THE DAYS in which intellectual property lawyers could offer purely legal advice to their clients are fading fast, according to the head of the Hong Kong Government’s intellectual property agency.
The legal profession needs to “do a bit of re-engineering” to give advice that is more useful to businesses from the very beginning of their creative process, said Stephen Selby, director of the Government of Hong Kong Special Administrative Region’s Intellectual Property Department.
This includes being involved in the concept, market research, design, prototyping, manufacturing and release to the market, as well as at the infringement stage, which is about where lawyers usually come in, he said.
“We are very much locked into a lawyer-based concept of intellectual property (IP) protection, not a business management-based concept of intellectual property,” he told an IP conference in Sydney that helped kick off a year of meetings in Australia for APEC leaders.
“We use terms that come from law, not from business management, and frankly, a lot of these concepts are very difficult to persuade businessmen to accept.”
What entrepreneurs and businesses really wanted was to protect their “secrets”, however, they also need to be told which secrets are not worth protecting. As well as getting advice on the logos, slogans, products and processes they have invented, most importantly, businesses needed to know whether “any of this is worth protecting as IP at all”.
“There are lots of things that are worth protecting as secrets, which I am convinced I would never advise anybody to protect as a patent,” he said.
This need presented a “market that nobody is servicing” and lawyers, like their counterparts in accounting firms, perhaps need to set up arms of their practices that can provide commercially useful, easy to grasp advice.
“So what we hope to get to in the end is that the process — through market research, manufacture, taking something to market — that all of that has gone through a rigorous assessment that looks at all the intellectual property issues from the beginning,” Selby said.
In his experience, “90 per cent of the time” it is only after a product has been developed and marketed that a company thinks about how they should protect their intellectual property.
“We need to help our enterprises deal with their IP problems in a more effective manner day-to-day than what we have been peddling to them traditionally.
“These are all issues where the legal profession and non-legal — for instance, business management, consultants, accountants — all can contribute to the sort of work that I have been describing.” He said businesses would then find the IP system much easier to understand.
John Dower, a partner in Freehills Patent & Trademark Attorneys, agreed with Selby and said there had been a shift in the type of advice Australian IP practices had been giving to clients in the past couple of years.
“In Australia, and even more so in the US, there’s definitely quite a change in the past few years,” he said.
“We certainly try to impress on clients the importance of getting in at the commencement of the IP generation process.”
He said they would find out as much about the client’s business as possible before giving advice.
“I think the days of patent attorneys wearing these ‘is it legally patentable or not’ blinkers, are certainly over in the US and I think in Australia to a large extent as well.”
Although they wouldn’t make as rigorous an assessment as investors in the product or service, he said IP lawyers will now often have to assess its commercial prospects, and advise clients whether they should actually go to the expense of registering it for IP protection.
He said the pace of change of inventions now, including software, meant IP lawyers also have to keep a close eye on the product to ensure what is being protected is actually the same as what it is on the market.
“There has been pressure on patent attorneys to be involved not only in the concept, but to follow the product through to market to make sure that any improvements made are actually protected,” he said.
“Or in fact that when they are … granted the patent that that covers [is] exactly what the client is doing,” Dower said. “In many cases that may have evolved beyond what is actually protected.”
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