Increasing Business Development IQ for the IP Lawyer

Vol. 5 No. 1

By

Hale Chan specializes in professional services marketing. He can be reached at wrtrtn1@hotmail.com. Mr. Chan would like to express his appreciation to the following individuals for their suggestions and assistance in the development of this article: Betsi Roach, Laurie Robinson, Roger Martin, and Dorothy Hughes.

Civil Procedure, Contracts, Intellectual Property: Patents, Intellectual Property: Copyright, Intellectual Property: Business Development—which of these was not offered at your law school? Chances are that business development courses were not offered as part of your law school curriculum. Yet business development is vital in the practical life of a lawyer working at a law firm—regardless of size. Some do it well; but many struggle with this part of being a lawyer.

What follows is some guidance in effective business development. Respected and successful lawyers from small and large firms explain what works for them and what doesn’t. Legal marketing professionals offer insight on what they advise attorneys when prospecting for new clients. And finally, in-house counsel from major corporations, decisionmakers for selecting outside intellectual property (IP) lawyers, share their valuable thoughts on how they select new outside counsel with whom to work: what’s effective in getting their attention and just as importantly, what’s not.

 

The Dilemma

The law firm lawyer has many options to approach new propects: advertising, article writing, booths at a trade event, cold telephone calls, direct snail mail, directory listings, e-mail, hiring business developers (salespeople), hosting receptions, joining various organizations of all types to meet potential new prospects, public speaking, reception events, running CLE sessions, social media (blogs, Facebook, LinkedIn, Twitter, YouTube), sponsorships, traditional media (newspapers, magazines, TV, radio), webinars, etc. Given limited resources of time and money, what’s a lawyer to do?

“Prioritize relentlessly,” says Jim Hassett, founder of LegalBizDev, a company that helps law firms improve business development, and author of the Legal Business Development Quick Reference Guide. “Lawyers are much too busy to spend time on ideas that are only good. To maximize the chances of success, each individual must focus on the very best ideas for their practice, their personality, and their schedule.”

And is there a difference in business development strategies for the IP lawyer versus other specialists? The answer appears to be “yes.” “I believe there are a few differences in the approach to business development between IP lawyers and general practitioners or those with a different niche (i.e., family law, criminal law),” says Gretchen L. Milbrath, director of marketing for Merchant & Gould. “In the IP industry, it’s rare that you even get your foot in the door if you don’t possess the credentials and expertise that is imperative to knowing and understanding the client’s business inside and out.”

Christopher Hummel, marketing director for Banner & Witcoff, agrees. “In the world of IP, the attorney relationship may be with a corporate general counsel, but is often also with that of a scientist or a CEO or a marketing executive. Or, our contact may wear all of those hats as well as serving as general counsel.”

But the fundamentals don’t change. Milbrath, who has been in legal marketing for 12 years and has seen the legal profession go from an abundance of work to some recent downturns, reflects on these fundamentals. “During this roller coaster ride we’ve all been on, the way in which we do business development really hasn’t changed. I think it made us take a deeper look at what matters to our clients and prospective clients, but ultimately the same key strategies are what still work, and it’s all related to who can produce the best value and best client service.”

While this should come as no surprise to any legal professional, it is something that every lawyer should be cognizant of. “Do good work, get that stellar reputation in the industry, and you will be noticed,” says Alex Rogers, senior vice president and legal counsel for Qualcomm Inc., who also manages the IP and commercial litigation matters for the company. Rogers also is currently the head of its litigation group. He regularly follows IP litigation, paying attention to the law firm participants. He also attends trials to see first hand how the lawyers perform.

“When you have developed a reputation as a ‘go to’ person the client development usually follows more readily,” adds Mei-lan Stark, senior vice president, intellectual property for Fox Entertainment Group. “The best way to come to someone’s attention is by doing great work for the clients you have. That reputation spreads and serves you well.”

This expectation of doing good work is not lost on IP specialist Lisa Dunner, managing partner at IP boutique firm Dunner Law. “There is no substitute for being a good lawyer—a good reputation is one of the best and easiest ways to at least woo a potential client.” Adds Gerard von Hoffmann, partner at Knobbe Martens Olson & Bear, “Most free markets reward excellence at one end of a scale, and low cost at the other. But I think the nature of excellence is evolving in the intellectual property law service industry. Excellence is not measured solely by excellence at the practice of law. Instead, it includes deep vertical knowledge and experience in a particular industry or industry segment as well as an understanding of the relevant law.”

Jimmy Nguyen, partner at Davis Wright Tremaine, believes that for lawyers to be successful in business development, they have to be distinctive. For Nguyen, that means “finding ways to stand out from the crowd—such as focusing on unique experience or areas of expertise you have that are different (or better) than what other lawyers do.” Or be new. “A great thing about the IP area of law is that there are always new innovations affecting clients and their industries,” says Nguyen. “Learn those areas well and be a thought leader.”

So Where to Start? What Works?

“Gaining business from new clients is the result of thorough research, a well-defined strategy and action,” states Hummel. “These days most law firms want an IP practice group, and many claim they already have one. Law firm marketers and attorneys at IP firms must distinguish themselves and help clients see the difference.”

Fellow law firm marketer Milbrath takes it one step further. “Our target IP audience members are sophisticated enough that they will not base their purchase of outside counsel on the fact someone is a Super Lawyer, an advertisement, and the like. It is based upon expertise, experience, and value.”

And she agrees with Hummel. Before you start prospecting, have a game plan, do your homework on who your prospects are, their financials, their current legal relationships, and their prior legal history. “Decide whether that prospect is even appropriate for you based on your expertise, your firm’s objectives and strengths,” says Milbrath.

The best place to start? With your current clients. But many lawyers only associate with getting additional business from their current clients. “For most lawyers, the best place to start is with current clients. If you would have averaged an hour per week on that committee, spend it instead on your top clients. Take them to lunch. Listen. Find out what they want. Give them more. Do things for free,” says Hassett.

But what if we are interested in developing new business from new clients? The keys here are referrals and recommendations. This is the consensus of senior in-house executives who are the decisionmakers for bringing outside IP counsel into their legal network.

“I always look to other in-house colleagues for recommendations,” says Stark. Michael Walker, vice president, assistant general counsel, and chief IP counsel at DuPont adds, “When looking for additional firms to do our non-litigation work, I begin by asking other chief IP counsel for recommendations. Another good source is referrals from our in-house legal team or members of our legal management team. The best way is through a recommendation or a referral from a peer in another company or from our in-house team.”

Kevin H. Rhodes, chief IP counsel and president, 3M Innovative Properties Co., has another resource that he draws upon. “We have an extensive network of in-house counsel at peer companies who often share counsel recommendations. There is no better reference than one from my counterpart at a peer company.” Batur Oktay, director, corporate counsel intellectual property at Starbucks agrees. “ Referrals from colleagues at other companies are the best way to be introduced to me.”

Qualcomm’s Alex Rogers spells it out very succinctly, using himself as an example. The best way to approach him is through a referral from someone in Qualcomm’s legal department. Next is to find someone from some other groups within Qualcomm who will give you a recommendation. The third best way is to find someone from an organization outside of Qualcomm who knows Rogers and will give you a recommendation, such as a litigation manager in the legal department of another company in the same industry.

How about that recommendation from a client? From this writer’s many years of professional services marketing, this is an asset not all professionals leverage often enough. For many, there is reluctance to ask clients for a recommendation. Yet, many satisfied clients are happy to give them. For instance, when asked by clients, Oktay has often given permission to use his name as a reference to another company’s in-house counsel, as an introduction to that company.

What Are the In-House Decisionmakers Looking for in New Outside Counsel?

The answer depends on whom you ask. “To be selected to do our work, a firm has to have a strong value proposition—both cost and quality—and be willing to make the investment in a relationship with us that will lead to mutual long-term success,” says DuPont’sWalker. And he believes that in this case, size does not matter. He notes that small to medium-sized patent preparation and prosecution boutiques have a lot to offer, especially if they have low overhead and internal efficiencies that can distinguish their value proposition from larger firms.

Dunner maintains that the advantage of her big law experience is that she does things the way big firms do but she charges her clients the way small firms do. “Many large clients express concern that a small firm may not have the clout or resources to handle large scale work. While that may be true in some cases, a small firm’s strengths often outweigh its weaknesses (and all firms have weaknesses—big or small).”

Dunner already has an advantage in the marketplace. Many corporations actively seek out qualified minority- and/or women-owned firms to work with. Walker suggests that these firms be aggressive in their networking so that chief IP counsel like him can find them. (DuPont has long been in the forefront of actively promoting diversity issues in the legal profession.)

What else are in-house counsel looking for? Rhodes is looking for experienced teams. “Typically we look for an outside counsel team headed by a seasoned first chair with a track record of proven success as a trial lawyer—not just a litigator—coupled with a strong supporting cast that includes a second-in-command who we believe will manage the case effectively and efficiently on a day-to-day basis, plus complementary team members.”

Just as importantly, he looks for counsel who are willing to work collaboratively with 3M’s in-house IP counsel. Rhodes also looks for a willingness to enter into creative billing arrangements with 3M to provide predictability in its spending on a case while sharing the risks and rewards in the outcome. “We need to believe that our outside counsel is truly interested in building the foundation for long-term representation of 3M, not just landing a particular case.” Starbucks also values the long-term foundation business model. Oktay notes that “Starbucks uses IP counsel in 170+ countries, and has direct relationships with each firm.”

Does a client hire the lawyer or the firm? At least in the case of Stark at Fox Entertainment, the lawyer, rather than the firm, is the reason for the hire. It is less about the firm name and more about the fit with that certain individual. Also, having someone with in-house experience helps. “They understand many of the dynamics, management concerns, budget pressures and the like we face as in-house counsel and have a particular sensitivity to providing a work product that takes into account those dynamics and pressures,” says Stark.

What about foreign counsel? Stark looks for someone with excellent language skills who can understand the western business style, but who also is an expert on the local laws and regulations and can help her understand and work more effectively within the cultural context of that country.

But there are constants. “With all our outside counsel we are looking for efficiency, cost-sensitivity, good communication, and a pragmatic approach,” Stark noted.

How Else Can Outside Counsel Get on the Radar of the In-House IP Decisionmaker? What Works?

“There are no generic answers to the question of what’s best,” says Hassett. “You must prioritize relentlessly and keep returning to the question, ‘What should I do today to increase new business?’”

Hummel believes that the best use of a marketing budget is always to put a lawyer in front of a prospective client. He encourages attorneys to actively participate in external networking activities. Milbrath encourages her lawyers to join and be active (“active” is the operative word) in those social, community, business, or legal groups where their prospects also belong.

Stark agrees with this strategy. “Several of the counsel that I have hired, especially in foreign jurisdictions, are people I have met through INTA.” As if to reinforce what Milbrath said about being active in organizations, Stark adds that the people whom she met she got to know by working on the same committees. “Working on team projects together helps you to get a good feel for a colleague.”

Walker suggested other strategies including participating in trade associations or other similar external events. However, this approach doesn’t work for everyone.

For Oktay, it’s mostly about demonstrating a lawyer’s skills, and simply working with someone on a committee, or getting to know a person through a legal organization, will not usually accomplish that. For those wanting to approach him, referrals remain the most effective means.

Presentations are also effective business development strategies. “Often we first become interested in new counsel based on presentations on topics of IP law at meetings of the various IP professional organizations,” says Rhodes. Outside IP counsel can catch his attention by demonstrating a firm grasp of IP law and strategy coupled with strong presentation skills. This insight supports legal marketers Hummel and Milbrath in their use of speaking as one business development strategy for their lawyers.

DuPont’s Walker agrees with the effectiveness of powerful presentations as well as the use of publishing and presenting on webinars as significant factors in a decision to bring an outside lawyer in for consideration—up to a point. He is not necessarily impressed with just a long list of presentations on a resume. He would rather see the lawyers actually speak so that he can judge their communications skills and critical/analytical thinking.

Another limitation in regard to presentations and articles, according to Oktay, is that they don’t necessarily demonstrate a person’s lawyering skills. However, Stark gives a little more importance to resume listings of articles and presentations. They can be a factor, a plus, in the selection of outside counsel—especially if they are for publications or groups with which she is familiar.

What about Other Approaches?

the right type of direct contact would be appropriate with some in-house counsel. For instance, for Walker, this would mean an outside counsel who contacts him with a referral from the IP counsel of another corporation. But this would need to be coupled with a succinct pitch that showcases the lawyer’s knowledge of Walker’s industry, and that shows off the outside counsel’s lawyering skills.

According to Walker, it would be even more effective for that in-house IP counsel to call first, informing him about a law firm he has worked with and recommends. For Stark, having another in-house colleague call and suggest that they have lunch with an outside counsel that the colleague recommends is very effective in meeting someone new.

When making that contact, make sure that you show the in-house counsel that you understand their concerns—legal developments and how they may impact their companies. “Show that you’ve taken the time to figure out our objectives, and that you know how to help us achieve them,” says Rhodes.

While not high on the list of sources for hiring new outside counsel, Rogers will look at marketing tools like newsletters and legal updates. Reinforcing what Nguyen said earlier, Rogers advises that if you use those tools, make sure they are well organized and have significant content that make you stand out.

How Effective Is Social Media in the Business Development Process?

This is another one of those “depends on whom you ask” queries. In recent years, there has been much discussion on the effectiveness of utilizing social media in the legal profession—but without a definitive answer.

Many, like Milbrath, feel that Facebook is too social in nature and therefore not effective in the legal world. She does believe in LinkedIn, which allows for broad networking. Even though her firm currently does not have a blog, Milbrath maintains that this could be effective if it is possible to devote the time and effort to keep the blog current and content rich.

Rogers, on the other hand, doesn’t use social media as a way to find new outside counsel. Nor is he alone. When asked if he ever uses blogs to identify prospective new outside counsel, Oktay said no, he doesn’t. Stark is in the same boat. She doesn’t follow any blogs regularly and while she does have a LinkedIn page, she is seldom on it.

Rhodes takes a different view: he does find blogs helpful. “They serve a function similar to professional meetings—the identification of thought leaders on specific IP issues.” Walker also finds blogs helpful in allowing him to stay on top of critical issues and identify outside counsel for consideration on specific issues. Hassett adds, “The use of social media could be good, but like everything else, you have to prioritize. Is this the best way to reach my objective? Some use blogs as a ‘dodge’ from spending time to work on a plan to get face-to-face meetings.”

What Doesn’t Work

Hassett, Rogers, and Oktay all agree: cold calls. “I don’t respond to cold calls because I get them every week, and there is no way to gauge quality,” says Oktay.

Meanwhile, those clicks that you hear are from people like Rhodes and Stark deleting unsolicited e-mails, another type of cold call. Rhodes adds that traditional client pitches are not effective with him. And while he has been pitched via LinkedIn, he finds that this is no more effective than unsolicited e-mail. Walker agrees. “Yes, outside firms use LinkedIn to solicit business, but in my opinion, I don’t think it is an effective tool.”

Conclusion

The traditional marketing model for business development, doing stellar work that results in referrals and recommendations and, in turn, face time in front of prospects, remains the most effective strategy, at least to those interviewed for this article. As a proxy for that face-to-face interaction, writing articles and doing presentations that show off your knowledge and lawyering skills might also work in many cases.

What about all of the other marketing tools listed at the beginning of this article? This writer has used them during his marketing career and has had some success with them, but this article’s participants did not single them out. Social media? The jury is still out on the use of them as an effective business development tool.

What does this mean for outside counsel? For young associates, while it might be good to expose them to marketing at this stage of their careers, the focus has to be on learning their craft so that they will do stellar work, thereby generating that reputation that will get on the radar of the in-house decisionmakers.

For the seasoned outside counsel, leverage the asset that you already have—satisfied clients. Get their recommendations and encourage them to suggest other contacts at other companies for you to follow up with. Find the contact that will give you that referral to your prospect. Focus on those activities that offer you not just face time with your targeted prospects, but solid interaction with them.

And when the opportunity to meet with the decisionmakers arrives, be sure you are well prepared with a presentation that will make you, quoting Nguyen, “distinctive.”

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