changeThe legal profession is very much like other successful services that have enjoyed longevity - it capitalizes on a need based on a recurring problem by fixing the problem(s) or preventing its persistence or recurrence specific to one client.  The legal profession with regard to intellectual property is no different.  In fact, the IP legal profession has perhaps relied on this business model to an even greater degree, as the general lack of comprehension with respect to intellectual property in the business setting has resulted in the tendency of businesses to throw IP in the corner, put up fences, and send the dogs after anybody that seems to be an intruder.  Lawyers have fallen into this ex-post exercise in legal services involving intellectual property because, of course, that has been the demand; supply must meet its demand, and excess supply (other services not requested) is only inventory without value.  This cause-and-effect business model relied upon by IP lawyers and law firms has been easy going - IP assets have been viewed as a necessary cost center which deserves a litigation budget to protect their prohibitive nature, i.e. monopoly power.  IP lawyers have gotten very good at protecting IP, sending cease and desist letters, prosecuting patents and trademarks, drafting non-competes and confidentiality agreements, and taking other ex-post or preventative measures.  This business model has not met its demise, as the demand for ex-post legal services will always exist.  Note, however, that IP litigation decreased by 11% in 2009 as compared with 2008.  A shift in IP legal services has begun.

Enter the decade of ex-ante IP legal services.  It is, after all, the decade of the intangible asset, and with this proclamation comes the announcement that strategic IP management services will become just as coveted as IP protection and prosecution.  Indeed, the space is not uninhabited.  I am fully aware that IP management and consulting businesses occupy the area.  Nevertheless, IP lawyers will soon recognize the opportunity to move into this space.  See Morrison & Foerster’s collaboration with IP consulting firm Ovidian Group, LLC.  See Robins, Kaplan, Miller & Ciresi’s new IP practice group focused on value creation (as opposed to value protection).  The movement has begun, and it will continue.  As executives continue to realize the importance of strategic IP management and the value-added approach to intellectual property, the demand for ex-ante IP legal services will rise.  Why won’t they just go to IP consulting firms?  The relationship between IP lawyers and business executives have already been formed.  IP lawyers are very capable of offering strategic IP management services.  In addition, there is no way to completely separate intellectual property from its legal elements.  Intellectual property exists if and to the extent it is recognized by law, and as a result there are no better persons to manage IP than those familiar with the very laws that give rise to the rights to be managed.  This does not mean non-lawyer IP professionals aren’t just as capable, it just means IP legal professionals will soon move into this space.

Examples are increasingly abundant — See Ellen Stiefler, founder of Stiefler Law Group, PC and a friend of mine (and the first lawyer to take the domain name - great foresight indeed, Ellen).  See Jackie Hutter of The Hutter Group, LLC, a patent attorney-turned-IP business strategist that truly understands the link between patents and business value.  The background and legal practices of each of these accomplished professionals could not be more different (one is a patent agent, the other is not), yet they both understand that ex-ante legal services provide value for their entrepreneurial and innovative clients, instead of only providing ex-post problem-solving services. 

The new decade has begun, and it has already been designated the decade of IA (intangible assets) - per the IAFS discussion last Friday - whereas the 90’s was the decade of IT and the 00’s was the decade of IP.  The shift will be reflected in the legal profession, where strategy will become just as coveted as problem solving.

This entry was posted on Wednesday, January 13th, 2010 at 4:02 pm.
Categories: Burgeoning Business ~ by Ian McClure.

6 Comments, Comment or Ping

  1. Ian

    I am blushing at your kind words. One thing I would note is that not all attorneys are able to get the “ex ante” piece. Lawyers solve problems, and if called on to do something else, some may be at a total loss. I believe that ex ante services is nothing other than doing what the best in-house lawyers do on a regular basis. Those lawyers who enjoy working with business people will do well in this new world. You are certainly one of them. There will always be work for the ex post practitioners, there will just be less of it as clients get more sophisticated. The bad news for lawyers is that value creation is not opaque to business people as IP law. So, I think that it will harder for lawyers to say they are doing strategy because it is what they think clients want to hear. The new decade is going to be really fun!

  2. Ian McClure

    I agree, Jackie. There will always be ex post legal work. I only intend to assert that the space for ex ante work in IP will soon attract more lawyers. You are also right that value creation is not so unfamiliar to business persons, but I submit that many of the most savvy business persons aren’t at a proficient level of sophistication when it comes to intangible assets. Because there is substantial legal risk involved in value creation through intangible assets, a lawyer should at least supervise many of these processes.

    It is certainly going to be an exciting decade — especially in our profession.

  3. Ian McClure

    I should also add some points from a discussion I had last night with one of the pioneers and evangelists for such IAM services - Ron Laurie. Unknown to me previously, Ron founded the IP Strategy practice group at Skadden Arps’ Palo Alto office in 1998!

    First, it is evident that full IAM services cannot be offered by large law firms because of the large impediment created by the legal ethics rules. The potential for conflict of interest issues would be too great in offering certain services, such as IP auctions or patent brokerage services. Still, for most solo practitioners and small to medium-sized firms, the potential for these issues is greatly diminished.

    Finally, both Jackie and Ron have hit the nail on the head, in that they have both paralleled the services of which I speak to an “outside counsel version of a CIPO.” It is true, Jackie, that performing these ex ante services would be akin to offering services provided by the best in-house counsel on a regular basis. However, because there are many operating companies with substantial IP assets but no CIPO or in-house counsel sophisticated enough, the “outside counsel version of a CIPO” just may have a viable role in the legal profession going forward.

  4. Hi Ian and Jackie,
    I’m late to join your blog discussion party, but that’s because I only just discovered the mention (thank you Ian). Also, I’ve been busy having just the fun that Jackie was referring to.
    My contribution to the ex-ante IP work is in the transmedia world. I do start by identifying my clients’ IP, which most often is a story or idea or talent. I blend IP and transmedia/entertainment/and business law with being a literary agent, licensed talent agent, manager. Sometimes I simply use the title “Transmedia Producer” because when you roll all those things into what I do, that is what it often comes down to.
    As an example, I took the story of one of my clients, Dr. Jill Bolte Taylor, and brought it out in a bestselling book, My Stroke of Insight, in over 30 countries, also did a lot of promotion of my client’s story - as a TED Talk, on Oprah Winfrey’s shows, in print (NY Times), Radio (NPR), in fine art (music and ballet) and on and on. I’m even Executive Producing the major full length feature film, which Ron Howard is directing.
    At the beginning, middle and end of Jill’s transmedia project, as with any other that I take on, is always the intellectual property protection, management and promotion.
    Come visit me at TransmediaAgency dot com.

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