Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Speaking a common language: The changing relationship between IP law firms, in-house IP and their technology providers

CPA Global worked with Managing IP and Thought Leadership Consulting to compile findings on what in-house counsel look for in external IP firms, what law firms look for when co-operating with other IP firms and what firms and in-house counsel seek from technology providers

CPA Global has collaborated with Managing Intellectual Property and Thought Leadership Consulting to produce a report about the relationship between corporates and private practice practitioners and how they can work together more effectively. The report also covers law firms’ requirements when working with external IP firms. The findings are based on responses from more than 1,000 patent and trademark professionals, 603 of whom are in-house counsel and 434 of whom are based in law firms. The respondents span 80 countries.

Some of the questions asked concern the most important factors when choosing an external law firm, relationships with service providers and the main challenges that arise when managing external IP firms.

A selection of the key findings from the report are detailed below.

Loyalty

More than half (51%) of in-house respondents stated that they were “very unlikely” to change external IP firm, indicating a culture of strong loyalty to law firms.

The most important factors when choosing a law firm

Those who answered the survey were asked their three most important considerations when choosing an external firm. Practice area knowledge was cited as a key factor by 18% of respondents, followed closely by responsiveness (mentioned as the main factor by 11% of respondents). Indeed, responsiveness was repeatedly mentioned in interviews with both law firm practitioners and in-house counsel.

Challenges

Both law firm practitioners and those in-house asserted that effective communication proves to be a key challenge when liaising with external firms. Overall, 18% of respondents said that this was their biggest challenge. Among law firm practitioners, there was even greater emphasis on effective communication, with 21% citing this as the number one challenge. The findings indicated that more face-to-face contact with IP firms is required.

The 2018 and 2019 surveys

A comparison of the 2018 and 2019 surveys suggest that many of the key challenges faced by corporates remain the same. In 2018, “cost pressures and aligning IP with business strategy came out top” and in 2019, “the leading challenges are “billing within budget” and “ensuring external advisors understand IP strategy.”” Much like the 2018 interviewees, in-house respondents this year averred that the main qualities they are looking for are practice area knowledge, depth and strength of team, responsiveness and cost.

Technology and service providers

The report notes that “the findings suggest that firms are not using IP management software as wisely as they could be.” In relation to search providers, 59% of law firms said they use many search service providers. Only 18% of in-house respondents use one main search provider.

To read the full report, please click here.

more from across site and ros bottom lb

More from across our site

Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The FTC’s plans to scrutinise improperly listed Orange Book patents could make these listings more important in litigation, but firms should be looking at this anyway
Counsel at Debevoise & Plimpton explain how they helped food delivery business Grubhub avoid a preliminary injunction at the Court of Appeals for the Seventh Circuit
European lawyers tell Managing IP how the legal market is reacting to the first few months of the UPC and why cases are set to take off
The ban could be extended or cancelled, depending on whether Judge Pauline Newman cooperates with an investigation, the Judicial Council of the Federal Circuit stated
Sources say some China-based lawyers are prepared to take large pay cuts to join stable practices, but most firms are sceptical about new hires