Securing the right protection for your business’s intellectual property (IP) can be complicated and expensive without the right advice. Here, we explain the role of IP advisers and discuss how you can choose one that understands, complements, and enhances both your IP and your business.

What is an IP adviser?

An IP adviser is a professional who is qualified to help you identify, protect, manage and/ or exploit your business’s IP. Many will start out as lawyers who then specialise in IP law. Others will have an academic background in fields such as engineering, life sciences or chemistry. IP advisers will also often obtain qualifications in specific areas of IP, such as patents and trade marks.

The type of IP adviser that you need will depend, both on the type of IP your business has, and what your business needs/ wants to do with it.

What are the different types of IP adviser?

1. Patent attorneys

Patent attorneys are regulated professionals that support clients in securing patent protection for an invention or innovation, such as a new electronic device or drug formulation. They can help with all aspects of patents, including drafting applications, obtaining patents in the United Kingdom and throughout the world, handling renewals, recording changes of ownership, and managing patent portfolios as the business grows. Patent attorneys will often have an academic and professional background in a particular technological or scientific field, such as engineering, pharmaceuticals, chemistry, software, or electronics. As such, choosing a patent attorney with a background that is relevant to your business will ensure that they can draft comprehensive, technically accurate patent applications that achieve the best protection for your innovation.

What to look for: ‘Patent attorney’ is a protected term, which means that it is illegal for a professional to call themselves a patent attorney without being registered as such with the Intellectual Property Regulation Board (IPReg). Patent attorneys may also be accredited by the Chartered Institute of Patent Attorneys (CIPA) and are usually also qualified to act before the European Patent Office. Look for acronyms such as CPA (‘Chartered Patent Attorney’) and EPA (‘European Patent Attorney’) at the end of their job title.

2. Trade mark attorneys

Trade mark attorneys support businesses in securing registrations for their trade marks, such as names, logos and other important elements of branding, in the United Kingdom and throughout the world. In addition to checking that a trade mark is available to use in a business’s chosen jurisdiction(s), trade mark attorneys can ensure that a registered trade mark is not copied or used without permission by providing watching services, filing oppositions, revocations, and cancellations, sending cease and desist letters, and handling e-commerce takedowns. Trade mark attorneys occasionally also practise as IP solicitors.

What to look for: Whilst the term ‘Registered Trade Mark Attorney’ is protected, the term ‘Trade Mark Attorney’ is not. This means that anyone can claim to be a trade mark attorney, without necessarily having any relevant qualifications. As such, it is important to make sure that a trade mark attorney is registered by searching their name on the IPReg website. Many trade mark attorneys will also be accredited by the Chartered Institute of Trade Mark Attorneys (CITMA), in which case they may have the acronym CTMA (‘Chartered Trade Mark Attorney’) at the end of their job title.

3. IP solicitors

IP solicitors are lawyers who have specialised in IP law. In addition to assessing and identifying their clients’ IP, they will support various IP-related transactions, such as licensing deals, disputes, and social media takedowns. They will also help with court proceedings and litigation involving IP, such as IP infringement or breaches of contract. Some IP solicitors may also be Chartered Trade Mark Attorneys.

What to look for: IP solicitors are regulated by the Solicitors Regulation Authority (SRA) under the Legal Services Act 2007. A legal professional in England & Wales cannot call themselves a ‘solicitor’ without approval from the SRA.

How should I choose my IP adviser?

  • Find out what kind of IP you have, whether it’s a distinctive name and logo, or a new drug formulation. This will help you to identify the most suitable form of IP protection, and therefore the type of IP advice you will need. If you are not sure, you may want to seek initial advice from an IP adviser.
  • Check their qualifications. Start by searching an adviser’s name, either via the SRA (for IP Solicitors) or IPReg (for Chartered Patent or Trade Mark Attorneys), to check that they are regulated. In addition to following a strict code of conduct, regulated advisers come with safeguards such as insurance and a complaints procedure if anything goes wrong. Acronyms such as ‘CPA’, ‘CTMA’ or ‘CLP’ will also show you that the adviser has achieved chartered status by undergoing regular training to keep on top of developments in their field.
  • Review their background. The best and most effective IP advisers will be able to get under the skin of your business and will have a good knowledge of the sector within which it trades. Take time to review an IP adviser’s qualifications, experience and clients. Have they got a proven track-record of supporting clients in the same, or similar, fields? Do they have the requisite knowledge to understand your business and its IP?
  • Communicate clearly and consistently. IP is a valuable asset for businesses at any stage of their journey, whether starting up or exiting. As such, your IP adviser will need to be able to contact you if there are any issues relating to oppositions, Freedom to Operate (FTO), or unauthorised use. The best advisers, however, will also go beyond transactional IP work to deliver strategic advice on how to make the most of your IP, so be sure to keep them updated on your goals, objectives, and plans.
  • Ensure your IP adviser can grow with your business. As your business develops and diversifies, your IP is likely to do the same. At this point, it may be easier and more cost-effective to partner with a firm that has the scale to handle your increasing demands and houses different types of IP specialists under one roof. This essentially provides you with a ‘one-stop-shop’ for all of your IP-related needs, whether that is securing additional patent protection, enforcing your rights against infringers, or negotiating a licensing deal with a third party.

Your IP adviser should provide more than just administrative services. Rather, it should act as an integral part of your business at each stage of its growth and provide an invaluable source of strategic, commercial advice.

By choosing a professional who is regulated, qualified, knowledgeable and experienced, you can ensure that your IP is elevated from a certificate that gathers dust into one of your business’s most valuable assets. 

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