3 Things Outside Counsel Can Do to Make Inside Counsel Look and Feel Great



Reading time


Picture of Craige Thompson

Craige Thompson

Craige is an experienced engineer, accomplished patent attorney, and bestselling author.

Table of contents


What can Outside Counsel do to make Inside Counsel’s life wonderful?

This simple but surprisingly compelling question prompted me to interview three top Inside Counsel patent portfolio managers.

Two of these patent experts manage patent portfolios for leading companies in the search engine and automotive sectors. A third works for a leading research university, the University of Minnesota. Below, I’ve compiled some of their thoughts from the trenches about best practices.

How can Outside Counsel make their jobs easier and reduce common sources of friction and frustration?

Here’s what these three expert Patent Portfolio Managers would like outside patent counsel to know.

1. Be Timely!

Josh McGuire, who serves as Senior Patent Counsel at Google, told me there is a Biblical proverb that says, “love covers a multitude of sins”; similarly, for Outside Counsel, “timeliness covers a multitude of sins.”

For Josh, the “single most important” virtue for Outside Counsel is timeliness, which includes providing work product for review well in advance of critical deadlines. Josh’s philosophy is that “tardiness is not only a problem in itself, but it is a catalyst for the creation of other mistakes.

With enough lead time almost any problem can be addressed.”

Another important aspect of timeliness for Josh is communication. If Outside Counsel needs more time to finish work product, communicate this need. He made a theoretical plea to drive home the point: “if a case is not filed in 150-200 days, let us know what is happening… do not go silent.” He admitted that “we have stopped sending work” to Outside Counsel that has failed to respect deadlines without any communication.

Being timely not only produces better results, but it also creates a sense of trust that can nurture the business relationship. Life and business are full of unpredictability, and even the tightest ship will be blown off course some of the time. If Outside Counsel cannot meet commitments, just communicate your needs and schedule, so that Inside Counsel can adjust, if needed.

2. Implement Quality Controls To Ensure Excellent Work Product.

The Head of Patents at an American Automotive Manufacturer recounted to me an experience he had with an Outside Counsel who failed to adequately review critical work.

After joining the team, he “established the nucleus of a patent department,” and he soon found himself working to put out fires. He accepted that some Outside Counsel might choose to delegate, calling the practice “fully expected and understood.” However, for understandable reasons, he insisted that “it’s absolutely critical for Outside Counsel to review the work.”

He recounted a true horror story about one lawyer’s failure to do this due diligence. A U.S. case was filed, and the independent claim had parameters based on European protocols that were totally unacceptable for a U.S. case. He said “it was clear that my Outside Counsel had not reviewed this case. He hadn’t even reviewed the independent claim!”

The moral is clear: Outside Counsel must carefully review work product. Outside Counsel should never rely on In House Counsel to check their work because, these days, most In House Counsel are being overwhelmed with numerous responsibilities inside their company. Outside Counsel should turn in work product to In House Counsel not only on time and budget but also ready to go; i.e., with no obvious errors.

3. Probe to think through potential workarounds and make sure claims have the right scope.

I had a fascinating conversation with Eric Olson, Technology Strategy Manager for the University of Minnesota, Office for Technology Commercialization. Olson pointed out the following:

“I think one of the biggest concerns at a research institution is making sure that we fully assess the initial invention, so we have a reasonable idea what end products might be impacted and then make sure to cover any potential workarounds within the scope of what was invented.”

According to Olson, it is a crucial role of Outside Patent Counsel to think through how others might design around a patent claim. “Particularly in an academic environment, a researcher might come up with specific discoveries and have an ideal or best implementation in mind. But for various companies, they may not necessarily need or want to implement that ideal one.”

For instance, imagine a researcher develops a new polymer that seems to have promise for aeronautics applications. But what if a company decides to use the plastic to make better furniture adhesive? The point is that it’s challenging to predict how and when a new idea, process or material will be used. Outside Counsel should help with this brainstorming.

As Olson said, “The concern is that we’re providing a template for easy workarounds. I think this is a case where it’s really important for outside counsel to probe potential workarounds and make sure that we’re getting the right scope that’s commensurate with our researchers’ inventions.”

Takeaways From Our Three Leading Patent Portfolio Managers

The collective wisdom from these three top Patent Portfolio Managers can benefit other In House Counsel to develop and refine best practices for managing their own Outside Patent Counsel. The virtues discussed above are powerful, including:

Be timely, and don’t go silent!
Maintain exceptional quality control on work product.
Assess potential design-arounds so claims have the proper scope.
These are all solid principles from experts who know. These virtues also differentiate Outside Patent Counsel because they are not universally practiced or equally distributed among Outside Patent Counsel.

Outside Counsel who incorporate these battle-proven best practices will not only make life much more wonderful for their Inside Counsel clients, but they will also certainly improve their own businesses as a result.

Patent Assessment

related articles

Thompson Patent Law (TPL) is proud to announce that we have been ranked 39th on the 2023

The United States Patent and Trademark Office (USPTO) has announced a new award category for the “Patents

As Austin patent lawyers, every day, we hear from inventors who are stunned and dismayed at the