WIPR Leaders 2020: A new approach

As the rules of the game change, so must the strategy. Intellectual property (IP) infringers have gone global, running complex supply chains, sophisticated online operations that leverage surprising levels of IP knowhow.

For rights owners, this is either already a problem they are aware of and tackling, or a problem that has not yet appeared.

Either way, they need help to prevent and tackle any impact on their business or suffer the consequences, which may be in the form of counterfeits, lost market share, or tarnished trademarks.

“Infringers and counterfeiters are taking advantage of global interconnectivity and, in order to beat them, small- to medium-enterprises (SMEs) and large multinationals must take an international approach as well,” explains Gordon Harris, co-head of IP at Gowling WLG.

Harris and his fellow co-head, Robert MacDonald, preside over an IP practice built to match the tests posed by international infringers. The firm’s 105 IP partners, supported by 125 other IP professionals, operate top-tier IP services in multiple regions for multinational clients.

The firm’s strategic IP footprint has been carefully cultivated over the past 20 years.

This includes IP practices across Canada, and in Birmingham and London in the UK, Munich, Paris, Dubai, Singapore (under an exclusive association with JurisAsia), Beijing and Guangzhou in China, and Moscow—places where the firm can provide the “maximum strategic advantage” to clients, says Harris.

Changing priorities

To understand why this international approach is important one needs to understand how clients’ priorities and technology have changed.

Connectivity, the same technology that has allowed infringers to operate worldwide, also allows a law firm like Gowling WLG to manage a network of offices—all while maintaining quality.

Twenty years ago, clients generally accepted that they had to deal with multiple legal service providers in multiple jurisdictions.

“That has changed,” MacDonald says. “Due to pressures on their businesses and budgets, clients now want a handful of trusted advisors.

“Our clients are able to start a relationship with Gowling WLG at one point and then, as they grow, we can then take care of them in jurisdictions that are of particular concern,” he says.

Harris adds: “We have top-tier experts at all points around the world and consequently the sun doesn’t set on Gowling WLG’s IP practice.”

Advice that matches

Harris and MacDonald believe their role is to look beyond traditional, piecemeal legal advice.

“As one of the leading patent firms in the world, we can talk to you about what you need to do to ensure your patents are protected in the key economies,” MacDonald says.

This advice changes depending on the size of the business, he says. An SME with the “next greatest product” will no doubt be dependent upon technology. As such, its advantage in the marketplace will be “quite frankly, very short”.

“You have first-mover advantage but everybody will catch up with you quickly,” MacDonald warns.

“Before you move out into the world you need to make sure you have a strategy that takes into account more than just domestic issues—you need an international element, too.”

Harris agrees, adding that, due to budget constraints, SMEs have to choose carefully where to file.

“We can advise them about where the trouble spots are and where, if they do file, we can make a success of enforcing in a way that protects them against wider infringement,” Harris says.

Large multinationals, by contrast, know the value of their IP. “What they want from Gowling WLG is help to deal with the challenges in China, Russia, ASEAN and the Middle East,” Harris explains.

Seamless service

MacDonald describes Gowling WLG as an “international firm with a strategic footprint”. The firm views its IP practice as one team—an important cultural attitude that allows for a seamless, single “conversation” with the client, no matter where in the world the advice is needed.

“You have to educate us just once, and we will take care of everything in the jurisdictions where you need us,” he says.

MacDonald concludes: “This enables the type of efficient and effective global approach to protecting and enforcing IP that is essential in today’s world.”

Gordon Harris can be contacted at: gordon.harris@gowlingwlg.com

Robert MacDonald can be contacted at: robert.macdonald@gowlingwlg.com