What do SMEs want from their IP advisers?

Last week, IP Draughts was an invited speaker in a discussion at the Chartered Institute of Patent Attorneys (CIPA) annual Congress.  The subject of the discussion was intellectual property (IP) and small and medium sized businesses (SMEs).  Our Chairman, Alasdair Poore, began by referring to the task that the UK Goverment has recently given to the UK IPO, arising from the Hargreaves Review, of finding a way of enabling SMEs to gain access to low-cost, integrated legal and commercial advice to help them commercialise their IP.

Some of the points that IP Draughts raised were:

  1. SMEs need more than a high-quality, technical service. They also need help from their advisers in understanding how to make best use of the IP system, whether it be in registering, enforcing or commercialising IP.
  2. This help may stray into the area of giving commercial advice, which IP professionals (patent attorneys and lawyers) are traditionally taught to avoid.  However, if SMEs have no experience of these areas, they may need support from their advisers.  While IP Draughts wouldn’t give advice on the right royalty rate, he might well advise on typical deal structures and provide information on the general level of payments that he has seen.
  3. In IP Draughts’ experience, patent attorneys focus on technical excellence above other considerations, which can make them ill-equipped to help on commercial aspects.
  4. SMEs come in many shapes and sizes, from publicly-listed companies to local tradesmen.  Some SMEs are not equipped to make good use of IP.  Legal advisers and government policy makers should focus on the SMEs who are likely to make good use of IP, eg graduates setting up their own businesses.
  5. It will be interesting to see what proposals the IPO makes for SMEs to get access to low cost services.  IP Draughts has met some of the people at the IPO who provide a telephone helpdesk service to individual applicants.  While he admires their dedication and helpfulness, he can’t help wondering whether too much Government money is spent on this activity.  He has a sense that the IPO would like to transfer some of this activity to the private sector, but doesn’t know where to send the callers.

Bob Hoskins as Mr Smee

His Honour Judge Colin Birss QC, the judge of the Patents County Court, who was on the panel at this discussion, suggested that the solution was to let trainees and junior lawyers provide cut-price or pro bono services to these individuals, which would also give the lawyers experience of acting for clients.  IP Draughts could see this working, provided there were national coverage, and advice was not limited to London and one or two other cities.  One possibility would be to set up a charitable network of walk-in centres, similar to Citizens Advice Bureaux.  This would be a better solution than leaving SMEs in the clutches of unqualified commercial advisers who claim adherence to the IPO-sponsored British Standard for IP Commercialisation Services.

1 Comment

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One response to “What do SMEs want from their IP advisers?

  1. Interesting suggestions. Some of these indicate that the professions have not actually grasped the problem. The suggestion from Judge Birss brings into play the very group of advisors who would have the least to offer. Young and inexperienced IP lawyers (and even experienced ones!), would neither have the IP expertise or commercial acumen to address the SME problem; I know I’ve worked with many of them over the years! Equally most patent attorneys are devoid of the requisite skill set and expertise as are the staff of the UKIPO.

    The fact of the matter is that there are no “qualified” advisors in the commercial IP space. That is advisors who can offer real world advice on everything around IP creation/exploitation/utilization other than the law; the law frankly is the end-point not the starting point in most situations.

    Lone inventors may be at risk from suspect advisors but I’m not that concerned with their needs; they will have a minor impact on the economy. Commercialisation of their IP is a very different proposition to enhancing the IP position of a trading SME. The important area of commercialising IP has nothing to do with the narrow concept of licensing as the key exploitation route but the British Standard is really focused on the lone inventor and this approach.

    I think the solution is not going to come from the general legal services interface. The whole way legal services are set-up and operate just does not fit the market need in terms of services required, expertise and pricing. I think we will see this space developed by the much maligned management consultants who will bolt on the legal services aspect as and when needed; although the smart ones will integrate this and are already looking at this. The investment community also has a role and we have the prospect of some very interesting ABS offerings in this space.

    One final point. There is a perception that there is an actual demand for this service on the basis of fairly flimsy evidence in the Hargreaves Review. The reality in my experience is that the UK SME sector is largely ambivalent to IP and its impact on their business. To offer a new service you have to have willing buyers and although they do “need” this service they don’t know it yet and in my experience will take an awful lot of convincing. Patent attorneys and IP lawyers are exactly the wrong interface for influencing change on this. For once in the interests of developing a better appreciation of IP we need to take a bit of a back seat, but not too sure who should best be in the driving seat.

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