How to Work With In-house Counsel: An INTA Survey

• Mostly used for prosecution outside company’s jurisdiction and for inter partes proceedings and litigation

Considerations in Selecting Outside Counsel

• Experience and pragmatism
• Quality first, but cost an important second factor
• Timely (within 24 hours), succinct, clear and creative responses
• Effective use of technologies
• In-depth understanding of company’s business and goals
• Development of strong relationship

Marketing to In-House Counsel

• Unsolicited approaches, brochures and marketing materials not effective, and may in fact have the opposite effect of what was intended
• INTA is a helpful resource
• Be prepared by becoming aware of company’s business and goals
• Provide tangible suggestions

Firm Versus Individual Reputation and Ability

• Reputation and competence of professionals involved are of paramount importance
• Reputation of firm is a secondary consideration

Performing the Work

• Senior, experienced counsel should oversee and supervise work
• More routine work should be handled by qualified and supervised but less expensive personnel

Billing Preferences

• While flat-fee billing has its appeal, hourly rates for litigation are more common
• Simple exchanges and some routine administrative services are expected to be provided without charge
• Occasional visits and internal training sessions without charge are appreciated

Availability

• In the case of urgent matters, outside counsel is expected to be available as needed

Responsiveness

• Initial response expected within 24 hours
• Response time also depends on circumstances

Communicating with In-House Counsel

• Expectation of analysis of office actions should be confirmed with in-house counsel
• Practical advice preferred over academic advice
• Be succinct and clear but do provide some context
• Informal is preferred to formal
• Formal opinions should be provided only when requested by in-house counsel
• Where deadlines are involved, reminder and follow-up letters are welcomed

What Annoys In-House Counsel

• Do not overstaff or overlawyer cases
• Overcharging will not be tolerated
• Include prior correspondence and other materials when relevant and warranted
• Be clear and concise
• Be respectful of in-house counsel’s ability and time
• Arrogance is not appreciated
• Avoid duplication and wasteful use of time and resources
• Ask questions to establish expectations