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Four attributes in-house IP lawyers want from outside counsel

Ellie Mertens, New York

In-house counsel from L'Oréal, Avon, and Louis Vuitton recently shared what they look for from their outside counsel, as well as habits to avoid

At NYIPLA’s recent Hot Topics in IP event, in-house counsel from L'Oréal, Avon, and Louis Vuitton shared some advice for outside counsel.

1. Be concise

The in-house counsel present agreed that they appreciate working with outside counsel who are concise and unafraid to make recommendations. Lisa Gigliotti, chief trade mark counsel at L'Oréal, explained: "I don't want outside counsel to tell me the law and give me a thousand cases on it … I don't have the time to deal with a lot of this. I want my outside counsel to give me advice to move this way or that way, and explain what each approach will cost me."

Brian McCloskey moved from Greenberg Traurig to his position as Avon’s chief patent counsel in 2016, giving him a fresh perspective on the differences between outside counsel and in-house, and the challenges of the transition. McCloskey says you can’t hedge your bets the same way. "Going in-house is about taking ownership of the risks," he says.

"When you're outside counsel, you're told you should never give straightforward recommendations in your memos … [As in-house, however], because you are one step closer to the business, you have to be one step more sure of yourself and your position, and rely a lot more on your gut."

2. Know the business

The deepest legal knowledge is useless unless it can be applied in context. L'Oréal’s Gigliotti explains that an understanding of her business is the most desirable characteristic in outside counsel. "If you don't know our competitors, channels of trade, or how we market our products, you're really not giving me the best advice", Gigliotti says.

"Our business people are not in the business to litigate. They're in the business to make money and sell their products. So when we work with our outside counsel, I'm looking for practical advice."

However, outside counsel need help in order to gain an understanding of the business, and it takes communication on both sides. In defence of outside counsel, McCloskey says: "We expect outside counsel to know our business, but how can they do that? By looking at our web page? We really need to invest the time in developing our outside counsel so that they can be business partners."

3. Bring original thoughts

John Maltbie, director of IP at Louis Vuitton, finds the most frustrating part of working with outside counsel is that they too often agree with him without adding value. "Avoid the echo chamber", Maltbie recommends.

"I don't want to hear, 'Well that's a fantastic idea, let's go do it.’ I want them to say, 'You're full of it,’ or, 'This is not such a great idea.’ I want them to bring their own experience to the table. I don’t want to hear my own thoughts mirrored back to me."

4. Respect

Lastly, the final characteristic of outside counsel that in-house lawyers seek is respect. Pryor Cashman partner Dyan Finguerra-DuCharme reported that in a recent survey a surprising number of female in-house lawyers specifically used the term "mansplaining" when asked to describe what irritates them most about outside counsel.

Avon’s McCloskey said that a lack of communication and focus on relationships may be the culprit here. "If you don't work a lot with your outside counsel, they might not know what your level of expertise is in a particular area, so it's really important to maintain that relationship," he said.  

With solid relationships and good communication, balance can be negotiated for the other goals: sharing dense information in a short time; giving direct advice while minimising liability; knowing how business goals and legal options intersect; supporting ideas while adding value; and delivering all this information in a respectful, concise, and timely manner.


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