02/07/2026
30
Session 4: Firm management -
How to best work with
international counsel
Dr. MaryAnne Armstrong, BSKB (US)
Doug Deeth, DWW (CA)
Conflicts
•
Legal Obligations
•
Ethical Obligations
•
Practical Obligations
•
Local Rules
•
FICPI Code of Conduct
59
60
02/07/2026
31
Expectations
Sending work:
• What do you expect of your associates when you send work to them?
• What do your associates expect from you when you send work to them?
Receiving Work:
• What do your associates expect from you when they send work to you?
• What do you expect from your associates when they send work to you?
Communicating / Understanding Expectations
• Engagement letters
• Standard Terms and Conditions
• Standards imposed by local professional bodies or organizations
Complying with the Rules
•
Local codes of professional conduct
•
Standards imposed by IP offices, such as the USPTO
•
FICPI Code of Conduct
61
62
02/07/2026
32
Who is your client?
•
Your associate?
•
The applicant?
•
Both?
•
Confidentiality of communications
• E.g. communications from associate about the client
• Communications from you to an associate about the client
Know Your Client Obligations
•
May require you to know much more about the applicant than
previously
•
E.g. Law Society of Ontario Rules
•
How do you gather that information without annoying your
associate?
•
Can there be a standard disclosure requirement that FICPI
should adopt for instructing foreign associates?
63
64
02/07/2026
33
What do your Foreign Associates Really Want?
What do you need to do that your competitors are not doing?
•
Low fees
•
Prompt responses
•
How proactive are you in dealing with prosecution?
• Detailed explanation of office actions or just forward with a note about the due
date?
• Does your associate need a detailed review of the prior art?
Corporate Clients vs. Foreign Associates
•
Do you deal with in-house attorneys differently than you deal
with foreign associates
•
How do you deal with corporate docketing and billing
requirements
• Billing formats
• Disbursements
• Timing of accounts
• What are the main problems
65
66
02/07/2026
34
Tariffs, Fees and Discounts
•
Publishing and explaining tariffs
•
Setting Fees and staying competitive
• How much emphasis is placed on fees
• How much of what we do is really a commodity?
•
Dealing with discounts
• How to say no
• How to handle discounts for some and not for others
•
Price quotes and staying compliant
Liability Issues
•
Who is responsible for errors, failures to pay, etc.?
•
Does your insurance cover you?
67
68
02/07/2026
35
Collecting Your Fees
•
Advance Payment
• Feasible or offensive?
•
Discounts for Prompt Payment
•
When to say “Enough”?
Jessica Richard
Senior President, Federal Public Policy,
Recording Industry Association of America
(RIAA), Washington, DC, US
69
70
02/07/2026
36
Thank you to our sponsors!
FICPI ABC MEETING
| NASHVILLE | JUNE 2026
72
71
72