Over the course of my legal career, I have had the opportunity to work at a small law firm, a mid-size intellectual property (IP) boutique, a large international law firm, and in-house at a startup company and two Fortune® 100 companies. During that journey, I have had a fair number of clients, staff members and managers, and have been fortunate to glean various nuggets of wisdom from my interactions with all of them. I now share those learnings – distilled into ten business-oriented rules – that in my humble opinion amount to excelling as an IP legal practitioner. While some of the following rules may sound a bit cliché, my explanations below are an attempt to craft them as powerful reminders that an IP lawyer is nothing without the clients/managers who are willing to pay their fee/salary. Thus, no matter whether your law firm billing rate is $200 or $1,200 per hour, or your in-house salary is $50,000 or $350,000 per year, these ten rules apply!
For the naysayers reading this, I will admit at the onset that there are differences in lawyering to a start-up versus an SME or even a large, multinational corporation. I further admit there are also differences in lawyering to entities that operate in different industries (e.g., automotive versus financial services). But these differences mainly involve specific legal knowledge and strategy, not in the general approach to lawyering itself. Now, onto the rules!
- Observe the 24-Hour Rule
Almost nothing upsets people more than feeling ignored. This is no different within an attorney-client, employee-employer, coworker-coworker, or any other professional relationship than it is in social (e.g., spousal) relationships. Thus, the 24-hour rule mandates that you return all e-mails and telephone calls within 24 hours of their receipt. I know we have all experienced dealing with clients or managers who think all things are emergencies. Often, however, perception is reality. Thus, you have to triage all incoming messages to substantively respond to those that are truly emergencies and simply respond to all others with a variation of the following: “Thank you for your [e-][voice-]mail message. I will [insert an action such as ‘review,’ ‘consider,’ ‘research,’ etc.] and revert [insert some realistic time period such as ‘shortly,’ ‘end of the week,’ etc.].” Following this simple rule assures that no one if left feeling ignored and allows you to show that you are responsive (i.e., “on top of things”), all while allowing you to prioritize your workload.
In today’s technological environment, the above simple rule begs the more complex question: Does the 24-hour rule apply to text and instant messages? Given the immediacy of the communication medium, would a one-hour rule, for example, be more appropriate? Perhaps! The real answer to that complex question, however, is the old law school answer – it depends. That is, in order to answer the question we must first be reminded of the unique service for which our clients and employers really pay us. That unique service is the application of our professional judgment to their problems. So every time you bill a tenth of an hour to a law firm client, or cash your company paycheck, don’t forget what you are really being paid for – your professional judgment! Thus, that professional judgment must dictate the appropriate reply time period that leaves no one feeling ignored.
Lastly, no one can be on duty 24/7/365. We all need downtime. Thus, the use of email and voicemail OOF/OOO messages and having a colleague cover for you while you are on leave or vacation ensures that the 24-hour does not follow you out of the office.
- Email (Almost) Like a CEO
In 2001, I read a New York Times article entitled Email like a C.E.O. that has (obviously) stuck with me for over a decade. This highly-entertaining article chronicles a Vanderbilt University professor’s year-long research into some 30,000 email messages sent within one company. The professor’s findings can be summarized as follows:
- “High-status employees [g., CEOs, CFOs, etc.] tended to send short, curt messages. … Perhaps less surprisingly, bosses tend to have the poorest spelling and worst grammar, conveying the sense that they have better things to do with their time.”
- “Mid[-]status employees, by contrast, tend to produce long, argumentative messages laden with jargon or over[-]explicated answers to simple questions.”
- “And [those who] use e-mail to forward jokes, send greeting cards or use happy-face ‘emoticons’ … they are almost always low-status workers.”
Today, even with the advent of social media, email is still the most popular form of digital communications with over 4.1 billion email messages sent each day in the U.S. In fact, a recent McKinsey & Company report concluded that office workers typically spend 28% of their day just reading and replying to emails rather than performing research, collaborating internally or doing role-specific tasks (i.e., real work)! Thus, emailing (almost) like a CEO – crafting short, to-the-point email messages without the poor spelling and grammar – is simply a way to respect your clients’ and managers’ time. Long, argumentative legal opinions should typically be in a letter or memorandum format and included as an attachment. I do recognize, however, that there are times that a client will want you to craft a CYA long email. Again, these are simple rules – the more complex I leave to your professional judgment.
A corollary to the above rule is that while you are emailing (almost) like a CEO, you should also remember to follow a variation of the so-called “New York Times Rule”: Put nothing in an email that you would not like to see printed on the front page of the New York Times. This is true regardless of any “confidential,” “privileged,” “work product,” “do not forward,” or other false-sense-of-security labels you may place within the subject line or body of the email. (The “private” or “confidential” tags in the Microsoft® Outlook® application are similarly futile!)
- Know When to Pick Up the Phone!
This rule is simple: If you engage in three rounds of back-and-forth emails with a client, colleague or manager on a single issue without coming to a resolution, it is time to pick up the phone. Given the time crunch many people are under, this can be as simple as sending a “please let me know when you have x minutes to discuss via phone,” email message. (See? This is “emailing like a CEO” in action!) This rule may sound old fashion in a digital (i.e., texting and emailing) world, but real-time personal interaction will be more appreciated and resolve issues more quickly than continuing to send digital volleys that may be going nowhere. This is especially true when handling client complaints, performance issues and other sensitive topics. (The litigators among us can probably come up with dozens of other reasons to pick up the phone and avoid long email threads!) And if you do pick up the phone for a one-on-one call, please actually pick up the phone. That is, stay off the speakerphone for one-on-one calls. It’s obnoxious!
- Don’t be a “No” Lawyer
“The traditional perception of [legal] counsel as ‘business blockers’ is slowly dying due to the crucial role they are playing in contributing to the business growth of organizations, thereby adding to commercial and economic value. The role of today’s [legal] counsel has drastically changed from being solely legal leaders to business enablers, and companies are starting to realize their ‘value add’ contributions.”
– Harish Suryavanshi, “Today’s In-House Counsel: Evolving Roles as Business Enablers,” ACC Docket (Jan. 2014)
As IP lawyers, we (presumably) are all skilled at reading statutes, regulations and cases. Thus, as we comb through 17 USC, 35 USC, 37 CFR, the MPEP, the TPEP, USPQ, etc. it is easy to tell a client: “No, you can’t do that.” That may be good lawyering. Excellent lawyering, however, requires imagination to say: “You can’t do it that way, but you may be able to achieve your goals by doing one of the following … .” In other words, don’t be a lawyer that always tells your clients “no” without offering creative alternatives. Groundbreaking business almost never happens within the safe harbors of any law or regulation!
- Define your Role Broadly
One of the best pieces of advice I received before embarking for a senior, in-house counsel role was to “define your role broadly.” An excellent lawyer’s job function – especially within the IP field – is to not only help create or sustain a client’s profitability, but to enable long-term business growth. And, successfully running a business requires a lot of moving pieces to work together. Those who lawyer in an IP vacuum (read “I’m just the patent guy”) do their clients a disservice. Clients come to you to solve real-world problems and those problems don’t always confine themselves – like law school exams – to one specific area of the law! In other words, you may call yourself an “IP lawyer,” but “IP” is just the adjective. Don’t be an adjective, be a noun (i.e., a lawyer). Thus, define your role broadly by learning to adeptly spot and address issues outside of your legal specialty and/or assigned role. As I mentioned above, you get paid to apply your professional legal judgment to client’s problems. So don’t lock your judgment into a small IP box. Rather, develop enough of an understanding about the other areas of the law that frequently intersect the specialty in which you practice, in order to recognize when those other areas become implicated. Only then are you truly serving a role in creating or sustaining profitability, and enabling long-term business growth.
- Remember that Integrity Matters
Everybody wants (and likes) to win. IP litigators want to win over judges and juries, IP prosecutors want to win over Patent and Trademark Examiners, and IP transactionalists want to win at the negotiation table. But it should not be at all costs. That is, as practitioners chase wins (as well as the ever-so-important billable hour), integrity matters.
In a World Cup™ year, allow me to use a soccer analogy. Law Number 9 of FIFA’s The Rules of the Game (2014) states: “The ball is out of play [only] when it has wholly crossed the … line.” Well, practicing IP law should not be like playing soccer! Remind yourself to never even touch the line (yet alone cross it). That is, strive to stay on the correct side of ethical conduct and professional responsibility line. Unlike soccer, hitting the line as long as you don’t wholly cross over it is not okay!
Practically speaking, the IP law profession (and, to some extent, the consumers of its services) is a small circle where word gets around. As an IP attorney (i.e., a member of the IP bar) involved in the business of practicing IP law, your most important assets are your word and reputation. No matter how much you implement the other nine rules, failure to conduct yourself ethically and represent your clients responsibly will not result in success. In sum, be dependable and be honest, or be something else other than a practicing IP attorney!
- Instill Confidence
I don’t care that legal fees and attorneys are viewed as business expenses (outside counsel) or cost centers (in-house counsel), and the conventional wisdom is that “the business folks drive the business.” As I alluded to above, the truth of the matter is that excellent lawyers are leaders. How often have you seen a company name the General Counsel as interim CEO after the “real” CEO departs!? There is a reason for that – no one else probably knows more about company-wide operations than the chief lawyer. This is also true in some sense for the chief in-house or primary outside IP counsel. (Who else has line of sight into where the business is heading in the form of all those license agreements, new invention disclosures or new product-related trademark applications from every one of a client’s P&Ls!?)
As an IP lawyer, clients will look for you to lead as well. (I am always surprised at the sense of inferiority many IP lawyers quietly possesses in relation to their corporate lawyer peers.) Leadership requires that you instill confidence in those you lead. Thus, when you are asked for legal advice and your first inclination is to logically weigh the facts and give 10 pros and 10 cons for each of a plurality of possible strategies without any clear direction, reconsider your chosen profession. Perhaps being a law professor may be a better choice than a practicing IP lawyer. If you do chose to practice IP law, however, remember that clients come to you to help solve problems through definitive action. Use your informed judgment to devise a legal strategy and passionately advocate with and for your client to drive business outcomes. That passion can only come from first being confident in your own judgment, and only with that passion can you instill confidence to actual lead others.
- You Don’t Need to Have All the Right Answers, Just Ask the Right Questions
Law school teaches us that we need to assemble facts into a discrete Issue statement, recall a Rule, perform some Analysis, and then come up with a Conclusion (i.e., IRAC). Yet, practicing law is not the same as answering a law school exam question. There is no need to impress clients with “right answers” all the time. In fact, over the course of my career, I have been surprised how many times my legal counseling did not involve coming up with the right answers (i.e., the “C” in IRAC). Rather, the legal counseling comprised listening to the facts, asking the right questions and guiding the client as they determine the right answer for themselves. As Harvard Business School Professor Robert S. Kaplan puts it:
“Everyone thinks successful leaders always know what to say and the right course to take. They don’t. But they do know the right questions to ask. … Ninety percent of the battle is learning to take the time to ask the right questions, critical questions that help you frame key issues, diagnose problems and develop action plans for yourself and your organization.”
As an IP lawyer-leader, resist the urge to be a “know-it-all IRACer,” and instead use your informed judgment to simply ask the right questions.
- Always Keep Learning
Sure, you graduated from undergrad and law school. You passed the state bar and perhaps even the USPTO registration exam. You may even have a masters or PhD degree. So what! There is one thing constant in life – change! That is, the law, technology and geopolitics are constantly changing. Thus, those lawyers who think they have studied (and know) it all are doing a great disservice to their clients. 45 U.S. states (as well as the ABA model rules) have mandatory CLE requirements to promote competency and knowledge. This rule is consistent with that rationale: always keep learning so that your professional legal judgment is an informed one. Satisfying those CLE requirements solely with “case law update” seminars, however, is not enough. Keeping your professional judgment informed requires that you stay abreast of not only recent case law, but developments in technology, business and current events that affect your clients’ respective businesses. In sum, diversify your reading list to include non-legal publications such as business and technology journals.
- Under Promise and Over Deliver
“Under promise and over deliver” is one of those business tips (or truisms) that the MBAs like to throw around with respect to how to run a business. A recent study, however, argues that this is terrible advice for many small business owners as it may be a waste of resources (i.e., most customers are fine with a business simply meeting its promises). But, if this truism is interpreted as “you should not consistently promise to your clients or managers more than you can actually deliver,” then I think it remains good business advice. And, given that practicing law is a business, one can argue it applies to lawyering as well. Put more concretely, if you can’t get to that patent or trademark application or licensing agreement by a certain date, don’t promise otherwise. Above I mentioned that no one likes to be ignored. Being lied to is perhaps the one thing worse than being ignored. That is, once you make a promise – whether it is related to a specific date, outcome or achievability – that promise serves as a contract in the mind of the promisee. Breaching that contract then serves to sever any trust in you and your ability to influence future business decisions through the exercise of your legal judgment. In sum, there is nothing wrong with setting the bar at a realistic (albeit low) level and later clearing it by a wide margin!
Following these ten business-oriented rules will not make you an excellent IP lawyer. Not following these rules, however, probably assures that you are not (and never will be) an excellent IP lawyer. So do these ten simple things right and let your judgment inform you on the more complex. (NB: I am aware that one can take these ten rules, drop the “IP” adjective and focus on the noun “lawyer” to make them generally applicable to the over 1.28 million practicing lawyers in the U.S. today. And, the world may be a better place because of it!) Happy IP lawyering!