Author Matt Sammon
Your brand is important to you and your business so your selection of an Intellectual Property Law Firm to work with should be carefully considered. From independent IP law firms to huge global Solicitor firms, there are a multitude of options to choose from so identifying the right solution for your brand can be tricky. In this article we’re sharing guidance and tips to help you choose the best IP law firm to suit your business’ needs.
Can you manage your own Intellectual Property?
Before you start your search for an IP law firm, you need to decide what aspects of your Intellectual Property you can manage yourself and where you need help and guidance. The UK Intellectual Property Office manage the registration of Intellectual Property rights within the UK and provide a lot of information on the different types of rights that can be protected and how to go about it. Whilst managing your own IP can be very cost effective it can be time consuming and becomes more complex as your business grows.
The two types of IP Law Firms
Appointing an Intellectual Property specialists is a more strategic, long term solution and is an option worth exploring for all businesses. IP Law Firms tend to fall into 2 main categories:
- Trade Mark & Patent Attorney Firms
Patent & Trade Mark Attorney Firms are regulated by the Intellectual Property Regulation Board and consist primarily of Chartered Trade Mark Attorneys and Chartered Patent Attorneys. Look out for this accreditation on their website and marketing collateral, and then verify this using the Chartered Institute of Trade Mark Attorneys – Find a Chartered Trade Mark Attorney online search.
Solicitor firms tend to be regulated by the Solicitors Regulation Authority and consist primary of Solicitors, some of which will be IP specialists. However, there is a great deal of overlap between these two different types of firm with many Solicitor firms employing Chartered Trade Mark Attorneys and vice versa.
Trade Mark Attorneys are IP Specialists
Both types of firms will offer a range of Intellectual Property services so it can be confusing when deciding which is best for you. Whilst both offer services their training and experience can be very different, Trade Mark Attorneys undertake a lot of IP specialist training to prepare them for filing applications, securing and dealing with registered rights, whereas training for Solicitors will often focus on a broader range of legal services that includes some IP.
The role of an IP Law firm
First and foremost, your IP Law Firm needs to be a trusted business advisor. Whilst some of the work they undertake can be fairly transactional, such as registering a trade mark they need to understand you and your business to be able to tailor their advice and service to you.
IP Law firms will be able to assist, not only in the protection of IP rights, but should also provide support for designing and implementing an IP strategy for your business. Your IP Law Firm needs to understand your business plan, the role intellectual property plays within it and be able to advise you accordingly. This enables them to effectively advise you on identifying your valuable IP, agreeing the best strategy for protecting that IP and then securing protection on your behalf.
IP plays a role in many day to day activities of a business, in particular marketing, sales and communications. It is also intrinsic to new product development, international expansion and collaborating with third parties. Your IP Law Firm will be able to provide you with advice along the way, including how to approach such issues, how to keep the business safe and ensure you protect what needs to be protected to give you security to proceed and the best competitive advantage for your investment.
As your business grows, so does your IP portfolio so it becomes more important to manage it effectively. Your IP Law Firm can provide access to a database of your rights and manage any few maintenance deadlines.
Traditional IP Law Firms
Traditionally, IP Law Firms are run as partnerships consisting of Partners, Associate Attorneys or Solicitors, Trainees and Paralegal support. The services offered are a mixture of fixed fee tasks and hourly rates and will include conducting clearance searches to see if you risk infringing the rights of a third party, filing applications to protect trade marks, designs and patents, advising on and recording acquisitions at the relevant Registries, advising on and bringing proceedings for infringement of third party rights, defending you against claims for infringement, attending to renewals of your registered rights and advising on issues relating to copyright such as ownership and infringement.
When you engage an IP law firm they will often propose a specific team to work with you, usually consisting of a Partner, an Associate and trainee or paralegal. Service levels vary from firm to firm so always research their reputation amongst existing clients. The main downside to traditional IP Law Firms is that costs can quickly escalate due to their strict pricing policies so they are not always the most cost effective solution, particularly if you want to keep tight control of your budget.
Modern IP Law Firms
More recently the industry has seen a proliferation in the amount of IP law firms. This is in part due to modernisation of the regulatory bodies and the emergence of alternative business structures. This means there is a greater choice in the type of firm to work with. Some of the more modern IP Law Firms offer a genuine alternative to the traditional model, adapting their approach and charging structure to suit the client.
In particular, being charged on an hourly rate can be frustrating as it is hard to budget for a project without knowing the cost at the outset. This can make the decision on whether or not to proceed with the particular project tricky as you have to take a gamble on the budget. People like to know what they are getting into and budget accordingly, which is a key benefit offered by modern IP law firms.
The main IP charging structures
Some firms will have a range of charging structures for you to choose from that might include fixed fee rates, capped rates, retainers and volume discounts so it is always worth shopping around to find something that suits you. The extent of your needs may also affect the decision on who to engage. A fixed fee structure works well if your needs are occasional, but a retainer will have significant advantages in terms of both cost and administration if your needs are greater.
How do I know what IP services I need?
The level of support you require will depend on the nature of your business and your future plans for growth. Some businesses will create and use much more intellectual property than other businesses. For example, business to consumer product firms will deal with many customer facing brands that would benefit from protection by trade mark registration. This will of course depend on whether such businesses are creating their own brands or dealing in third party brands.
Other businesses, such as service providers, may have a lower level of trade mark activity, but may have more requirements for advice on copyright in materials that they produce.
Start with an IP Audit
A good place to start is identifying what is unique to your business, i.e. what have we created to make our business successful. This will typically include brands (trade marks), advertising and marketing campaigns and straplines, products, product designs, training materials, marketing materials, business methods etc. You can then discuss this with potential IP Law Firms to get an idea of how they would approach implementing a strategy for protection and management of these valuable assets. An IP audit is a worthwhile exercise to gauge where your business currently stands and how to navigate a way forward.
Seek a flexible partnership
The level of service you need may define how you want to interact with your advisor. You may need someone that is heavily involved and becomes an integral part or your team that helps design and implement the IP strategy for the business, provides internal training and works with your various other inhouse functions such as finance, marketing and sales. Alternatively, you may prefer someone that is an occasional resource available as and when you need them.
A flexible approach to partnerships is more common in modern, independent IP law firms such as Sonder & Clay. Ideally, you want a quality service that is tailored to suit you and fits in with how you want to run your business.
9 Tips to choose the best IP Law firm for your brand
Establishing a good working relationship involves understanding how the firm operates, how they charge, who you will be working with and how they propose to communicate with you. Whichever firm you choose you will be working with individuals so take the time to understand who they are and whether you feel they ‘get’ you and your business. You should be comfortable working with them and confident that they will deliver what you ask for. Here are 9 practical tips you can use to for evaluate IP Law firms:
- Take stock of the IP that is valuable to your business so you can easily convey this to firms you are thinking of engaging to see how they will approach your particular needs;
- Identify how you like to communicate and ask specifically how they propose to communicate with you;
- Ask what resources will be available to you, such as online database access and IP training for employees;
- A good relationship with an IP Law Firm is for the long term so find out which attorneys will be providing the services and take the time to meet with them and discuss how they will approach working with you and what relevant experience they have;
- Good advice is based on understanding your plans for the business and your individual needs. Ask how they will approach getting to know you and your business;
- Talk about money. Not everyone is comfortable with this, but it is important, you need to understand what charging structures are available to you and how they will work with you to ensure you can budget for IP costs;
- Seek recommendations. If you have friends or colleagues that use an IP Law Firm ask them what they think. You can also research the firms and individuals online. We have provided some useful resources below;
- Check they are qualified to carry out the work you need;
- Remember you are the client, tell them what you need and ask how they will deliver it.
We create real IP value
From the everyday to the IP emergency, our accomplished Chartered Trade Mark Attorneys and IP Solicitors are driven to get the very best outcome for every brief for every client, every time! Sonder & Clay are a full service IP law firm with proven expertise and results in IP protection, strategy, disputes, and exploitation. Learn more about our IP services or get in touch with us for a complimentary IP audit today.