IP Recordals

How to Choose the Appropriate External Counsel to Administrate Intellectual Property Rights

If your business has concluded that hiring external counsel to handle the management of its intellectual property rights (IP rights), here are a few helpful tips to help you to solidify your position prior to hiring.

Understanding what sort of counsel you are looking for, what you expect of them and what your desired outcomes are prior to the hiring process are key to narrowing down prospective external candidates before interviewing for the position. It is important to seek out counsel with expertise in areas of IP relevant to your business needs (such as copyright, designs, patents, trademarks and licensing) – such information can generally be found through prior research using firm’s websites or other authoritative sources.

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The first thing to consider when contacting potential external counsel are fees. Many firms looking for new business will offer an initial free consultation, though some do not, and it is important to first ascertain whether you are engaging in a billable transaction just by speaking with them. Even if the initial consultation is free, you may still need to pay to obtain some more detailed information, including an estimate of time and costs.

What information are you looking for?

Dependent upon the complexity of the situation and the role, you may wish to formally request tenders for the services available and the fees to cover them – potential counsel will submit a detailed outline of their proposed services. Alternatively, less formal means of receiving this information may be requesting the counsel to deliver a presentation, or simply speaking with them in person, on the telephone or via email.

Further questions

It is key to ensure that any queries are answered in full before committing to a decision to hire external counsel – key questions to consider are listed below, though it must be noted that this list is by no means exhaustive and the questions relevant to your business’ needs vary according to the situation. You may wish to ask:

  • How many similar cases of IP rights has the prospective counsel handled before?
  • How successful was the counsel in these prior management scenarios?
  • What proportion of the overall firm is dedicated to the IP rights in question? This will directly affect the resources and manpower available to your IP management.
  • Are there any unique challenges the counsel can foresee with your IP situation?
  • How does billing work for this firm?
  • How many billable hours are usual for this type of arrangement?
  • Would the counsel be personally handling the management of your IP or would they delegate some functions? If so, how many? Could you meet these additional people?
  • Does the firm, particularly the person who will be managing your IP rights, have any current memberships or affiliations to independent organisations? If so, these may present a conflict of interest.
  • How long has the prospective person been working at the firm? Are they relatively new? If so, where did they previously work?

Whilst this process may seem time consuming and inconvenient, it ensures you can solidify your position prior to the hiring process, and find the most suitable counsel for your needs. Ultimately, your goal is to find the right firm to represent and manage your business’s IP rights – this will be a long-term relationship, it is prudent to invest the time now so that you can be confident of your choice long after the hiring process is over.