On-Demand In-House IP Counsel Program

Who:  On-demand in-house IP counsel are all attorneys with distinguished experience working as in-house IP counsel for high technology companies. Many are former chief or senior patent counsels for some of America’s most prestigious technology companies. Clients range from emerging growth companies that do not yet have any in-house counsel, to large corporations with well-established IP groups.

What: On-demand in-house IP counsel fulfill a number of needs of corporate legal departments, including but not limited to: temporarily staffing open positions until they are filled, providing part-time on-site support for critical IP functions, staffing short duration projects requiring in-house or other particularized expertise, for instance handling an integration process or setting up a new invention disclosure harvesting process, and covering for attorneys out on family leave or for other reasons on a short term basis. 

Where:  On-demand in-house IP counsel typically work on site for a client, but sometimes remotely, and are available by e-mail or phone as needed when not on-site.

How:  On-demand in-house IP counsel work for corporate clients on a full time or part time temporary basis, for durations typically ranging from a few months to up to two years. Because the corporate client commits to a substantial block of the on-demand counsel’s time, it is more economical than hourly billing. The on-demand in-house IP counsel agree to be on-site and on-call, at a minimum, for the number of hours agreed upon with their client. These counsel can all perform the typical duties of an in-house IP counsel, but, as a rule, do not draft patent applications, although they will review and supervise patent prosecution. On-demand in-house IP counsel are contracted to customers independently of the Schwegman firm, so counsel are free to act independently of the firm.

• • • Provide in-house IP counsel services on a fractional basis
    • Managing ongoing IP litigation matters
    • Managing prosecution on ongoing basis
    • Serve on patent committee to assist in reviewing and selecting disclosures for patenting
    • Set up internal IP processes or department
    • Assist with strategic IP deals such as major cross-licenses
    • Assist in selecting permanent in-house IP counsel
    • Supervise large product roll outs or freedom to operate projects
    • Prepare a company for a sale or funding round