Calum Smyth is a Partner at Wiggin LLP focusing on IP technology.
With 20 years of experience in Intellectual Property, at private practice and in-house at Kraft and Barclays, Calum explains how law firms can become true advisers to their clients by harnessing the latest advances in technology and data analytics.
Tell us about yourself and how you ended up being an IP lawyer?
For the first seven years of my legal career I was an IP litigator in London and then in 2007 I started at Kraft Foods Europe as Head of Patents. In contrast to being a litigator, a role in-house helps you gain a greater strategic understanding of the value of IP as an asset. I then moved to Barclays for eight years, and then back into private practice at Wiggin.
One of the major things that Barclays highlighted to me was the breadth of IP issues that can be impacted by digital technology and software more generally, everything from the usual disputes and commercial matters to NPEs and cybersecurity issues.
In a digital environment, IP professionals need to understand how to determine what is the best strategic solution for the business by balancing an increasing number of complicated issues and then working out how best to influence key stakeholders and galvanise the business around that strategy.
They need their external advisers to help them on that journey. From personal experience, I found it challenging to find the right advisers with the requisite level of sophistication that could bring various competing technical considerations together to provide an actionable recommendation.
As a result, my team and I were at the coalface of understanding those risks, analysing them, and then navigating them for ourselves and for our management.
For me, the motivation to go back into private practice at Wiggin was to leverage that experience for the benefit of multiple clients rather than just one.
Tell us about Wiggin, and why you thought that would be a good match to your experience
I was keen to go somewhere that had an established reputation in intellectual property, but which would also give me the flexibility to focus on the diversity of IP issues that comes with a dynamic digital environment and that I had experience of.
Wiggin offers a one-stop-shop for intellectual property (apart from patent prosecution) and the firm’s client base and direction of travel was very focused on the digital world, so it was a logical fit for me.
When you put Cipher data in front of the client, they are genuinely engaged.
We use Cipher very successfully, in a tactical sense on an ongoing dispute. Around IP due diligence, it is very useful in a commercial context, under the corporate context.
Tell us about some of the problems your clients are having and how you’re able to help them?
As an example, we work for a number of large tech clients, from ‘unicorns’ to longer-established institutions who want to redress the way they do business – that might involve a move from an enterprise level product to SaaS, or assessing whether their IP structures around ownership and licensing are fit for purpose.
Different models may also mean faster time to market for new products, and that may impact brand strategy and decisions around trade mark protection. A focus on software and data means businesses are using technology such as AI and IT to explore new opportunities in related markets.
And in that context, they have many questions to answer; for example who are their competitors, what are the biggest risks, and what do they need to be spending their money on?
Frequently, we find the best starting point is to take a step back and start with the commercial context of what the business wants to achieve.
How did Cipher help you advise at Barclays?
I started using Cipher whilst at Barclays, as a way to facilitate tech IP-related conversations with senior management. While not patent specialists, sophisticated stakeholders can address pretty complicated issues if they have good data, sensibly presented.
In my experience Cipher opens up a new way of talking about IP; as conversations develop to become less about patents, and more about proprietary technology.
So it was very impactful to point to meaningful charts on what technology was being worked on by competitors, suppliers or potential partners.
How has Cipher helped you advise your clients today?
I originally planned to use Cipher to inform clients about what was going on in their industry from a proprietary technology perspective – in a way that I suspect many of them were unaware of and which could impact on their technology strategy.
Getting this data has historically been too costly an exercise and as a result in-house advisers were often not accustomed to having that level of strategic understanding.
So, when you put the Cipher data in front of the client, they are genuinely engaged. These data points can also form the basis of innovation KPIs and be reported as part of a governance process.
You can also help the client to better understand trends by combining Cipher data with other kinds of data, like market acquisitions, or a particular court case (e.g. the Alice decision in the US).
We have successfully executed this landscaping exercise with a number of clients, but in addition, we have found it increasingly useful on tactical matters.
Cipher is engineered in such a way that it can:
- compare patent portfolios between small companies and the equivalent portfolio in a large organization,
- neatly show patent family maps
- look for specific technologies within your own client’s patent estate and also similar patents that may be owned by an adverse party.
We have used many of these features very successfully in a transaction due diligence context and also increasingly in specific contentious matters.
Who in your team at Wiggin uses Cipher?
We encourage our whole patent team to use Cipher.
They can now type in the patent number and immediately get the information that they would get from the usual patent office databases and much more.
They can see the family mapping reports that are automatically generated, get an understanding of exactly what the equivalents are, and be able to link to the EPO register to look more closely at the prosecution file.
I don’t get the impression that patent analytics tools are being used as widely as they could be by law firms or in-house teams. It’s a fast-changing dynamic, however, and it will accelerate once clients realize how accessible the data is.
Tell us about the IP adviser of the future
If you look at the kinds of companies that are going through digital transformation, many don’t have armies of lawyers to help them.
As a result, they need external advisers who understand their business, their products and their industry – who help to spot issues and provide commercially actionable advice without having to be spoon-fed specific instructions in a reactive way.
That advice needs to take into account the client’s resources, structure, competitive landscape, and commercial objectives – either through deals or disputes.
How will IP law firms use legal technology and data analytics in the future?
Today’s advisers are under pressure to understand their clients in increasing detail in order to provide solution-focused, commercial advice.
The economics around access to data makes it a more viable tool for private practice now, and I think the expectation of clients will continue to drive its expansion.
There is a parallel with law tech more generally – almost every large pitch asks how firms use legal technology in order to provide better service to the client.
That focus is here to stay – law firms need to understand what’s out there and what’s best practice for solving some common problems using technology. Clients will expect it; they are sophisticated and well-informed.
It is also worth noting that aside from the product’s specific benefits, collaborating with clients around a tech platform, if done right, can help to build very strong, long-lasting relationships.