Role of In-House Counsel, Working with Outside Counsel Topic of ABA Program

During “Intellectual Property as a Corporate Asset and Managing Outside Counsel,” a panel of in-house lawyers discussed their roles, and offered insight into the qualities they seek when hiring outside counsel.

An in-house lawyer routinely interacts with a much wider spectrum of individuals on a professional level than outside counsel do, said two in-house counsel who have experience in both roles.  These include people responsible for licensing, administration, technology, human resources and other corporate professionals.

Catherine L. Thornberry with CARFAX, Inc. said her experience in intellectual property helps her in her day-to-day responsibilities. Many trademark issues are handled in-house as a result, though cease-and-desist cases are turned over to outside counsel, as are escalation clauses, many copyright issues and patents.

Thornberry noted that she wears two hats, serving not only as a lawyer but also as a business person.  This can be a good thing, but it cuts both ways.  From where she sits, Thornberry can be more client-specific, but sometimes — she said — business folks don’t want to hear strictly legal implications.  In such cases, it’s sometimes prudent to turn to outside counsel.

Jeffrey A. Lindeman, J.A. Lindeman & Co PLLC, followed up on that comment, asking what the in-house lawyers look for in outside counsel. Thornberry said that she likes to work with a lawyer with whom she can get along; someone who understands the business of their corporate clients — and who is committed to it; and a firm that offers the right value — one that has the right price for the experience and commitment they offer.

Rodney Sparks, University of Virginia Patent Foundation, echoed the sentiment of wanting someone who understands the business, “Our academics love it when they speak to outside counsel who understand what the faculty are doing,” and who are enthusiastic.

Communication is key, both Sparks and Thornberry said.   “I want someone who will listen first,” specifically hearing about the company’s strategic goals, said Thornberry.  “Keep us informed,” followed up Sparks.

Both Thornberry and Sparks emphasized the importance of outside counsel being honest with them, disagreeing when it is appropriate to do so.

The program was part of the ABA Section of Intellectual Property Law’s 26th Annual Intellectual Property Law Conference in Arlington, Va.