28 Sep 2017
While some legal issues are best managed in-house, there are many instances where engaging outside counsel is necessary — especially if your company is building a patent portfolio.
For instance, you may need outside counselto:
- Handle an exceptionally big caseload
- Assist you temporarily to meet time-sensitive needs
- Offer specific expertise or experience (such as knowledge of a particular technology or local jurisdiction)
To meet your company’s business goals, you’ll want to establish a strong working relationship with your outside counsel.
At Henry Patent Law Firm, we’ve worked with many companies, and our attorneys have worked at large and small law firms alike — so we’re no stranger to navigating these working relationships.
Here are our top 7 tips — based on our experience — to ensure you’re getting the most out of your relationship with your outside counsel.
1. HIRE THE RIGHT ATTORNEY
Choosing outside counsel who understands your technology, your business, and your expectations is possibly the most important factor at play. Hire an attorney with the relevant skills and experience to speak to your industry’s needs — this will form the foundation for strong communication down the line.
Your outside counsel should at least have the right technical background to quickly understand your company’s inventions. For example, if you’re looking to patent a mechanical device, a patent attorney who has experience in mechanical engineering might be able to better understand your technology.
Beyond technical expertise, you should also hire a firm with experience serving clients that have a business profile similar to yours. If you’re a software company, make sure you hire a law firm that understands how software is monetized. If you’re a tech startup, make sure you hire a law firm that understands fundraising cycles and the unique time and budget pressures startups face.
2. COMMUNICATE YOUR EXPECTATIONS AND GOALS
You and your outside counsel need to be on the same page about the project’s parameters. Great relationships are built on trust and communication — both parties must be willing to understand each other and engage in open, honest dialogue.
What do you hope to accomplish with this patent application? To set reasonable expectations, you must first understand your own priorities. So if your business’s commercial viability depends on the success of a particular patent application, let your attorney know so that they can prepare a more thorough application. Or if the patent application is simply a “defensive” maneuver against potential competition, inform your attorney so they can avoid unnecessary costs.
3. ESTABLISH YOUR BUDGET AND TIMELINE
No one likes a surprise when it comes in an invoice. Things may be going smoothly with your outside counsel — until you receive a costly bill that includes unexpected hours or services. At Henry Patent Law Firm, we always make an effort to set budget and timeline expectations up front so as to avoid situations like this with our clients.
Your attorney will want to know how much effort you expect to go into each project, and in what time frame you want it completed. It’s always helpful for outside counsel to understand how they should balance thoughtfulness and cost-consciousness on individual projects.
4. START THE PROCESS EARLY
Starting the process early will often lead to a stronger finished product. At smaller firms like Henry Patent Law Firm, if we receive early instructions and have all the materials we need well before your filing deadline, we can often schedule a solid 2-3 day block of time to work on the patent application. It’s easier for us to produce higher-quality work when we can dedicate ourselves exclusively to the project.
But if you provide instructions and other details late, we have to handle your project as a “rush” case. We’ll likely have to juggle the project among other ongoing work, leading to a less efficient process.
Alternatively, you may choose to work with a larger law firm. In that context, if you send instructions late, the law firm will most likely assign the case to the least busy lawyer they can find within the firm — and that person may not necessarily be the best fit to handle your case.
5. PROVIDE THOROUGH, HONEST INPUT AND DOCUMENTATION
Don’t “hide” issues from your lawyer! Your attorney has a fiduciary responsibility to you, the client — and everything you tell your outside counsel is privileged and confidential.
At the most basic level, you can help expedite the process by providing them with high quality invention disclosures (including figures and detailed examples) so they don’t have to independently collect this information from the inventors.
And because different patent applications present unique challenges and issues, you and your outside counsel should maintain regular contact through the process. Inform your attorney as soon as possible about any changes to your case or internal procedures. Your attorney will be able to better manage your situation when they know what’s going on at all times.
For example, if an inventor has left the company, it may be difficult to get them to sign documents for or provide input on patent applications. But if your outside counsel knows about the issue up front, they can take steps to get ahead of the issue and continue meeting all filing deadlines.
As another example, if there’s potential prior art or if you have questions about what could be considered prior art, share these concerns with your attorney — they’ll be able to help you draft a stronger patent application that addresses all known prior art.
6. SEND TIMELY INPUT
Another critical aspect of open communication is providing timely responses to your attorney’s questions and requests for information. It’s not always possible to respond immediately, but consider asking your attorney to let you know when they need your input.
If you send timely responses to your outside counsel’s queries, they can address your input while the project is still fresh on their mind. As such, they’ll be able to perform follow-up tasks without having to spend extra time reviewing the file for relevant details.
7. REVIEW DRAFTS THOROUGHLY
Trust lies at the heart of any professional relationship, particularly between attorneys and clients. You should trust your outside counsel to prepare competent documents, give you the right information, and ask for input when they need it.
Nevertheless, you should still thoroughly review the documents they draft to make sure that the information has been accurately presented. Don’t blindly assume that they will get everything right — remember, the best source of accurate information for a patent application is the client (that’s you!).
For example, at Henry Patent Law Firm, we often send a short set of claims and figures to clients for review before we start drafting the full patent application. We’ve found that when our clients don’t review that information, or only give it a cursory review, they end up having more questions and edits for the full draft. As a result, we might have to rewrite parts of the application — which could result in higher costs.
Conversely, when our clients offer us thorough feedback early in the process, the revisions we need to make to the full draft are almost always quick and easy. Not only does this reduce the cost incurred, it also leads to a more efficient filing.
ENSURE HIGH-QUALITY WORK FROM YOUR OUTSIDE COUNSEL
Clear, consistent, and open communication are the keys to sustaining a strong working relationship with your outside counsel and building an effective partnership that meets your goals and expectations.
Looking for outside patent counsel for your firm? Henry Patent Law Firm’s attorneys have extensive experience collaborating with the legal departments of both large and small firms to handle tech-oriented patent applications.
To find out whether we’re a good fit for your needs, contact us today.
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.