On October 9th, I attended a Los Angeles Intellectual Property Law Association (LAIPLA) panel discussion sharing insights on the challenges of and strategies for developing and maintaining successful business relationships with in-house counsel. The panelists included: Georgann Grunebach, Fox Group Legal, Vice President of Intellectual Property, and Jilana Miller, Senior Legal Counsel, Epson America Inc. The panel was moderated by Sanjesh Sharma, Partner, Chen Yoshimura LLP.
I have highlighted some important questions and tips from the panel:
How does in-house counsel select outside counsel?
- Firms that understand budget constraints. Once a company determines their budget for the year, they must live within this. An outside counsel’s job is to make in-house counsel look good to upper management. If upper management is constantly asking why the bill is so high, it reflects poorly on in-house counsel and their budget management skills.
- Smaller versus larger firms. When asked about choosing smaller versus larger law firms, the panelists had varied answers. Overall, regardless of the size of the firm, they are looking for astute attorneys who have practical knowledge of the work. However, when faced with a large case that requires a lot of e-discovery work, in-house counsel may choose a larger firm that will have the staff to devote to this. On the other hand, they may select smaller law firms because small firms tend to have more reasonable rates and are often just as good as the “big guys”.
How has the change in economy affected hiring outside counsel?
- Exploring other options. In-house counsel have been exploring other options, such as creative billing arrangements, working with junior partners at a lower hourly rate or selecting smaller law firms with lower rates. On the other hand, many times billing by the hour is easier to understand and predict versus alternative fee arrangements, which are not usually fully understood at the beginning of a project.
- Other geographic locations. In-house counsel are looking at Midwest or east coast markets because of their lower hourly rate. The panelists said this is a rising trend among all in-house counsel.
- Regardless of economy, relationships are key. In-house counsel are looking for people they have relationships with. This way, if they need to talk candidly about an invoice or ask a simple question without being billed, they can.
Does in-house counsel prefer to consolidate matters to a few firms?
- Not necessarily. When using the same firm, there is an economy of knowledge and less of a learning curve, but there is usually no cost savings. The panelists said they are looking for someone who fully understands the issue, has passion for the work they are doing and is are constantly looking to educate himself/herself.
What should outside counsel do to help in-house counsel with the America Invents Act (AIA)?
- Sensitize and prepare. Outside counsel should be preparing and educating their clients on the impact of AIA. The panelists explained that it is important to sensitize people to the facts, create enhanced internal document systems and educate in-house counsel, which greatly demonstrates value.
Other things mentioned were to keep a positive attitude, have your thumb on being cost effective and continually prepare and educate yourself and your clients.
What other tips do you think help foster your relationships with in-house counsel?
– By Berbay Senior Account Manager Megan Braverman