Role of Outside Counsel in Academic Settings
By Joshua Goldberg, Co-Managing Partner
Outside counsel plays a central role in university patenting activities, as most TTOs rely heavily on external firms for patent application drafting and prosecution. Effective coordination between TTO staff, inventors, and outside counsel is essential.
Outside counsel must be able to communicate effectively with academic inventors, extract relevant technical information, and translate legal requirements into clear guidance. Providing contextual information about the new technology and commercialization strategy improves the quality of work.
Clear role definition is important: TTOs typically manage strategy and inventor relationships, while outside counsel handle prosecution. Preparation of inventors before interviews can improve efficiency and reduce time burdens.
