What do Start-up Entrepreneurs need to look for in a Good IP Lawyer?

Will Roebuck

Jane Lambert

In response to my article on patent revocation, Will Roebuck wrote:

"Thanks for posting Jane - given that we want to attract more (and probably much younger) business entrepreneurs into UK, post Brexit (particularly in the Northern Powerhouse region) what's your recommended advice for choosing the best patent/IP legal expert? What do start-up entrepreneurs need to look for in a good IP lawyer?"

Here is my reply.  Will, this is for you.

The first thing to say is that intellectual property is far too important to be left to IP lawyers and patent and trade mark attorneys. IP should be on the curriculum of every business school in the country. Every entrepreneur, investor, business owner and manager should know how the law protects his or her brands, designs, technology and creative output and how to leverage such protection for the benefit of his or her business.

If you do not already have such knowledge and experience, there are a number of crash courses like the Cambridge IP Law Summer School that I addressed last week. There were many non-lawyers as well as lawyers on that course and they seemed to get at least as much out of it as the legal beagles. £3,498 + VAT may sound like a lot of money for a week's training but it is approximately half what a patent attorney might charge for a straightforward mechanical patent for the UK alone which you may never use.  It is certainly a lot less than the first steps in any kind of enforcement or invalidity litigation.  If you want something cheaper, the IPO runs a series of 2-day master classes on IP law in London and Newport for £200 plus VAT which seems to cover the basics.

Probably the most useful professional adviser will be one who can help you to use IP to meet your business objectives. That is known as "IP strategy" which the American lawyer Jackie Hutter described as the combination of business acumen with IP knowledge to provide business focused advice (see Hutter What is an IP Strategist? IP Asset Maximizer Blog). Hutter wrote that IP strategists are "a new type of Intellectual Property advisor" who could be a patent or trade mark attorney but, equally, they could also be an accountant, solicitor or even a barrister like me.  Hutter refers to a list of 300 strategists kept by the online publication IAM. I found 17 persons on the list from the UK and they come from a variety of professions. There are a number of law firms and patent and trade mark agencies that claim to offer IP strategy. Be very suspicious of such claims. Find out the names of the professionals offering IP strategy and check out their curricula vitarum and publications. Only go to those who show by their publications or track record that they know what they are talking about.

Unless your IP strategist is also a patent or trade mark attorney you will need to instruct such an attorney to apply for patents, trade marks or registered designs in the countries in which you require legal protection.  Your IP strategist should be able to help you with this. He or she will have worked with attorneys in different parts of the world and will know their respective strengths and weaknesses. He or she will look out for a practitioner who understands your technology (possibly because he or she holds an advanced degree in the subject) and has made similar applications before.  You will also find searchable databases of patent and trade mark attorneys on the Chartered Institute of Patent Attorneys and the Chartered Institute of Trade Mark Attorneys websites.

A much wider range of skills is required for licensing, joint ventures and other transactional work. Your adviser should know something about or have access to expertise in contract, competition, employment, tax and maybe insolvency as well as intellectual property law. Not every law firm has those skills and experience in-house but the Bar does and a good solicitor will draw on those resources as and when he or she needs them.

Sometimes a business owner or manager asks me to draft terms and conditions, review a computer contract or advise on whether a patent is valid or whether it has been infringed without instructing a solicitor or patent attorney first. That is quite permissible under the Bar Council's Public Access scheme and it is often the best and most cost-effective solution for many transactions. However, if there is likely to be ongoing correspondence or several advisers with different skills are required I advise the client to instruct a solicitor or other intermediary and often help him choose one. I find that I can work most easily with a lawyer who gained his or her training and experience with a big city law firm or patent agency and wishes to strike out on his or her own. I keep a list of such solicitors and patent and trade mark attorneys in different parts of the country.

When it comes to enforcement you need an adviser with common sense who puts the interest of his or her client beyond his or her own interests or those of his or her firm. His or her aim should be to keep you out of trouble wherever possible and if trouble cannot be avoided to extricate you from it as quickly, cost-effectively and satisfactorily as possible.  He or she should be aware of all the alternatives to litigation such as domain name dispute resolution services and examiners' opinions on patent and design disputes. He or she should be prepared to work within a budget and be aware of funding options such as before and after the event insurance, litigation funding and schemes like Legal Costs Finance that allow you to spread your costs. If further expertise is needed he or she should know where to find it and acquire it for his client on the best possible terms.

I am afraid that there is no such thing as a one-stop-shop for IP law and you should be very wary of any business or practice that claims to offer one. I also regret that IP services are not cheap though there are often plenty of cost savings opportunities if you look out for them.

Should Will or anyone else wish to discuss this article with me, he or she should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.