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How to Work With In-house Counsel: An INTA Survey

International Trademark Association

Our firm’s attorneys are members of the International Trademark Association (INTA), representing the largest companies and law firms in the world on trademark issues.   The INTA recently did a survey of large corporations of in-house attorneys at large corporations asking a variety of questions.  While the article concerning the findings is extremely interesting, here are the summary bullet points which can guide attorneys looking to improve their relationship with in-house counsel, irrespective of practice area.  Let me know if there are other items that should go on the list.  Here are my favorites below:

Use of Outside Professionals
  • Mostly used for prosecution outside company’s jurisdiction and for inter partes proceedings and litigation
Considerations in Selecting Outside Counsel
  • Experience and pragmatism
  • Quality first, but cost an important second factor
  • Timely (within 24 hours), succinct, clear and creative responses
  • Effective use of technologies
  • In-depth understanding of company’s business and goals
  • Development of strong relationship
Marketing to In-House Counsel
  • Unsolicited approaches, brochures and marketing materials not effective, and may in fact have the opposite effect of what was intended
  • INTA is a helpful resource
  • Be prepared by becoming aware of company’s business and goals
  • Provide tangible suggestions
Firm Versus Individual Reputation and Ability
  • Reputation and competence of professionals involved are of paramount importance
  • Reputation of firm is a secondary consideration
Performing the Work
  • Senior, experienced counsel should oversee and supervise work
  • More routine work should be handled by qualified and supervised but less expensive personnel
Billing Preferences
  • While flat-fee billing has its appeal, hourly rates for litigation are more common
  • Simple exchanges and some routine administrative services are expected to be provided without charge
  • Occasional visits and internal training sessions without charge are appreciated
  • In the case of urgent matters, outside counsel is expected to be available as needed
  • Initial response expected within 24 hours
  • Response time also depends on circumstances
Communicating with In-House Counsel
  • Expectation of analysis of office actions should be confirmed with in-house counsel
  • Practical advice preferred over academic advice
  • Be succinct and clear but do provide some context
  • Informal is preferred to formal
  • Formal opinions should be provided only when requested by in-house counsel
  • Where deadlines are involved, reminder and follow-up letters are welcomed
What Annoys In-House Counsel
  • Do not overstaff or overlawyer cases
  • Overcharging will not be tolerated
  • Include prior correspondence and other materials when relevant and warranted
  • Be clear and concise
  • Be respectful of in-house counsel’s ability and time
  • Arrogance is not appreciated
  • Avoid duplication and wasteful use of time and resources
  • Ask questions to establish expectations


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