Panellists at LSPN North America Spring
14 May 2024AmericasMarisa Woutersen

LSPN Spring: ‘Outside counsel teams must match partner's strength’

An LSPN panel discusses the challenges and strategies for effective collaboration between in-house counsel and outside legal teams, stressing the importance of communication, strategic planning, and clear expectations.

Industry experts discussed the challenges faced by in-house counsel when working with outside legal teams at LSPN North America Spring.

Collaboration, communication, and strategic planning were the top recommendations by in-house counsel from Regeneron, the Broad Institute of MIT and Harvard, and Bristol Myers Squibb on a panel discussion at the event, on May 8, 2024.

In effectively managing relationships with outside counsel, communication and education about the business's needs are essential, the panel noted.

Teofilo Javier, senior counsel at Bristol Myers Squibb, stressed the importance of early interaction with outside counsel to provide them with a clear understanding of the organisation's programmes and sensitive issues.

However, “a good outside counsel does their homework before the first call to get their feet into the technology”, he said.

Sometimes, outside counsel may not have access to all the information and that is when it is important for in-house counsel to educate.

Nicole Mastrangelo, IP counsel at the Broad Institute of MIT and Harvard, stressed the importance of providing proper information to outside counsel from the very beginning.

"I like to have an initial call with outside counsel to go over the invention, the subject matter, and provide them with all the data,” Mastrangelo said. “This sets up the stage so that they can draft and have your comments regarding strategy and where you want to go.”

Adam Gastonguay, director and patent counsel at Regeneron, highlighted the ongoing effort required to keep outside counsel up to speed on business developments.

"I’ll send them press releases when they come out, just in case they're not actively looking for research sometimes.”

He added: “It's a lot of work, but if you want that good collaboration and have them be on top of it and give you good first drafts, they need to know those things.”

Expectations from outside counsel

Bindu Donovan, partner at Desmarais and panel moderator, led the discussion into expectations from outside counsel.

Javier highlighted the necessity of constant communication and availability, saying, “Here's my cell phone, here’s my email, please be in constant communication on anything that may arise that is problematic."

He stressed the importance of knowing the entire outside counsel team, not just the main contact partner, to ensure effective communication.

"The team has to be as strong as the partner," Javier added.

Donovan echoed Javier, adding that the work will be read by multiple stakeholders within the organisation, not just the primary attorney.

“It's important to remember that in-house counsel are accustomed to the touchpoints that are within their company, but it is important to note that with the work being read by numerous stakeholders—not everyone may fully grasp the comments being made,” Donovan said.

Gastonguay underlined the need for outside counsel to understand the business's expectations and the importance of collaboration.

And Mastrangelo explained how setting up guidelines to align expectations with outside counsel, ensuring everyone knows when and how tasks need to be completed is a good mechanism.

“That way, we're all aligned and they know exactly when we want something and how we would like it done,” she said. “I think it really aids in our collaboration and pushing the portfolio forward.”

Effective communication, clear guidelines, and understanding of expectations are vital for a successful collaboration between in-house teams and outside counsel, the panel said.

Balancing in-house and outside counsel for cost-effective processes

Donovan asked about the decision-making process for keeping certain tasks in-house rather than outsourcing them to outside counsel, and what factors inform those decisions.

Gastonguay responded, highlighting the importance of time and cost-effectiveness.

"It's obviously cheaper to draft the claims in-house,” Gastonguay said.

He emphasised the need to be strategic, especially in foreign actions, where outside counsel might be needed. He suggested that such decisions should be made on a case-by-case basis.

"Letting outside counsel choose their foreign associates can facilitate seamless collaboration and communication," Mastrangelo suggested.

Donovan then raised a question about working with multiple law firms on a single matter and how to keep the process streamlined, avoiding duplication.

To avoid duplication when working with multiple law firms and keeping the process streamlined, Mastrangelo advocated for a good working relationship between external counsels and foreign associates.

“That way, we can still save time, money, but the two counsels are working together synchronously," she said.

Donovan also provided a litigation perspective, emphasising the importance of consistent positions across multiple jurisdictions.

"Ensuring consistency in legal positions across different regions is crucial, especially in high-stakes litigation with a global strategy," Donovan explained.

She emphasised the role of in-house counsel in coordinating positions to ensure consistency.

For more information on LSPN Fall 2024 in San Francisco, contact:

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Conference Producer: Hannah Gore

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