IP firms in unique position to drive economy by securing clients’ proprietary rights: lawyers

In an innovation-driven world, intellectual property becomes increasingly important

IP firms in unique position to drive economy by securing clients’ proprietary rights: lawyers
Michael Zischka, Smart & Biggar, Bob Sotiriadis, Robic LLP

Intellectual property law boutiques are in a unique position to help drive economic and business growth in Canada and abroad, assisting companies with legal issues related to technological and scientific innovation, attendees at a Canadian Law Awards web event recently heard.

IP boutiques with deep bench strength in patent and trademark matters, combined with more traditional law firm services, are well-positioned to help companies with their technology-related IP, said Bob Sotiriadis. Sotiriadis is a partner and trademark agent at Robic LLP in Montreal who spoke at a May 20 panel on “The Future of the IP Boutique — Adapting Your Firm for a New Era of Innovation.”

He added these IP boutiques have a “strong technological and scientific understanding” of IP-related transactions, able to deal with complex issues surrounding their clients’ intellectual property.

Matthew Zischka, managing partner, patent and trademark agent at Smart & Biggar, agreed. He said the most significant benefit IP boutiques could offer clients “is an understanding of not only a very complex and arcane area of law — namely the pillars of IP law, patents, trademarks, trade secrets, copyright law and the like — but also a deep understanding of the client’s technologies.”

He added that clients with valuable IP need both the legal expertise in the area and the technical and scientific knowledge of IP lawyers. “We have people who have a great passion for this area of the law that who also have scientific and engineering backgrounds,” he says. “And so, they’re able to really guide clients in ways that general practice lawyers can’t.”

Zischka gave the example of dealing with computer software or mRNA technology, noting his firm has half a dozen to ten people in his firm who would understand this technology and who could help the client.

IP boutiques are also adapting to responding more effectively to the clients’ needs, Sotiriadis said. He notes that the significant transactions will likely end up going to multi-disciplinary practices. But there are other classes of transactional work that a boutique that has invested in transactional resources can do competitively.

Suppose a boutique can do IP due diligence for a venture capital company looking to invest in a startup in the life sciences, he said. Why not represent the company that is getting venture capital and do the financial transaction?

“Because if you can be the IP side, you can be the finance side, you can review the contracts on employee employment, you can secure the inventors and researchers, so they don’t take off,” he said. “And if you’re doing any of those things, you can litigate them and grow your firm around that.”

Zischka said that IP boutiques such as his are developing experienced litigation teams to deal with IP-related cases. With technology driving so many things in the corporate world, Zischka said that understanding the business and the general legal issues related to IP is a “tremendous” asset. “There are many adjacent areas where IP practitioners can offer unique value.”

On the topic of how IP boutiques are responding to disruptive technologies such as artificial intelligence, Zischka said that firms on the cutting edge tend to invest a lot in their IT systems and technology in general. So simple clerical tasks such as assessing due dates and interpreting correspondence are increasingly automated to drive costs down.

At the same time, Zischka noted that the core of an IP firm’s practice is still so complex, “an AI engine isn’t going to be replacing our practitioners anytime soon.” He pointed to the complexity of identifying defects in a contract.

“I’m pretty secure that I’m not going to be replaced by an AI anytime soon,” he said. But at the same time, firms are using more AI, and they are in an excellent position to guide clients in their implementation and development of such technology.

Asked about how firms were affected by COVID-19, Sotiriadis and Zischka both said that remote working went well, thanks to having invested in software and other technology to allow for shuttering offices so that lawyers and staff could work from home.

Zischka said working remotely also allowed his firm, with five offices, to collaborate more across the locations, pulling together the right people for a file. It will also provide an opportunity to recruit lawyers and staff regardless of geography.

“COVID has been hard on us, but at the same time, it’s created some tremendous opportunities for us in how we do our work and how potentially we can continue to do it going forward, even after this pandemic ends.”

Sotiriadis said the firm was worried during the first two months of lockdown but then realized firms like his and been prepared before the pandemic to carry on successfully. He says the challenge is how to create a successful hybrid model where staff can have some choice about working from home or the office.

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