IP boutiques holding their own

When Philip Mendes da Costa started out at Bereskin & Parr LLP in the mid-1980s, intellectual property boutiques were small affairs. Twenty-five years later, “we’re now larger than some of the mid- to large-size firms,” says the firm’s managing partner. He says the 59-lawyer shop has grown in tandem with the increasing emphasis corporations are putting on their IP portfolios. “Back then, patents and trademarks were considered important, but not really central to the business of the company,” he says. “More recently, you’ve got companies who can receive more revenue from patent royalties than manufacturing products, and companies where the value of the IP portfolio or goodwill represented by the trademark portfolio is very significant, and stands out on the balance sheet. It’s of critical importance to make sure the IP strategy aligned with the business strategy.” For that reason, he says it’s natural that larger corporate firms are looking to get in on the action. “It’s not just a peripheral issue at the moment."
“[Boutiques] don’t dominate the field anymore like they might have done 10 years ago. Big firms have formed their own departments and the market has certainly become more competitive,” says one Bay Street practitioner, who says full-service firms are strong on the litigation and transactional side of IP law.

Another western Canada-based lawyer at a full-service firm says IP lawyers outside boutiques are still often overlooked because the field is so strongly associated with specialist firms. “Most IP practices, even in large firms, are run as mini boutiques. The IP department is run very differently from departments in other areas of law, because it really is quite distinct,” he says.

Mark Evans, managing partner of Smart & Biggar/Fetherstonhaugh’s Toronto office, says that the unique nature of IP law makes it difficult for large firms to match the depth of expertise boutiques can provide. Because the volume of IP litigation is not as high as in other jurisdictions such as the United States, firms need to branch out. Evans says some larger firms struggle to accommodate patent agents in their structure, or the specific file-handling systems IP demands. “We have our own proprietary systems and administrative features that are geared to that,” Evans says. “There are certain elements of IP that can be suited to general practice firms, but a lot of it is an uneasy fit.”

Despite the new competition, Mendes da Costa says IP boutiques have a long future ahead of them. “I don’t think it’s ever going to be subsumed into the full-service firm and disappear. We’re going to be here forever,” he says.

In employment and labour law, conventional wisdom says that large firms sop up the management-side work, while boutiques live off referrals when conflicts arise. But Erin Kuzz, co-founder of Toronto firm Sherrard Kuzz LLP, says there’s a lot more to it than that. “To be candid, our experience is a lot of the large firms have issues with billing rates. Some of the files that we do just can’t bear the billing rates that a large corporate commercial department might charge. I certainly understand that creates some conflict sometimes in the larger firms,” she says.

Paul Young, managing partner at Filion Wakely Thorup Angeletti LLP, agrees that price has been a key factor in the rise of the employment and labour boutique. He says new ones seem to spring up every year. “We just have a greater ability to be flexible in terms of fee schedules, which really makes us quite competitive,” he says.

And boutiques are cementing their positions by forming their own alliances across international borders to expand referral networks in an increasingly global business landscape. Young says the firm’s recent tie up with L&E Global, the Belgium-based group of 10 management-side employment boutiques, will bring in new work, as well as offering domestic clients with international business a ready-made panel of counsel in foreign jurisdictions. “You also get lots of ideas from the other firms in the alliance about how to attract new business, which leads to more entrepreneurial thinking,” he says.

Sherrard Kuzz also branched out last year, joining the larger Employment Law Alliance, which consists of 3,000 lawyers from 135 countries around the world. “Clients feel very well looked after,” says Kuzz. “I’d say it gives us bigger reach than some of the large firms, because they may not be willing to refer to firms around the world who may be competitors in other fields. We have no competition with the other members of the alliance, so it takes away that conflict issue.”

Our editorial team began the process of selecting Canada’s top IP and labour and employment boutiques by creating a short list of the most notable firms in their respective fields. From there, we drew on the experience of in-house counsel and large-firm lawyers who refer work to these boutiques, conducting a series of confidential interviews to identify the cream of the crop. The following results are an alphabetical list of the 10 boutique intellectual property firms that are most often called upon by other lawyers when stakes are high. For our list of the top 10 labour and employment boutique firms, click here to read Part Two of this article.

Bereskin & Parr LLP
(Toronto, Mississauga, Ont., Waterloo, Ont., Montreal)
www.bereskinparr.com
 

Macera & Jarzyna LLP
(Ottawa)
www.macerajarzyna.com