From time to time, I am asked by law firm colleagues how to prepare for the transition from outside counsel to in-house counsel. In many instances, these colleagues must transition from being an Intellectual Property (IP) specialist in a few areas of IP law to an IP generalist. For example, I notice that many of these colleagues have extensive experience working as a patent attorney performing specialized “prep and pros” work for submission to the USPTO, working closely with foreign counsel regarding related non-US “prep and pros” work, occasionally assisting with patent assertion and litigation matters, and even perhaps assisting with due diligence relating to a client M&A deal. At its core, this type of work relates to their specific, specialized expertise in patent law. In many cases, it is this same expertise that in-house counsel will most likely seek in a new hire (e.g., to assist with the management of a patent portfolio).

However, in many additional cases, an in-house IP attorney must also be a general IP attorney that wears many hats. They should be ready to advise on issues related to the licensing/monetization of IP, use of open source code, participation in Standards Setting Organizations, product naming, product packaging claims, copyright assertions, DMCA take down requests, Privacy issues (e.g., GDPR), IP indemnification and ownership clauses in commercial agreements, etc. These tasks are in addition to not only managing the patent portfolio, but also providing IP education sessions and performing invention harvest sessions with the organizations’ engineers or scientists. Rarely have I seen many outside IP attorneys that have had the opportunity to obtain such a broad array of IP legal experience before transitioning to in-house IP legal position.

Because of this, I typically advise colleagues looking to make a transition from outside counsel to in-house counsel to simply Brown Bag it. To take some time to perform self-education in an area of IP law, prepare a brief presentation, and present it in a brown bag type of education session to their law firm colleagues. For example, one might consider preparing a presentation related to the General Public License (GPL) to become more familiar with open source licenses and related risk. The presentation might have a slide for each enumerated clause of the GPL, explain how it is interpreted, and potential risks. I believe the GPL also touches on other general IP issues such as copyrights, patent rights, IP contract terms, programming techniques (e.g., statically and dynamic coding), and the like.

Another suggestion is to prepare a presentation relating to indemnification clauses in commercial agreements. Understanding indemnification clauses is very useful for an IP law generalist and also relates to various aspects of patent law, copyright law, and general commercial legal terms. A presentation on indemnification could be as long or as short as needed. This is because almost every term in an indemnification clause can be interpreted individually. Alternatively, the presentation may be broken down by each indemnification section, where a section may relate the scope, conditions, and/or exceptions to the indemnification amongst others.

An additional bonus is that your colleagues that attend your presentation and even you—yourself—may be eligible for CLE credit by many State Bar associations. Hopefully, your colleagues ask questions. These questions will help you better understand the nuances, which in all, helps prepare you to advise counsels as an in-house attorney. In all, the preparation of a brown bag lunch session is a great opportunity for outside counsel to become more familiar with the IP legal responsibilities of an all-purpose IP in-house attorney that supplements the specialized expertise needed in the modern in-house IP legal departments.

February 19, 2020/by IntellectualProperty