Working It Out

• Author: Kim R. Jessum
• Pages: 1-1

Published in Landslide, Volume 14, Number 3, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion

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1

PERSPECTIVE

of products and new business names, with

the result of revenue loss.

On the litigation side, particularly

regarding “bet the company” litigation,

some of my in-house colleagues wish that

the U.S. would operate more like the Euro-

pean system: more affordable and more

predictable. Different international compa-

nies are turning to non-U.S. jurisdictions

for IP enforcement just because of some of

the problems with our U.S. system.

These are just some of the issues unique

to in-house counsel today. But with effec-

tive collaboration and communication,

in-house and outside counsel can begin

working out these challenges. n

I

n-house counsel face unique legal chal-

lenges, which can differ across industries

and counsel themselves, and which may

be experienced by outside attorneys too.

Key issues are heavy workloads and respon-

siveness to clients.

To help establish priorities, I get my

clients to be collaborators and share

deadlines, and I ask outside counsel to

ag anything that is particularly urgent.

Outside counsel who know my businesses

take initiative without overbilling for

unnecessary work and communicate effec-

tively with the nonlawyers, who receive

the most work. As I have heard from many

colleagues, outside counsel should help the

in-house counsel look good to their clients.

We all know that clients who request

legal work do not know how many other

projects we are handling at the same time.

Sometimes a client will make mistaken

assumptions when the work cannot be done

in the time they expect. It is unfortunate

that they sometimes think that the attorney

is not interested in doing the work or is just

not a good lawyer. This can also occur with

work from outside attorneys. Good rela-

tionships depend on better, more realistic

communications from the beginning. For

example, an outside attorney could choose

a more realistic date, le on or before that

date, or send a quick communication before

the set date that the date had to be extended

to put the application in better form. As

many of my business colleagues say, it is

better to exceed expectations by doing

things earlier than promised than to not

meet a deadline.

Many in-house counsel who negoti-

ate contracts will hire outside counsel if

the workload exceeds what can be done

internally or expertise in a subject area

or jurisdiction is needed. More and more

agreements have intellectual property (IP)

provisions, and it is important to have

someone review them who is knowledge-

able in IP. In several industries, IP ownership

provisions are added to address continuity

of supply and second source supply and

can be very important to the buyer while

detrimental to the supplier. Indemnity for IP

infringement is also an important provision

for buyers or manufacturers making prod-

ucts according to the buyer’s specications.

Another area that requires a lot of

in-house counsel’s time is mergers and

acquisitions (M&A). Most M&A deals are

more demanding than litigation but occur

in a shorter time frame. It is important to

do the due diligence as soon as possible

because IP can be overlooked until the

last minute. And it is particularly criti-

cal to start the freedom to operate (FTO)

analysis early. Done too late, FTO could

delay the deal. It is common for smaller

acquisitions to not conduct these types of

analyses because of costs or lack of knowl-

edge. Companies certainly do not want to

acquire a target if the production of the

product would infringe any third-party

rights, and it is better to know the risks

before the deal closes.

As many of us are aware, in the trade-

mark area there have been long delays

at the U.S. Patent and Trademark Ofce

(USPTO) because of the increased number

of trademark applications that include

fraudulent lings. When communicating

with company marketing departments, I

nd it increasingly frustrating that I do not

know when the application will be exam-

ined—while only a short time ago, it took

just six months to hear from the USPTO.

These delays are impacting the launching

By Kim R. Jessum

Working It Out

Kim R. Jessum is chair of the ABA Section

of Intellectual Property Law. She is chief

IP counsel US, associate general counsel,

and secretary at Heraeus Incorporated

and VP legal at Heraeus Medical

Components. She can be reached at kim.

jessum@heraeus.com.