4 Ways to Maximize the Value of Your IP Counsel

| Mauricio Uribe

1.Considering Your IP Counsel as a Partner

Companies maximize the value of their IP counsel when both the company and IP counsel view their relationship as a partnership. More specifically, look for IP counsel that invests the time to understand your business needs and how those relate to your IP goals. With such an understanding, legal recommendations from invested outside counsel will be framed in light of your business goals and needs. This will not only reduce the amount of resources your executives or in-house counsel require to make important IP decisions, but enables your outside counsel to make recommendations with the thought of enhancing your business value as part of their representation.

Consider inviting IP counsel to strategic business meetings and including them on discussions regarding market trends or the competitive landscape. This type of information can be very influential to IP decisions, such as how to prosecute patent applications, prioritizing potential patent filings, securing trademark protection, or conducting landscape reviews. A visit of IP counsel to manufacturing or design facilities and summaries from various business teams can often result in a big value add to the recommendations and work product received from IP counsel.

Many companies also form decision-making teams including representatives from sales, finance, and executives that work closely with IP counsel to help make strategic IP decisions. Utilize these types of IP team meetings as opportunities for each of the represented business areas to provide updates to IP counsel.

2. Establish Clear Communication Procedures with Outside Counsel

Effective two-way communication is vital to working efficiently with IP counsel. Setting out well defined contact procedures ensure that your IP firm understands how to communicate in the most effective manner for your business. Consider a communication policy that clearly defines how and when your IP counsel should send status and reporting communications and what specific information should be included in the status and reporting communication. Some communication examples include:

  • For companies that look to docket actions in front of the Patent Office, an example reporting policy might specify that all Patent Office communications should be reported to the client within a specified number of days without additional analysis.
  • For companies that have some in-house patent management resources, a different example reporting policy might provide that Patent Office communication should be evaluated and reported within 2 weeks, accompanied by a written analysis and a recommended response strategy.

Custom-tailored communication policies can reduce the amount of resources your executives or in‑house counsel require to make important IP decisions by providing them the appropriate information in a reasonable time frame. Additionally, customer-tailored communication policies help companies manage legal costs by avoiding unnecessary analysis or in-depth communication, especially when such information is not part of the decision making logic, approval process, or is otherwise redundant.

3. Leverage Institutional Knowledge with a Consistent Client Team

Institutional law firm knowledge of previous legal projects, business goals, and company preferences can be a key contributor to maximizing value from IP counsel. Attorneys can draw on their past experience with your IP portfolio to deliver high-quality work product with increasing efficiency. Suggest that IP counsel meet prolific inventors or technology leads in person to develop better relationships. IP counsel should also compile a list of best practices to be shared internally with different practitioners that allow the firm to have some flexibility in utilizing different practitioners while maintaining the consistency of the work product and client interaction.

Many companies choose to spread work to different IP counsel based on expertise, cost, and available bandwidth. While diversification may be necessary at times, it may be best to allocate work assignments in a way that may be best to preserve institutional knowledge. Examples can include:

  • Consider defining technology verticals associated with products or development teams and assigning IP counsel to select verticals/development teams.
  • Consider hosting periodic meetings between multiple IP counsel to share best practices and experiences learned for technical areas having some overlap.

4. Defining Best Practices for Work Product

Clients and outside counsel should communicate clearly to define best practices for work product. Like communication procedures, predetermined and mutually agreed upon expectations for work product can be beneficial for large and small clients alike. A lack of agreement or common understanding as to work product expectations vis-à-vis fee structures can often be a source of friction for companies. Some examples of best practices can include:

  • Consider IP documentation templates that can help facilitate the exchange of information between technology teams and IP counsel. This can reduce the amount of time IP counsel spends attempting to collect information and limits interruptions to technology teams.
  • Consider work product guidelines or templates that clearly define the expectations for work product. Different individuals can approach drafting work product in different ways. With work product templates, IP counsel can be given some flexibility to provide insights without having to worry about cost overruns, dramatically different work product, and perhaps contradictory work product.
  • Consider periodic reviews with IP counsel regarding work product and work product flow. Often, taking the time reviewing positive and challenging issues can spot potential fixes that improve the overall process.