According to biotech patent attorney and two-former Chief Counsel James Cullem, an early-stage technology company can only reach its maximum potential with the assistance of a talented and proactive Chief Counsel.

Presentation Solutions: We appreciate you calling in this afternoon. Welcome!

James Cullem: My pleasure.

Presentation Solutions: Let’s talk a little bit about the role of Chief Counsel. What specific company titles does the Chief Counsel typically carry?

James Cullem: The names may change – In-House Counsel, Senior Counsel, General Counsel, Chief I.P. Counsel, Chief Patent Counsel – but the duties generally remain the same. This highly skilled and proficient individual oversees important legal issues and activities related to the company’s overall operations.  In the case of a Chief Counsel who is also a Registered Patent Attorney, that individual will also directly oversee and manage the company’s strategic intellectual property (I.P.) activities, including development and exploitation of worldwide patent and trademark portfolios.

Presentation Solutions: What is the primary focus of the Chief Counsel in an early stage technology company?

James Cullem: The Chief Counsel at an early-stage company is typically tasked with handling a broad array of legal issues common to an early-stage enterprise:  employment policies and contracts; intellectual property asset issues (patents, trademarks, copyright, trade secret, license and collaboration agreements); corporate governance and finance issues; real estate matters; dispute resolution; and the like.

Presentation Solutions: How might the Chief Counsel interact with and manage outside counsels?

James Cullem: The in-house Chief Counsel will typically have their own area of legal specialization, such as I.P. (requiring a Registered Patent Attorney), or employment law, or corporate governance and finance, etc.   As such, the Chief Counsel may directly handle matters within their area of specialization, while retaining outside counsel (law firms) to handle other subject matter areas.  Dispute resolution (i.e. active litigation and pre-litigation dispute matters) always require the assistance of outside counsel.  In all situations, the Chief Counsel is responsible for overseeing and managing the efforts of retained outside counsel, to ensure that the best interests and needs of the company are being efficiently met.

Presentation Solutions: Does the Chief Counsel require any special certification?

James Cullem: Any in-house Counsel must be a licensed attorney, which means (here in the U.S.) that they have graduated with a Juris Doctorate (J.D.) degree and have passed the Bar exam to become licensed as an attorney in at least one state.  Additionally, if the Chief Counsel is also a Registered Patent Attorney, it means that they have passed the difficult, speciality Patent Bar exam and have a suitable technical/scientific background required for their area of specialization (e.g. medical devices, proteomics, small-molecule therapeutics, etc.).

Presentation Solutions: Can you explain the reasoning behind this requirement?

James Cullem: Many legal issues – for example, shareholder, contractual, and/or real estate rights – are completely controlled by the laws and regulations of the particular state in which the company sits. Accordingly, fluency in those state-specific laws will be crucial in making the right decisions to guide the company.  Other legal areas, such as patent laws and maritime laws, are centrally governed by Federal Laws, and thus are not state-specific and do not require specific state credentials.

Presentation Solutions: What are the leading qualities of a quality Chief Counsel candidate, in your opinion?

James Cullem: A longtime attorney with a diversity of interests and experiences is often the best bet. Specialists, on the other hand, should generally be avoided, unless the activities and challenges facing the company are focused in a particular area.  For example, a biotechnology company that has robust R&D activities generating novel inventions and products that are essential to competitive advantage would benefit from a Chief Counsel that is also a registered biotech Patent Attorney.  A real estate management company, as another example, would obviously benefit from a Chief Counsel with real estate law specialization, even though that person might also oversee other matters, such as contracts, employment matters, and corporate governance.

Presentation Solutions: With whom does the Chief Counsel collaborate on a daily basis?

James Cullem: The Chief Counsel will work closely with executive management of the company, as well as all Department Heads and with inventors within the R&D groups of the company.  He/she will also works directly and regularly with a number of other outside counsels/attorneys who can offer guidance in litigation, taxes, financial matters and other core subject areas.

Presentation Solutions: This has been a highly informative chat. Thank you for the insight!

James Cullem: You’re most welcome. I hope this information will be of assistance to your readers.

As an accomplished veteran of the biotechnology industry, James Cullem continues to share his expertise with members of the legal and biotechnology communities.