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Aug
31

Need A Trademark Or Patent Lawyer To Manage End Of The Year Projects? Consider In-House Secondment Attorney Services

Now that summer is drawing to a close in-house counsel must gear up to address those end of the year rush projects. I worked as in-house counsel for over eighteen years and without fail the fourth quarter always proved to be our busiest. After a summer break our in-house clients worked feverishly to accomplish those end of the year objectives and Management pushed to complete any deals that may have been in process so that the Company could improve the end of the year bottom line. Everyone in the legal department felt the onslaught including the Intellectual Property Department.

If you are experiencing pressure to complete a deal or resolve a matter that involves a complex patent issue, litigation, multi-country trademark license, a worldwide filing project, or similar task, perhaps you should consider retaining an in-house secondment Trademark or Patent Attorney. Such an attorney can provide on location assistance with these types long term projects and needs that would be costly and complicated to “farm out” to outside counsel. With an on location secondment attorney you can provide direction on the spot, the attorney can interact with in-house clients as needed and can access necessary files and data easily. Also, depending upon the firm you choose to work with you may find that you can negotiate for an hourly rate or flat fee arrangement that permits you to do this well within your budget.

Not familiar with secondment services? U.S. attorneys are often unaware of the concept of secondment attorneys although they are widely used in the U.K. and Europe. The term secondment derives from the days when the British army officers were given temporary assignments outside their regular regiment. The practice benefited the new regiment that received an additional set of hands and a fresh perspective from an experienced officer. In the legal world, this practice means that an experienced attorney from a law firm that offers “secondment” services can be placed in-house on a temporary basis. The attorney can then assist with complex projects and provide client support “in the trenches” and often do so with minimal supervision and training on the part of the hiring manager. When the project is completed the “secondment” attorney returns to her law firm work with a greater understanding of the company’s business and legal needs and can now work more effectively and efficiently with the company on a traditional basis.

Companies requiring special coverage for any of the following situations often use secondment services:

  • Long term projects, such as negotiating intellectual property licenses, managing global trademark recordal assignments, filing name changes, or conducting  foreign license recordals
  • Global search and filing of a new brand
  • A legal department that wants to bring their intellectual property portfolio in-house but does not need full-time Patent or Trademark Counsel
  • Assistance with setting up in-house intellectual property operations
  • Switching to a new trademark or patent management database
  • Resolving foreign conflicts for trademarks or patents that are no longer of top tier importance
  • In-house litigation support
  • An attorney on maternity or sick leave

How does hiring a secondment attorney differ from hiring a temporary attorney from an agency or borrowing an associate from a law firm? For projects requiring specialized skills and knowledge, such as for intellectual property matters, temporary attorneys from agencies rarely come with the necessary experience to “hit the ground running”. The hiring manager must often train and closely supervise the attorney. Once the project ends, even if the attorney has been of great assistance, the nature of temporary work is that the temporary attorney is unlikely to be available the next time the hiring manager needs an attorney since such attorneys are often on other projects or have taken permanent positions. For these reasons, the time spent training and supervising the temporary attorney usually does not provide a long-term benefit. Likewise, borrowing an associate from a law firm can be an inadequate solution since traditional law firms often insist on billing the attorney at an hourly rate and often will only provide an associate with one or two years of experience. The hiring manager is left to provide training and supervision. To make matters worse, particularly for specialized intellectual property work, even the less experienced associates at traditional firms are often billed at hundreds of dollars an hour. For these reasons, hiring a secondment attorney is often the preferred solution for addressing temporary in-house legal assistance needs.

If you are interested in getting some much needed help for those end of the year rush projects, Symbus Law Group can provide secondment services to companies seeking trademark or patent attorneys to work on a temporary (long term or short term) basis in their offices or ours. Secondment services can be on a 1-5 days/week basis for anywhere from 1 week to 6 months. Call me and we can discuss a cost-effective strategy for addressing your needs, either on an hourly basis or at a flat rate. Symbus intellectual property attorneys are available to work at in-house locations in the greater Philadelphia, Washington, D.C., Northern Virginia, areas. For more information, contact me, Teresa Anzalone, at 610-420-7731, or by email at tanzalone@symbus.com.

About the author

Teresa H. Anzalone

Teresa is a Trademark Attorney with an MBA. She recently left the corporate world to join the law firm Symbus Law Group, LLC. Teresa is licensed to practice law in Pennsylvania. She directs the Pennsylvania office which is located in Gulph Mills, Montgomery County, Pa.