Legal Solutions | USA
When an intellectual property matter lands on the desk of corporate counsel, a decision must be made: Can the work remain exclusively in-house or should the department send it to outside counsel? And, if work is sent to outside counsel, are there specific tasks related to the IP matter that should be handled in-house because it takes advantage of corporate counsel’s knowledge of the business, product lines and stakeholders within the company? The 2016 Thomson Reuters Legal Department In-Sourcing and Efficiency Report surveyed more than 400 legal departments to determine how in-house teams make these types of decisions and best divide responsibilities in connection with IP work.
According to the Efficiency Report, legal departments reported a higher level of involvement in intellectual property work, relative to a year earlier. With intellectual property matters, most (77 percent) expect their use of outside counsel to remain the same in the coming year. Of the 12 percent that expect to increase their reliance on outside counsel for intellectual property matters, the majority (81 percent) attributed it to an increased volume of work or company growth. For other departments, it’s a matter of internal resources: “We did just consult an attorney for a few intellectual property issues for our daily nonprofit business, and may get a second opinion on things in the future.”
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Of the 10 percent that decreased the amount of intellectual property work they’re sending to outside counsel, 38 percent stated it’s because they have less of this type of work than expected, or because they just finished a large case. Yet other legal departments reported keeping it in-house whenever possible: “We are attempting to manage costs very closely this fiscal year, and much of the work done by outside counsel can be fairly competently completed by in-house counsel.”
In-house counsel’s top intellectual property tasks included advising company executives and employees on day-to-day issues (79 percent), negotiation and drafting agreements (68 percent), and training company personnel (62 percent). In terms of when to turn to outside counsel for help in connection with an intellectual property matter, the top three reasons included the complexity of issues (55 percent), the involvement of significant risk (43 percent), and the involvement of multiple jurisdictions (42 percent).
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