Creating the Perfect Partnership: In-House and Outside Counsel Relations During the Global Recession. June 12, 2009 London, UK

Size: px

Start display at page:

Download "Creating the Perfect Partnership: In-House and Outside Counsel Relations During the Global Recession. June 12, 2009 London, UK"

Cecil Jordan
6 years ago
Views:

1 Creating the Perfect Partnership: In-House and Outside Counsel Relations During the Global Recession June 12, 2009 London, UK Final Program & Sponsor List GOLD SPONSORS

2 Creating the Perfect Partnership June 12, 2009 London, UK Welcome to the Creating the Perfect Partnership: In-House and Outside Counsel Relations During the Global Recession program. Your registration envelope contains your badge, the Final Program and the Evaluation Form. Admittance to sessions, luncheon and reception is by badge only, so you must wear your badge at all times during the meeting. Please refer to this program agenda for session times. Kindly complete the enclosed Evaluation Form after the program and return it to the INTA registration desk.

3 Exceptional topics, faculty and presentations have come to distinguish INTA programs and earn them an unmatched reputation in the field of trademark law and practice. INTA owes this achievement to the many volunteers who so willingly contributed their time and energy to this effort. INTA would like to thank the Project Team for its excellent work in planning and presenting the Creating the Perfect Partnership program. Chairpersons: Joseph Norvell, Norvell IP llc. (United States) Célia Ullmann, Philip Morris International Management SA (Switzerland) Project Team: Katrina Burchell, Unilever P.L.C. (United Kingdom) Ingrid Desrois, Ingrid Desrois (France) Tove Graulund, Zacco (Denmark) Dolores Moro, BATMark Limited (United Kingdom) Paul Rawlinson, Baker & McKenzie (United Kingdom) Michael Schaeffer, Harmsen & Utescher (Germany) David Stone, Simmons & Simmons (United Kingdom) Emma Stopford, GlaxoSmithKline (United Kingdom) Scott E. Thompson, Greenberg Traurig, LLP (United States) Verena von Bomhard, Lovells (Spain) INTA Staff Liaisons: Ann Eng, Director of Education Paula Lee, Senior Exhibits & Sponsorship Planner

4 FRIDAY, JUNE 12, 2009 Creating the Perfect Partnership June 12, 2009 London, UK FINAL PROGRAM 8:00 a.m. 9:00 a.m. Registration and Continental Breakfast 9:00 a.m. 9:30 a.m. Welcome and Introduction INTA President: Richard Heath, VP Legal - Global Anti-Counterfeiting Counsel, Unilever P.L.C. (United Kingdom) Co-chairs: Joseph Norvell, President, Norvell IP llc. (United States) Célia Ullmann, Assistant General Counsel, Philip Morris International Management SA (Switzerland) 9:30 a.m. 10:30 a.m. MEETING IN-HOUSE COUNSEL EXPECTATIONS WHEN OUTSIDE COUNSEL BUDGETS ARE TIGHT In-house legal departments retain outside law firms to handle overflow, to gain specialized expertise that in-house staff lacks, to reduce personnel-related overhead expenses, to have local legal representation in different countries, to coordinate local counsel in different countries for complex matters, or to overcome conflict of interest problems. Outside counsel is expected to be an extension of the corporate legal department and work in sync with it; however, the synchronization can sometimes be difficult to achieve, particularly when companies are on tight budgets. Can there be disconnects between in-house and outside counsel? Is there a meeting of the minds regarding expectations? What factors affect how each side operates?

5 10:30 a.m. 10:45 a.m. Refreshment Break What tools can be used to help facilitate communication between in-house and outside counsel on budgets and fees and to monitor work progress? Panelists will discuss this conundrum and explore ways to resolve it successfully. Katrina Burchell, Head of Trade Marks, Unilever P.L.C. (United Kingdom) Speakers: Dolores Moro, Head of Intellectual Property, BATMark Limited (United Kingdom) Michael Schaeffer, Harmsen & Utescher (Germany) 10:45 a.m. 11:35 a.m. OUTSOURCING LEGAL WORK WHILE ON A BUDGET TO OUTSIDE LAW FIRMS More and more companies are facing budget constraints on work farmed out to outside law firms for a variety of reasons. At the same time, in-house staff reductions may require additional outsourcing. It is critical that law firms understand the considerations behind the practice, avoid the potential ethical pitfalls, and develop an effective communication and monitoring system so that the client can provide guidance as needed and does not get surprised with unexpected legal bills. Topics include: What is outsourcing? Who is doing it? Can outsourcing reduce costs? What type of work lends itself to outsourcing? What are some of the possible ethical issues? How can you monitor and safeguard the cost of legal work that is outsourced? If your company is considering outsourcing some of its legal work, what should it look for in making the selection? Katrina Burchell, Head of Trade Marks, Unilever P.L.C. (United Kingdom)

6 Speakers: Tove Graulund, Acting Director Trademark & Legal, Zacco (Denmark) Paul Rawlinson, Partner, Baker & McKenzie (United Kingdom) 11:35 a.m. 12:25 p.m. PREPARING A WINNING RESPONSE TO A REQUEST FOR PROPOSAL (RFP) WHEN LEGAL BUDGETS ARE BEING SLASHED 12:25 p.m. 1:30 p.m. Networking Luncheon More and more companies are utilizing the RFP process to select outside counsel, particularly in this time of belt-tightening. While it s a useful method for the company to reduce legal fees, it s a daunting task for the law firm. Consequently, law firms should carefully choose the right opportunities to pursue. What questions should the law firm ask itself when evaluating whether to bid on an RFP? What questions should the firm ask when responding to an RFP? What basic steps should be followed when preparing the RFP? On the receiving end, what is the company looking for in the process? Are alternative billing arrangements expected? What are the turn ons and the turn offs? Is it all about fees these days? What about quality of service? In the end, the winner will be the firm that understands what the client wants and demonstrates a superior ability to deliver it. Joseph Norvell, President, Norvell IP llc. (United States) Speaker: Shelley Duggan, Associate Director & Associate General Counsel, Procter & Gamble (United Kingdom) 1:30 p.m. 2:30 p.m. GETTING THE MOST FROM FOREIGN ASSOCIATES Corporations engage the services of law firms throughout the world to represent their interests and protect their trademarks. Foreign associates can add credibility to the case, provide unique expertise and resources as well as local knowledge and connections, and can sometimes be more cost efficient. What factors do you look at when selecting foreign associates? When should you engage a foreign associate instead of making a trademark filing via the Madrid Protocol? How do you measure the candidate s expertise? Do you focus your sights on the individual attorney who would be working with you or do you consider the firm as a whole? How do you settle on a fee arrangement?

7 2:30 p.m. 2:45 p.m. Break Does the country of the law firm you are considering have an appropriate confidentiality rule? Once the firm is on board, how do you maximize your return? David Stone, Partner, Simmons & Simmons (United Kingdom) Speaker: Emma Stopford, Vice President & Trade Mark Counsel, GlaxoSmithKline (United Kingdom) 2:45 p.m. 3:30 p.m. HOW OUTSIDE COUNSEL CAN GET TO KNOW THE BUSINESS OF THEIR CLIENTS Getting to know your client better is not just about playing a round of golf or taking them to a ball game. In-house counsel expect outside counsel to possess a level of knowledge about the company and its economic needs that only full time in-house staff has a chance of equaling. Find out how well you know your clients and what you should do to get to know them better. Speakers will go through a series of questions to help you determine if you know your client well enough to adequately protect their interests in a cost-efficient manner. Scott E. Thompson, Shareholder, Greenberg Traurig, LLP (United States) Speaker: Célia Ullmann, Assistant General Counsel, Philip Morris International Management SA (Switzerland) 3:30 p.m. 4:30 p.m. PROVIDING EXCELLENT SERVICE TO IN-HOUSE CLIENTS DURING TOUGH ECONOMIC TIMES In today s economy, simply providing legal services may not be enough to retain clients. In this session, learn tried and true methods for satisfying the needs of in-house clients, whether that is enough. Verena von Bomhard, Local Managing Partner, Lovells (Spain) Speaker: Eric L. McFadden, Senior Legal Counsel, CGI Technologies and Solutions Inc. (United States)

8 4:30 p.m. 4:45 p.m. Break 4:45 p.m. 5:45 p.m. OPEN FORUM / IDEA EXCHANGE Topic: HOW TO NAVIGATE IN A TROUBLED ECONOMY Participate in a lively, interactive panel discussion on how corporations and law firms worldwide are reacting to the hurting economy and the tough decisions and sacrifices they face. Discussion will include: How are companies and law firms coping? What kinds of adjustments are being made, and is it appropriate to ask law firms for discounts or rate reductions? How should outside counsel respond to requests for discounts or rate reductions? Have any of these adjustments turned out to be more efficient ways of handling things than before? How has the downturn in the economy, including staff or attorney layoffs, affected your ability to attract and maintain corporate clients? What can outside trademark counsel do to assist in-house counsel to function more cost-efficiently and effectively? Can standard trademark searches or filings be omitted or delayed due to budgetary restraints? What advice can in-house counsel give to law firms about business development techniques from a recipient s standpoint? When is too much marketing too much? Facilitators: Joseph Norvell, President, Norvell IP llc. (United States) Célia Ullmann, Assistant General Counsel, Philip Morris International Management SA (Switzerland) 5:45 p.m. 6:00 p.m. Adjourn 6:00 p.m. 7:30 p.m. Cocktail Reception

9 SPONSOR LIST

10 GOLD SPONSORS Profile: Trademark Research Services CT Corsearch, a Wolters Kluwer business, provides innovative solutions for trademark clearance and protection that combine the highest quality data, reliability, and completeness in the industry. Corsearch continues a tradition of distinction that s been their hallmark for over 60 years with the 2009 introduction of the next generation of the ground-breaking Corsearch Advantage platform: A2. This revolutionary release boasts advancements that once again promise to transform the way in which trademark professionals work. We would welcome the opportunity to demonstrate the latest in search review with the ability to launch investigations on records of interest and worldwide screening boasting the most trademark databases in the industry. FAIRWINDS PARTNERS is the leading authority in online traffic optimization and domain name, Web, and online trademark enforcement strategies. As a full service Internet strategy consulting firm, FairWinds Partners is comprised of proven experts with extensive experience advising the Fortune 500 and other leading brand owners on the implementation of best practices and research-based strategies to achieve online business goals. FairWinds Partners delivers tailored solutions that help clients reduce costs, grow revenues, and realize their full online potential. Fortune 500 companies, industry leaders, and professional organizations worldwide have recognized the firm s thought-leadership and expertise. FairWinds Partners was founded and is run by Josh Bourne and Phil Lodico. We at NetNames are World-leading experts in corporate domain management and online brand protection. NetNames is a global organisation and as part of Group NBT is a publicly listed company with an annual turnover in excess of 40m and over 300 employees. We are responsible for managing and protecting online brands for international corporates including many Fortune 100 companies and over 30% of the FTSE 100. Through our domain name management and comprehensive brand protection services, we have the best people and products in key global locations to effectively manage your domain names and protect your online brands from counterfeit and infringement.

IN-HOUSE TRADEMARK COUNSEL'S WORKSHOP MARCH 20, 2006 WESTIN MICHIGAN AVENUE CHICAGO, IL

IN-HOUSE TRADEMARK COUNSEL'S WORKSHOP MARCH 20, 2006 WESTIN MICHIGAN AVENUE CHICAGO, IL Welcome to INTA s 2006 In-House Trademark Counsel's Workshop Your registration envelope contains your badge, attendance