This week we sit down with Nick Finnie, who has worked both for private practice and for a number of companies in the pharma/biotechnology and related space.
RH – Could you share some of your experience and strategies for managing your in-house work?
NF – Sure, I think one key thing an in-house attorney does is learn how to manage both outside counsel and internal clients i.e. management/IP stakeholders. For the former you need to be able to maintain a good flow of information so that they translate the strategy properly into sound IP protection and advice. Value for money is also important. So an ability to manage budgets, give clear instructions as to the scope of work, as well as review costs in a systematic way is a useful skill. You also want to be a good client that outside counsel want to work for. So cost management ideally needs to be done in a way that works for both parties.
RH - And internally?
NF – You need to acquire a really strong commercial understanding of the business by digging deeper than would be the norm for outside counsel – this is one of the key requirements of my job. You need to know the internal portfolio of IP assets, where they align with product lines, where the strengths and potential issues are; but similarly a good understanding of your competitors. Patents provide a very comprehensive source of knowledge, so I have learned how to construct search strategies effectively, to review large numbers of patents efficiently, and to report my findings in ways that meet my internal clients’ needs. Not only establishing freedom to operate but also understanding the competitor landscape. Then you need to be able to convey all of this to different types of internal clients. In-house departments also spend time on developing consistent practices across the team, thinking about wider policy issues and trying to see how internal practice and strategy needs to be adapted to recent developments in law and the industry.
RH – What has changed over your career?
NF – In very general terms, I think business people have become more aware of the importance of IP. There is greater understanding of IP, how to build IP into business decision making. Access to patent information is now easier than ever and I am often sent third party patent filings by the R&D team to review.
Even those who don’t like IP usually acknowledge its importance in my industry sector!
What is not often appreciated by those who are not in the role is that to be good as an in-house attorney, you have to do a lot of internal marketing, and be as good at building internal relationships with the many different internal clients you work with as outside counsel are at business development. Whilst internal clients may not be able to go elsewhere that doesn’t mean you don’t have to “sell” your services so that you can provide a really good service to the business. The client relationship is still very important.
RH – Thank you very much Nick.