issue of business strategy

Company: Kerr Nadeau  Size: Small Industry: Legal Services Business Activity: Professional, scientific and technical activities Type of Entity: Private Company Number of Employees: Fewer than 25 Country: Canada Headquarters: Halifax, Nova Scotia Yearly Revenue: Less than $25 million Gender: Male Subject: Business Law

Issue：

Can you describe an important issue that you had to resolve? Hi my name is Philip Kerr. We are dealing with a scenario where a client arrives in my shop having spent some significant time working in his garage, basement or back forty working on a piece of technology The individual is not already in the business of manufacturing the particular product or service. He is a smart individual, he is very, very capable, he is mechanically inclined and he has a fantastic invention.

Cause of Issue：

What caused the issue and why was it important? One of the jobs of a lawyer and patent agent is to investigate the circumstances of which a client brings a technology to the shop. Sometime the technology is plainly relevant. It is going to be useful and perhaps even disruptive. A very significant piece of technology. And we have to investigate with the client if the technology, even if patented is worth the cost of obtaining a patent. That of course is a difficult question. We of course can tell the client what the cost will be. We also spend time with the client asking about whether it is worthwhile patenting it given the likelihood that this product will be successful in the marketplace. And whether he will actually receive a return on the investment because there is a substantial outlay of cash in obtaining a patent. Is he going to make back more than that in process of keeping other competitors from taking this technology.

Background：

Phillip_Kerr_Q2: Can you describe a typical workday for yourself? A typical workday involves me having a chat with my assistant to find out what's due and urgent and coming up shortly. We often receive things from overseas so we need to know what's happened from overseas, we get instructions from overseas clients and find out if some things due today that came in today and deal with the urgent things first. Then we deal with the other things that were otherwise going to be dealt with in the normal course during that day. But we figure out what the statuses are of the urgent matters, attend to those first, and then move onto the other things that we already have planned for that day. Phillip_Kerr_Q1: Can you tell us a bit about yourself and your career path to date? My name is Phillip Kerr, I'm a partner at the firm Kerr and Nadeau. We are an IP, patent and trademark law firm. We're a boutique, we're small. And my personal educational steps that led me to these points are I'm a Canadian lawyer. Called to the bar of both Nova Scotia and Ontario. I'm a Canadian Patent Agent and a Canadian Trademark Agent. Those all come to bear upon my professional trade and duties. Phillip_Kerr_Q4: Can you describe your leadership style? My leadership style is really who I am, I lead by finding out as much as I can about a subject matter and I encourage the rest of the team to also learn through me what the important criteria are for guiding their day to day decisions as well. So I tell the team as much as I can about the needs of the firm and have them participate by way of me telling them what is important to the firm and then buy in by it being relevant and important for the firm. Phillip_Kerr_Q5: What does good performance mean for you in your position? My clients will tell me if I am doing a good job, they will tell me if I'm doing a great job, they will tell me by referring other clients to me. They will give positive affirmation and feedback. For me a perfect job or a nearly perfect job is the sign of good performance, no job can always be perfect, but aiming for that is what performance is all about. And trying to achieve perfection is what drives the performance. Phillip_Kerr_Q3: Can you describe your role in the organization? I am a partner, I have responsibility managerially for the firm. The firm looks to me for guidance in terms of where we're going, for obtaining new work, for maintaining client relationships, for getting the financial ship on the proper course and so forth. Phillip_Kerr_Q6: What does your organization do and how is it different? My company obtains for clients here in Nova Scotia and elsewhere in Canada and elsewhere in the world. Patents, trademarks, and copyrights in Canada on behalf of those Canadian and foreign clients. So that's what we do in principle, we also litigate and provide clients with the ability to enforce their rights and obtain, so that's what we do and how are we different? There are many firms that are boutique shops such as ours. We're different I think, and clients seem to think we're different because we tend to be much more on the ground and much more focused on exactly what is happening on the back forty on their special projects and their skunk works or whatever they want to call it. We will go out there and investigate and participate in the thought process of how to obtain protection with them on their behalf, but it is a very dialogued back and forth based experience that they do not often experience with other law firms. So that's what's different. Phillip_Kerr_Q8: Can you describe any key events that occurred either in your life or that of the organization that were crucia I had the experience of having to step into look at the firm's financial arrangements as a result of one of the partners who was previously doing that job moving on elsewhere. So I had to basically step up to the plate and learn about the financing aspect of the law firm, the pure day to day balance sheet and income statement. What does it mean? How does it work? How does it function? Normally a lawyer is trained in law school to learn the law and based on the clients fact situation we are to supply them with good legal advice; that's the lawyer job. Then there's this business job that's related to that, but it's how about how to make sure there's a line of credits in place, that the bank is appropriately dealt with and so on. Those aspects I had to step into and did step into, so it's a huge change. One of the things I used to do was practice law, service the client, get the job done and move on and not worry about these other details that someone else was looking after those. I had to step in, and then did step in and take on that role and it changed me significantly, it makes our firm a much cleaner operation in terms of connecting the legal service with the payment of legal services. Phillip_Kerr_Q9: How does your organization make money or sustain itself financially? We charge a fee for service, for most of our clients. Probably 99% of our clients we charge a fee and are service based. The client retains our services, we sell time. We sell time by the hour, and the client is expected to pay in full for that time. Phillip_Kerr_Q10: Who are the customers of your company and why they buy its products or services? We have clients everywhere in Canada including two of the three territories. They could be government or small-medium sized businesses. We have several large clients, very large clients, and in every range of industry. It could be as obscure as a piece of very sophisticated software or it could be as plain as a haul of a boat. Phillip_Kerr_Q12: How do firms compete within this industry? We compete for business in the sense that we all tend to advertise, we all tend to attend events where prospective clients might also be participating as participants at a convention or show. Additionally because of the way the world has arranged intellectual property if you want to obtain intellectual property in Canada and you're a European company, you have to retain those services of a Canadian firm. So what happens is the European firm will approach a European law firm who will then retain the services of a Canadian firm to acquire rights in Canada. So what happens is there are organizations where there's opportunities for the Canadian firm law to meet the European law firm and we go to conventions in which those opportunities to meet and exchange business cards and perhaps exchange business in the future where those events occur, that gives a chance for the connections between foreign law firms and domestic law firms to meet because they're going to have work going in both directions. We are similarly required to obtain the services of the European law firm on behalf of a Canadian client if we want our Canadian client to obtain European rights. So there's a reciprocity of relationships established and the law firms, most of the major law firms will attend these conferences where other foreign law firms are in attendance doing the same thing. Phillip_Kerr_Q13: What is the role of regulators or government in this industry? The government is responsible for administering the patent office, the trademark office, the copyright office, the industrial designs office. So they are one of the conduits through which you obtain these rights. You automatically engage in an interaction with the government through the patent, trademark, copyright offices etc., in order to obtain rights for your client. That's the principle means by which you do it. Of course there is also the legislative portion; the trademarks act, the copyright act, the patent act are all matters of federal legislation. So, the process is that the federal government decides what the scheme is for obtaining these rights and the enforcement of the rights. Phillip_Kerr_Q15: Can you offer some fast facts about your company? Our company is very fast of foot, we are capable of delivering a very high quality product, but we move very quickly into a piece of technology. We learn it, we understand it, and we obtain rights for it. That's our key differentiator, we are very, very fast. We are very fast learners about technology and we can deliver a product quickly. Phillip_Kerr_Q14: What big issues will companies in your industry be addressing in the next five years? One of the trends, and this trend is going to become more manifest shortly, globalization hasn't just affected manufacturing. It has also affected the providing of services particularly legal services, particularly so there's been an effort in foot for some time to harmonize, not only the laws of different jurisdictions who are all sort of using a similar scheme, but also the interrelationships between these laws allowing foreign companies to obtain rights more easily in Canada. And that increases the volume of work in Canada, but it also, and this is going forward, has the possibility for allowing non-Canadians to participate in the obtaining of rights for non-Canadians. Now as it presently stands in order to obtain a Canadian patent you require the services of a Canadian patent agent. That is going to over time become less significant, there's a lot of pressure already on the trademark side to allow trademarks to be obtained through non-trademark agents and we're in a process of moving towards that system. When that comes there will be more competition in Canada for those services. So there will be a heightened supply of services for trademark agencies first of all probably in due course patent agencies as well. Phillip_Kerr_Q17: Can you offer some comments on trade secrets Trade secrets are rights that come out of the common law and equity system, basically it is a right a person has to keep to themselves a piece of information if it does not become publicly available. If I develop a new formula for Coca-Cola and keep it a secret someone else cannot come along and steal that secret without there being legal repercussions. So you keep it a secret, it belongs to you, as long as it stays a secret. Phillip_Kerr_Q16: Can you offer some comments on patents, trademarks and copyright? First of all the main one is the patent, a patent is available for a new, useful, and nonobvious invention. You bring me a better mousetrap, and if it's new, it's nonobvious and useful it's eligible for patent protection and you file a patent application for it and in due course if it's new, nonobvious, and useful, you can obtain a Canadian patent for it. That's the easy one for patents. Trademarks are either a word or a design that is used to differentiate one company's product or service from those of another. McDonald's vs. Burger King, Coke vs Pepsi, those are trademarks that are used to differentiate one company's product from those of a competitor. Lastly copyrights, they have a fairly wide breadth. They can be copyright from software, for a book, for music, any piece of work that's created by effort and participation by the author to create some work.