1. 1 20 Sept 2004 1 1 ITT Industries What In-House IP Counsel For Defense Contractors Look For From Outside Counsel Presented to: Patent Lawyers Club of Washington Thomas M. Blasey General Patent Counsel, ITT Defense

2. 2 20 Sept 2004 2 2 The Simple Answer: The same things that most in-house counsel look for!

3. 3 20 Sept 2004 3 3 The Stereotypical Answer: Blue-ribbon service for less

4. 4 20 Sept 2004 4 4 What are the real answers?  The real answers relate to understanding the contact, the client and the issue(s).  The real answers require excellent communication between inside and outside counsel.  So, what are the real answers?

5. 5 20 Sept 2004 5 5 Real Answer #1: Know Your Contact  Is your contact a “principal”, or an “agent”?  Thoroughly understand company structure and contact’s role in it.  Don’t assume your contact is like other clients- one size does NOT fit all.  “Wrong size” is an effective way to offend.  Beware of assumptions you carry with you from other clients.  Note: different roles for different issues!  Best done up front, but it’s never too late.

6. 6 20 Sept 2004 6 6 Real Answer #2: Know Your Client  What kind of organization is this?  What is the business/industry environment?  IP value is very different between: start-ups, consumer products companies, Gov’t contractors, IP licensing companies.  The same can hold true for different business units within the client.  What is their specific IP strategy within their industry?  How are IP assets used?  Understanding this is key to showing value.

7. 7 20 Sept 2004 7 7 Real Answer #3: Know the Issue- Each Issue  Is the 100%, airtight, bullet-proof answer necessary, or is the 70% answer better?  What are the business issues?  The “academic” answer is frequently wrong.  Who are the key stakeholders for this issue?  What are the real time constraints?  What are the real budget constraints?  Was invention funded under Contract or IR&D?

8. 8 20 Sept 2004 8 8 Real Answer #4: Billing  Billing- Again, one size does NOT fit all.  Understand clearly up front- Rates? Monthly? By project? Disbursements? Budget?  Use client’s reference codes (in addition to yours).  Reasonable client requests? Comply with them, or someone else will.  Often, the client’s request really originates from the accounting department.  Sarbanes-Oxley driving restructuring  Faster payment for you!

9. 9 20 Sept 2004 9 9 Real Answer #5: Communicate  Communicate often, and correctly.  E-mail, telephone, fax? Security?  Directly with client employees other than your contact? For which types of employees?  Cc: contact on all e-mails, or only certain ones?  Of course, return calls/e-mails ASAP, even if response is “let me get back to you tomorrow”.  Exceeding budget or deadline? Inform ASAP.  Note that all bills are communication!  Follow up is critical- don’t just sit back when the “ball is out of your court”.

10. 10 20 Sept 2004 10 Summary  Know your contact  Know your client  Know the issue- each issue

11. 11 20 Sept 2004 11 QUESTIONS?

12. 12 20 Sept 2004 12 Some Current IP Issues for Gov’t Contractors  Leveraging IP: How to do it without distracting from, or creating risk for, core business areas.  Export Control: Limit access to “technical data”.  Includes invention disclosures and patent applications.  Open Source: How to control use and/or prevent integration with proprietary software.  Delivering Data/Software.  Recent decisions applying marking rules strictly.  Conflict: “Free/Clear” deliverables vs. overall decline in % of U.S. R&D spending by U.S. Gov’t.