Contributors Offer Insights on In-House, Law Firms Think Tank Reports

Edited from the original article published on January 27, 2021

At a time of greatest change and greatest opportunity, INTA led its members in efforts to research and report on the future for in-house practitioners and for intellectual property (IP) law firms, reaching results both enlightening and sobering. The Association released the reports’ executive summaries during the 2020 Annual Meeting & Leadership Meeting and has since made the full reports available exclusively to members.

INTA also released a third think tank report, “The Intellectual Property Office of the Future,” developed by current and former heads of IP offices around the world. This report is publicly available.

The INTA Bulletin took the opportunity to speak with two leading members of the think tanks that prepared the member-exclusive reports—“In-House Practice of the Future Think Tank Report” and “IP Law Firms of the Future Think Tank Report”—which involved some of the biggest names in trademark law.

Ronald Van Tuijl (JT International, Switzerland) and Peter Sloane (Leason Ellis LLP, USA) discuss the forward-looking initiatives and why their results are so vital to INTA members and the global IP field now.

Ronald Van Tuijl, JT International S.A., Geneva, Switzerland

In-House Practitioners (IHP) Think Tank: Ronald Van Tuijl

Ronald Van Tuijl is Intellectual Property Director at JT International S.A. in Geneva, Switzerland. Mr. Van Tuijl is a past president of INTA and has served numerous years as a Board member and on key committees. He served on the Expert Group of the “In-House Practitioners of the Future Think Tank Report.”

The stated goal of the IHP Think Tank was to produce an independent, proactive, and thought-provoking report on what the practice might look like 10 years from today. How did the group do on achieving its goal?
We had a fantastic team of experienced in-house practitioners and the invaluable Dolores Moro [Senior Strategist, Knowledge & Development] from INTA who has an in-house background. We were given some objectives which provided guidance for focus areas and helped draft questions for one-to-one interviews with key in-house practitioners from around the world early in the process. We had regular team calls, sharing our findings of the interviews, and then sent out a questionnaire to a larger audience where we asked many questions focusing on current state and future state. This provided us with statistics that helped underpin some of our initial findings. And it also helped us understand the gap between the current and future states, and how to bridge that gap.

As we started drafting the report, we continued our often-thought-provoking team discussions that helped our thinking around the structure of the report and the key focus areas. When we were given more time to produce the report and were asked to include a segment on the impact of COVID-19 on our practice, all the pieces fell into place.

We believe it is a thought-provoking report because we identify several great opportunities for practitioners to reflect on their roles and their teams’ roles. And we made several concrete recommendations to the Board of Directors and INTA that will hopefully soon find their way into committee objectives and INTA advocacy.

What is something about the results that stood out for you?
What stood out is how difficult it is to look into the future when companies keep evolving and changing at an even higher speed and how several people believe that we are not in control of our future. I believe the opposite applies! As a profession, we’ve proven to be resilient and adaptable over many years, more so perhaps than general legal departments. So, where some see constant change and need to adapt as a weakness and something that is imposed on us, I look at it as a strength. Only those that can adapt survive, and we have shown we’re experts in adapting, so we will come out stronger. I see a great era coming for our profession if we dare to take ownership of our own future.

How and why should practitioners apply the results to their careers? And what would you do differently as a result of this report?
How: By expanding into adjacent legal fields, focus on leadership beyond your team, by becoming a project manager, by incorporating IT solutions into your day-to-day work, by collaborating with other teams, by understanding the business, all of which are key elements in becoming true brand counsel. I’d like for everyone to consider our adaptability as a strength, to anticipate and design [your] future to remain relevant and essential for our businesses.

I’ve always considered myself a brand guardian but have in fact seen the light when someone in the team coined the words “brand counsel.” I will certainly instill the brand counsel thinking into my own team’s mind because it’s such a strong catalyst to broaden our scope and open our minds.

Peter Sloane, Leason Ellis LLP, White Plains, New York, USA

IP Law Firm (IPLF) of the Future: Peter Sloane

Peter Sloane is the Chair of the Trademark and Copyright Practice at Leason Ellis LLP, an IP firm in White Plains, New York, USA. He currently serves as the chair of INTA’s Law Firm Committee. Mr. Sloane was a member of the IP Law Firm of the Future Think Tank and presented the Think Tank’s report along with Max Kinkeldey of Grünecker to the INTA Board of Directors and during a Town Hall at INTA’s 2020 Annual Meeting. Mr. Sloane won the 2020 INTA Membership Champion Award, one of INTA’s service awards, for his efforts to help grow membership, increase awareness of the Association, and promote member benefits.

The stated mandate of the IPLF Think Tank was to produce a proactive and thought-provoking report on what the IP law firm of the future might look like. How did the group do on achieving the goal?
The IPLF Think Tank leaned into the mandate and certainly produced a comprehensive report which identified a myriad of issues for INTA law firms to consider when they plan for the future. In particular, Chapter 9 discusses projections for the future, and Chapter 10 provides an Action Plan with 16 discrete recommendations.

At the same time, we did not necessarily identify the “model” firm of the future in terms of what the optimal practice would look like. This is not surprising because the early chapters describe all the differences between firms including the different types of IP practices, geographical considerations, and the different kinds of clients served. This is all to say that we found that there is not a one-size-fits-all approach and that firms need to pick and choose what makes sense for their particular practices.

This report examines the extent to which clients are now in control of the key decisions influencing legal hiring, including staffing and scheduling decisions, outsourcing requirements, project management, and pricing structures. What is something about the results that stood out for you?
The report offered the opportunity to see things in a historical perspective, to stand back and realize how we are all still operating in the aftermath of the Great Recession of 2008–2009. That was a turning point when clients throttled back on their outside legal spend and grew more effective in-house practices.

What stood out for me is the fact that in the years since, continued improvements in technology have allowed companies to effectively manage their legal work as never before. The open question for law firms is whether they can also harness technology to provide a strong value proposition to their existing clients, and whether they can use technology to find new clients and opportunities along the way.

How and why should practitioners apply the results to their careers? And what would you do differently as a result of this report?
The report was written in the midst of the pandemic when most of us were no longer working in the office and when we became even more dependent on technology to do our jobs. The firms which had the easiest time managing through the crisis had already made the earlier investments in technology to facilitate a paperless practice and remote communications.

Practitioners should embrace the lesson from the report that change is inevitable and that those who prosper will proactively incorporate the latest technologies into their practices. As someone who started practicing back when firms kept card catalogs with renewal deadlines, the report has made me keenly aware of the need to avoid complacency and continue learning new ways of working to keep up with the times.

Download the In-House Practice of the Future Think Tank Report

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Together with The IPO of the Future Think Tank Report, this three-part INTA Research series offers a comprehensive overview of what’s ahead for IP and trademark professionals around the world. 

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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