rights and effective advocacy in getting those rights issued. However, the IP system is still national in nature requiring the use of local professionals in different jurisdictions.
Many firms do boast professionals who are qualified in multiple jurisdictions. For example, most Canadian patent agents are also qualified to practice directly before the US Patent and Trademark Office, obviating the need (and cost) of having your Canadian agent hire a US “associate” agent to handle your work before the USPTO.
Find out just where your firm’s IP professionals are qualified to practice.
Capacity to handle volume and scalability
As mentioned above, the primary value for a client is derived from the advocacy skills necessary to create and issue IP rights that reflect barriers to entry for the client’s business.
For a company with just a few IP filings, an in-house agent or solo practitioner can be perfect. But as the number of filings begins to increase, it can be cumbersome to manage the increasing volume. Each IP asset (patents and trademarks) can generate 50 to 100 inextensible deadlines over its lifetime. From personal experience, it is hard for an individual practitioner to handle much more than 50 IP assets without serious risk of a deadline bring missed.
For any client with scale, the IP practitioner can be expected to need clerical staff backed by a robust information technology system to manage the volume efficiently, accurately and cost-effectively.
To find out your firm’s strengths in this area, ask them what software they use for managing files and the number of support staff they engage. Also ask what kind of internal firm resources are dedicated to managing software, as the legal profession is generally behind other industries when it comes to automation. Carefully posed questions and live demonstrations of the firm’s software is a good indication of the firm’s strengths when it comes to the ability to effectively handle scale.
Litigation support and corporate law
A logical question is whether a firm can handle the commercialization and enforcement of a particular IP right. IP enforcement actions are relatively rare, but anyone holding IP rights should be prepared to enforce those rights.
On its face, a full service law firm often has the advantage over a boutique firm because the IP corporate lawyers and litigators are co-located with the patent and trademark agents, meaning they can chat with each other and work on strategy. This advantage may be real or illusory, since the firm may have strengths in one area or another which effectively dominate over the other area.
On the other hand a boutique IP firm may have in-house litigators, or rely on external law firms to provide litigation support. Since many IP enforcements occur outside of the home country where the agents are located, co-location with a local litigator may not practically mean much. If the boutique firm is reputable in acquiring IP rights, then the boutique firm may be a better choice since the core business of the firm is focused on the client’s needs.
Careful probing is needed. Looking at publications like Intellectual Asset Management (IAM) or Managing Intellectual Property can give a sense of where the firm’s strengths actually lie. And of course nothing beats a referral from a trusted third party.
Strategic capabilities vs. technical capabilities
All firms boast strategic abilities, making it very hard for clients to assess which firms have genuine strengths in intellectual property strategy.
The main item to look for here is actual experience in industry or a firm culture that understands business. The point is that IP rights are barrier-to-entry tools and so the IP rights need to be crafted to create meaningful barriers-to-entry. Deep understanding of client technology is a must and the vast majority of patent agents easily demonstrate technological capabilities. However, the ability to map a client’s technology to a marketplace point of difference is an added skill that is harder for patent agents to develop when their training has focused on legal formalities and procedure.
A practical way to assess strategic capabilities is to discuss your business plan with your patent agent. You should be able to tell fairly quickly if your patent agent is successfully echoing back the details of that plan and how they can develop IP rights that support your plan.
Technological innovation is recognized around the world as an important driver of economic growth. While the world of intellectual property can seem daunting, it is a critical piece of a successful business. The right IP counsel is out there and is an important part of your team. The search may be difficult but it’s worth it.