Journal Article

A private practitioner's guide to the perils of dealing with in-house IP lawyers

Kelly A. Merkel

in Journal of Intellectual Property Law & Practice

Volume 6, issue 3, pages 161-164
Published in print March 2011 | ISSN: 1747-1532
Published online December 2010 | e-ISSN: 1747-1540 | DOI:
A private practitioner's guide to the perils of dealing with in-house IP lawyers

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Legal Context

Establishing and maintaining a budget has always been critical for in-house counsel but the pressure is now quite intense. Private practitioners must understand the tenuous maintenance of an in-house IP budget by IP counsel that must nevertheless support a robust IP portfolio.

Key Points

In the wake of the most recent global recession, in-house IP counsel are much more engaged in law practice and much more aggressive in driving down costs. GCs are fervently seeking innovative means of cost containment (and for publicly held companies, this issue will be a primary concern for shareholders). The same obligations for in-house counsel exist (such as the relative value of IP assets, infringement liability and support for R&D and marketing activities), but the associated legal costs are under heavy scrutiny. If outside counsel cannot respond quickly and accurately in a cost effective and professional manner, the corporate client will simply seek counsel that can reliably deliver the required results.

Practical Significance

For private practitioners in multi-jurisdictional IP practice, the thresholds for reducing outside legal spend have been adopted across the globe. Practitioners may want to position themselves as true partners for in-house IP counsel and treat them as the valued customers that they are.

Journal Article.  2545 words. 

Subjects: Arbitration ; Intellectual Property Law

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