What Should an IP Firm Check When Shortlisting Foreign Counsel for a Specific Corridor?

A useful foreign-counsel shortlist connects observed activity with the work your firm needs handled. For partners, business development and foreign-filing teams, the review should establish a consistent comparison scope, examine shared-family records and identify questions for candidate counsel.

Define the corridor and comparison scope

Choose the jurisdictions, reporting period and type of IP before comparing candidates. Keep European patent activity at EP/EPO separate from European trademark activity at EM/EUIPO. Patent and trademark families follow different linking rules, so their counts should be reviewed separately. Compare candidates using the same counting unit and perspective.

Read activity alongside its reporting period. Publication and processing delays can affect recent figures, and a missing value does not establish an absence of activity. Ask whether an apparent difference reflects comparable records before using it to narrow the shortlist.

Review the families behind the activity

Follow promising patterns back to individual family records. Check the applicants, representatives and links between filings, then look for repeated participation relevant to your corridor. Count distinct families within the stated scope: an application, publication and grant can belong to one family, while multiple co-counsel relationships can make summed pair counts exceed a corridor total.

Shared-family participation does not establish a referral or instruction between firms. The applicant may have appointed both representatives independently. As FlowIP’s methodology explains, linked records show participation, while referral arrangements, engagement terms and fees require direct discussion.

Check practice fit and representative identity

For patent candidates, review activity in relevant IPC/CPC technology fields alongside the firm's declared expertise. A practice-area description alone does not establish prosecution experience. Check the representative named on the filing and the supporting organization details, because a person's current firm affiliation may differ from their affiliation at the filing date. For trademark candidates, keep unidentified client sizes classified as unknown.

Use the shortlist to prepare a focused conversation

Ask candidate counsel which team would handle your matters, what relevant corridor and subject-matter experience they can discuss, and how the engagement would be organized. Confirm current responsibilities, communication arrangements, terms and fees directly. These questions help connect the observed activity with your firm's practical requirements.

FlowIP supports candidate comparison, shared-family review and saving a shortlist. Save the reasons for retaining each candidate and the questions still to resolve, so the next conversation starts with a clear basis for review.