Shopping Overseas

A few months ago I met with a law firm in Shanghai to discuss some trademark challenges we were facing in China. Our outside counsel in the U.S. had recommended the firm. It was clear from the outset that the firm had no idea how to confront these challenges. I asked them how they could help our company protect a certain trademark that we had successfully registered throughout most of the world, but that trademark examiners in China had rejected. My questions failed to elicit any alternative approaches or related risk assessments. I left the meeting with little confidence in the firm's abilities. But this comes with the territory when working with attorneys overseas.

While U.S. attorneys are trained to take a problem-solving approach to a matter, attorneys overseas often take a more distanced academic approach. They may be inclined to answer a question that is precisely put to them without contemplating all of the practical implications of that response. As a result, you have to spend a lot more time working with the attorneys to ensure they have exhausted all possible legal solutions.

It also means you need to be careful when selecting overseas firms. What I look for in overseas counsel mirrors what company management needs from me: advice, options and risk assessment.

It's important that outside counsel provide advice that is pragmatic and tailored to your needs. Outside counsel need to understand your corporate culture, management style and business objectives. What they shouldn't be doing is rendering legal advice in a vacuum. I also look for a firm that has a client base outside its own country. I always ask the firm what clients, particularly in the U.S., they are serving. I can then call the general counsel at those companies for a recommendation if needed.

If your company has regulatory issues, you should ensure the firm has connections to its government. That means it either has lawyers who used to work for the government or currently provides counsel to its local government. In businesses that are highly regulated, law firms with connections to the government can be a valuable asset. A law firm that is active in its local bar association, or is active in drafting proposed legislation for a government agency, serves as another indicator that the firm is well respected locally.

For law firms headquartered outside the U.S., I am always impressed if some of their attorneys have come to the states to obtain an L.L.M. degree or ideally an apprenticeship at a U.S. law firm. This gives me comfort in knowing that they have been trained to analyze issues from a U.S. legal perspective and understand their role includes problem-solving. They also tend to have a much better idea of how American lawyers think and what is expected in terms of service.

In addition, I always look for an overseas law firm that provides an intangible sense of security that if some business situation or personal problem emerges while I am in their country, they will help navigate me through the matter. For example, if a visa issue arises, or there is a medical emergency requiring top care, I want to know that the law firm will assist even during nonworking hours.

One thing to remember when you are shopping for overseas counsel is that it's a buyer's market. There are many qualified firms in a particular city or country. Market forces are making firms more competitive. If a law firm isn't responsive to your requests or needs, generally there are other quality law firms that will be. And interviewing several law firms in person can be well worth the time and money if you are seeking a long-term relationship.


Roger Marks is the former senior vice president, general counsel and secretary of Chicago-based H20 Plus. He also served as the president of the company's international division.

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