For this article, we spoke with several in-house and private (outside) IP attorneys from a variety of organizations to get their views on how to create, develop, and ensure the most effective legal service and collaborative client relationships in IP portfolio management. While there may be no specific formula for recreating that same great client relationship in every situation, what we learned reveals consistent truths that will prove helpful in any in-house attorney-outside attorney client relationship. And we suspect these same ideas apply to most client relationships, including those outside of IP practice.
Build a Strong Relationship: Communication and Trust from the Start
Regular communication, clarity, and honesty are fundamental to building a trusting relationship that will help in-house and outside attorneys, together, drive value for an organization’s intellectual property. Conversely, a breakdown in, or lack of, clear and forthright communication almost always negatively affects the representation.
Keep Communications Coming
All of the in-house attorneys identify communication as a key building block of an efficient and effective relationship with an outside attorney. In fact, a couple of them indicate that, despite the already endless barrage of e-mails, they would still rather receive more than less communication about a specific project. They all agree, “making an assumption” about anything, e.g., inventorship or a potential public disclosure date, can cause problems that may be impossible or costly to fix later. Even if the communication is not immediately useful, these attorneys want to be confident that they have the information available for when they might need it.
Make an Effort to Understand the Structure
One in-house attorney notes that his best relationships with outside attorneys are those where the outside colleague understands the pressures he faces at the company. He says that he is happy for his outside attorney to dig deeper and ask bigger organizational questions. For example, “they could ask for an organizational chart, [ask] who is going to be reviewing the outside attorney’s work product within the company, and inquire about the ultimate goal for the project.” These questions can help the outside attorney provide a more pointed and helpful product to the in-house attorney.
Communication about Expectations Should Be Open
Selective communication can cause confusion, while open communication can prevent it. Indeed, both in-house and outside attorneys identify open communication about expectations and division of labor as important to establishing strong relationships. According to one in-house practitioner, he “must be clear about expectations, and an outside attorney must be clear about whether they can meet those expectations.” This can include a timeline for completing the work, the budget, the goals for the project, and any expectations on what the work product should and/or should not contain. Dr. Sarma from the Purdue Research Foundation Office of Technology Commercialization (PRF OTC) observes that in-house and outside practitioners should feel free to ask questions and learn from each other about both the subject matter and the most effective way to build value from the resulting intellectual property.
Work as a Team by Learning How Best to Communicate with Each Other
Communication styles, preferences, and content may vary between counsel, so it is important to set expectations on communication style early on. From the outside attorney perspective, an early conversation about how to communicate should be the norm. According to Jeff Kapteyn, who practices patent prosecution at Price Heneveld, ideally a clear process is in place for each stage—e.g., guidelines for the communication expected after an invention disclosure is received, clear timelines and due dates for drafts or other deliverables, and desired communications at the various midpoints. Kapteyn adds that it is also important for the outside attorney to understand the goals for a specific project. This could include understanding whether the patent is in a product growth area, is protecting a very long-term strategic product, or is mainly for defensive purposes. He believes the best working relationships are where the outside attorney, the in-house attorney, and R&D can work as a team, not only during the patent drafting process but also in competitive landscaping, as well as in prosecution. While this is the ultimate goal, whether or not it is always possible can depend on the scope of the project and budgetary constraints. All in-house practitioners echoed these thoughts.
Know Your In-House Attorney, as Not All In-House Roles Are Created Equal
Organizations differ in how they use in-house attorneys and outside attorneys to manage legal risks and drive value for the organization. Even within a specific in-house attorney-outside attorney relationship, the roles each one plays are often not consistent across individual projects. According to one outside attorney, it is when the roles for a specific project are clearly communicated and understood that the legal services can be maximized. For example, an in-house attorney’s proximity to inventors and their established trust within the organization may be critical to moving an outside attorney’s patent application draft toward completion. Or, an outside attorney’s legacy knowledge of a particular issue from prior and ongoing work with the organization may provide critical information for a transaction managed by an in-house attorney, particularly one who has recently been assigned to a project or is new to the role.
Establish Trust with Your Client
“Trust” is a key component of an effective working relationship. One in-house practitioner says the “in-house attorney must trust that the outside attorney will provide forthright advice, and the outside attorney must not ‘sugarcoat’ an undesirable answer. If an outside attorney’s true views aren’t communicated, an in-house attorney may rely on incomplete advice, in turn giving such incomplete advice to businesspeople. This can be damaging to the business and also to the in-house attorney’s reputation in their own company.”
Trust is important from an outside attorney perspective as well. Patty Hong of Plumsea Law Group says that communication must happen at face value to be effective and move things forward. “The in-house attorney has to trust that whomever was hired is going to give good and honest advice, and the outside attorney has to always believe that they are being given the best information,” she notes. “Outside attorneys may fear that giving a negative opinion is bad, but in some cases, it can lead to the best outcome for the company.” The idea is that the interests of the company should be of primary importance for both parties. Dr. Sarma of the PRF OTC adds, “We as in-house practitioners are sending work to our outside attorneys because we trust they are going to do the best job possible in identifying patentable subject matter and drafting claims. It can therefore be equally important for the in-house attorney to step back and let the outside attorney do his or her job.”
Time the Establishment of the Relationship Appropriately: Involve Outside Attorneys as Early as Practical
Engaging an outside attorney at the right time emerged as another aspect of an efficient and effective relationship. But the question of when to engage an outside attorney may be driven by a multitude of factors, including budget, expertise, and bandwidth. The most common themes we found here center around budget and practicality, i.e., at what point does it make the most sense to engage an outside attorney? Aneesh Mehta of Microsoft Corporation comments regarding the prospect of seeking patent protection on a new invention, “I [would] put budget first, because money being no issue, an in-house attorney would engage an outside attorney as soon as there is potentially patentable subject matter and there is strategic value to the patentable subject matter. In practice, however, you have to make tradeoffs.”
“The earlier the outside attorney can get involved in any patent assessment project, the better” seems to be the majority view. Being involved early on can help keep the outside attorney in the loop as to the plans and development. Christopher White, patent agent at Lee & Hayes, thinks involvement should ideally be during the invention-mining phase “but no later than the invention disclosure meeting” between the inventors and the patent practitioners, regardless of whether it is an in-house or outside attorney: “The application quality increases with the time the drafter has to interact with the inventors,” and some outside patent practitioners may “track the entire portfolio, so [it is beneficial] to be involved when they are contemplating moving their portfolio in new directions.”
Brian Ainsworth of Price Heneveld has similar thoughts: that the practice of having an outside attorney involved early on “helps the outside attorney understand how the invention fits into a product or product portfolio, the overall growth strategy for the technology, and if there are competitive considerations, all of which can help frame patent filings, enforcement scenarios, and licensing scenarios.” Where the product life cycles are quick, or where patents are pursued for mostly defensive purposes, it may not be realistic to have outside attorneys involved early or at every stage. According to Ainsworth, an outside attorney should be involved at an early enough point in time to understand the invention, get product clearance completed (if necessary), and draft an application. On the other hand, he does think that where product life cycles are very long, it is best to have an outside attorney involved early and as a long-term member of the product team to help develop long-term protection strategies and patent life cycle continuity.
Where “Early” Isn’t an Option, In-House Attorneys Can Fill Gaps
Even though bringing outside attorneys into the picture as early as possible can be considered “ideal,” what constitutes “ideal” can depend on the situation, observes Brian Cheslek of Price Heneveld. The organization’s budget and strategy for pursuing IP-related matters usually plays a role in dictating how early the outside attorney can be brought in. Where costs are not as much of a concern, getting the outside attorney involved as early as possible is preferred; but in situations where costs are a heavy factor in the organization’s decision-making, having an in-house attorney vet inventions or potential issues before bringing them to an outside attorney may be the most cost-efficient approach.
On this subject, Hong says that the outside attorney should be brought in “at any point in time that will afford the mental space to think through the invention and put together a strategic application for the art space and the business goals.” But she also knows “we understand that product development and innovation does not wait for the patent attorney, so flexibility on our part is key.”
Outside Attorneys Can Be Efficiency Drivers as a Source of Continuity
“Earlier is better” is the prevailing sentiment in our sample group. Some in-house attorneys prefer to involve outside attorneys even in the ideation stages. One in-house practitioner in the consumer products space prefers to get the outside attorney involved early on so that the outside attorney can understand, appreciate, and identify product design and concepts that may be considered important to the organization. In addition, due to the relatively high frequency with which in-house attorneys are redirected on other projects within larger organizations, having outside attorneys involved early and often in the patent application processes can help with efficiency. This is largely accomplished through having one legacy team member’s involvement throughout the patent application and resulting patent’s life so that they can carry over knowledge of issues that may have arisen in the past.
Expertise and Time Commitment Can Be Key: Be Flexible to Client Needs
In-house attorneys believe that both the attorney’s level of technical expertise in the technology area as well as the organization’s capacity to do the actual work are major considerations for timing. For example, for organizations that have patent-drafting expertise in-house, as Mike Young at Roche Diagnostics Operations Inc. notes, unless the invention disclosure is beyond the technical competence of an in-house patent attorney, the patent application can be written in-house from the start. Otherwise, Roche looks to engage an outside patent attorney who is well-versed in the technical area of the invention.
An in-house attorney from the health care industry agrees that an in-house attorney’s expertise matters when it comes to the decision of whether to continue to work on a matter in-house or engage an outside attorney. In addition to expertise, the in-house attorney’s abilities to commit the time and expertise to handle the matter, as well as how much they will stay involved in the matter to completion, all play a role in the decision of whether and when to engage the help of an outside attorney.
Train and Educate Your Clients to Help You Help Them
Educating clients on what the attorney needs in order to provide effective legal advice can also be important. For example, Young notes that providing basic training to inventors in the patent drafting process can help improve the invention submissions that may form the basis of a patent application. White echoes this, saying that while he works with engineers and researchers who are experts in their fields, they often do not know the requirements of the patent system. According to White, providing basic training on patent law for inventors—whether the training is ad hoc or organized—can help inventors communicate their ideas to the attorney more effectively, whether they use an invention disclosure system or not. In addition, in some technology areas, basic IP training can help inventors understand that something they might otherwise consider “obvious” could still have patentable aspects.
Capitalize on Value That Outside Attorneys Contribute to Your Organization
Understanding the value that outside attorneys can bring to the IP acquisition process and management of an IP portfolio can also help in-house attorneys make informed decisions on when and how to engage an outside attorney for the betterment of the company.
Nurture the Relationship to Help It Grow into a Long-Term One
Both in-house and outside attorneys say that developing and nurturing long-term relationships are key to realizing value that goes beyond the actual billed-for services. When a long-term relationship is in place, the outside attorney typically has gained a deep knowledge of a specific client’s business, the client’s “bread and butter” products as well as product growth areas, the competitive landscape and existing prior art, and other legacy knowledge about a company’s products and IP portfolio. This knowledge underlies and informs all of the work that is done for the client. According to one in-house attorney, “this knowledge is value that we don’t have to pay for outright, but we still get. This is a true partnership.”
Creativity Adds Value
In addition to understanding the client’s business, providing creative strategies to resolving legal issues can help boost your credibility and value to an organization. Subject matter expertise and “creativity” are a significant value-add from outside attorneys in the patent area. Mehta says “without creativity, an outside attorney is merely a transcriber of the inventor’s words. The outside attorney should be able to challenge the inventor to consider the invention outside of the context of the business in which they work, and to identify broader technological implications of the invention as well as potential challenges to implementation that may need to be overcome.” The best outside attorney adds the “what if” and the “what else” to the conversation, and thinks about the most creative ways to protect or claim their inventions.
Understanding Best Practices
The outside attorney can also help identify best practices. Because outside attorneys are often working with multiple clients across many industries and technology areas, they are in a position to educate their clients on challenges and trends they are repeatedly seeing. In-house attorneys should encourage their outside attorneys to share nonconfidential industry best practices learned from working with a broad spectrum of clients.
Most often, in-house attorneys are stretched thin juggling multiple worldwide IP portfolios and providing counsel to their internal clients on other matters. From a purely straightforward perspective (i.e., money out = services in), outside attorneys can help make the in-house attorney’s job easier. In many cases, an outside attorney’s insight and recommendations on managing particular aspects of an IP portfolio can save the in-house attorney’s time, and can also be well worth the extra money paid to an outside attorney. Keeping the lines of communication open and honest and providing timely information (both from and to the in-house and outside attorney) are critical components to establishing a long-term, trusting relationship. One in-house attorney puts it this way: “When an outside attorney can give specific insight on the direction of the portfolio and why a certain continuation should be filed, or how a related portfolio is being pursued from a global perspective, it can save me a lot of time . . . . [Getting a summary recommendation from an outside attorney] is a real value-add for our company, and we are willing to pay an outside attorney the extra money for this value.”