Running IP Matters in a Mid-Market Firm — What the Big End Doesn't Tell You

Intellectual property is a practice area that exists, simultaneously, in multiple different worlds. There is the high-value end — the major firm IP practices that work on pharmaceutical patent challenges, technology licensing agreements in the hundreds of millions, and complex trade mark portfolio management for multinational brands. There are the specialist boutiques, staffed largely by former patent attorneys with technical qualifications in chemistry, engineering, or the life sciences. And then there is what I do, which sits somewhere between and beside both of those models: general IP work in a mid-market firm, serving clients who range from small technology companies and fashion labels to ASX-listed manufacturers with genuinely complex global IP interests.

The work is varied in ways that a major firm IP practice often is not. In a single week I might be advising on a trade mark infringement dispute, reviewing a software licensing agreement, drafting a deed of assignment for a design registration, and attending a conciliation conference at IP Australia. That variety is, for me, the appeal of the practice. It is also, I should be honest, one of its complications.

The client who knows more about the IP than the law

The most characteristic feature of mid-market IP practice is the client relationship. The founders of a technology company typically have a detailed and often sophisticated understanding of their intellectual property — they built it, they know its technical contours, and they have thought about it hard. What they frequently lack is a clear picture of how the legal framework maps onto what they have created.

This creates a distinctive kind of advisory challenge. You are not starting from a blank page and educating the client about IP in the abstract. You are trying to establish, with some precision, what the client actually has — which of their assets attract copyright protection, whether their brand elements are registrable, whether their development methodology could constitute a trade secret — in the face of strong prior views that are sometimes right, sometimes partly right, and occasionally quite wrong.

The conversation about patentability is the archetypal example. Many technology founders arrive at an IP conversation convinced that their innovation is patentable. The legal reality is more constrained: software-implemented inventions in Australia face a post-*Aristocrat* landscape that requires careful analysis of whether the contribution to the art is genuinely technical in character. Explaining this to a founder who has spent three years building something they believe to be genuinely novel requires both precision about the legal test and real sensitivity to what is at stake for them personally.

The economics of mid-market IP

IP work at the mid-market level is almost always fixed-fee, or at least fixed-fee in the client's expectation if not always in the engagement letter. This has implications for how you structure the practice. Trade mark prosecution work — filing, examination response, registration — is relatively standardised and genuinely amenable to fixed-fee pricing. The economics of that work depend on volume, efficiency, and the quality of your upfront instructions process. A client who provides clear information about how they use their mark, who their likely competitors are, and what expansion plans they have, allows you to do a meaningful clearance search and file in the right classes with appropriate specifications. A client who wants to "just get the trade mark sorted" without investing in that process is likely to end up with inadequate coverage, and the downstream costs of fixing that inadequacy are invariably higher than the cost of doing it properly at the outset.

IP litigation is a different matter. Infringement disputes, opposition proceedings, domain name disputes under the auDRP — this work does not sit comfortably in a fixed-fee model unless it settles quickly. One of the genuine tensions of mid-market IP practice is managing clients who have fixed-fee expectations into the reality of litigation economics. The most useful thing you can do early in a dispute is give the client a genuinely candid assessment of the likely cost range, the realistic prospects, and what a negotiated outcome might look like. Clients who receive that assessment early and honestly are far better positioned to make rational decisions about how to proceed.

What the major firms don't handle

There is a category of IP work that major firms simply will not take — not because they lack the expertise, but because the economics don't support a billing relationship with a small client. The founder of a fashion label with a genuine infringement problem is unlikely to find a partner at a tier-one firm willing to run that matter for them. They may find a junior associate, supervised at a distance, which is arguably worse than a mid-market practitioner who will engage with the matter directly.

For those clients, mid-market IP practice is not the second-best option. It is the appropriate option — staffed by practitioners with direct experience and the incentive to be efficient because our client relationships depend on it.

The specialist question

I am not a registered patent attorney. My practice does not extend to prosecuting patent applications before IP Australia, and I refer those matters to colleagues in the patent profession. This is a genuine limitation, and it means that my IP practice has a particular profile — heavy on trade marks, copyright, design, trade secrets, IP transactions, and litigation; less engaged with the deep technical work of pharmaceutical and engineering patent prosecution.

That specialisation within the broader IP field is, I think, the honest model for a generalist IP practice in a mid-market firm. Know what you do well, know where the referral relationship sits, and do not pretend that the boundaries don't exist.