What are the critical success factors procurement managers should prioritise when selecting an IP firm from tender responses?

Here is a breakdown of the primary CSFs we’ve come across whilst tendering for and working with corporates all over the world:

1. ‍Technical expertise and sector knowledge

Relevance to your IP portfolio ensures the firm has experience in the specific types of IP your organisation has. Industry or sector knowledge means the firm can draft stronger filings whilst anticipating challenges and providing more practical strategic advice.

2. Track record and reputation

Case studies and examples of successful outcomes in filings, oppositions or litigation, client references and testimonials, industry awards and insights into responsiveness, reliability and quality of advice all emphasise the ability to deliver results under real-world conditions.

3. Strategic advisory capability

Can the firm demonstrate how they’ll manage your IP portfolio in a way that will optimise the performance and value of all your IP assets? Can they explain how they’ll provide guidance on potential IP challenges, enforcement strategy or licensing opportunities? Are they ready to provide additional commercial insight based on their experience to help you maximise the value of your IP?

4. Service delivery and operational efficiency

Can they show you how they will handle filings, renewals, oppositions, disputes and reporting along with the average response times for queries, urgent requests or dispute handling. You should also assess their use of technology such as IP management tools, dashboards or reporting systems.

Together these will reduce the administrative burden on your colleagues and ensure deadlines are met and double handling is minimised.

5. Capacity and resource availability

Will you have a dedicated team? Does the firm definitely have the required strength, depth and technical experience to manage your filings, renewals or litigation without bottlenecks, even during the busiest times?

Also, can they provide a continuity plan in case of staff turnover or unexpected absences.

6. Compliance

Can the firm provide an outline of their data protection and confidentiality measures so you can see your IP will be totally secure?

Can they demonstrate a comprehensive understanding of their compliance responsibilities (knowledge of relevant IP laws, international treaties and corporate compliance standards)?  

Can they confirm there are no conflicts of interest so you can rest assured they can act with total independence whilst representing you?

7. Cost-efficiency

Is the firm able to provide clear pricing models based on the criteria you’ve asked for (hourly, fixed-fee, blended rate or retainer structures) that you can quickly understand, justified by the level of service and added commercial and strategic value you’ll receive.

8. Cost certainty

You also need to be able to see exactly what you are paying for, what and when to budget more effectively and reduce the risk of being hit by unforeseen costs.  

9. Cultural fit

More than ever, you need to select an IP firm that aligns with your organisation in terms of working style, responsiveness and communication approach. Their ability to work collaboratively should also receive significant consideration as a strong working relationship always leads to an easier working life and more effective outcomes.

While all the factors above are important, as a procurement professional you know the devil is always in the detail, in this case how you weight the different factors so you select the firm that will meet your technical, operational and service demands.

If you are planning to tender for a new intellectual property provider and would like to include Potter Clarkson or you would like to find out more about our innovative and completely flexible approach to supporting large corporate clients, please contact us.