Your Company Does Have the Resources to Hire Seasoned In-House IP Business Counsel

In today's business world, forward-thinking business leaders at small and mid-sized companies understand that they must develop and deploy IP strategies that will grow their company's intangible asset base. As an IP Strategist and owner of an IP strategy and consulting service (more info here: www.jackiehutter.com), I know that to accomplish this bold objective, the first question must necessarily be whether the company should hire someone as permanent in-house IP counsel, or whether they engage outside IP counsel on an ongoing basis. Regardless of which option they choose (and they realize they must choose), the result for the company is significant expense in the form of headcount cost and/or outside counsel legal expense.

Let's assume that your company has decided to take the plunge and engage either in-house or outside counsel to direct and deploy a business-focused IP strategy. How do you know who to hire if you know little about IP law? Indeed, how can a non-expert expect to be able to evaluate the expertise and skills of an IP lawyer? In short, the information costs of hiring an IP lawyer are very high—likely so high that, as a business leader, you are effectively unable to learn to what is necessary to make an informed selection of the best IP counsel to allow your company to effect your IP business strategy. In view of this challenge, you may resort to the "old-fashioned" way of hiring a lawyer—you call people you know for recommendations. In this typical method of hiring legal counsel, you may resort to hiring someone you know personally or someone that you trust knows.

Even if your company has infinite resources to pay for outside IP counsel, isn't your company's IP business strategy too important to select outside IP counsel on the basis of where he went to college, where her child goes to school or whether he likes to fly fish? In a world of perfect information, you would be able to go beyond personal contacts to select your outside IP counsel by asking those in the community with the most similar needs to yours, and ask them to recommend lawyers with whom they had success. This would entail asking your direct competitors with what lawyers they have found success. Of course, your competitors are unlikely to share who they think is the best IP lawyer(s) with your company. But, even if your competitors would be inclined to give you this information, the rules of legal ethics would likely prevent their recommended counsel from representing your company if the lawyer has already represented the other company.

So, we are back to the drawing board—how does your company select IP counsel that is cost effective and has the right IP and business skills to allow you to flawlessly execute your business strategy? There appears to be an emerging and innovative option. In the legal recruiting world, there is a growing business model of placing of senior lawyers in less-than-fulltime engagements. In this model, (described here: http://www.dailyreportonline.com/editorial/news/singleEdit.asp?search_Keywords=contract+lawyers&individual_SQL=4%2F21%2F2008%4022801&userSel=AMYEARAll), your company is able to engage a highly skilled and seasoned IP counsel to work with you, without your company incurring the salary and headcount costs of a full-time senior lawyer. (Note that it is not correct to call this lawyer a "part-time" lawyer, because, although he may be a "part-time" worker for you, he may be working for several other companies such that he is "full-time" in total hours worked.) The benefits to your company should be obvious here: you are obtaining very experienced in-house IP business counsel at a cost that is a fraction of what you would pay if you hired this person in-house—if you even could find the right person.

Some may wonder "what is wrong" with the lawyer who seeks this type of arrangement. Quite likely absolutely nothing. For example, the lawyer may be "burned out" from years of working 70-80 hour weeks. Or the lawyer may be looking for a new challenge. Or the lawyer may find it more exciting to work with companies that are in the "start up phase" with respect to management of their intellectual assets, an option that is difficult to target and achieve in the traditional legal services models.

Regardless of which reasons the lawyer is seeking a less-than-fulltime in-house engagement, the net result is that this lawyer is non-traditional and, quite possibly, more innovative than many of his peers in the IP legal community. An innovative lawyer is more likely to understand and engage with the IP from a business perspective, as opposed to the usual model of IP as a legal function. If your business is seeking to innovate in the area of IP business strategy, this non-traditional model of in-house legal representation might be just the ticket. For more information on where your company can locate legal placement professionals that work in this area, contact me at jackie@jackiehutter.com.