How should clients choose a transactional IP lawyer?

Lawyers who specialise in IP transactions are a rare breed.  In our experience, gained from helping clients to find overseas lawyers, they are rarer in some jurisdictions than others.

In some countries, eg in Continental Europe, they are often general purpose IP lawyers who spend most of their time dealing with IP disputes or providing support to corporate transactions.  There are relatively few lawyers in such countries that focus most of their practice on IP transactions such as licence agreements and IP joint ventures.

By contrast, in the US it is easier to find dedicated IP transactional lawyers, particularly in IP Avalon, otherwise known as Palo Alto, California, which probably has the biggest concentration of IP lawyers in the World.  The market for IP services is large enough in the US to support such a specialisation.

As with many things legal, the UK approach is in the middle ground between the US and Continental Europe.  There are some lawyers who focus on IP transactions, including IP Draughts and his team, but they are far outnumbered by IP litigation lawyers who spend a bit of time on transactional work, and by general commercial lawyers who will turn their hand to an IP licence if required.

This makes it difficult for the legal directories to get a handle on who to recommend.  The latest edition of IAM Licensing 250 recommends 36 individual lawyers in the UK.  Some of these lawyers would probably regard themselves as principally corporate specialists, but in general the list includes most of the people that IP Draughts would expect to see, and is more focussed than the previous year’s list.

Chambers Directory UK 2012 does not have a separate section for IP transactional lawyers.  Its London IP section recommends 128 people (if IP Draughts has counted correctly), and it is difficult to distinguish litigators from transactional lawyers.  This list omits lawyers based outside London, including IP Draughts, who appear in regional sections.  Perhaps the closest in Chambers UK to an IP transactional section is its UK-wide Life Sciences Transactional section, which names 41 people.  Again, some of them are probably more corporate lawyers than IP lawyers.

If you are looking for assistance with a UK life sciences IP transaction, you could do worse than make a short list of people who feature on both the IAM Licensing 250 and Chambers Life Sciences Transactions lists for the UK.

This is a crude approach and will omit some talented IP transactional lawyers, but in its favour it will result in a list of people who are mostly well-recognised IP transactional lawyers (although at least one corporate lawyer is caught in the net).

By IP Draughts’ calculation, this technique results in a list of 20 people.  With apologies for any unintentional errors or omissions, the list is, in alphabetical order:

Laura Anderson – Bristows

Mark Anderson – Anderson Law

Dominic Batchelor – Ashursts

Malcolm Bates – Taylor Wessing

Richard Binns – Simmons & Simmons

Allistair Booth – Fasken Martineau

Patrick Duxbury – Wragge & Co

Michael Gavey – Simmons & Simmons

Sarah Hanson – CMS Cameron McKenna

Gary Howes – Fasken Martineau

Colleen Keck – Allen & Overy

Janet Knowles – Eversheds

Mark Lubbock – Ashursts

Nicola Maguire – Reed Smith

Daniel Pavin – Covington & Burling

Stephen Reese – Olswang

Chris Shelley – Manches

Sally Shorthose – Bird & Bird

Julian Thurston – Morrison & Foerster

John Wilkinson – Reed Smith

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