What should you look for when selecting external IP counsel?

How do you go about choosing suitable external IP counsel? What skills and competencies should you be looking for? What factors should be considered in addition to purely legal capabilities? 

Working well with outside counsel has a lot to do with building relationships and creating a team that becomes a solid match with your own goals and area of expertise. That's why it's wise to begin the selection process with a list of desired traits and relevant questions to hand.

What specific resources should external counsel have?

When seeking an individual IP lawyer or law firm to advise you, keep in mind that IP is a very broad field of law that includes copyrights, confidentiality and trade secrets, trademarks and related rights, design rights, and patents. The firm you choose will ideally have considerable experience not just in the fields of IP that most impact your business but also a good understanding of your industry sector.

From general to specific knowledge

All IP lawyers will have general knowledge of IP rights; however, each of the categories of IP involves considerable complexity, and proficiency inevitably demands specialisation by IP types and by industry. For instance, many firms have departments that deal exclusively with information technology and entertainment law, which will have specialists in specific areas such as digital rights and broadcasting.

Therefore, the first question is: Does your prospective counsel have detailed IP knowledge and experience relevant to your sector? If you use a law firm for your corporate work, then they should be able to help direct you to suitable specialist firms.

Research the firms

Once you have a few names of external counsel, you will want to check their backgrounds. Look online for their biographies, rankings and testimonials, successful cases and, most importantly, review their websites and blogs. This may help you to narrow your search based on areas of law, interests and sectoral expertise. It is important to look deeper than the overall firm marketing material and into the profiles of leading figures who you would expect to be dealing with. Trim your list down to the top three or four most suitable firms.

Word of mouth

Personal recommendations can be valuable, so ask others in your industry if they know of those on your short list and what direct experience they have of dealing with them. You will, of course, have to take what you hear with caution and make your own assessment.

Prepare questions

Preparing a list of questions is the best way of ensuring you don’t miss any of the areas that will matter most in the longer term and may be a source of friction. These might include the often thorny issue of fees and disbursements and how approval will be given for new work and related costs; what service levels you can expect, particularly in terms of response times to your requests for advice or action and channels of communication; and, in what circumstances you would be comfortable with the firm acting for others in your sector.

Better to ask the tough questions at the outset than make assumptions that don’t bear out in practice.

Choose carefully, choose wisely

Depending on your needs, you may be giving your chosen external counsel a lot of your time and money. It is important to feel confident and comfortable with whoever you finally choose, so don’t be rushed into a relationship that may prove hard to change.