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IP: Bringing outside counsel in

Forging close ties with outside attorneys can help strengthen patent portfolios

In developing a patent portfolio in Silicon Valley, organizations rarely have adequate internal resources and instead turn to outside counsel to assist. The level of reliance and type of involvement can vary, but generally the tasks assigned to outside counsel include invention harvesting, strategy development and patent prosecution. To execute these tasks at the highest level, outside counsel should not only have a full understanding of the organization’s technology, but also other aspects of the organization, such as culture, short and long term goals, and pain points.

Patent practitioners are required to have a technical background. In theory, this background enables the outside counsel to sufficiently understand the technology for purposes of drafting and prosecuting a patent application. After meeting with the inventors for an invention disclosure meeting, the outside counsel will generally prepare a patent application that the inventors think discloses their invention. However, in practice, such an approach generally only produces an application that those in the tech industry would characterize as a minimal viable product. By investing some time and resources to bring their outside counsel into the organization, an organization can be rewarded with significantly improved work product, a stronger relationship between the firm and the in-house team, and a better working relationship between the outside counsel and the inventors.

A simple, yet valuable means of bringing outside counsel into the organization is through regular educational sessions. These sessions can focus on enabling outside counsel to gain a deep and continuing understanding of the organization’s technology, culture and goals. In particular, technology sessions led by the organization’s engineers can be invaluable in a variety of ways. First, the technology sessions increase outside counsel’s understanding of the organization’s technology. This not only leads to stronger patent applications that include more technical detail, but also applications that are better integrated with the organization’s overall technology offerings. Second, the technology sessions aid in fostering a working relationship between outside counsel and the engineers. This can be particularly valuable for young start-ups or other organizations with engineers with less patent experience. It frequently comes as a surprise to engineers that patent practitioners have technical backgrounds and often were practicing engineers before turning to patent law. Because of this misunderstanding, engineers often hold back on technical details during disclosure sessions, and it can take time for outside counsel to gain their confidence. For engineers with extensive patent experience, the technology sessions can be valuable in fostering a strong relationship with a new team of outside counsel.

A more costly, but highly effective means of bringing outside counsel into the organization is through a secondment program. A secondment program allows the organization to bring one or more patent practitioners in-house on a limited basis. Many outside counsel, especially young associates, who do a significant amount of the patent drafting, have only a minimal understanding of the in-house role. The role of an in-house attorney is not generally taught in law school, so associates learn through interaction with their clients. This can lead to misaligned expectations on both sides of the relationship. During the secondment, the patent practitioner can perform the duties of an in-house counsel, including identifying and harvesting inventions, developing internal strategy and process, and interfacing with outside counsel. These duties enable the patent practitioner to be immersed in the organization’s technology and culture. They are able to develop strong relationships inside the organization with both engineers and in-house counsel. Furthermore, the patent practitioner is able to better understand the expectations and the motivation for them. Through this exposure, the patent practitioner can return to the firm with a broader skill set and a better understanding of their client.

Regardless of the size of the organization or resources available, there are a variety of ways to bring the outside counsel into the organization. The role of outside counsel is to serve the needs of their client, but those needs are far better served when the outside counsel has a strong understanding of their client. The resources expended on these efforts will lead to a better relationship with outside counsel and a stronger patent portfolio.

Contributing Author

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Gideon Myles

Gideon Myles Ph.D. is an attorney at the Silicon Valley office of IP super boutique Novak Druce Connolly Bove + Quigg. Prior to joining...

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