Instructions to Outside Patent Counsel Clause Samples

The "Instructions to Outside Patent Counsel" clause defines the expectations and guidelines that a company or client sets for external legal professionals handling its patent matters. This clause typically outlines the scope of work, communication protocols, billing practices, and any required approvals before taking significant actions, such as filing patent applications or responding to office actions. By clearly specifying these instructions, the clause ensures that outside counsel acts in alignment with the client's strategic objectives and budgetary constraints, thereby minimizing misunderstandings and promoting efficient, cost-effective legal representation.
Instructions to Outside Patent Counsel. With respect to any Joint Patent, the Outside Patent Counsel (if any) shall be instructed to (A) keep the Parties informed regarding the Prosecution and Maintenance thereof; (B) promptly furnish to each Party a copy of such Patent and copies of documents relevant to such Prosecution and Maintenance, including copies of correspondence with any patent office, foreign associates and outside counsel; and (C) act on the Parties’ instructions relating to such Prosecution and Maintenance.