to-day work was a barrier to working more closely with their business unit clients.
In the calibration phase, a major gap had been identified between leadership’s “higher value”
prioritization of the review of unsolicited ideas and the practice group’s and individuals’ priority
assignments. To close this gap, the department determined to develop a strategy and policy for
unsolicited ideas to align with the company’s view of open innovation. The strategy would include details
for solicitation, review, and response processes.
To free up lawyer time to handle higher priority work, the department decided to reallocate some
work of lesser value by sending some search work to outside counsel and by leveraging some work to
paraprofessionals. Examples of some of these reallocations include the following:
1. Trademark - Reduction of lawyer time dedicated to trademark challenges and objections by
eliminating some level of the effort to monitor watch services. The department decided to
accomplish this by leveraging the work to paraprofessionals and reducing the overall amount of
time dedicated to the effort through the use of standard policies, procedures and guidelines.
2. Preliminary Searches - Utilization of paraprofessionals for preliminary searches, with criteria to
escalate questions to lawyers. For consistency, the department also decided to consolidate to a
single, uniform tool and process for conducting both preliminary and full searches.
3. Full searches – Limitation of the number of full searches and opinions to those that are critical.
The department also determined to conduct a cost/benefit analysis of bundling full searches and
opinions to outside counsel on a retainer or flat fee basis.
4. Advertising - Expansion of trademark paraprofessional’s role to include initial advertising and
packaging review with criteria to escalate questions to lawyers.
How does the department make the transition to the new work allocation? Once priorities
have been established and decisions have been made about the appropriate reallocation of work, the
department must make the transition to the new work distribution. This is not a simple hand-off
procedure – the best laid plans will be of no benefit if they cannot be smoothly implemented. Steps
to successfully implementing the change include defining specific roles and responsibilities, reviewing
and revising the departmental organization chart as appropriate, developing work distribution and work
transition plans, and establishing a communications strategy.