For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Wednesday, 28 September 2011

How is IP handled in your firm?


Managerial research is devoting increasingly more time to the question of how IP is transmitted through, and processed by, a company. The questions raised are both of a positive and normative nature. Researchers both map out the manner in which IP is actually transmitted and processed within a company (e.g., is it primarily the purview of the corporate IP department or is it distributed across various departments?) and consider whether alternative arrangements might enhance the value of IP for the company (e.g., should there a a top management position of "chief Intellectual Property Officer?).

However, there does not seem to be the same degree of attention to the parallel question with respect to law firms, namely how is IP handled across departmental and type-of-practice (contentious versus non-contentious) lines? IP enjoys a special status within a law firm practice. On the one hand, it is not a basic tool of the legal trade, such as contract law, which is part of every lawyer's basic legal training and which is part of every lawyer's practice, no matter what his field. On the other hand, unlike a field such as tax law, IP is not sufficiently technical (patent drafting and prosecution being the exception) that a lawyer will eschew dealing with the subject if he or she is not a specialist in that field. It is a bold (and ultimately foolish) attorney who will deal with tax questions as opposed to seeking advice from a member of the firm's tax department. But what about IP matters?

Keeping in mind these two poles, IP seems to occupy a middle position. IP is not a core law school subject; some students take a course or two while others do not. Unlike contract law, therefore, it cannot be said that a familiarity with IP is part of the legal skill set of every freshly-minted law student. That said, there is a sense of accessibility to the subject-matter of IP (again, with patent matters perhaps being somewhat different) that comes from one's personal experience.

One encounters the subject-matter of copyright and trade marks every day; whether in print, online, over the airways or otherwise. We make numerous purchases each week based on the brand of the product; not only do we read, hear or watch copyright contents constantly but, as lawyers, we are ourselves creating copyright-protected contents. The subject-matter of IP are familiar and we are comfortable with them in our daily lives.


This all-pervasive familiarity with (at least) certain types of IP carries over to law practice. As such, it is difficult to argue that IP belongs (or should belong) to a high priesthood of practitioners authorized to dispense their wisdom on a need-to-know basis. Moreover, there is hardly any aspect of a law practice that does not find itself, sooner or later, with the need to deal with an IP matter. Unlike tax or environmental protection, IP questions arise constantly across a broad swathe of a firm's activities. And in that lies the rub: how exactly do, and should, these IP aspects be handled within a firm? A series of further questions arise:

1. Should the firm maintain a dedicated patent practice, being the one remaining vestige of the IP priesthood? If the answer is "no", then the issue becomes reasonably simple--to which patent boutique should the patent issue be referred?

2. Whether the answer is "yes" or "no", the next question becomes whether to support a separate dedicated "soft-IP group (namely trade marks and copyright) within the firm?

3. If the answer to 2 is "yes", the challenge is to delineate the fields of activity that are to be handled by the members of the group. Will they solely provide "IP support" to other departments, be the task a due diligence report, licensing agreement, or an employer-employee dispute, or will the firm's IP department also have its own areas of responsibility, separate and apart from its IP support activities?

4.If the answer to 2 is "no", the challenge is how provide the staff in the relevant departments within the firm with sufficient IP acumen so as to be able to provide a professionally responsible level of IP competency. A large law firm may be able to develop IP sub-specialists to address these needs, but perhaps at a cost of ignoring the training of personnel with a broader view of the IP landscape.

5. A smaller firm may not enjoy the sub-specialists IP option although, as noted, the circumstances of such a firm may in fact encourage the development of IP personnel with a broader view of the IP practice. Even so, there always remains the quandry of how to deal with the challenge of providing adequate specialization in such a context. Does the law firm "do the best it can", or does it seek to obtain IP specialist advice (from the dwindling number of IP boutiques) if needed?
Questions galore--any answers?

6 comments:

Hastings Guise said...

An interesting and, to those of us who specialise in soft IP (mostly trade marks in my case), controversial post. My one comment would be that there is a difference in the 'shape of the curve' for IP expertise that needs to be taken into account.

I agree that unlike tax law, it is relatively straightforward for a practioner to develop an adequate level of basic soft IP know-how. However, unlike residential conveyancing, for example, the soft IP specialism does not plateau at that point.

There is a lot of subtlety in soft IP law and practice and which requires a much greater degree of expertise and experience to fully appreciate and utilise -- producing a steep gradient between being merely adequate and being truly expert (like some of the senior practitioners I have been lucky enough to work with). This is not just of academic interest either, I have seen cases won on the fact that one set of lawyers had a better and more detailed grip on the subtleties at issue.

So while I quite agree that there is no need for IP issues to be 'off limits' to generalist practioners (in fact, the more people who are alive to IP issues, the better), I think it is also important for those practioners to cultivate an awareness of when it may be time to call in a dedicated specialist: it would be very dangerous to assume that a passing familiarity with the legislation and the leading cases is enough to get you through a complex dispute or registration issue.

Anonymous said...

I watch Holby City and Casualty regularly. Such familiarity with the subject allows me to dabble in a spot of doctoring as part of my IP practice. Maybe specialist doctors (i.e. those trained thoroughly in their subject) may consider me a dangerous cowboy, but none of my patients, especially those now deceased, are able to judge my performance.

Anne Fairpo said...

"Unlike tax … IP questions arise constantly across a broad swathe of a firm's activities" – seriously? Tax questions come up in all areas of a law firm's activities (and if they don't, questions should be being asked!)

But in both tax and IP, the question of whether a firm should employ specialists has to depend upon the extent to which the firm comes across more complex questions day-to-day: many law firms don't employ tax specialists because there isn't enough pure tax work to occupy the specialist and the firm hopes to catch problems and refer them to accountants and, in the meantime, have what they believe is enough knowledge to get by. This may, or may not, be the case.

Ventsi Stoilov said...

Great article. Well I think that when we talking about big companies it is more relevant to exist the position of IP Manager who must has a team of specialist in IP matters including lawyers, tax specialists and so on. Beside this, one other important thing is a process of building an IP culture in the company. This is crucial for the success of the relevant IP policy in the company.

Neil Wilkof said...

Anne

Thanks for the comment about the position of tax specialists in law firms. It would be interesting to get some good empirical data about this to complement our anecdotal views.

Anonymous said...

There are certain "peripheral" European countries where you indeed will find the attitude that "it is relatively straightforward for a practioner to develop an adequate level of basic soft IP know-how".

I humbly invite the Kats to investigate if the patent prosecutions are more successful than the national economies of said countries.

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