By Jayne Durden ‑ August 8, 2018
Whether providing legal advice and litigation support or acting as a key player in a company’s patent and trademark filing and prosecution process, corporate IP departments regularly need the services of outside law firms.
To better understand this relationship, we conducted a survey of almost 400 IP professionals. In partnership with research company B2B International and ManagingIP, we spoke to IP law firms and corporates across the world and interviewed CEOs and patent and trademark attorneys to answer the question: how can law firms better serve their clients in the IP industry?
One of the most interesting findings was that less than half of the corporates surveyed managed their IP in-house. Corporate IP departments are finding themselves increasingly overstretched – tasked with more IP admin, docketing, filings and renewals.
One of the most pressing challenges is contending with globalisation, a task made more complex by countries having their own IP offices and IP practices. Corporates generally need to outsource elements of their IP management to law firms that can provide legal analysis in a foreign jurisdiction.
For example, assessing the freedom to operate in countries like China creates a wealth of questions for in-house IP teams and – when combined with the implications of regulatory developments such as Brexit – requires time to manage. Specialist law firm knowledge of foreign IP markets is critical.
While monitoring and evaluating IP behaviours is important to building and maintaining a strong IP portfolio, corporates often lack time to do this. Deploying specialist IP technology and software to manage and complete certain administrative IP tasks will free up significant time for overstretched corporate departments. Corporates can use this time to focus on making the best strategic filings and renewals choices for their IP portfolio.
Technology may be the answer, but corporate IP teams are still faced with the question of cost - trying to keep IP expenditure down while meeting stakeholder demands. In addition to general IP admin, efficient internal IP teams will select the right assets to protect and maintain, understand the increased complexity of managing IP on a global scale and attract and retain the best staff.
Our survey revealed corporate IP teams want to act on better IP knowledge and expertise and secure higher quality patents, all while working within an increasingly strict budget.
To meet these targets, some corporations are restricting IP filings to a set of core countries. However, this could harm the corporation itself – reducing its scope of protection for innovation and restricting a company’s ability to scale and expand. External IP support from outside counsel law firms and other specialist providers can help to deliver high quality within budget.
Our survey demonstrated that for corporate IP departments to succeed in the future of IP, they need to embrace collaboration and use external IP services to free up time and provide invaluable technical expertise. Without a heavy internal administrative burden, internal IP teams can allocate more time to pressing IP matters.
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