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When the Patent Is Under Fire: Virtual In-House Counsel for Inter Partes Review

Inter Partes Review (IPR) proceedings are intense, fast-moving, and high-stakes. When a company’s core IP is challenged at the Patent Trial and Appeal Board (PTAB), the business can’t afford missteps—or delays in decision-making.


But here’s the problem: most companies don’t have an in-house patent counsel with IPR experience ready to drop everything and lead the response. And hiring someone full-time just for a single post-grant proceeding? That’s rarely practical.






That’s where Virtual In-House IP Counsel comes in.


The IPR Challenge: Legal, Technical, and Strategic

An IPR is not just a legal proceeding—it’s a full-on strategic battle. Responding effectively requires a deep understanding of:

  • Patent prosecution history and claim construction

  • Technical subject matter and cited prior art

  • PTAB procedure and timelines

  • Related applications and portfolio impact

  • Coordination with parallel litigation, licensing, or business goals

Outside counsel may lead the filing and argument, but internal coordination, communication, and strategic oversight are just as critical. That’s where many companies hit a resource gap.

What a Virtual In-House Counsel Does During IPR

We embed as a temporary, high-level IP advisor during the IPR process—essentially acting as your in-house counsel without the need to hire full-time staff. Our role often includes:


  • Outside Counsel Management: Coordinating with litigation and IPR counsel to ensure a cohesive and efficient defense

  • Portfolio Impact Assessment: Identifying related patents or applications that could be affected by the outcome

  • Stakeholder Communication: Translating technical and legal updates into actionable insights for executives, engineers, or investors

  • Strategy Development: Helping shape response strategies, claim amendments to other pending patents to address issues raised in IPR


We’re there to help you make smart, timely decisions that align with your broader IP strategy—without the overhead of permanent headcount.


Why Temporary Makes Sense

IPR cases often unfold over a year or two, but the most intense periods of activity come in focused bursts—drafting the preliminary response, planning a hearing strategy, or evaluating a potential amendment. During those times, the need for in-house-level IP expertise is acute.

When that window closes, it may not make sense to retain someone full-time.


Our virtual counsel model gives you the flexibility to scale up when you need us—and wind down when you don’t.


Ideal for Companies Without a Full-Time IP Lead

Many mid-sized or fast-growing companies don’t have a dedicated patent counsel in-house. Others may have a GC or legal team focused on contracts, employment, and compliance—not post-grant patent defense.

We fill that gap—bringing deep IPR and prosecution experience, technical fluency, and a clear understanding of what’s at stake.

Facing an IPR and need support? Let’s talk about how we can serve as your temporary in-house IP counsel—when the pressure is on, and precision matters.


 
 
 

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Your Patent Counsel, LLC, 125 Park Avenue, 25th Floor, New York, New York 10017

Telephone:  646-397-3003

Email:  info@yourpatentcounsel.com

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