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What In-House Counsel Want Part II: Our Interview with Global Head Trademarks, Novartis Pharma AG

What In-House Counsel Want Part II:
Tips for IP Professionals Serving In-House Counsel

Myrtha-Hurtado-RivasIn March of this year, I interviewed Myrtha Hurtado Rivas, Global Head Trademarks, Domain Names & Copyright, Novartis Pharma AG. It was a chance for us to STEP IN to the shoes of in-house counsel. Below is part of my interview with Myrtha wherein she shares her concerns, requirements and tips for IP professionals serving in-house counsel. The full interview was published in the INTA issue of The Trademark Lawyer Magazine.

What Do You Want More Of?

KS: Myrtha, you have spent almost 10 years as in-house counsel for pharmaceutical companies and, as such, work every day with counsel from around the world. What is the one thing you wish you saw more of from your foreign associates?

MHR: What we are missing the most is people being proactive with updates on changes to the law. Receiving a personalized email that acknowledges who I am and provides me with useful information such as, “We know you are the leader of the Trademark Group. Are you aware that our law is undergoing changes in Sri Lanka regarding x topic? Attached is a short memorandum”, is like gold from heaven. I would like to see all of my Agents actively keeping me informed of the changes in their jurisdiction that will have an impact on the future of my business.

What Do You Want Less Of?

KS: What are the things that you wish you never saw from your Agents?

MHR: There are two things that I wish Agents never did: 1. Ignore protocols we have put into place; and, 2. provide legal opinions that are not concise and to the point. We spend a lot of time putting protocols in place to make our work more efficient and ensure nothing falls through the cracks. These include simple things like what to put in the subject line of emails to us, how to invoice us etc. We ensure all of our Agents have this information and still, some of them do not follow these simple guidelines. Also, we ask for concise answers to our questions that include recommendations for next steps, timing and costs. We do not need to see wording from legislation or excerpts from jurisprudence copied and pasted into legal opinions. We assume recommendations are based on solid reasoning.

Who Do You Want To Correspond With?

KS: Many of my clients worry that if the initial contact was made with them, as Partner of the Firm, you expect to receive all further correspondence from them or that they should be actively overseeing or at least copied on the work that is done. Is this true?

MHR: No. We try to make sure that people understand that it’s actually not about giving us the honour of following our cases. I always tell our Agents, “I assume that the right person at the right level is doing the job.” I don’t want an attorney typing an invoice but, at the same time, I don’t want an inexperienced paralegal reviewing a search. We only want to pay for the person who is really executing the job. If I see that the Managing Partner of the law firm is copied, I always ask, “Am I going to be billed for the Managing Partner reading those emails? I hope not.”

Most important for us is that the name and phone number of the person who is actually doing the work is at the bottom of any email. I don’t want to call the Managing Partner and hear, “I have to get an update from the Associate who actually did the work”. I want to know that whenever I pick up the phone, my time is well invested and my call goes straight to the right person.

KS: So, I guess you do not want to receive emails from generic email addresses such as “info@xxx.com?

MRH: Yes, that is generally true. I would make an exception with respect to those processes that we have tried to automate. If such matters come out of a generic inbox, and go to a generic inbox on our end, I am fine with that as long as I know who is responsible at the Agents end for managing the process. In that regard, we share our organizational chart with our Agents and we request that our Agents do the same. You will be surprised that many Agents do not do so even if they are asked 3 or 4 times. So, it’s interesting that there appears to be a certain reluctance to disclose clearly who is doing what.

What Has The Greatest Influence on Your Decision to Retain/Keep Outside Counsel?

KS: When looking for new counsel or deciding whether to stay with existing counsel, what influences your decision?

MRH: One of the tipping point questions for us when reviewing counsel now, is: “How have you worked on increasing efficiency within your Team in the last two years?” (For example, limiting the amount of correspondence, limiting docketing items etc.). Basically, we want to know what processes and tools they are using to increase efficiency and what is the benefit to us. Sadly, it is my experience that 50% of law firms outside of North America and Western Europe, never work on this. I want to work with counsel, especially on the prosecution side, that are working from a “Six Sigma” type, “Lean” perspective. I want to see them push the envelope every year to see how they can be working with less people, which will mean less cost to us, of course.

I look much more favourably upon those Firms that have been proactive and come to us with discounts based on increased efficiency then those Firms who simply give us a discount when we ask for it. For me, it really comes down to having a proactive attitude and it starts with prosecution but I have found that with law firms with this approach, it percolates to litigation, to conflicts and to everything else. That is how you can differentiate between a good Firm and an excellent Firm.

KS: And that is why, as you have told me in the past, you are very open minded about working with smaller Firms, correct? Provided they are using the processes and tools to be able to handle your bandwidth with less people?

MRH: Definitely, I think small doesn’t mean bad. I think small Firms just need to be very transparent with respect to how much work they can handle. It has happened in the past that a small Firm will pitch not just to work with my division but also want to handle the portfolios of other divisions. Sometimes they are just too eager and it has caused us to drop them because we don’t feel safe. But generally speaking, I like working with small Firms of at least 15 people or more, provided they have the requisite expertise. Often such Firms are run by people who have left bigger Firms and want to offer something different/better. To me this is a good sign.

KS: Thank you so much for your time and candor, Myrtha. It has given us a chance to see what it is like to be in your shoes and how outside counsel might be able to assist you better.

Want more tips about working with in-house counsel? Go here: How To Turn You New Client Into Your Best Business Development Asset.

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