This article is written by Ms Kishita Gupta from Unitedworld School of Law, Karnavati University, Gandhinagar. In this, she has discussed various aspects that one should know about working in a law firm that is based specifically to deal with the issues relating to Intellectual Property Rights.
Table of Contents
Introduction
To secure and defend Intellectual Property and maximise the value gained from it, multidisciplinary experience (spanning domains such as law, research, and engineering) and abilities (including writing and designing the best Intellectual Property strategy) are required. In order to understand and carry out their responsibilities, a patent agent, litigator, or technical advisor must have an Intellectual Property-focused approach.
To name a few, opinions on patentability, patenting, filing, prosecution, pre and post-grant opposition, freedom-to-operate, due diligence, patent watch, evolving effective patent strategy, trademark registration and protection, antitrust, plant variety protection (PVP), and copyright licencing are the services provided by an Intellectual Property Rights (IPR) law firm.
In an IPR law firm, the team is involved generally in every aspect of international and domestic arbitration such as:
- Drafting the clauses relating to arbitration in a contract.
- Aiding in the selection of arbitral seats.
- Process and advise the clients on the appointment of arbitrators.
- Advising and representing clients from the commencement of arbitration until the final hearing of the matter.
- Seeking interim measures of protection from courts and arbitral tribunals.
- Assisting in enforcing arbitral awards and taking recourse against awards.
In this article, a brief understanding regarding working in an IPR law firm is explained, so that it becomes easier for one to choose a career in Intellectual Property Rights.
Areas of practice
Let’s say you’ve come up with a novel idea and want to safeguard it, but you’re not sure how. You can use IPR firms for IP-related services in this instance. They can assist you throughout the process and represent you in front of the authorities. IP businesses can assist you by advising on the appropriate method for protection, filing your application in the designated office, and assisting you with the subsequent steps.
Spotting
Invention identification
To get the broadest protection for the client’s inventions, one needs to figure out what assets need to be protected as soon as feasible. The IPR law firm’s qualified attorneys assist their clients in methodically evaluating their invention disclosures in order to find any valuable patents that may exist.
The IPR firm also assists clients in developing an internal method to better document and protect their ideas from potential allegations of misuse. If one doesn’t currently have an innovation identification and documentation system, the firm also helps them in creating it.
Trademark selection
Creating a brand image and strategy for a new product or service is part of the marketing process. The firm’s customers must be able to tell the difference between brands in the marketplace. Thus, Trademarks are an important part of their brand.
An IPR law firm also assists its clients in identifying truly unique names and monikers. Further, they also help the client in finding and removing existing names and monikers. This service assists firms in making the most of their unique identity and name while avoiding future issues.
In this digital age, an individual’s brand identity is reflected not only in their products but also in their online presence. Thus, many IPR firms offer the most comprehensive protection available by working with their client early to build their presence and signature. Infringers who are cyber-squatting on a brand can be addressed by registering domain names and addressing infringers who are cybersquatting on the brand.
If one desires to work in an IPR law firm, then a thorough knowledge of the following is a mandate:
Procurements
The attorneys at the IPR firms have extensive experience developing patents, trademarks, and design portfolios for a variety of large and medium-sized businesses, with a focus on hi-tech, ICT, life sciences, including drugs and pharmaceuticals, bio-tech and genetics, chemical and oil, automobile and mechanical engineering, to name a few.
Patent
Patents are legal documents that guarantee the protection of an invention. Patents provide financial incentives for research and development. They are awarded for a short period of time and are only enforceable in the country that granted them. The law firms have the synergies to assist clients to acquire and preserve their IP rights on a global or national scale, wherever the firm operates, allowing them to get the most out of their research investments.
So if one believes their invention requires expert guidance to maximise its worth, they contact the IPR law firms to seek assistance in identifying patentable assets and get advice on how to best protect them. With their hands-on experience preparing and prosecuting patent applications, they understand the uniqueness of each invention and bring their knowledge to an individual in this area, allowing businesses to obtain the broadest possible protection.
Trademark
Trademarks play a critical role in boosting the value of any intellectual property. In an increasingly consumer-driven market, trademarks can help businesses create and defend their brand identity. In order to obtain trademark protection, the mark must not only be distinctive but also have a distinct edge that allows it to be distinguished from others.
The attorneys present at the IPR law firm must know how to protect and enforce trademarks, as well as what it takes to build goodwill in the marketplace.
Copyright
Copyrights are a set of legal rights that safeguard an idea’s creative expression. While ideas aren’t protected in and of themselves, your expression of them can be. This is an exclusive right that covers literature, theatre, music, art, films, computer programmes, and sound recordings, among other things.
Copyright prosecution and registration, licencing and assignment, contract negotiation and drafting, due diligence, clearances and regulatory compliances, dispute resolution, and enforcement are some of the services provided by IPR law firms throughout the world. In addition to the aforementioned services, some of them like Anand & Anand even have specialised teams in the fields of arts and antiquities, media and entertainment, and information technology and e-commerce to provide their client’s with the best services.
Design
Design registration allows businesses to protect their product’s decorative design, including its shape, look, and surface pattern. A product, packaging, or logo may be included in the design. The uniqueness of the design gives them a competitive advantage in the marketplace, and it’s critical to keep rivals from exploiting that advantage.
The IPR law firm offers a wide range of services, including prosecution, enforcement, and advice. They undertake design prosecution for a wide range of products, including industrial products, handicrafts, technical and medical instruments, watches and jewellery, houseware, electrical appliances, and automobiles.
IP litigation
A Supreme Court, 24 High Courts, and over 600 District Courts make up India’s federal legal system. Five of the 24 High Courts have original jurisdiction, meaning they are first-instance courts. The High Courts of Delhi, Chennai, Kolkata, and Mumbai, which are courts of the first instance, are principally responsible for intellectual property litigation. In most cases, there are two stages of appeal from court orders.
In terms of overall litigation, trademark litigation leads, followed by copyright and patent litigation. Misuse of trade secrets, know-how, and sensitive information is also a common issue of IP litigation, and the law is influenced by court rulings. Criminal prosecution is a secondary enforcement tool used largely in counterfeiting instances. Criminal cases with IP roots are occasionally filed as a weapon to force a settlement or achieve a balance of power with the right owners. Fortunately, the latter is a rare occurrence.
The IP law firm’s main goal is to help courts and tribunals establish IP jurisprudence while also satisfying its clients’ goals and expectations from litigation in the most resource-efficient and cost-effective way possible. To get the greatest results for their clients, they investigate unique treatments and employ case-specific techniques.
Transactions
Intellectual property rights and technological know-how can be sold, licenced, or transferred for a profit. Each sector of intellectual property necessitates a different strategy and offers distinct advantages. Let us understand how:
Patents
A business has the right as a patent holder to prevent others from creating or using its technology. It can also assign, sell, transfer, licence, mortgage, or pledge the patent to another person or business.
There are a variety of ways to profit from the business’s patents. A legal professional should review any document pertaining to patent rights. On both sides of the patent licencing process, the attorneys working at an IPR law firm work with a variety of clients and assist them in effectively navigating difficult and intricate licencing issues.
Trademarks
Any business has the option of allowing others to use their trademarks or assigning their rights as a trademark owner. An agreement can assist them to set the parameters, such as consideration, the scope of use, and royalty computations, to ensure their control over such use.
Thus, these IPR law firms help one to conduct such transactions smoothly while ensuring that all legal requirements are met. Furthermore, because these transactions are documented at the Trade Marks Registry, they also take all appropriate procedures when needed.
Copyright
Just like the above two, one can also award a right or interest in their works, including future works, if they own copyright. In order for such a gift to be legal, it must be written and signed by all parties concerned. These optional licences assist businesses in getting the most out of their work.
Unlike other Intellectual Property, the Copyright Board can award a compulsory licence in the case of copyright. A compulsory licence ensures that creative works are widely distributed for the benefit of the public. In general, a compulsory licence may be issued if the copyright holder has refused to allow the republishing of his work for an unreasonable period of time. In such circumstances, the Copyright Board holds a hearing and may issue the licence subject to any restrictions it considers appropriate, including payment. Applications can be submitted for translations of copyrighted works for the purposes of teaching, scholarship, or research.
Enforcements
Obtaining the widest protection for your creations is only one component of maximising the value of Intellectual Property to your business. When competitors and others infringe on your rights, you need a knowledgeable and experienced adviser to help you navigate the process and safeguard your intellectual property assets.
When someone or a group infringes on a business’s awarded IP rights, they must act upon it quickly. A demand to the infringing party may be sufficient in some situations. In some situations, one may need to go to court to enforce their rights. A granted IPR can be cancelled by a third party for a variety of reasons.
The extent of the patented claim, the infringing act, and whether the accused act violates the IPR monopoly will all be considered by the courts in determining whether infringement has occurred. In addition, the court will consider whether the infringing party made, used, exercised, sold, or distributed items or services in breach of the grant.
In such a situation, the attorneys at an IPR law firm use their experience in IPR enforcement and can advise the business on a plan for enforcing their rights and, if necessary, represent them in the court. The court can impose any remedy it sees fit, including monetary damages, an account of profits, order for the infringing material’s surrender, or any combination of the aforementioned.
Benefits of working in an IPR law firm
Working in an IPR law firm can be challenging as well as fun. While there may be some hardships and struggle to become the best, there are various benefits as well. Some of them are as follows:
- An IPR lawyer is exposed to more creativity and innovations.
- Usually, top IPR law firms have a client base of famous brands, celebrities, etc and therefore one gets exposed to popular culture and popular icons as well.
- With the fast-growing tech sector, the career opportunities in IPR are also growing.
- IPR law firms generally have clients internationally also, so one also gets international exposure.
- It is also recognised that an IPR law firm pays quite well. At the entry-level, top IP law companies pay between 70,000 and 1,00,000 to new lawyers, while tier 2 law firms pay between 40,000 and 70,000. Smaller businesses can expect to pay between 25,000 and 40,000 dollars. With ten years of experience, partners might make anything from 50 lakhs to a crore or more. Those who are able to establish their own legal firms or even independent law practice and attract clients on their own grow the fastest.
Top IPR law firms in the world
Patent
According to Harrity LLP, the following firms are the top 10 ranked patent-based law firms in the world:
- Oblon Mcclelland, Maier & Neustadt, L.L.P.;
- Fish & Richardson P.C.;
- Sughrue Mion, PLC;
- Cantor Colburn LLP;
- Birch Stewart Kolasch & Birch, LLP;
- Oliff PLC;
- Kilpatrick Townsend & Stockton LLP;
- Foley & Lardner LLP;
- Knobbe Martens Olson & Bear LLP;
- Harness, Dickey & Pierce P.L.C.
Trademark
According to the world trademark review, the top trademark law firms in the world are as follows:
- Allen & Overy LLP;
- Arochi & Lindner SC;
- Ashurst;
- AWA;
- Baker McKenzie;
- Bird & Bird LLP;
- Clyde & Co LLP;
- Dentons;
- DLA Piper;
- Dorsey & Whitney LLP.
Top IPR law firms in India
As per the Asia IP informed analysis, the IP ranking is based on several categories and they have recognised top law firms for each of these categories as noted below:
National IP firm 2020
- Anand and Anand;
- Remfry & Sagar;
- Singh & Singh.
IP Boutiques
- Beruar & Beruar;
- L.S. Davar & Co.;
- SKS Law Associates;
- ZeusIP.
Conclusion
After going through the above-mentioned areas of practice, it is clear that an attorney at an IPR law firm has to be well versed with the above practices and all the laws relating to Intellectual Property. We are witnessing a paradigm shift from corporations and companies hunting down tangible properties such as land and machinery towards acquiring intellectual assets. Thus, working in an IPR law firm and its practice internationally can be a great option and to know more about it register yourself for the Boot Camp organised by Lawsikho.
References
- https://lawsikho.com/blog/why-ipr-is-an-exciting-career-and-emerging-as-a-top-choice/
- https://www.asiaiplaw.com/article/asia-ip-reveals-indias-top-ip-firms-practices
- https://www.worldtrademarkreview.com/directories/wtr1000/rankings/international
- https://harrityllp.com/services/patent-analytics/top-patent-firms-2020/
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