Choosing IP counsel in a country you do not know

The situation is ordinary. A company needs a trademark in a country it does not operate in, or a patent validated somewhere its counsel has no contacts. Someone has to pick a local firm, usually within a week, usually with no basis other than a search engine.

What follows is the procedure the author would use. It does not require a subscription to anything.

1. Name the work before you shortlist

"IP counsel" covers several jobs with different evidence behind them:

• Filing and prosecution. A new application, and whatever the office raises. The relevant record is a track record of finished applications in that office, in that right type.
• Opposition, whether bringing or defending. A contested procedure with a written phase and deadlines. The relevant record is contested matters, not filings.
• Maintenance. Renewals, recordals, address changes. The relevant quality is administrative reliability, and the relevant record is how much of a firm's portfolio stays alive.

A firm that is excellent at the first is not automatically good at the second. Deciding which job you are buying narrows the field before any ranking is consulted.

2. Compare inside one cohort, never across countries

Filing volumes and grant rates differ enormously between European offices, and so do the underlying markets. A rating is only meaningful against the same country, practice area, filing track and time window. IPRATE rates that way on purpose, and the cohort is printed on every profile.

Two numbers on a profile matter more than the tier word:

• Cohort size. In a cohort of nine rated firms, the top tier means something different from the top tier in a cohort of two hundred.
• Confidence grade. A, B or C, reflecting how much finished work sits behind the estimate. Grade D is never published. A high tier at grade C is a real signal with a wide error bar.

3. Look at who already acts for companies like yours

This is the step most people skip, and it is the cheapest. Registers record the representative for every application, so you can see which firms already file in that country for companies in your sector, at your size, or from your home country.

A firm that handles inbound work from your jurisdiction has already solved the practical problems: instruction format, power of attorney requirements, time zones, and how to explain an office action to a client who does not read the local language. That is worth more than a tier.

Type the name of a competitor, a supplier or a comparable company into the lookup. You will see the registers it filed in and the firms that filed for it.

4. Three questions for the shortlist

Whatever the shortlist, ask the same three things, in writing, and compare the answers:

1. Who does the work. The name of the person handling prosecution, and whether that person is the one answering your email.
2. What the fee covers, stage by stage. Filing, publication, one office action, an opposition if one arrives, and renewal. A fixed filing fee with everything after it at an hourly rate is a different offer from a fixed fee through registration.
3. What happens if the office objects. Ask for a recent example. The answer tells you both about the firm's experience and about how it communicates uncertainty.

A firm that answers these three clearly, in a cohort where its record is solid, is a good choice. A firm that cannot answer the third question has not done it often.

What this procedure does not do

It does not find the best lawyer in the country. It finds a competent, appropriate filing agent quickly, with reasons you can write down and defend to whoever asked you to sort it out. For a dispute with real money on it, ask people who have litigated there. Registers record filings, not judgement under pressure.