Using flexible secondment solutions to break a patent filing holding pattern

A large company asked Barker Brettell if it could help push forward a programme of patent filings the company was envisaging having difficulty managing with its current in-house patent attorneys. It was agreed that a small team of Barker Brettell patent attorneys would be seconded to the in-house patent team, on a part time basis, to take on drafting work on a capped cost basis with no retainer fees. This arrangement has continued for several years and has resulted in a substantial easing of pressure on the company’s in-house patent attorneys, enabling them to put more effort into strategic work.

The challenge

In 2017 the company found itself expecting a large increase in patent applications and a shortage of in-house patent attorneys to handle them. Although recruiting more attorneys was part of the solution, this was not sufficient and took time to resolve. The company came to Barker Brettell to see how we could help.

The solution

Barker Brettell set up a small dedicated team, some of whom would work on site part time, to get to know and work more closely with the in-house counsel and inventors. Due to employment law issues a conventional secondment arrangement was found not to be suitable, so Barker Brettell agreed to work on a case-by-case basis for a set fee, with its attorneys working on site when needed. The core team was adjusted from time to time depending on work balance and technical expertise, allowing optimum flexibility to manage a varying and often challenging workload.

The result

Barker Brettell’s contribution enabled the company to substantially increase its filings over previous years. During the first year of working with the company, a record number of IP filings were made, with a manager in their IP department describing Barker Brettell’s support as being “invaluable”. The work has continued since then, and to date has resulted in over 200 patent applications being filed with Barker Brettell’s support.