Total law firms retained ought to exclude foreign IP agents and purely local litigation counsel

Whenever law departments respond to survey questions that ask, “How many law firms did you retain last year?” I wonder whether the numbers they give are somewhat inflated or misleading. Two kinds of law firms that departments might add in give me pause on such metrics.

In many countries, a patent applicant must hire a firm admitted to practice before the country’s patent agency. A company with a widespread patent portfolio could easily add 100 or more firms for that reason alone (See my post of July 31, 2005 about European trademark applications and electronic filing.).

The number of external counsel on a law department’s roster often includes small firms that serve as mail drops and local contacts in litigation. But those firms are pro forma, paid little, and may be used for only a single case.

Like patent counsel, local counsel can swell the reported number of firms used by a law department, but those two sets of firms have very different characteristics than the other counsel retained.

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