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Episode 5: What I Learned During My Transition From Outside Counsel to In-House, and How I Use That Experience To Help My Clients
When I moved in-house, I had to change my perspective. From looking at IP in an often-piecemeal way, I quickly had to shift toward a full-picture perspective. In meeting with decision makers and inventors, I discovered how each piece of IP fit into the long-term plans of the corporation. In other words, each invention disclosure and resulting patent application did not occur in a vacuum. Unfortunately, outside counsel often operate in that manner, particularly if more than one outside firm is involved. It was up to me to coordinate their activities so that each application built on and often complimented each other. The result was a cohesive wall in the form of a patent portfolio that gave the corporation a strong position in the market and also gave them a valuable asset.
Mr. Lesperance discussed:
- The transition from outside counsel to in-house and how seeing the forest for the trees enabled him to better serve the corporation’s interests.
- Building rapport within the corporation to discover connections between the patent applications.
- Using those connections to manage outside counsel and build an IP barrier to the competition.
- Returning value to the corporation by improving its market position and increasing the value of its IP portfolio.
