We are canvassing the views of leaders from corporate IP professionals and law firms around the world to gain unique insight into how the IP landscape is changing. The results of our research will be published in the May issue of Managing IP. In the meantime, we have investigated some trends identified in the 2017 IPO Benchmarking Survey.
AVERAGE DOCKET SIZE
From 2013 to 2017, the average docket size per in-house attorney or agent increased from 99 to 105 US applications and 189 to 200 foreign applications. Clearly there is pressure to do more with less, likely a need to reduce internal costs and to use outside counsel to support the IP workload.
- What do you think the future holds for in-house attorneys and agents?
- Will their docket size continue to grow,or has it now reached a plateau?
The survey highlighted significant average reductions across all internal IP staff including patent attorneys, patent agents and trademark attorneys. Secretaries and admin staff experienced the greatest reduction, losing 94 per cent of staff in corporate IP departments.
- In an increasingly fast paced IP environment, how will innovative companies keep up with the workload of protecting IP?
- Will they need to rely more on law firms and, if so, how will law firms cope?
- Will they add staff to manage a growing workload, or will technology lead to firms transforming their internal processes?
PROFITABILITY FEES AND STRUCTURES
Cost pressures continue to be seen in the engagement models chosen with law firms. There was a 35 per cent increase in fixed fee arrangements for law firms preparing patent filing applications in the last five years.
- Will fee structures continue to head towards fixed arrangements, or will there be a move towards hourly rates with a cap?
- Have law firms determined how to manage overhead and fixed costs to maximise fixed fee arrangements?
- Or require changed communication or collaboration with their clients?
LAW FIRM BUSINESS ENGAGEMENT AND GROWTH
Finally, how corporations are engaging and retaining outside IP counsel is shifting. There was a 33 per cent increase in clients engaging law firms through requests for proposals (RFPs) in the last four years, and in person pitches have doubled in frequency. It seems law firms are having to compete more than ever for client business – if the client feels like the firm isn’t staying on top of deadlines, adding to prosecution cost, they may consider moving the work.
- Do you expect to see this continue or will there be new ways for clients to engage law firms?
- Are law firms and their clients using the same metrics for success?
Are you coming to INTA this year? Why not come and meet me on our booth #239 to get a copy of the survey.
In collaboration with Managing IP, and leading market research company B2B International, we are conducting a survey that will help us achieve a greater understanding of the legal challenges IP professionals will face in a fast-paced, ever-evolving IP-led economy. We will be revealing the results in the next few weeks.