An In-House Counsel View on Patent Strategy and Building Relationships | IPWatchdog Unleashed

This week on IPWatchdog Unleashed, our conversation takes us in-house to discuss patent strategy and insights on how outside counsel can best work with in-house counsel to build a solid working relationship and actually deliver what the client wants and needs.

My conversation is with Gary Lobel, who is currently senior patent counsel for Reckitt, where he is responsible for global legal and intellectual property matters for several different business units within the Reckitt family. In this role, Gary plans and implements global intellectual property strategies in the area of biotechnology, pharmacologic and nutritional formulations. He works with in-house constituencies, evaluates opportunities for potential partnerships and acquisitions, and he manages outside counsel working on both patent procurement and litigation. Prior to joining Reckitt, Gary was Chief Patent Counsel for Nestlé, and he also worked early in his career as a patent attorney at Novartis.

I always enjoy my conversations with Gary. He is extremely bright and thoughtful. I find that every time I speak with Gary I learn something, and our conversations often go down paths I didn’t expect but are always interesting and informative. Gary has a knack for seeing all sides to every issue or problem as if he is constantly playing a game of 3D chess and is at least several moves ahead.

We had a wide ranging conversation on patent strategy, including working with patent examiners—for example, what to do when you are assigned to a difficult patent examiner with a low allowance rate—the importance of interviews, tips for getting past 112 rejections, and much more.

“One of the big ones is value for dollar,” explained Lobel when discussing the topic of what differentiates outside counsel. “Are they giving you the value for the dollar that you’re paying them?”

“Years ago, I met somebody at a seminar. He was building his clientele. It was earlier in his career. And he said, if you have a case you’re having trouble with, let me look at it. No charge. I’ll make some suggestions. If you like us, give us a chance after that. He was great. And his advice to me was, ‘you’ve done everything I would have done. Now we need to think outside the box and here’s some ideas,’” Lobel explained. “I’m still using him in another company… And I’ve referred them to people that I know that are in other companies.”

We also spent a good portion of our time discussing the many problems that can and do come up when communications break down. Like ships passing quietly in the night, if outside counsel and inside counsel are not on the same page, the work product isn’t nearly as good, and sometimes can lead to protection that is unnecessary and unhelpful.

“I’ve known in-house counsel that don’t want to talk to the outside counsel because they don’t want to get billed for the half hour,” Lobel explained. “But the in-house counsel a lot of times need to know what the invention is, what the product is. Because at the end of the day, the patent application may show the nose of the elephant, but really you’re trying to patent the elephant.”

To hear this entire conversation, listen wherever you get your podcasts (links here) or visit IPWatchdog Unleashed on Buzzsprout.