How IP Law Firms Are Ranked
The following is a compilation of the criteria used by World Trademark Review to rank IP firms worldwide. While it may lack some depth, it is not without value so I am including it in the hopes that it will help you understand how your firm is viewed and for my fellow bloggers, free material to build upon and make your own.
The hallmark of WTR is its list of the world’s leading trademark professionals, which comprises 72 country chapters exploring the trademark offering in each legal market. From these, the WTR editors have identified 15 commercial centres, ranked according to the number of leading individuals and firms listed therein . By focusing exclusively on trademark practices – the geographical scope of this research – and drawing up a judicious shortlist of leading firms within each jurisdiction, they have ensured that every ranking and section of this guide is relevant to the reader. WTR relies entirely on feedback from practitioners and clients both in these jurisdictions and across the globe to compile its list of leading firms. With this in mind, the WTR research team regularly invites emails and calls from all the firms featured, as well as their clients, to update and revise our research as they see fit. Every year, companies throughout the world entrust their trademarks to these leading firms. The WTR rankings reflect this trust.
The Most Respected IP Law Firms in the World
Addleshaw Goddard LLP is a large full-service law firm based in England and a member of the Law Group that encompasses law firms in France, Germany, Middle East, and Turley. Addleshaw Goddard has an enviable worldwide reputation for its IP and IT work across many sectors and its aim is to become top IP provider by enhancing existing client relationships and acquiring new clients where possible. The firm charges fixed fees to its clients or it can assist with accredited due diligence inspections. The firm advises more than 18,000 clients each year including 33 of the FTSE 100 and four of the top 10 UK banks. Top clients for Addleshaw Goddard include Tesco, National Grid, Campbell White and McDonald’s. The firm was formed in 2001 by a merger of Addleshaw Booth & Co. and Theodore Goddard.
Dorsey & Whitnews LLP is a full service and leading IP and litigation law firm based in the United States. It assists in practice areas such as construction, corporate finance, energy, environmental, food industry, health care, immigration, insolvency, labor & employment as well as dispute resolutions. The firm holds a vast practice in intellectual property and patent laws and has a big patent practice which significantly contributes to commercial and IP verdicts. Dorsey has been recognized as the top firm for IP and is featured in Chambers Global, U.S., Global 200, National Law Journal 2013; Survey of General Counsel, 2012; Washington, DC Super Lawyers, 2009, Legal Times, American Lawyer Media; and IP Star. Dorsey’s notable clients include the American Civil Liberties Union, Amazon.com, Yahoo, Starbucks, Campbell’s, Intel and SONY. Dorsey & Whitnews was founded in 1875.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is a large full-service IP law firm with expertise in IP, litigation, law and technology, litigation consulting, certain FDA regulatory matters, and ITC cases. It is also specialized in a number of industry sectors such as chemical, biotech & pharmaceutical; electrical & computer; mechanical, and consumer products. The firm has the highest number of attorneys with an electrical engineering scientific degree and also with a doctoral degrees including masters of science in biotechnology, chemistry, electrical engineering and computer science as well as having lawyers with a background in mechanical engineering. Finnegan also has three former U.S. patent office directors, four USITC judges, three former clerks of the U.S. Supreme Court and hundreds of positions in government and academia. The firm has won several accolades including IP Stars and Managing IP awards. The firm represents a large number of companies as clients which include IBM, Toyota, Samsung, Microsoft, MicroSoft, Solvay and Toyota. Finnegan was founded in 1965.
IP Practice Areas
For leading IP law firms, the practice is often divided into specialized areas of law, including patent law, trademark law, copyright law, and trade secret protection. With the plethora of new technologies, creative works, and branding opportunities, the demand for legal protection of intellectual property has never been greater, and the need for a lawyer with specific expertise to match the legal issue has become a prerequisite.
Patent law involves the process of protecting inventions. An invention can be a functional item or a new design for an item. For patent protection, the invention must be useful, novel, and non-obvious in light of the current state of the art. Patents are commonly issued for innovations that arise out of the sciences and engineering, such as computer systems, manufacturing, telecommunications, and transportation, to name a few. However, design patents are also available for processes, ornamental designs, compositions of matter, plant varieties, and business methods.
Protected trademarks are symbols that represent the source of a product or service. Keeping in mind that a trademark is a source identifier and as opposed to a generic name for a category of merchandise, a trademark may be a word, phrase, logo, and/or trade dress. The design of product packaging or the distinctive nature of the appearance of a product itself are protected under trademark law. Individual, or collective, trademarks and certification marks are also available for use in association with products and services. Trademarks are also associated with geographic locations, originating with the name of a town or region, referred to as "geographic indicators." Last, service marks protect products or services from confusion as to their origin. A service mark is virtually identical to a trademark, with the only distinction being that it identifies a service as opposed to a product.
Copyright law protects the original expression of a written, musical, or other tangible creative work. From a legal perspective, "original" means that the creator conceived the work themselves. Copyright may protect the expression of an idea, but cannot protect the idea itself. Section 101 of the Copyright Act defines work as a "literary work," manuscript, book, article, manuscript, musical work or motion picture. Displays, audiotapes, and software code are also expressly covered. Unprotected works are those that cannot be independently created or defined such as ideas, short phrases, symbols, systems, or methods of operation.
Depending on the size and scope of a business or industry in question, traditional trade secret protection has expanded to meet the needs of businesses that require a different form of protection to maintain a competitive edge in the marketplace. Trade secrets are protected as unpublished information that a company takes certain steps to maintain within their business as confidential. Anti-circumvention provisions are also a form of trade secret protection that prevents reverse engineering of certain software components.
An effective intellectual property strategy is evolving to incorporate all forms of legal protection, from licensing, enforcement, and acquisition of intellectual property rights, to providing clearance searches and litigation support.
Developments in International IP Law
The realm of intellectual property (IP) law continues to expand and evolve, driven by a multitude of factors ranging from technological advancements to the globalization of IP rights and recent waves of pertinent legislation. Geographically, the internet age has given rise to the concept that information does not respect national boundaries. Equally, when one travels through a network of computers, the question of the location of harmful or infringing IP content becomes a hurdle, giving rise to the question of which country’s laws should apply and where enforcement measures may be most effectively taken. This has inevitably led to forums shopping and increased use of forums with centralized jurisdiction, such as the European Union.
The ongoing globalization phenomenon equally transcends the area of IP law. Multinational companies recognize the importance of protecting their IP on a global scale, and this has led to the development of new and useful tools in this regard. For example, two major conventions have been designed to promote the usefulness and worldwide simplicity by which trademark protection is sought. The Madrid System for the international registration of marks provides an internationally administered centralized filing procedure through which an applicant may seek protection for its trademark in numerous countries in a single application – the ultimate forum shopping for international trademark protection. Similarly, the Hague Agreement, an international treaty that followed the adoption of the Geneva Act in 2002, aims to provide for the international registration and protection of industrial designs, with similar multidisciplinary flexibility as that provided by the Madrid System for trademarks and in order to facilitate the exportation of technology.
International implementation of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) has equally had an impact on the evolution of IP law. For example, the enactment of the Design Act by the Indian government was aimed at improving hard power, leading India to become a member of the Madrid Protocol and the Hague Agreement, and axing the fees required for the renewal of registered designs. The latest amendment to the Indian Trade Marks Act to permit a single application for registration of certification marks, a system established under the Madrid Protocol to promote Indian-made goods , clearly highlights the intent of the Indian government to be in line with the various agreements entered into by India following the TRIPS Agreement. The Indian copyright regime is set to see a number of legislative changes in the near future, including the addition of sound and scent marks to the definition of marks under the Trademark Act, a move that will no doubt be welcomed by multinational corporations looking to protect their brands globally. In recent years, EU cross-border trade has come under pressure from global politicians concerned about multinational technology companies that owe taxpayer nations significant sums in tax. Above all, however, avid consumers of electronic media have pushed their governments for more content, better platforms, and lower costs, thus influencing the creation of a common Union-wide Protection Directive for copyright and related rights. Many more member states have now produced national legislation concerning the liability of online distributors.
The antitrust sphere has equally played a relevant role in the evolution of IP law. For example, a large number of IP merger cases have been decided by the European Commission and the US Department of Justice, with a similarity – in some respects – of approach as to the assessment of the competitive impact of these transactions on innovation. Increasingly, we observe transactions that combine both IP and trade secrets safeguards – a trend that will only continue, given the recent push by the European Union to introduce protection for trade secrets and business information. Finally, the global battle to protect IP has never been fought out of the courtroom, most notably in the protection of pharmaceuticals against counterfeits. The spate of bills enacted against counterfeiting and piracy before the onset of 2009 had passed anti-camcording bills over concerns regarding ticketing market piracy; a spate of bills passed to stop online infringement (fostered by the production of services such as the Cruise used by pirates); and a batch of treaty aspirations designed to promote cross-border co-authorship between the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO). Indeed, the past couple of years have seen the drafting of new treaties for the protection of audiovisual works and for the protection of broadcasting organizations and satellite communications.
Selecting the Ideal IP Law Firm
When selecting the right law firm to handle intellectual property assets, businesses and individuals should take various factors into consideration. Experience in IP issues is crucial. It is important to choose a law firm with a dedicated team that includes legal and technical professionals experienced in all aspects of intellectual property, from litigation to prosecution. Experience in the relevant industry may also be an asset.
The geographic footprint of the firm is another important aspect. Although globalization has weakened the importance of geographic coverage, the level of local knowledge and experience of a firm in a particular country or region may have an impact on the quality of the advice. For instance, experience in dealing with Chinese authorities is critical for intellectual property owners. IP infringement continues to be rampant in China, despite recent amendments to IP laws, and a rapidly growing market for many companies in the West.
The quality of the personnel serving the client, the manner in which the work is performed, and the ultimate outcome may vary widely between law firms. For example, in China, where the legal regime is developing rapidly, IP law firms that are best able to navigate changing regulatory environments and local practices can be very helpful.
The sensitivity of the matter at stake can also play a very important part in the decision of which firm to choose. Some firms may not have sufficient bandwidth or a practice that is well suited for a particularly complex or sensitive matter. In some fields, such as pharmaceuticals, clients may be more concerned about keeping their strategies secret than using the best firm in the field. Sometimes it is also important to use a firm that focuses primarily on the sector involved. Thus, in the case of transactions, advising a listed investment bank is usually different from advising a private family business. Smaller law firms could be a better fit for its highly specialized niche nature. In contrast, larger firms with a sizeable and well-established intellectual property practice can benefit from economies of scale and may be able to provide more competitive levels of service or prices.
Finally, the assistance of a law firm for intellectual property purposes can be considered as a kind of insurance policy. In this case, the cost might be less of an issue and the firm’s capacity to cover the whole range of IP work in the most efficient manner possible might be of greater relevance.
Future of IP Law Firms
The future of intellectual property law firms is poised at a crossroads, seeing challenges on the horizon but also opportunities for growth. One potential challenge is the impact of technological innovation. As artificial intelligence and machine learning continue to evolve, it is possible that many intellectual property transactions and litigation may become increasingly automated, which could disrupt the traditional business model of law firms. In particular, firms that do not adapt to these new technologies may find it difficult to compete with those that do.
Another challenge is the impact of globalization. The proliferation of new markets for intellectual property and copyright across the world has expanded the reach of intellectual property law firms but also increased competition. In the coming years, firms may need to develop new strategies for serving clients in emerging markets or connecting clients with local experts in various jurisdictions.
Additionally , firms may face increased competition from other players in the intellectual property space. For example, technology companies with their own internal legal teams may compete with law firms for clients, while new entrants with cheaper or more innovative service delivery models may disrupt the traditional law firm model.
However, the future also holds opportunities for intellectual property law firms. For example, as more people use mobile devices and the Internet of Things becomes more prevalent, there may be new areas for intellectual property protection. Law firms may also be able to leverage new technologies to provide more efficient and cost-effective services, and they may have the opportunity to differentiate themselves by offering specialized expertise or global resources that set them apart from their competitors.
Overall, the future of intellectual property law firms may involve navigating a complex and rapidly changing landscape, but businesses that proactively respond to the challenges ahead are likely to emerge as leaders in the field.