This article is brought to you by our Trademark Times 2017 sponsors:
The overwhelming majority (90%) of respondents to this year’s IP STARS survey of in-house IP practitioners said sector or technology knowledge and expertise in the IP area concerned are the top two criteria that are very important when selecting outside counsel. This was the standout finding in this year’s survey of 1,200 in-house practitioners worldwide, which formed part of our annual IP STARS research.
Technical knowledge is most relevant in patent work than in soft IP. This is followed by commercial awareness (at 65%). In-house counsel spoken to for the IP STARS research often say they want IP specialists who also understand the commercial realities in their industry and the client’s business goals.
All of the criteria (see bar chart) together can make up a firm’s reputation in the market: 58% of respondents say the reputation of the candidate is very important to them (in last year’s survey, this number was 46%), with 38% rating it as moderately important and only 4% saying it is unimportant.
Reputation could range from being known to be active and largely successful in contentious proceedings before the IP office or courts (53% said track record is very important) to the nature of a firm’s business model.
Personal contact or recommendation also has a role to play: 58% of respondents say it is very important. As some comments show, recommendation from a peer may well be decisive. In-house counsel’s previous connections or contacts during their private practice career can also be important. This suggests external advisers must concentrate on demonstrating exceptional client care and delivering results in order to be held in high regard by their clients, but should not lose sight of how their competitors perceive them. Competitors may one day implicitly or explicitly recommend you.
Does size matter? Only 16% of respondents say the size of a firm’s IP team is a very important consideration. And, of all the criteria, size of IP team also had the highest number of respondents who said it was unimportant (19%). The other low scores (under 50% average) for “very important” were for “range of services offered” (34%), “firm’s presence in key markets” (35%) and “firm’s corporate values” (46%). They also had higher scores for “not important” answers; for example 14% of respondents said a firm’s presence in key markets is not important.
Conflict of interest wasn’t presented as a criterion but several respondents commented that this as an important consideration for them. No doubt this is applicable to all respondents as part of their due diligence process.
One-stop shop more popular
Over half of the respondents in 2016 were either happy to deal with separate IP service providers (49%) or expressed no preference (23%). But this year’s figures are strikingly different: 51% preferred separate providers, 41% favoured one-stop shop and just 8% had no preference.
When it comes to fees and billing, 63% said this is very important while 37% of respondents see it as moderately important, which somewhat corresponds with the views they expressed on billing preference (see box). Although 62% of in-house counsel say they prefer a fixed-fee arrangement, they understand that this depends on the type of work, and there will be matters where a hybrid model or a completely different arrangement (for example, contingency fee for litigation) may well be the most suitable.
In Mondays’ issue of Trademark Times: part 2 of our report looks at what causes relationship breakdowns. Get your copy at booth F23-25 in the Exhibition Hall
Hiring criteria – selected comments
· “Firms' ability to accommodate and consistently follow through with our requests” (Director of brand protection in a sports fashion company in the US)
· “Accessibility and rapport with the legal team” (IP department manager in a beverage industry company in Thailand)
· “The lead lawyer is often as important as the firm” (Senior IP counsel in a financial services company in Singapore)
· “Knowing everything of today, but seeing the future” (Director in a pharmaceutical company in Australia)
· “How well we think they can work with us” (Senior counsel in a healthcare industry company in the US)
· “Personal experience with the firm” (Director of legal services in a manufacturing company based in Canada)
· “Personally recommended by someone I trust who has used them” (Senior business executive in a technology company based in the US)
· “Personal relationships and past experience” (Managing counsel in a services industry company based in Australia)
· “Flexibility in meeting urgent demand” (A senior business executive in a technology company based in Sweden)
Ten years ago, consumer goods company Unilever made the decision to outsource the management of its 160,000 trademarks and 14,000 domain names to Baker McKenzie and NetNames respectively.
“There was no such model existing at the time, so we explored various options before deciding to have all the administrative work done outside while retaining just a small team of business-focused in-house attorneys,” says Terry Daly of Unilever, who recalls the work that went into the project in 2007: “It was a juggling act to make the changes while continuing with business-as-usual.”
Back then Unilever had some 55 people in its trademark department. Today, it has eight full-time equivalents. All the administrative work, including managing filings and renewals, is handled by Baker McKenzie’s global IP support centre, which has about 200 people in Manila, in the Philippines, and more in Belfast, Northern Ireland.
Negotiating the deal with Unilever was a key achievement of Paul Rawlinson, who was then an IP partner and is now global chair of Baker McKenzie. The relationship is now managed by Jessica Le Gros in the firm’s London office, who says: “Setting up something like this requires a big investment. We were well placed as we already had a network of offices with substantial IP expertise and already had the database set up.”
While Daly and Le Gros say that the tools created in 2007 have stood the test of time, certain things have changed, including the use of technology and the acquisition and disposal of various brands (the Unilever trademark portfolio today stands at about 115,000). Daly says one thing he has learned is the need for dedicated management: “Despite the best plans, things happen and you need to have people dedicated to managing that.”
Le Gros says that Baker McKenzie now uses its facilities in Manila to “offer a similar service to a number of large marquee brand owners” and adds: “Increasingly I think it's true that clients are not prepared to pay people simply to be data gatekeepers. But they are prepared to pay for the ability to report and visualise data in a user- and business-friendly way.” But such large-scale outsourcing is still rare in the IP field. Says Daly: “I'm surprised more companies haven't gone down this route. We think it gives a very tangible competitive advantage, and the numbers work for us.”
The material on this site is for law firms, companies and other IP specialists. It is for information only. Please read our Terms and Conditions and Privacy Notice before using the site. All material subject to strictly enforced copyright laws.
© 2020 Euromoney Institutional Investor PLC. For help please see our FAQs.