Lawyers can use their grounding as business partners to persuade their companies why technology tools, particularly those using artificial intelligence (AI) technologies, are so important.
Part one of our survey – on the changing role of the in-house trademark counsel – showed that counsel are increasingly expected to play the role of business partner, but that more than 75% embrace this change wholeheartedly.
Part two shows that almost two thirds of in-house counsel (63%) have been using a technology provider for trademark work for more than five years. Of the respondents, 21% answered one to five years, while just 16% said less than one year.
Many of these tools rely on AI, which is most beneficial to searching in the trademark arena, according to 90% of our respondents (see chart below). Jeff Roy, president of service provider CompuMark in Boston, says AI offers important advantages for trademark research, “informing complex cognitive tasks to improve search and watch results, while dramatically improving speed and efficiency”.
Jayne McClelland, trademark attorney at biotechnology company Syngenta in Switzerland, says that brands identify a problem and then try to find AI technology that solves it. At Syngenta, which has thousands of trademarks, searching and clearing are particular challenges.
“We’re trying to work on a more efficient way to do those tasks,” she says. Historically, there would be a long lead team for these processes, but this is no longer the case, she adds.
“As a business partner you need to educate attorneys about risk. You can’t say no; it’s about finding a solution,” she says.
On the question of which area benefits most from AI, non-trademark legal work took second spot with a quarter of the vote (three answers could be given). Filings/prosecution and renewals both accounted for a fifth of responses, while oppositions and litigation took 10% and 5% respectively.
Which areas benefit most from AI technology?
McClelland says licensing is also an important consideration for companies that need to track the revenue being generated from their trademarks.
She adds that service providers have realised that they need to provide smarter tools faster, and she predicts that there will be huge improvements over the next few years. “I think we will see a glut of new tools,” she says. “Some will survive, others won’t.”
While the benefits of AI on trademarks have been widely touted, the same cannot be said for blockchain; just 10% of our survey respondents said that they use blockchain-based tools.
Do you use blockchain-based tools?
Roy at CompuMark says that while blockchain is a useful technology, including for filing support and bringing cleaner data to market faster, it is not necessarily going to be disruptive in the trademark space in the near term.
“While it is difficult to predict exactly when a blockchain-based tool will hit the market for the trademark industry, it will have to wait for the industry to be ready,” Roy predicts.
Although considerable industry transition is likely in the coming years, he says, the decentralised way the industry operates might prevent rapid adoption until then. “With all of that said, it is likely that we will see a blockchain-based solution in the industry within the next two to three years,” he adds.
Next, we asked respondents how they find working with new technology for trademarks, and half said that “manage”. A quarter of respondents opted for “easy” and a fifth said they get someone else to handle it. Just 5% said they find it difficult.
How do you find working with new technology tools for trademarks?
Anna-lisa Gallo, head of IP at Lixil Water Technology Americas, says it’s simple to use these tools because they are not revolutionary. After consulting with lots of service providers on what they offer, she concluded that they are all very similar.
She says that despite the multitude of services typically offered by any given provider, the decision to use a tool often boils down to one specific requirement, usually cost. Therefore, because cost is the most important factor in deciding which provider to use, counsel should select what they’re comfortable with.
This notion of high market saturation was reflected in our survey when we asked about the biggest challenge in adoption of new technology tools. Of the respondents, a quarter said that there are too many providers to choose from. In addition, the answers “there is nothing on the market that we like”, “it takes too long to finalise an appropriate tool” and “they’re not very effective” all took 10% of the vote.
What is the biggest challenge in adoption of new technology tools?
The biggest challenge in adoption of new tools – with 40% of the vote – was that there is insufficient budget or support from the company. Gallo says that companies are usually trying to walk a fine line between having internal personnel and using outside counsel and services. Some counsel such as Gallo are responsible for all areas of IP, not just trademarks, which is another factor to be considered.
However, Roy says that while budgets are always going to be a consideration when choosing a vendor, they are on the rise. “Our own research from the 2019 Trademark Ecosystem Report revealed that they are on the increase, with 54% saying they had increased, up from 30% the previous year.”
In some cases it comes down to decision-makers having a strategic vision. McClelland, who says that Syngenta is hoping to have an AI-based tool in place by the end of the year, discusses her experience in trying to find the right product. When she spotted one that she liked, she decided that it needed tailoring, with input from senior managers required.
“Luckily we have some people who are passionate about AI and they could see the value in this,” she says, revealing that finance was provided for a six-month period. “Getting the approval to proceed with something that is effectively a gamble is difficult. Companies don’t budget for these innovations; legal have not been great at getting money, historically.”
Tiffany Valeriano, director of go-to-market planning at service provider Corsearch, but who is speaking in a personal capacity, says IP has been “a bit late to the party” in terms of technology use. This lateness stems from trademark teams being “a few notches down the ladder in terms of visibility” at corporations, she says.
She adds that until recently, there was not a strong demand from the industry for providers to offer something new. “Counsels’ demands were really simple – they wanted to do things quickly and cost-effectively.” Now, though, IP service providers have to be more creative and look holistically to provide solutions, she explains.
Where getting signoff is still a problem, companies should first understand their problems internally, define KPIs and have realistic expectations before engaging with service providers, Valeriano says.
She also encourages brands to provide a solution to a problem “before it becomes a problem”. For example, in cases where a popular name cannot be cleared as a trademark, brands should think about whether that name is viable. They should start this process earlier and be flexible and imaginative, she says. She admits however that providers need to do a better job of helping in-house counsel work out what they need.
This appears to be the key point – that counsel need to understand exactly what their problem is, try to solve it and, in some cases, step up and be bold.
This is the second of a three-part analysis of the survey findings, with all three segments and the full report being published on www.managingip.com
