Trends in IP & Patent Law - Legal Disrupters Podcast

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In this episode, Rosie Burbidge talks to Summize's CTO Richard Somerfield about the trends in IP and patent law and how they feel about hybrid working.
December 21, 2023
Last updated:
December 21, 2023

Legal, tech, business, AI.

The report says take up of the technology across England and Wales is incredibly high, with around half of lawyers surveyed reporting they are already using AI technology.

People just don't realise there's an entire new world emerging full of clever new tech that's going to revolutionise the way we do business. The role of the lawyer in particular is changing dramatically.

Electra Japonas

I think lawyers, old school lawyers particularly, think that everything they do is really, really special and so therefore needs to be bespoke and needs to be done manually and in a very artisanal way.

Sam Walkley

Great legal tech won't replace a great lawyer, but great legal tech in the hands of a great lawyer is game changing.

This is Legal Disrupters, powered by Summize. Digital contracting done differently.

Graeme Smith

Welcome along to another Legal Disrupters podcast, here on episode three. Here we are with all the latest news and conversation in the legal tech world, including a chat with the award winning author and leading IP lawyer Rosie Burbridge, who was also named a trailblazer among WIPR's Influential Women in IP 2019 - one of only 20 global rising stars. She talks with Chief Product Officer of Summize, Richard Somerfield, in our Trendsetter Talk shortly. Plus a look into legal tech events this summer and how in-house lawyers are needing to become more involved in commercial decisions than ever before.

Also, right after this episode of Legal Disrupters, we have a chance to hear Richard Tromans, the founder of Artificial Lawyer, Electra Japonas from the Law Boutique, Tom Dunlop from Summize, and Vanessa Challess, founder of Tiger Law, discussing doing things differently In legal. Summize partnered with Artificial Lawyer to give online viewers the chance to post questions as well and you can hear that right off the back of this episode.

If you're listening on Spotify, you'll be able to watch it as well. So that bonus episode you can watch exclusively on Spotify or in audio-only form elsewhere. It's on the way right off the back of this episode.

Coming up on Legal Disrupters.

Rosie Burbridge

So gunnercooke is, I guess, at the much more innovative end of law firms, which you might say is not necessarily saying a great deal. In order to be able to establish copyright, you need to show that there has been some copying.

Rachel John

As in-house lawyers in a unique position that they often see and are involved in the detail of multiple deals across multiple different business units. So with that level of understanding and insight of a business, plus access to the right people, to not use that knowledge for the commercial benefit of the business would not only be a waste of resources but a missed opportunity.

Legal, tech, business, AI. This is Legal Disrupters. News.

Graeme Smith

First up this week, KPMG UK plans to double its legal services headcount over the next three years. The news comes as KPMG looks to invest £300 million in growth of its services. In the last five years, the push of the Big Four professional service firms have become ever more pronounced. Researchers estimated previously that if they were even a fraction as successful in law as they were in consulting and built a combined 5% share of global income, the annual revenue from legal services for EY, Deloitte, PWC and KPMG could soon hit $30 billion. In the last year in particular, KPMG has been looking to accelerate its drive into the legal space with an emphasis on technology enabled legal services. Last year an interview with Global Head of Tax and Legal Services, David Link, confirmed KPMG was investing more than $1 billion in tax and legal technology, specifically to meet growing demand.

Legal Disrupters.

Graeme Smith

Contract software company SirionLabs announced this week that it had raised $85 million in a Series D round led by Swiss private markets firm Partners Group. The round also included existing backers Tiger Global, Secure Capital and Avatar Capital, SirionLabs has said. It brings SirionLab's total capital raised to $157 million according to the contract lifecycle management company.

Legal Disrupters

Graeme Smith

LexisNexis has surprised people with its acquisition of Silicon Valley based contract lifestyle management software provider Parley Pro to expand its CounselLink enterprise legal management platform business. The Parley Pro deal will enable CounselLink users to manage their contracts in real time, from drafting and negotiating through to signing, all within one platform, according to LexisNexis.

The deal comes as corporate legal departments face increased workload and bandwidth challenges with in-house teams expected to handle more tasks with fewer internal resources. Some 60% of Chief Legal Officers are anticipating an increase in work volume due solely to privacy and regulatory enforcement, according to a recent Association of Corporate Counsel survey. Against that backdrop, in-house teams are expected to increase adoption of legal service requests and intake technologies over the next two years, second only to AI related tech, the ACC survey has found.

Legal Disrupters.

Graeme Smith

And the Thompson Reuters Institute has published its State of the UK Legal Market 2022. The findings include how the ongoing impact of the pandemic and the aftermath of Brexit has weighed heavily on the legal market in the United Kingdom over the past year, especially as the realities of the move away from the European Union become more apparent. Also, it explains how the UK legal market is experiencing its highest level of spend optimism in the last five years and that the portion of UK legal buyers saying they're anticipating their overall legal spend will grow in the coming months has seen a huge increase in the last year.

Legal Disrupters powered by Summize. Digital contracting done differently, with intelligent automation making your workflow smarter. For more, visit summize.com.

Paris Monroe

Legal tech conference season is on as heading back out and networking in person has returned to the sector post pandemic. In May, things are really taking off with the 2022 CLOC Global Institute in Las Vegas. Industry leaders from across diverse industries contribute to the insightful and thought-provoking conversations happening at the CLOC Global Institute. The event happened 9th to the 12th of May and featured speakers from Microsoft, Workday, Google, EY and Allen & Overy. Here is Nam Truong from Law Squared, who seems keen.

Nam Truong

Also here to get the lay of the ground. I learned from the best. Learned how a mature legal office functions, interacts with the in-house teams, in-house lawyers and what kind of technologies and processes that they're leveraging.

Paris Monroe

Speakers as diverse as Jen McCarron from Netflix and mindfulness expert Lee Papa took part in several days of talks and networking. Here's two more fans, Callie Collins from Twilio and Gerald Glover from Davis Wright Tremaine.

Callie Collins

No matter if it's your very first time or you're a veteran, you're coming here and taking away so many added skills and ideas.

Gerald Glover

You learn from your colleagues cause it's such a different experience to engage in person than over Zoom.

Paris Monroe

It's fair to say delegates find value in what they learn and also who they meet at these shows. In the UK this month, Tech Play Day in London. Billed as the world's first completely interactive technology event aimed at the legal industry, Tech Play Day encourages attendees to play with the latest tech in person rather than sit on online demos. There is a star-studded line-up this year, with speakers from Deloitte, Pets at Home and Which?. The second Tech Play Day powered by Summize takes place on May 17th in London. The exhibitors this year are from both legal tech and fintech companies. Attendees can expect to meet people from Akoni Hub, the cash management platform, Tabled, a legal workflow solution, as well as many more. And we'll be reporting back from the event on our next episode.

Legal Disrupters.

Graeme Smith

That's Paris Monroe reporting there and Graham Smith. This is Legal Disrupters, the podcast with all things legal tech dropping every fortnight across the summer. And if you want to learn more about Tech Play Day head to summize.com right now. Don't forget, right after this episode of Legal Disrupters we've got a chance to hear Richard Tromans, the Founder of Artificial Lawyer, Electra Japonas from the Law Boutique, Tom Dunlop from Surmise and Vanessa Challess, founder of Tiger Law, discussing doing things differently in legal. And you can see a full video of that exclusively on Spotify and just listen to the audio elsewhere. That's next, after this episode of Legal Disrupters.

You're listening to Legal Disrupters, powered by Summize, with the must listen to people at the cutting edge of legal, tech, business and AI. This is the Trendsetter Talk on Legal Disrupters.

Graeme Smith

On this episode Rosie Burbridge, a specialist IP lawyer and partner at gunnercooke, chats to the CTO of Summize, Richard Somerfield, about trends in IP and patent law and how they both feel about the new hybrid working model.

Still to come on Legal Disrupters.

Rosie Burbridge

Technically software as such is not capable of being patented. At least in Europe it's not, so in the EU and UK.

Before the pandemic, you had to fax. Fax was still a thing and it's like completely crazy! So thankfully the pandemic killed faxes.

Legal Disrupters.

Richard Somerfield

Interested in how you got into IP law in the first place?

Rosie Burbridge

Well, it's a very interesting question of which there's a very long answer about how I got interested in law in the first place and a shorter answer which is, I think of all of the areas of law it combines creativity and kind of helping people with what I consider to be the more interesting aspects of their business. So, it's core to the business' strategy, its overall success and really, you know, gives us a huge opportunity as lawyers to sort of see behind the hood and get to grips with some of the key technologies and also some of the really important areas around marketing and global reach, which I think are really exciting, interesting and I guess probably more than most other areas of law enable us to work with lawyers and a whole range of other businesses around the world.

So, it's those two elements. The international element and the creativity, sort of innovation elements.

Richard Somerfield

I've also noticed that obviously you work for gunnercooke. I noticed both yourself and gunnercooke, got quite a lot of awards over over the years. What do you feel you bring to, you know, IP law and where have those awards come from?

Rosie Burbridge

So, gunnercooke is, I guess, at the much more innovative end of law firms, which you might say is not necessarily saying a great deal! But essentially, the way that we were founded was with a completely different business model to your traditional law firm. So, each partner is responsible pretty much directly for their own business. Like, I essentially run my own unit. I have my own team and it's made me much more aware of the business stresses that I think a lot of my clients face and has ultimately made me a much better lawyer because I can empathise and understand with their, kind of, commercial needs as much as their legal needs.

And I think, I mean, I don't follow all of our awards to be honest, but I think really where it's come from is because every partner is very much responsible for their own success. It's made us, I think, a lot better at serving our clients. And there is much more of a desire to be efficient and to utilise technology to improve that, because that old model of just churning through junior hours is not sustainable for many reasons, but also just isn't a realistic way of operating when you've kind of got partners having to make quite a difficult decision about whether to incur the cost of hiring someone. So, you know, when you're looking at it from that dimension actually introducing some technology that's going to make you more efficient is often a better choice than hiring an additional person.

Richard Somerfield

It's quite interesting you talk about, you know, you operate as like a company within a company, so you get to feel the business pressures. From your perspective, how do you talk to your clients about IP, particularly IP law, and what they do and don't need to be protecting?

Rosie Burbridge

Well, I mean obviously it varies hugely within, you know, different sectors and different sort of risk profiles of businesses and obviously depending on budget. I think, you know, particularly if you've got a very... innovation in the sense of an R&D-focused business, then thinking about patents as early as possible is essential because you've got basically zero window with patents. You need to file it before you disclose the invention. And if you've disclosed it then you've kind of, you've missed the boat kind of thing. You might still be able to get a slightly more narrow patent, which excludes the things that you've shared with the public, but it just becomes more and more challenging to defend that. And obviously the more things you share, the harder that gets.

But of course, as a start-up your motivation is to tell everyone about how amazing your new idea is in order to gain funding and exposure. So and quite often, start-ups don't have the money to pay for a patent. So it's that kind of pressure and helping clients to work out when they need to spend the money and on what. And obviously some areas, particularly around software, it may, you know, in some circumstances be possible to get a patent. But often when you're quite early stages, perhaps not worth investing in that.

I think patents are much more valuable for people who are more in the hardware space or who are, you know, industries like pharmaceuticals, where it's pretty much essential to your success to have a really strong patent portfolio.

Richard Somerfield

Yeah. I mean, I've worked in software for quite a few years now and over the years been fortunate to get some patents myself. I think it's quite interesting to talk about the process. It is intimidating. And I think, you know, we see a lot of the larger companies, your Apple's, your IBM's, your Microsoft's, etc., having huge patent teams. And, you know, hundreds of patents a year are granted to those companies.

How do you talk to start-ups and what kind of tips do you give to start-ups on how to navigate that kind of area? Particularly, obviously like you say, a start-up wanting to move really quickly, wanting to talk about what they're doing. At the same time, if they're bringing some kind of innovation to market, whether that be software, hardware or whatever would be. You know, they don't really just want to get swallowed or totally overwhelmed by a larger businesses that just comes in and takes the idea or concept. What kind of tips do you give to start-ups?

Rosie Burbridge

So, I think there's a few things. One... like there are two dimensions to this as well. One is making sure that you yourself are protected. As in, like your invention is protected. But the other side of the coin is making sure that you're not sued for infringements and typically the larger tech companies aren't the people that you need to worry about for that. It's actually what are called non-practicing entities who buy up patent portfolios and have a sort of strategy of encouraging people to licence their patents, some of which are in varying degrees of validity, in order to essentially monetise their portfolios. Which is, I guess, one good reason for filing patents. That you do have this long tail of cash flow potentially, but also it does show the risk.

So, I think two things. One is to make sure that you get input from a patent attorney as early as possible. A lot of patent attorneys will give at least a kind of initial view on whether or not what you've created could be patentable free of charge. And quite often they're linked up to the various grant bodies who might be able to provide some funding towards patents. And will have, you know, there are various tax credits and tax regimes that can be helpful. So, R&D tax credits are very well known but there's also something called the Patent Box. So, worth working with accountants as well to see what potential opportunities there might be to, you know, offset some of those costs.

The other side of the coin, which I think is often neglected and is equally important, is to think about how you would fund a potential claim that was made against you. And the most obvious way of doing that is to ensure that you've got good insurance in place. Typically, most business insurance doesn't include IP. Like it's carved out very deliberately because it can be quite expensive to respond to an IP claim. But whilst it is possible to get insurance, what they call 'after the event', so after someone's told you that they think that they're going to sue you, it's considerably cheaper to get it before the event. So, before you know that there is an issue and, you know, you don't necessarily need to have a huge premium. And also, I mean, the amount that needs coverage isn't necessarily wild. You don't need to have a million pounds worth of coverage, even though a claim might cost a million. You just need to have enough to put up a robust defence and then identify whether or not they have a valid claim. Because if they do, there's no point fighting it probably anyway. You just want to get to a settlement deal around licencing the technology or perhaps tweak the technology so that you're outside the scope of the patent. But having the resources to be able to make those decisions is really important.

Richard Somerfield

That's really useful tips those ones. So, one of the things you mentioned there was around the IP holding companies who perhaps don't produce the product or aren't making that product anymore, but they've perhaps bought the patent portfolio and and are leveraging that. Obviously in the origins of patent law, typically more around like manufacturing and actual physical products rather than software, do you feel the IP laws around the world perhaps need changing or are there any alterations with regards to software? Obviously software moves so quickly and there's so many innovations and without the physical manufacturing, it's kind of a different ball game. Do you think the same law applies to all different areas of IP or do you see any changes coming?

Rosie Burbridge

So, well two things. Firstly, I mean technically software as such is not capable of being patented. At least in Europe it's not. So in the EU and UK, you need to have some kind of technical contribution. There needs to be a sort of real world impact of the software. In reality, it's quite often if you're a skilled patent attorney to work around that and to find something that can be patented. But it's just worth noting that the original intention was very much not to have patents for software, for the exact reason that they are quite... there is this quick turnaround. It's a very innovative, fast-moving industry and patents are typically better suited to products like pharmaceuticals or mechanical engineering, where there's a lot of investment that's put into a product that then remains relatively static for quite a long amount of time.

I think it's worth bearing in mind that patents are by no means the only intellectual property rights. So there are quite a few other areas that are worth knowing about, of which copyright being the most obvious in relation to software where it's typically treated as being a literary work, as in the source code itself, being a kind of not quite Jane Austen but something that's intended to be interpreted and understood as a literary work. And there can be issues with that as far as if it's decompiled or translated into another coding language. But I mean, that's a whole different topic for another day.

But overall, copyright does work quite well for software. Like generally where this sort of thing arises, it's where there's been an employee who's left and taken something. You know, that might well be one of the Co-Founders or it might be somebody else who's worked on the project and taken some of the code base with them. Where it becomes a little bit more difficult from a copyright perspective is if someone's kind of copying the look and feel and the functionality but not the underlying code itself. And sometimes it is still possible to have an argument around copyright, particularly if elements of the visual side of things are taken. And then you might be able to go down an artistic copyright road. But, you know, it does have its limitations. Not least that, as the name suggests, in order to be able to establish copyright, you need to show that there has been some copying. And if there isn't a connection like say for example, an old employee, it becomes quite difficult to show that there may have been copying rather than just a coincidence or somebody being inspired, which is a term that I hear quite often.

I think it's also worth being aware of one of my personal favourites and the most poorly understood IP right, which is designs. And they can be registered or unregistered. Unregistered designs only last for three years, at least in a kind of software context. For physical products, you can get a UK unregistered design that lasts typically for 10 years but potentially 15 years, depending on when it was first marketed. But essentially, if we think about it solely in a software context, an unregistered design is something that protects the sort of shape or appearance of the whole or part of the product, and that can include like a logo and it can include a user interface. So, not the interface as in the way that you manipulate it, but single, sort of static slides of user interface. So like, I don't know... a home screen on an app or like the key different phases through a website. You can protect that. Both the colours and the kind of relative shading. That sort of thing.

Richard Somerfield

And do you... are there any areas of what you do or the process you do, where you think perhaps technology is yet to happen? Or there's like, you know, disruption or innovation that you're you're hoping for?

Rosie Burbridge

Well I guess, for example, I do a combination of filings, strategy and litigation. And in each of these areas there have been dramatic improvements, not least the fact that people finally accept email signature in a lot of jurisdictions and the fact... well the pandemic was hugely useful in terms of like, you know, like before the pandemic you had to fax! Fax was still a thing and it's like completely crazy! So thankfully the pandemic killed faxes and I mean, it's crazy to think that that's major innovation in the 21st century. But yes, that has made quite a big difference to my life.

It's also things like electronic bundling has become a lot easier. And we have a lot more of these virtual hearings, which obviously saves a lot in time and because we're not having hard copy bundles a lot of the time, that saves a lot of time and cost for clients and makes it much easier for everyone to be on the same page. I think that's kind of like, weirdly, the pandemic was extremely helpful in terms of just forcing people to make changes that I think were otherwise going to take at least another five years. So, there have been some positives from it.

Richard Somerfield

Well, I mean you mentioned there about, you know, kind of online, the pandemic obviously changing many things really. I mean we've seen perhaps a switch back a little bit towards more traditional ways, as people kind of would like to meet people in the office and all the rest of it.

But I think one of the things we saw both ourselves and in the companies we were looking at, was the virtual office really came in overnight. You know, we went from being a physical office to a virtual office really quickly and once people were able to make that switch over, it changed considerably really. You know, like you'd gone from the point where everybody had to be in a physical location to now it's very much of a hybrid model. Have you experienced the same thing at gunnercooke too?

Rosie Burbridge

I mean yes. So, weirdly, in two different ways. So, gunnercooke I have historically always worked with my fellow partners remotely. Like we're always in different locations so I'm very much used to that. But my actual team, because they're relatively junior it's very, I've found... I mean obviously we had to work remotely for a large part of the pandemic. But it's very, very difficult training people remotely. Very difficult to check in and manage, you know, a whole range of different things, from emotional state through to just, I don't know, trying to... the sorts of things when you're sat next to somebody you can tell when they're veering wildly off track. But when you're working on something yourself at home and you don't hear anything for two or three hours, you don't know if that's because somebody has gone off on a massive tangent or because they have, you know, they've just been working on the task that was set.

So, I think, I mean that really has been the most challenging thing with remote working is training, development, onboarding and I still don't have an easy answer to that. I mean, frankly I think it's just never going to be as good doing that remotely. So we do... I mean, we have a semi-hybrid approach but to be honest most days we're in the office because I've got a nice space in a central location. And, you know, I've prioritised having that over everyone working from home. Not least because my team are quite junior so working from home for them means sitting at a dining room table with other people which, you know, just is very much less than ideal.

Richard Somerfield

Yeah, you made some great points there. I think it really is like role and experience-dependent a little bit. You know, perhaps your more junior members of staff just need that, you know, just close contact. I think being fully remote is actually quite quite challenging. Both for the mentor and the mentoree as well, which is something to definitely be aware of.

Rosie Burbridge

I mean I think the problem that happens in a bigger firm is that a lot of that burden of the mentoring process gets taken on by a few people. So, a lot of people prefer to work from home and maybe are more efficient and able to bill more hours. But then a lot of additional work is done by the people who go into the office. But then that work has never been recognised in law firms. And I suspect that's going to lead to more divisions in the future. I don't quite know how or in what way, and I'm very happy to be outside of that environment where that's not something I need to worry about. But that has always been a tension in traditional firms and I'm sure it will continue to be.

Richard Somerfield

Yeah, definitely.

Rosie Burbridge

Well it's super to meet you.

Richard Somerfield

And you too. Great chat. Thank you!

Legal Disrupters, powered by Summize. Legal teams gain visibility and control while business colleagues are empowered to self-serve. Digital contracting software the whole business will love. Visit summize.com for more.

Graeme Smith

Welcome along to Legal Disrupters, the podcast with all the latest news and conversation from the world of legal tech. On our next episode we're hearing back from Tech Play Day on May the 17th in London, powered by Summize - the event that encourages attendees to play with the latest tech in person rather than sit in online demos. With speakers from Deloitte, Pets at Home and Which?. For free ticket info head to summize.com right now. And here's Paris with a look into how in-house lawyers are becoming business advisors as much as solely legal advisers.

Paris Monroe

The FT this week has been reporting on innovative lawyers working for in-house legal teams, increasingly making important commercial as well as legal contributions to their organisations. In-house lawyers are increasingly being valued as small business advisors as well.

The legal team at the Australian airline Qantas was singled out for their efforts during the pandemic lockdowns. They raised new funds, negotiated agreements with suppliers and helped the airline to shift quickly to running repatriation flights. The rise of legal operations as a discipline and the growing importance of environmental, social and governance ESG matters for businesses has led to more varied careers for in-house legal.

Rachel John is a senior in-house legal counsel at one of the UK's leading retail brands.

Rachel John

An in-house legal team simply has to deliver a commercial contribution in a modern business rather than a purely legal view. External law firms are there to provide the black and white legal rhetoric, whereas in-house lawyers do that too but they're also in a unique position that they often see and are involved in the detail of multiple deals across multiple different business units.

So, with that level of understanding and insight of a business, plus access to the right people, to not use that knowledge for the commercial benefit of the business would not only be a waste of resources but a missed opportunity for individuals to get more from their career.

Paris Monroe

The market for top legal talent is incredibly tight around the world. While competitive pay matters, one important draw of an in-house legal career is the chance to do challenging work and feel connected to the success and mission of a business, reports the FT. Take Binance, the world's largest cryptocurrency exchange. They claim to have attracted top legal talent partly by promising exciting work, such as engaging with regulators on establishing frameworks to govern cryptocurrencies and other digital assets. It's clear that in 2022 the boundaries between business advisors and legal professionals is being blurred at business of all shapes and sizes around the world.

Next time on Legal Disrupters.

Ben Audley

Because it's branded as legal tech, people associate it purely with lawyers or purely about a specific contract. But if you think that this is the whole business, and if you actually look that, you know, people in their day-to-day lives deal with contracts all the time, whether it's from accepting new things from their phone or whether they're buying a car or renting a house, apartment.

Graeme Smith

Ben Audley there on our next episode.

Next, on our podcast feed right after this episode of Legal Disrupters, we have a chance to hear Richard Tromans, the founder of Artificial Lawyer, Electra Japonas from the Law Boutique, Tom Dunlop from Summize and Vanessa Challess, founder of Tiger Law, discussing doing things differently in legal. Summize partnered with Artificial Lawyer to give online viewers the chance to post questions as well and you can hear that next. If you're listening on Spotify, you'll also be able to watch that as well. So that bonus episode that you can watch exclusively on Spotify or in audio only form elsewhere is on the way right off the back of this episode.

We'll see you next time.

The latest in the world of legal, business and technology. Legal Disrupters powered by Summize. Digital contracting done differently.

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About the author

Richard Somerfield

With experience working in several leadership positions, Rich focuses on bringing new ideas and concepts to market. Before starting at Summize, he lived and worked in Silicon Valley, and holds a number of European and US patents for his innovations.
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