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   May/June 2002


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RISK TAKERS: FROM IN-HOUSE TO MY HOUSE

A Corporate Counsel’s Fling With Solo Practice
Trial and Error in a One-Man Office: Lessons Learned

By Ernest A. Schaal

I had worked in-house for 24 years, but when my employer decided to move to new headquarters in another city, I chose to make another kind of move. I became a solo patent law practitioner. I set up my office in my home, purchased sound technologies and planned my marketing strategy. The long-term prospects looked good. The practice, though, would be short-term. It lasted for a year and a half. What went right and what went wrong? For those contemplating a move to solo life, here are the lessons that I learned.

Lesson One: The Internet Isn’t Everything

Be wary of putting too much faith in the power of the Internet. I love computers and I based my marketing strategy primarily on my Web site and active participation in patent newsgroups. This strategy got me plenty of exposure, favorable comments from my peers and some inquiries—but it didn’t get me work.

I realize, in hindsight, that I didn’t design my marketing strategy to attract the right type of clients. My practice was limited to U.S. patent practice, which is expensive. It costs thousands of dollars to file a patent application, and still more money during patent prosecution. There are no guarantees that a patent will issue or that the invention will bring in revenue. For a corporation pursuing a patent, such fees are the cost of doing business. However, for the casual inventor with a "brilliant idea," the money is a serious obstacle. Unfortunately, most of those seeking my patent advice on the Internet were casual inventors. The Internet might be a great source of work for other types of legal business, but it didn’t work for me.

Lesson Two: Networking Is a Must

What did work to bring in business was old-fashioned networking. Always keep your eyes and ears open toward making and maintaining contacts. I hate networking and have never been good at it, yet it was the source of most of my work. I went to county bar meetings, attended patent law seminars, joined committees of the local chamber of commerce and became generally active in my community.

While much has been written on the art of networking by people who do it better than me, I offer this simple, key advice: You need to network, even if you don’t network well. It’s still one of the best approaches to client development.

Lesson Three: Part-time Can Fill Slow Time

If you have poor marketing skills or experience a slow time in your practice for whatever reason, get a go-between to deliver work. I had a good business relationship with a lawyer who ran a legal temp agency. We met at a local bar meeting and she hired me as a part-time employee. My pay wasn’t as high as it would have been if I had brought in the work myself, but the money helped pay the bills when business was sluggish. And I never had to worry whether the clients in those matters would pay me, since her agency handled that. Based on the amount of other work that was coming to me directly, I was able to adjust the part-time hours I worked for her agency as needed.

Lesson Four: Ads Have to Hit the Target Dead On

Be extremely clear about the services you provide when wording your advertisements. My most successful advertising venue was the Yellow Pages, but my first ad brought in poor-quality leads. The ad stated that I limited my practice to patent preparation and patent prosecution, yet many of the resulting calls related to immigration or employment law. Knowing something was wrong, I carefully redid my Yellow Pages ad for the next year. It was the same size and contained the same basic information about my practice as the first ad—but it brought much better results.

What was the critical difference between the two? The first ad used the terms patent preparation, patent prosecution, appeals and infringement opinions. Apparently, the callers were confused by the word appeals, thinking I handled any type of appeal. I omitted that term from my second ad. Instead, the copy stressed my 25 years of patent experience and 20 years of residence in Marin County.

Lesson Five: A Startup Needs Cash Backup

Be clear about how much time and money it takes to start a law office. Most say that it takes one to two years before you can break even, although some claim to have done it in less time. Be prepared to run in the red for a while. When you start, have enough money in the bank to cover a year’s business and living expenses. If you don’t have that type of money, what are you going to do if your practice is slow to develop?

Lesson Six: Mental Preparation Is of Equal Importance

Be psychologically prepared to wait out the hard times. When I started, I was prepared financially, but not psychologically. I had believed that the Internet would bring in business immediately, and when that didn’t work, there were scary weeks while I tried to develop an alternative marketing strategy. The insecurity diminished when the business improved.

Lesson Seven: "Solo" Means Alone

Be ready for the loneliness of solo practice. As an in-house counsel, I constantly interacted with people. I am not a social animal, but I found I missed that daily contact much more than I thought I would. In many ways, working solo evokes the loneliness of being a long-distance runner. As I mentioned, when I went solo I became very active in my community—it was not just to generate work, but to have human contact, too.

Then, an amazing opportunity to work in Japan arose. A year and a half after opening my solo practice, I packed it in for another major life change and headed overseas. And I began interacting daily with people again. Suddenly, I wasn’t lonely anymore.

Desires Can Become Realities—Take Chances, Gain Opportunities

I never completely overcame the insecurities that come with solo practice. But when all was said and done, I knew they were more than counterbalanced by the other factors that make running your own practice so desirable: being your own boss, setting your own hours and even choosing what computer operating system you will use.

I am very glad that I went into solo practice for yet another reason. It gave me the courage to follow my 40-year dream of working overseas. I don’t think that I would have had the nerve to move to Japan if I had remained enwrapped in the warm cocoon of in-house practice. Solo practice made me more willing to take chances, and for that I am especially grateful. If it had not been for the opportunity to work in Japan, I would still be working as a solo today.

Ernest A. Schaal (eschaal@max.hi-ho.ne.jp) lives in Gifu, Japan, and works as a U.S. patent attorney in ONDA TECHNO Intl. Patent Attys.