What in-house look for in outside counsel
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

What in-house look for in outside counsel

aipla corporate

In Thursday afternoon's corporate track panel session, in-house counsel from Microsoft, The Clearing House Payments Co and Google revealed what they are looking for in an outside counsel match

aipla corporate track

Now more than ever, the relationship between in-house and outside counsel is dynamic and complicated. "Looking for new firms now is sometimes a challenge, because everyone is either representing us in a case or suing us in a case," said Google's Jim Sherwood.

But, the ever-quickening pace of innovation does mean that companies like Google keep one eye on outside practitioners. "Two of the biggest drivers for looking for new outside teams are experience in a particular tech product area and experience in a new forum," he added.

Danielle Johnston Holmes, associate general counsel for Microsoft, said that her company's commitment to diversity extends to its outside counsel hires as well. "We expect them to be at least as diverse as we are," she says. According to Holmes, Microsoft even pays monetary bonuses for diversity in its outside legal team.

The draw of diversity isn't pure principle though, says Sherwood. Among the considerations in choosing the right outside counsel for a given forum, "it's important to us that our team should reflect the jury pool that we're before," he said.

The panel's moderator, Frank Gerratana, a partner at Fish & Richardson, mused that diversity seems to be a trending factor in the search for outside counsel. However, more traditional factors are still at play, but shifting.

Price, for example, is obviously still a very important consideration. Especially now "there's a lot of pricing pressure on IP," said Clearing House's Sean Riley. Outside counsel just can't expect to be able to charge the same hourly rates that they used to, as a fixed fee structure becomes increasingly common.

The pool of outside counsel candidates shrinks as conflicts – whether legal, business, technological, or regulatory – become more common, which means that upfront and early conversations about these potential conflicts are essential.

Sherwood said he was surprised by how much time he spent dealing with [conflict] issues. "To some extent it's a good thing. Firms we work with really do make an effort to raise issues before things go too far."

For Riley – as in-house counsel for a financial services association – business or even technological conflicts are of greater importance. "There's a lot more loyalty when you can bring a larger book over to a firm," he said.

Riley said, although companies have moved away from using law firms for data analytics of their IP portfolios, if a firm's technology is not up to muster it simply can't be trusted. "And, when it comes right down to it, the attorney client relationship is about trust," concluded Holmes.

more from across site and ros bottom lb

More from across our site

Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to resolve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Pham Nghiem Xuan Bac, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Counsel explain how pricing flexibility, patent agents and being business partners can help them maintain profitable patent prosecution practices
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Speakers at an INTA event weighed in on why firms should create AI use policies and how they stay on top of the latest developments
The England and Wales Court of Appeal backed Lidl in its trademark dispute with Tesco, but we should pay more attention to how we rule on first-instance decisions
Gift this article