Building Strong Relationships with Overseas Counsel in Managing a Global IP Portfolio

As companies grow beyond their national borders, the complexity of managing an international intellectual property (IP) portfolio increases exponentially. Whether you’re handling patents, trademarks, or copyrights, one key to success lies in building and maintaining strong working relationships with overseas counsel.

At Panagos Kennedy, we’ve found that the quality of these relationships often determines whether a global IP strategy is efficient, timely, and defensible—or inconsistent and costly. Here are a few strategies that have helped us build successful, mutually beneficial partnerships with foreign associates.

1. Choose the Right Partners, Not Just the Right Price

Cost control is important, but so is value. Don’t just choose overseas counsel based on their fee schedule. Look for firms with:

• Deep local knowledge of IP laws and practice before local offices

• A business focus

• Responsiveness and professionalism

• A collaborative mindset

We routinely develop our existing network of overseas counsel, who demonstrate these traits, regardless of their size.

2. Set Clear Expectations Of Each Other

When onboarding new overseas counsel, communicate early about each other's expectations regarding:

• Deadlines and docketing practices

• Format and tone of client-ready drafts

• Specific filing strategies (e.g., Madrid vs. national filings)

• Communication turnaround time

A short kickoff call followed by a writing can avoid conflict and misunderstandings.

3. Communicate the Legal & Business Contexts

Bring overseas counsel up to speed on the objectives of your client, and ask them to do the same of their referrals to you:

• Briefly summarize your goal or strategy in the matter

• Share any client sensitivities or budget constraints

• For efficiency, identify the mark or invention title, reference numbers, and client name in emails

Context helps your overseas partner understand the “why” behind your requests, which leads to better legal and business outcomes.

4. Respect Cultural and Legal Nuances

IP laws—and business customs—can vary widely. Some countries require local use or declarations of intent to use earlier in the process. Others have stricter formalities or unusual oppositions. In some regions, honorifics and formality in written communications are expected.

Generally, be open to learning from your foreign associates. A respectful, curious approach strengthens trust and creates smoother workflows.

5. Be a Partner, Not a Taskmaster

The most effective counsel relationships are collaborative. Seek opportunities to:

• Reciprocate referrals

• Offer insight into developments in the U.S. IP system

• Include them in strategy calls when stakes are high

• Give meaningful positive feedback

6. Maintain the Relationship Even Between Matters

Even if you don’t have a current filing in a particular country, occasional touchpoints—such as holiday greetings, newsletter sharing, or INTA, ABA & AIPLA visits—help keep relationships warm and top of mind.

Conclusion

Managing an international IP portfolio is a team sport. The quality of your overseas counsel relationships can directly affect client satisfaction, prosecution outcomes, and long-term enforcement success. With the right mix of transparency, professionalism, and mutual respect, your international network can become one of your most valuable assets.

If you’re looking to expand your international IP strategy—or are interested in working with a trusted U.S. partner on your clients’ U.S. filings—feel free to reach out.