Agent evocators

Despite a rocky past, non-contentious IP work is getting the attention of law firms, prompting Davenport Lyons and Olswang to vie for the best IP agents in the business

In the past, when a law firm wanted to push for more IP work, one way was to hire litigators. Not any more. Davenport Lyons and Olswang are looking to break into the IP mainstream and grow their teams, but this time with patent and trademark agents.

Attracting patent and trademark agents, who are not fully qualified solicitors, has never been easy for law firms. Bad experiences at Stephenson Harwood and Nabarro Nathanson have made them even more wary of the cultural differences at law firms.

Those experiences have not, however, stopped Olswang from adding three experienced patent attorneys to its IP team recently. In July Olswang lured senior patent attorney Robert Stephen away from pharmaceutical company GlaxoSmithKline along with Kevin Cordina, a specialist in software and electronics, and contentious IP solicitor Sarah Abbott from Eversheds.

Olswang head of IP Paul Stevens says: “Clients are fairly regular in their habits for patent prosecution and so is the workflow.”

Litigation has always been the most profitable area of IP, but the cost of a long court battle can be up to three times more expensive in the UK than in other respected jurisdictions such as Germany.

For example, the Court of Appeal IP licence dispute between Ozwald Boateng and Marchpower Holdings is expected to carry legal costs upwards of £1.5m.

As such it has ceased to be a dependable source of work, leading firms to look at stabilising their IP groups with non-contentious work.

The July hires boosted the size of Olswang’s IP department to 29 lawyers and the practice is expected to grow by a further third in the next 12 months. Stevens says much of that growth will come in the non-contentious group.

With a high-flying patent agent filing up to 200 patents a year, meeting revenue targets is often not an issue. There is also a good chance that one or two of those patents will end up being fought over, leading to a lucrative instruction for a firm’s litigators.

Media specialist Davenport Lyons is looking to approach trademarks in a similar fashion to Olswang and is actively searching for at least two further trademark attorneys.

Davenport Lyons head of IP Simon Tracey says: “I call the non-contentious practice my spider’s web. It’s not massively profitable, but it is nice to have. It’s a good bedrock for the practice and can lead to more contentious instructions.”

Like patents, trademarks can help build relationships with clients and provide a steady flow of work. Despite competition from the EU-wide community trademark, numbers of trademark filings continue to grow at a national level, with the most recent figures showing a rise from 21,260 in 2003 to 22,450 in 2004.

But one central problem facing law firms that want to launch or grow an existing patent prosecution business is the oft-used catchphrase of ‘culture’.

Nabarro Nathanson discovered this last year to the firm’s cost, when it lost all of its patent agents.

Nabarros IP head Guy Heath says: “We’ve had in-house patent agents – it’s tough to do it effectively. Culturally, patent agents and lawyers have grown up in different environments.”

At the moment patent agents cannot be made up to a law firm’s partnership, no matter how senior. This is subject to change with the Legal Services Bill, but could cause further tension on the already pressured decision of what status an agent has within a law firm.

Tibor Gold, patent agent at Kilburn & Strode and ex-partner at Stephenson Harwood, says patent agents are wary of law firms bearing gifts after past experiences. “What the law firms are really after is the lucrative work, the litigation. I doubt they value patent work for itself,” he says.

Olswang combines solicitors and agents into teams to break down the walls between the contentious and non-contentious sides of the business. A flexible management structure also helps to give agents a say in the group.

“At every level of management here you see people who haven’t trained as solicitors,” says Stevens. “There isn’t a hierarchical us and them situation.”

So, the moral of the story? Law firms have to plan a non-contentious strategy in advance to avoid disappointment, prevent any friction points and stay in the game for the long term.