by Dennis Crouch
In October 2022, Canada’s largest intellectual property firm became a publicly traded entity. Smart & Biggar, a firm that includes 100+ Canadian patent attorneys and agents (most of whom are also registered with the USPTO) was purchased by the Australian company IPH Limited. The holding company trades on the Australian stock exchange with a market valuation of $1.8 billion Australian dollars ($1.2 billion USD).
IPH already owns five Australian IP-focused law firms (consolidated from 10), including offices in New Zealand, Singapore, China, Malaysia, Indonesia, and Thailand. With one firm having 32% of the Australian national phase market, you might think that conflicts would get a bit tricky. A bit more on that below.
What is the benefit of selling for Smart & Biggar? Presumably money today. The purchase price was $350 million Canadian dollars ($250 million USD). That includes $241m cash to the old owners (i.e., the partners) along with $45m in IPH shares and another $66m in deferred IPH shares (presumably for partners who stay for two years). The old partners continue to have some management rolls at the firm but will be employees of IPH rather than owners. “Canada’s Intellectual Property Firm” is now owned by the Australians.
Like the U.S., Canadian law generally requires that law firms be owned by lawyers. To avoid this hiccup, Smart & Biggar divided its firm into two parts – an “IP Agency Practice” involving patent preparation and prosecution; and a “Law Practice” handling litigation and other legal issues. The IP Agency Practice apparently “does not practice law” and therefore is not controlled by the lawyer-ownership rule. As the deal was structured, IPH owns the IP Agency Practice without any problem because they are “not practicing law.” The Law Practice is partially owned by the IP Agency Practice which is somehow sufficiently owned by lawyers, even though IPH owns the IP Agency Practice. This clever approach apparently satisfies Canadian restrictions except for Alberta where Smart & Biggar’s law practice remains “wholly owned by individual lawyers.” Still, at least according to the website, the Smart & Biggar Alberta branch is operating as part of IPH.
Back in Australia we have had some interesting events that began a decade ago when the country began to permit patent attorneys to incorporate in public firms. Shelston IP was the first IP firm to list itself on the Australian Stock Exchange back in 2015. In 2019, IPH bought Shelston in a hostile takeover. Shelston has now been merged into Spruson & Ferguson as have Fisher Adams, and Cullens. Other IPH brands include Pizzeys; AJPark, & Griffith Hack. Collectively, this is about 1/3 of the Australian national-phase market. What this means to me is that there is a good chance that competitors are are hiring co-owned firms to do their Australian work.
Throughout this time, there has been lots of turmoil for attorneys themselves, with a substantial percentage moving firms. IPH has repeatedly sued its former employees who left to start their own firms — seemingly for “stealing” clients.
Australian patent attorney Mark Summerfield has been writing about these issues for the past several years on his excellent Patentology blog.
Could this happen in the US: The ABA model rules as well as USPTO rules prohibit law firms being owned by non-lawyers. But, some states are moving forward with experiments. So far, the USPTO has not suggested any changes.