Posted on December 23, 2011
The 20th Annual Survey of General Counsel published in the August 2010 issue of Inside Counsel ('What's Going On In Today's Legal Departments') has some significant pointers for IP legal services professionals who want to attract good clients and keep them on board for years.
First of all, it identifies IP legal services as one of 5 practice areas that increased in volume despite the turbulent economic conditions, with the comment "IP has become more important to everybody, whether it's GM and whether [its employees] are authorized to use the word Chevy... or my company protecting creative rights for fashion." - Lorraine Koc, vice president and general counsel, Deb Shops.
Secondly, the figures cited highlight the opportunities IP legal services professionals have to attract really good clients IF they take action to address some of the concerns in-house counsels have. Key figures to consider include:
- Only 40.9% of law firms understand their business. Truly shocking! I have written a bit about the need to know the conversation going on in your prospect's /client's mind, and suspect that this figure is low because too many lawyers have no proper processes and systems to find out what their clients are really looking for. Even worse, they probably make no effort to learn about their client's business.
- Almost 65% on in-house counsels don't believe law firms actively seek ways to reduce costs. Many IP legal services professionals don't want to reduce costs because of the time they spend on various activities which they want to bill for. However, if IP legals services professionals systemised their client client attraction activity (as an example), some of the costs they subsequently quote could be reduced because of the reduced overheads. By proactively discussing costs with clients, IP legal services professionals can stand out when compared to those that simply don't want to be flexible enough to discuss costs.
- 51% of law firms fail to recognise their clients' budget constraints. First of all, I want to repeat something I have mentioned below. You do not want to be the IP legal services professional that is known as the lowest priced service provider in the market. That will kill your reputation and your business. Clients will always pay for value, but IP legal services professionals do need to consider the reduced budgets many of the clients have. Providing a hybrid model of fixed and billable-by-the-hour price plans, and perhaps thinking more about multi-year managed service options gives astute IP legal services professionals the opportunity to show their willingness to explore various pricing options.
If you have not read the report, do so now. The key figure to take away, and which hammers home the opportunities available for lawyers, is the fact that 31.5% of in-house counsels are unhappy with their current law firm relationships.
How that breaks down for the IP legal services sector is not clear. But if we assume - and I appreciate this is a BIG assumption - that 30% of in-house counsels are looking for a new IP legal services provider, then clearly there is a lot of business out there that needs to be won. Remember, IP legal services is one of the top 5 growth practices according to the survey.
If that is the case, you need to be smart about the way you go about trying to win new IP legal services business. Repeating old mistakes such as cold calling, running seminars to prospects you have built no relationship with, or failing to build trust by providing information that your prospects are looking for (without giving direct legal advice of course) will mean you simply repeat the mistakes made by law firms that many businesses are already unhappy with.
Posted on December 5, 2011
Public domain is consists of vast material that includes books, music, photos and information that is available for the public. There are times that you find yourself having difficulty in distinguishing if a certain work belongs to the public domain, because the laws governing it are sometimes complicated and are always changing. However, you need not to worry anymore abut that because here are some terms and conditions for using public domain works as well the rule of the thumb in determining works:
1. First thing about on how to distinguish it and perhaps the most common is when you look at the publication date and the place where it is published and that it is prior to the year 1923, automatically you can say that it is in the realms of public sphere.
2. Now there are some modifications and new rules governing the legality of the publication of a certain work for those works published or released between 1923 and March 1, 1989. Because there are some works that was created during these years that have not been able to follow certain regulations. In other words, some works do not provide a notice of copyright on the work or the renewal of the copyright per statutory deadlines. Specifically, we can say that it is already considered to be a category belonging in the public sphere if a certain work was published in the United States during the range of the year 1923 and 1978 without any notice then we can say that yes it is belonging to the public domain. On the other hand, if the work was publish in the United States during the range of the year 1978 and March 1, 1989 to be exact, still without any notice and registration, then it is still considered to be in the public domain. Even if a certain work was published in the United States during the year 1923 and 1963 with a notice and the copyright do not apply for a renewal, we can still say that it belongs in the United States.
3. Now for those works that has been created after March 1, 1989, works that has published or not are protected by copyrights for 70 years from the date the creator dies. In addition, those works for corporate authorship (works made for hire), the copyright term is the shorter of 95 years from publication or up to 120 years from the date of creation.
Posted on November 29, 2011
When applying for a trademark you may run into some difficulties that may cause your trademark application to be denied. If you still face denial of your application, you have options to appeal the decision.
Reasons for the Denial of a Trademark Application
If you submit an incomplete or poorly developed application, you are almost guaranteed to receive a denial. Your trademark attorney can help you draft your application to avoid this pitfall, but there are several other issues that can result in the denial of an application.
The most common reasons for trademark denials include:
- the presence of a similar, pre-existing trademark already registered;
- your mark is too generic;
- your mark consists of immoral, disparaging, or deceptive matter;
- your mark contains the name, image, or signature identifying a living individual without their written consent;
- your mark contains the name, image, or signature of a deceased President of the United States while his widow is still alive, unless consent is given by the widow;and
- the mark is used solely as a trade name.
How to Respond to the Denial of a Trademark Application
If your trademark application is denied you will receive notice from the USPTO in the form of an Office Action. The notice of denial will include reasons for the decision, which your trademark attorney can review and discuss with you. You are given a written notice of the time you have in which to submit a response to the decision, typically 6 months.