In-house counsel is typically an organization’s first line of defense when legal threats arise. But when the company’s core assets — its intellectual property — are at stake, the risk profile can change dramatically. Knowing when to engage an outside intellectual property attorney is a critical judgment call for general counsel that can impact a company’s enterprise value, market standing, and long-term risk exposure. Outside IP counsel can play a strategic role in positioning a company to successfully navigate IP litigation, manage risk, and safeguard its intellectual property portfolio.

The following situations frequently warrant collaboration with an outside intellectual property attorney:

High Stakes Intellectual Property Litigation

Whether they involve patents, trade secrets, trademarks, or copyright issues, intellectual property disputes can present risks that extend well beyond the capabilities of a company’s in-house legal team. When potential consequences include operational disruption, reputational harm, loss of market position, or erosion of investor confidence, engaging an intellectual property attorney is not merely prudent, but often necessary.

While in-house counsel is often equipped to handle day-to-day IP matters, high-stakes litigation demands the extensive knowledge, resources, and courtroom experience that outside IP counsel is well-positioned to provide.

Anticipated Litigation or Escalating Disputes

Companies shouldn’t wait until a lawsuit has been commenced to engage an intellectual property attorney, particularly when there are significant financial implications or public attention is likely. Early engagement of outside IP counsel can enable proactive risk assessment, strategy development, and informed decision-making before a dispute escalates.

An outside IP attorney can provide an objective perspective on legal positioning, evaluate strengths and vulnerabilities, and assist in-house counsel with reviewing settlement or enforcement options. This collaboration can allow in-house teams to remain focused on organizational priorities, while leveraging advanced capabilities to manage emerging intellectual property challenges effectively.

Intellectual Property Matters Demanding Technical Insight

Intellectual property matters often involve technical and scientific issues that can be beyond the scope of a general in-house legal practice. When the outcome of a case hinges on nuanced technical and scientific factors, an outside IP attorney can provide in-depth insight into these complex matters, drawing on their legal proficiency, technical background, and focused experience handling similar situations.

Outside IP counsel can assist in-house counsel in addressing intricate patent applications, sophisticated trademark disputes, and multifaceted copyright issues with precision and confidence. A collaborative approach can strengthen a company’s legal posture while mitigating risk in the ever-evolving IP legal landscape.

Transactions Where Intellectual Property is Central

Mergers and acquisitions, as well as strategic investments, are frequently driven by the quality, scope, and enforceability of a company’s intellectual property rights. When intellectual property assets are central to the transaction, outside IP counsel can provide crucial guidance in conducting targeted due diligence and assessing risk.

Outside IP attorneys can assist in-house legal teams with:

• Verifying ownership and chain of title
• Assessing validity, enforceability, and extent of IP assets
• Identifying infringement risks
• Evaluating regulatory and compliance concerns in technology-related transactions
• Reviewing licenses, joint development agreements, and monetization restrictions

The strategic value of outside IP counsel for in-house legal teams extends beyond diligence. Their involvement can enhance negotiations by translating technical intellectual property issues into comprehensive risk evaluations, improving deal certainty, and conveying legal sophistication to counterparties. By handling specialized drafting, analyzing risk, and addressing matters involving technical depth, an outside IP attorney can augment in-house legal teams, help facilitate deals efficiently, and ultimately, position the company for continued success.