why your start-up needs an in-house ip attorney

Why would a company hire an in-house IP attorney?

An in-house IP lawyer for a startup that made it big could have an "annual salary" less than $100,000, but if the company goes through an IPO, can earn orders of magnitude higher than that if the company does well. So I guess this is just a long-winded way of saying "it depends."

How to become an in-house lawyer?

Executives are adding in house counsel at earlier stages, but the timing varies and is governed by the following factors: volume of legal work, need for a legal infrastructure, company funding, readying for an IPO, rapid growth, revenue, potential acquisition. The profile and experience of these lawyers varies as well.

What motivates an in-house lawyer to come in-house?

This enables your start-up business to become a legal business and formally recognized in your state. A business lawyer will help you complete the necessary process to register your corporation and the process of incorporating your start-up will provide you personal asset protection. 3. To Protect Your Idea and Your Brand. The foundation of a new start-up business …

Is it possible to create an in-house legal department?

Nov 16, 2017 · These applications must be filed by a patent attorney (in-house or outside) skilled in the art of drafting a patent application. You’ll also want to review publications and other sources to make sure there is nothing already out there that overlaps with your idea or would allow someone skilled in the arts build your invention just from reading what’s already out there …

When should a startup hire a general counsel?

You will generally need to hire a general counsel six to twelve months prior to taking your company public. This is due to the large amount of work and complex legal issues involved in a properly handled IPO.

Why do companies have in house lawyers?

IN-HOUSE counsel are hired by a corporation's law department to handle a range of legal issues affecting the company, among them employment, policy, tax and regulatory matters. More prevalently, they play a managerial role, overseeing work that's been outsourced to attorneys at independent firms.

Why do entrepreneurs need lawyers?

Whether it's the legal complexities of starting, incorporating and running a business to the specific needs for reviewing a contract, hiring and firing employees, protecting intellectual property or a trademark, being sued by a customer, resolving business disputes or more, having a good lawyer can make a big ...Nov 23, 2020

What two characteristics should a lawyer have when working with a start up?

Take note of what the attorney says and does, and look for the following qualities:Experience. ... Understanding. ... Ability to communicate. ... Availability. ... Rapport. ... References. ... Reasonable fees.Feb 28, 2013

What does an in-house lawyer do?

In-house legal counsels provide firms of all sizes with expeditious advisement, accelerating their rate of growth. The key advantage of having an in-house legal team is embedded in the fact that legal issues are dealt with using a predictive, rather than reactive approach.

When should I hire an attorney at home?

The typical reason a company would decide to hire an in-house lawyer is when the return on investment, along with the potential savings justifies it. Hiring an external lawyer or firm can be a costly process and if you find yourself in need of a lawyer often, this cost easily becomes justifiable.

What are the benefits of having a lawyer?

Benefits of being a lawyerVariety of career options. As a lawyer, you can choose from several career options in the both public and private sectors. ... Starting your own business. ... Lucrative career. ... Intellectual stimulation. ... Flexibility. ... Adaptable skills. ... Ability to help others. ... Work environment.More items...•Feb 28, 2021

Which kind of lawyer makes the most money?

Types Of Lawyers That Make The Most MoneyMedical Lawyers – Average $138,431. Medical lawyers make one of the highest median wages in the legal field. ... Intellectual Property Attorneys – Average $128,913. ... Trial Attorneys – Average $97,158. ... Tax Attorneys – Average $101,204. ... Corporate Lawyers – $116,361.Dec 18, 2020

Can a lawyer be a businessman?

An advocate shall not be a Managing Director or a Secretary of any company. If the functions of the advocate as a member of the Board of Directors is in case executive in nature, then that action would be against rule 48. An advocate cannot run any business personally and earn a profit. Rule 47 strictly prohibits that.

What do people want in an attorney?

According to a new survey by Seattle legal company Avvo Inc., the three lowest-ranking characteristics people want in their lawyers are ambitious (12 percent), friendly (15 percent) and reassuring (18 percent).Dec 3, 2013

What personality type is a lawyer?

According to a 1993 study conducted by Larry Richard, the most prevalent personality types for lawyers are: ISTJ (17.8 per cent) INTJ (13.1 per cent) ESTJ (10.3 per cent)Jan 21, 2019

What are personality requirements for a lawyer?

Below are ten traits that are common to the best lawyers in the United States.Passion for the Job. ... Compassion for Clients. ... Great Communication Skills. ... Willingness to Listen. ... Knowledge of the Law. ... Strong Writing Ability. ... Creativity. ... Good Judgment.More items...•Jun 17, 2019

What is an in house attorney?

In-house attorneys are expected to translate the legal expertise, either their own or that of the private practice attorney, and make recommendations for solutions that make sense for the company. According to Bozek, this is one of the most rewarding parts of an in-house position.

How to get an in house position?

If you are practicing, make sure you are engaged in the kinds of practice that will fit what general counsels are looking for in new hires. Consider the following tips.

How to prepare a resume for an in-house position?

Cover letter and resume suggestions. When preparing a resume for submission to an in-house position, first review the job description for the position. Corporations generally have detailed descriptions of what they expect the hire will be doing. Make sure your resume reflects that job description.

What is the difference between in-house and private practice?

Another important difference between in-house and private practice is in the nature of the engagement. In private practice, attorneys are called in on an as-needed basis. They address the issue requested and then leave. The in-house lawyer, on the other hand, is involved for the long term.

How to prepare for an interview?

Review the job description as you prepare for the interview. Take some time to think about what the job requires and your life experiences. Be prepared to provide examples of things you have done that match the skills and abilities necessary for the job. Spend some time learning about the business of the company. During the interview, it is important that you demonstrate you know something about what they do and that you are curious about learning more.

What is the meaning of Amelia Earhart's quote?

This Amelia Earhart quote is emblematic of the decision to work as an in-house or private practice attorney. It is a difficult decision to make, and making it does not make the path to that in-house job any easier.

How long does IP protection last?

Additionally, once the patent issues, the particulars of the invention are disclosed to the world and your protection only lasts for 20 years (and it also depends on how willing you are to enforce your patents).

What are the requirements to get a patent?

To receive a patent, your idea must meet four requirements: The subject matter must be “patentable” (as defined by Congress and the courts) Your idea must be “new”. The idea must be “useful”. Your idea must be “non-obvious”.

How long is a patent good for?

If you are issued a patent, it’s good for 20 years (but some patents are good for only 14 years) and after which time your patent expires and anyone can copy, build and sell your invention.

How much does it cost to get a patent?

The overall process takes a lot of work and time. It can also be expensive — roughly $15,000-$25,000 to get a patent issued and buying an already issued patent is likely far more expensive.

What does it mean to have a patent portfolio?

Additionally, if your company is publicly traded, a fulsome patent portfolio (or simply obtaining a single new – but important – patent) can mean an increase in share price. Taxes .

What is defensive use?

This contemplates getting patents to use to defend the company in the event a competitor or other patent owner tries to assert their patent against you. If the party asserting the patent operates a real business (vs. being a patent troll) then you may own a patent that you could enforce against them.

What is the highest level of the business pyramid?

The highest level of the Business Knowledge Pyramid (Diagram IV) involves intimate knowledge of the company’s various business units and their strategies. This will likely require direct communication with business unit leaders and other business colleagues. The business unit-level strategies are typically not as formalized as the overall corporate strategy, but discussions with business colleagues should reveal the basic strategy for each unit’s operations.

How long should a general counsel address reporting relationships?

first general counsel should address within the first month or two with the company the essential reporting relationships within their new company. In fact, in a company that has never had in-house counsel, the task of establishing or clarifying law department reporting relationships may fall to the first general counsel. To assist with this process, this section analyzes the two reporting relationships that are most important to a first general counsel: (1) to whom should the general counsel report, and (2) who should report to the general counsel?

Why is it important to have a general counsel report?

The general counsel’s reporting relationship is important because it indicates to other company employees and outside counsel the relative importance and accountability of the law department.90 Thus, a company’s first general counsel should determine early on the individual to whom they will report directly.

What is the role of a first general counsel?

Once a first general counsel understands company expectations , they must determine how to best meet those expectations. This requires an understanding of how in-house counsel can best benefit the company, and perhaps more importantly, how the GC can demonstrate the value of such benefits to company management. This Section identifies the key roles upon which a first general counsel should focus, and then illustrates how to quantify the benefits of these roles in order to demonstrate the law department’s value.

Who is Nicolas Vanasse?

Nicolas Vanasse, Vice President, Chief Legal Officer and Corporate Secretary at Aveos Fleet Performance Inc., made a point early on to publicize his position throughout the company. He did so by developing and distributing written law department procedures (e.g., contract review procedures) that educated clients on which issues they should discuss with Mr. Vanasse. Some of these procedures were also included in the corporate bylaws so they could not be circumvented. He felt these procedures (and resulting discussions with clients) made his clients realize that the law department was there to help them.134

What should a first general counsel learn?

first general counsel should also learn as much as possible about the company’s key competitors. Knowledge about competitors, their key staff, the legal issues they have faced, and how they have responded to such legal issues can help a new general counsel better anticipate and address their own company’s legal issues. In addition, developing relationships with the chief legal officers (“CLOs”) at competitor companies enhances a general counsel’s credibility both within and outside of the client corporation. Networking with and getting to know these other in-house counsel can also be an invaluable tool for learning more about the industry (as discussed in Section III(D)(1) above).

What should a general counsel know?

general counsel should be intimately involved with and aware of their corporation’s strategy and direction. They should be able to succinctly articulate the company’s business strategy and be able to explain it to others in the company.82 This knowledge is important because it will help guide the GC in making difficult decisions on how to best support the business, and it will inform the process of developing a law department mission statement (discussed in Section III(E), below).83 Strategic planning is the process of defining a company’s direction and making decisions in order to pursue a particular course of action. In particular, a first general counsel should be able to answer the following questions about corporate strategy and direction:

What is an in house lawyer?

Simply stated, an in-house lawyer is an employee who works as an attorney for the corporation. The in-house lawyer, like any other employee, serves primarily to advance the needs of the business. The in-house counsel acts in a professional capacity as an attorney and, as such, is subject to the rules and regulations governing the practice of law.2 Within a typical corporate law department, attorneys fall within one of two groups: senior counsel (including general counsel and other senior-level attorneys with oversight responsibilities) and staff attorneys. The law department is headed by the General Counsel (GC), who typically also serves as the Chief Legal Officer of the company. The GC typically advises the Board of Directors and the corporation’s officers in all legal proceedings. The GC often reports directly to the Chief Executive Officer and is considered an essential component of the management team.3 Senior attorneys are charged with supervising lower-level staff attorneys, advising the company in one particular field of law, or supporting the GC in coordination with outside counsel on litigation matters. Staff attorneys, similar to junior associates at law firms, are typically assigned research-oriented tasks or are asked to provide support for the senior staff attorneys. A few law departments have removed this hierarchy by eliminating these titles. Thus, with the exception of the General Counsel, attorneys are referred to as corporate counsel.

Why is it important to have an in-house counsel?

It is imperative that in-house counsel fully understands the complexities of a company’s business as well as the respective industry to best serve their client. 24 In-house counsel have the luxury of being able to approach business problems without having ultimate responsibility for resolving the matters. This objectivity enables counsel to contribute meaningful suggestions to be used in resolving complicated business questions. In-house counsel can utilize their unique position within the organization’s structure to play an integral role in the strategic planning of the company’s business.25 Counsel can provide legal insight that might otherwise never be addressed from more business-oriented directors.26 In-house lawyers are not constrained in their opportunities for advancement within a corporation. The significance of a legal degree in today’s corporate environment is invaluable, enabling counsel to “act as both senior-level manager and as legal adviser” 27 and to move from a strictly legal position to one in the upper levels of corporate management such as Chief Executive Officer (CEO), Chief Financial Officer (CFO) or a member of the Board of Directors. In a 2001 ACCA poll, 11 percent of in-house counsel respondents served as CEO, six percent served as CFO, and another seven percent served as Chief Operating Officer.28 In addition, 5 percent served as head of a business unit and almost 25 percent served as head of a Human Resources Department. By combining knowledge and understanding of the legal side of the business with a strong grasp for the business operations of a company, in-house lawyers can maximize their own value to the corporate entity.29 It is this value that eventually leads to advancement outside of the legal department.

What is in-house counsel?

Unlike lawyers at a typical law firm, in-house counsels have one and only one client—the corporation.4 They do not represent the board of directors, principal officers, or other individuals, even though those individuals act on behalf of the corporation.5 As Model Rule 1.13(a) provides, “A lawyer employed or retained by an organization represents the organization acting through its duly authorized constituents.”6 This means that in-house lawyers are affirmatively obligated to advance the needs of the corporation over that of an individual officer or director if the latter is in conflict with the corporations’ best interests. 7 The lack of divergent and/or conflicting alliances benefits both counsel and the corporation. Individual attorneys never need to assume the role of rainmaker, or concern themselves with bringing new business into the firm. Eliminating this responsibility allows attorneys to focus their energy and efforts completely on the corporate client.8 Not only does this create a less stressful working environment for counsel, it benefits the corporation because it receives the full attention of its attorneys. This focus also allows counsel to understand the dynamics of the company and fosters an intimate familiarity with full range of issues faced by the corporation. This insight is integral to counsel’s ability to proactively protect the company’s legal interest and craft the most aggressive and effective defense in the event of litigation.

What is corporate counsel?

About two decades ago, corporate counsel functioned essentially as conduits between their employer, the corporation, and outside law firms, which meant that the position was a bastion of neither power nor influence.9 With work confined primarily to corporate housekeeping and other routine matters, the corporate attorney was little more than a glorified middle management with a law degree.10 However, the rising cost of legal services has seen an expansion of corporate counsel’s responsibilities.11 Now, as many organizations have legal departments that rival law firms in both size and qualification,12 more and more corporate matters are being handled in-house.

What law schools offer in-house counsel?

As more attorneys pursue in-house counsel careers, a growing number of law schools such as Syracuse University, University of Houston, and Pace Law School, are offering law classes focusing on training future in-house counsel.79 Many of these programs seek to prepare these future attorneys to tackle the issues that are most common in corporate practice–contract negotiations and internal investigations–as well as the unexpected issues that may arise in the natural course of business (mergers, SEC investigations, etc.). Additionally, in-house practitioners are often invited to speak as guest lecturers, providing an occasion for students to obtain career advice, learn more about the profession, employment or internship opportunities.

What is Microsoft copyright division?

The division has a rare and immediate opening for an experienced copyright attorney to work on cutting-edge intellectual property legal issues. This attorney will share responsibility with Microsoft's other copyright lawyers and professionals for the company's worldwide copyright legal practice. This role involves counseling on copyright and trade secret legal issues involving software, PCs, mobile devices and Internet services.