Tuesday, March 15, 2011

Outsourcing law jobs: a vast pool of unemployed highly skilled lawyers available?

Within a post titled IP & legal professions on demand, an emerging trend, one finds the text:

Now that there is a vast pool of unemployed highly skilled lawyers available, US law firms have also been hiring project-based attorneys for substantive work. Klinghoffer and Richter confirm, at least anecdotally, that this is in fact happening. This raises the question whether this new trend will remain solely a US phenomenon that will disappear when business picks up again.
In this author’s view, the answer is “no” for one simple reason — advancements in information technology, project management software, extranets, and web-based tools are lowering barriers to assigning work on a project basis to a level approaching that of calling upon full-time internal staff. Externally hosted secure electronic workspaces are already available at moderate cost that enable access to, and accountability for, project documentation, communications and work-in-progress without the issues associated with granting access to a corporate or law firm network or intranet. These advances are putting in-house corporate counsel and law firms in an unprecedented position to hire skilled talent from around the world to cost-effectively address client requirements in a highly targeted manner.
When one has successfully worked with freelancers internationally via the Internet as this author has, obtaining skilled services as a commodity on the Internet does not seem like such a foreign concept. The author has found that the quality, timeliness and usability of each freelancer’s work product generally exceeded expectations for a fraction of the cost from a traditional source.

A question arises: what is the traditional source? In the first example, the "traditional source" is outside legal counsel, specifically outside law firms. Another question arises, who are Klinghoffer and Richter? As discussed below, they are mobilizers of the vast pool of unemployed highly skilled lawyers. What's best for you? Determining who can do the job best. If outside counsel doesn't know your technical area and has to read up on the relevant patents, they probably are not right for you. Here's the first example from the IPEG article:

Due to an increase in reporting and management responsibilities, in-house chief patent counsel has not had time to meet with employees on a regular basis to harvest inventions, leading to a decline of invention reporting and filing of patent applications. While the company’s outside counsel would have been willing to offer this service, it is not experienced in ferreting out inventions. Paying outside counsel for learning by doing would have been risky and potentially cost-prohibitive. In-house counsel hires a former in-house counsel with extensive experience harvesting inventions and drafting patent applications as project-based counsel with the help of an agency. The company begins to reestablish its exclusivity via patent protection based on the harvested inventions while in-house patent counsel continues to concentrate on providing strategic advice to company management.

Important text here is Paying outside counsel for learning by doing would have been risky and potentially cost-prohibitive.

The second example is also an argument against using outside counsel:

An investment group is interested in investing in a promising European start-up company. The law firm advising the investment group would like to conduct the due diligence on behalf of the investment group, but does not have a patent attorney with expertise in the start-up company’s technology to conduct the technology protection and freedom-to-operate due diligence. The law firm is initially faced with an dissatisfying choice between (a) trying to teach outside patent counsel how to conduct patent due diligence on the fly and (b) asking one of their competitors to team up with them.
Through an agency, they are able to hire an independent multilingual project-based patent attorney with substantial IP due diligence experience and appropriate technical background at a daily rate well below the corresponding hourly rate charged by local counsel.

Once again, the problem with outside counsel is a lack of expertise.

The third example:

A company conducts an internal audit to determine whether there are any weaknesses that should be addressed prior to launching a campaign intended to attract companies and investment groups for a buy out proposition. The auditors report that they are not able to verify any systematic approach toward protecting the confidentiality of unpatented proprietary know-how which the company claims is the basis for its dominant position in the market. They also found that there is apparently no system in place to prevent illegitimate use of know-how belonging to its competitors.
They recommend that the company take measures to identify the know-how in its possession, determine its source, and implement specific measures to protect its own know-how and segregate that know-how from know-how covered by third party nondisclosure agreements. The auditors and the company’s legal counsel conclude that they do not have the required combination of technical and legal expertise to carry out this recommendation in a timely and cost-effective manner.

Once again the recommendation is to go to an agency. This time there is no mention of outside counsel -->

A project-based IP legal professional with the appropriate technical and legal background, obtained via an agency, conducts the know-how audit on-site and submits a complete report, including some suggestions on how to ensure compliance based on industry best practices.

Returning to the initial observation -- unemployed highly skilled lawyers available --, one infers that there were a lot of "highly skilled lawyers" doing valuable IP tasks but they are not working for your typical "outside counsel."

Melanie Klinghoffer and Greg Richter wrote Project-Based Attorneys Make More Sense Than Ever
If you were wondering, Melanie Klinghoffer is managing director of the Washington, D.C., office of Inside Edge Legal, an affiliate of legal search firm Major Lindsey & Africa that provides highly skilled project-based attorneys and specialized paralegals to law firms and corporate legal departments.Greg Richter is regional practice manager for the in-house group of Major Lindsey & Africa and global practice leader for Inside Edge Legal.

And, finally, within the above-discussed article [IP & legal professions on demand, an emerging trend ], one finds

Agencies that have developed a pool of legal professionals available for project-based work include Inside Edge Legal (an affiliate of Major, Lindsey & Africa), JuriStaff, GenCounsel, Adecco, CPA Global, Firm Advice, Legal Placements, Kelly Law, Lumen Legal, Pat Taylor, Project Counsel and IP Hire.


Post a Comment

<< Home