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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.

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