January 2012 | The Changing Practice of Law
Interview by Wendy L. Werner
Dennis Donahue is the founder and principal of CreatiVenture law firm, an intellectual property firm in St. Louis, MO. He can be reached at www.CreatiVentureLaw.com.
It may sound unusual, but my path to a career in the law started with the explosion of the Space Shuttle Challenger while I was working on my aerospace engineering degree. I was preparing for work on my masters project in hypersonics research, and as the story unfolded about the failures to heed the engineers’ warnings about launching when there was ice on the vehicle from the abnormally cold weather. I decided that I would become an engineer’s advocate. At that time, I really did not know what role I would play, but I knew that I would finish my master’s degree, get a job in the aerospace industry and go to law school.
My plan was to work as an engineer by day, attend law school at night and work myself from engineering to become a lawyer in an aerospace company or maybe even NASA!, the Apollo space program hooked me at a very young age, and I was undaunted even after the Challenger disaster . I found that the continuing education reimbursement programs of most companies excluded law school. Human resources personnel would proudly report that their companies covered most of the tuition costs for doctorate and MBA programs, but when I asked about a law degree, they would shake their heads and tell me that it was not covered. The answer was very different at McDonnell Douglas where the tuition reimbursement for law school was 100% for the part time evening program.
To show my dedication to McDonnell Douglas, I devoted myself to engineering work for several years before I started law school. It was great work: creating new designs for aircraft, testing them in wind tunnels and then working with NASA on a flight test aircraft. During my first year of law school, I was assigned to the AV-8B Harrier program, and one of my job responsibilities was to support the flight test program being performed the US Marines and Rolls-Royce for the new engine. The flight test would take me back to the East Coast for several months. Fortunately the administrators and faculty at Saint Louis University School of Law were very understanding and granted me a leave of absence for a semester.
Most of my engineering managers were very supportive of my goal to become an attorney for the company, but they were also very realistic and cautioned me that there was no established path for an engineer with a law degree to transition from the engineering department into the law department. At the same time, they promised me that however they could help me achieve my goals within the company. True to their word, after I had taken the leave of absence from law school to support the Harrier flight tests, my engineering management put me on a litigation team which included business managers, attorneys and engineers from the company as well as outside legal counsel. A major litigation case had erupted between the company and the Department of Defense over an aircraft program, and the attorneys needed engineering support to make their case. This position allowed me to perform my engineering duties and to take on associate-level work for the attorneys. The connections that I made during this time ultimately led to my decision to focus on intellectual property law and resulted in my first job as an attorney, within the Patent Law Group of the company’s legal department!
While I was going to law school, I was initially focused on becoming a “corporate attorney” for the company. My father did some corporate work in his Donahue & Votto law firm back in Connecticut, but I did not know much about intellectual property law. When I was working with the attorneys on the litigation team, they told me that intellectual property law would be a great place for me to use my engineering skills as an attorney, especially as a patent attorney. I enjoyed working on the litigation team, and I found that I also enjoyed working on the technical aspects of patents. I am very thankful that my engineering management put me on the litigation team and the attorneys took time to work with me and help guide me in my choices during law school.
My first job after law school was a direct result of the connections that I made while I was on the litigation team at McDonnell Douglas. One of the attorneys on the litigation team introduced me to Tim Courson, a patent attorney at the company who became my first mentor. Tim explained that the law department did not have a training program for new attorneys so they were more inclined to hire law firms’ associates who had been trained in the law, and this was the primary reason that there was no path from the engineering department into the law department.
We talked about firms in the St. Louis area and in other parts of the country, including some that performed patent work for McDonnell Douglas, and how I could make myself more attractive to these firms. Being on the litigation team and seeing how closely in-house counsel worked with law firm attorneys, I also asked about the possibility of an internship within a law firm that did work for the company. The biggest resistance to my idea for a training program probably came from the partners within the law firms, not from the company’s management. Such a training program would likely be more acceptable to smaller law firms who have closer personal relationship with their clients, particularly those specialty firms that perform niche work for large clients as well as a broader range of work for smaller clients.
In the same year in which I graduated from law school, Tim had been promoted to Chief Patent Counsel for the company which neither one of us could have predicted when we had first met years earlier. I still had my engineering job to which I could return, but my wife was pregnant with our twin daughters, and this was the time to make the change to law. Tim liked my dedication to the company and its technical community. I was still on the litigation team, and Tim told me that he had heard good things about me from the attorneys and managers on the program. He recommended that I submit my resume and that I should be sure to get letters of recommendations from the attorneys on the litigation team because I would certainly be competing for the job with associates from law firms. Seven years after I started my career with McDonnell Douglas, I achieved my goal and was hired into the law department.
Just after I was offered the position in the law department and while I was finishing up on the litigation team, I knew I needed to clear one additional hurdle – I needed to pass the bar exam. Tim did not want to have to explain to the company’s General Counsel why there was a non-attorney in an attorney position. I changed my employment status to part-time so that I could take the bar review course during the day and study at night. There was great relief and celebration when I passed the exam.
When Boeing acquired McDonnell Douglas, Tim left to become the chief patent attorney at another company, and I found another job within Boeing as a technology licensing manager for the military aircraft division of the company. I stayed with Boeing for a little over a year after the merger, and then looked for other opportunities.
My next job opportunity came from another mentor that I had known for years, since I was in law school, and we continued our relationship when I was an attorney in McDonnell Douglas. As Tim was exiting Boeing, Greg was forming a new intellectual property group at a large law firm in St. Louis with more than 200 attorneys. Greg offered me a position as the fifth patent attorney in the practice, and I gladly accepted.
The practice grew, and within a year, Greg had promoted me to a senior associate level where I was guiding other associates and reviewing their work. Greg made the comment to me that he had known my character was good, but he was not certain when he had hired me how well I would make the transition to law firm practice from my in-house counsel positions, and he was very glad when I proved myself to him and the other attorneys in the firm within my first six months.
I took on jobs that were outside of my immediate comfort zone, I performed all of the research that I could do on my own (lots of it on my own time), and I asked for help when I needed it.
I did not get overly nervous when taking exams, but I got so nervous when I started writing my first patent application at McDonnell Douglas that I literally started sweating. Writing the patent application wasn’t even a mandatory part of my job because we would send the invention to outside counsel to prepare the application, but I knew that to be a good patent attorney, I needed to be able to define the invention over the prior art references and draft patentable claims that covered the invention. My wife suggested I contact a friend who graduated before me who was at a law firm drafting patents, and she suggested that I call David to talk about his process of drafting the patents. David helped me overcome my own fear that I had built up.
When I was invited to be a partner at a large law firm that was growing its intellectual property group, I noticed that the practice group had a fantastic trademark paralegal, Mitzi, but there was no lead trademark attorney in the group. Until that time, nearly all of my legal work had been patent drafting, patent litigation, technology licenses and related intellectual property agreements. Even though I did not have any formal training in trademarks from my previous positions, I knew that a well-functioning intellectual property group had to have a leader for its trademark practice. When I walked into Mitzi’s office and said that I wanted her to teach me everything that she knew about trademarks, she did not know whether I was serious or joking. I was so serious that each night I would stay late to read and outline a trademark treatise. As my knowledge of trademark law grew, Mitzi found that she had an attorney with whom she could discuss trademark issues and we worked very closely as a team. Ultimately, we were able to grow our trademark practice to the point where we were extremely efficient, and we could offer very competitive flat fee rates (after I proved the profitability of the flat fee rate structure in a business plan that I prepared for the CFO of the law firm – but that is an entirely different story about the way that big law firms operate).
Generally, I learned from other people, and when there was a need for a niche practice in the intellectual property group, I filled it.
The first turning point was leaving my position within the company to go into private practice.
The next turning point was moving to a firm in which we were growing the practice group, and I needed to take a leadership role in its risk management, the development its trademark practice and ultimately its management.
The latest turning point has been the creation of my own firm with my wife as my business manager, and the development and growth of the CreatiVenture law firm that I cofounded with Linda Lewis that is dedicated to entrepreneurs and focuses exclusively on intellectual property.
Leaving the company for private practice was a significant career change. For years before I started my own firm, many of my clients had suggested that I should do it because they saw me practicing law in a way that they found to be different than many other attorneys. They liked it and thought that it would be good for me and good for my clients if I were able to practice law in my own environment. It was a big change to start my own firm, but I had been practicing law in my way for long enough (including implementing the flat fees for trademarks at the big firm) and my clients were extremely supportive of my decision
I had been counseling entrepreneurs for more than a decade before I started my own firm, and my entrepreneurial clients were my greatest supporters. My mentor Tim once called me “the best cheerleader that the inventor community has ever had.” For me, it’s about dedication and a commitment to excellence.
I found myself following the same advice that I had given to my clients – I started with a business plan and performed some direct market research. In my market research, I included clients that I knew would not leave the large firm, but I wanted their perspective on what they liked about the large firm and what they did not like, and I wanted to know what they saw in me as my personal strengths. My wife became my unpaid business manager and communications expert, and we kept our costs down. For years, I had used my name as a domain (dennisdonahue.com) and linked it with the firm where I had been a partner, and within 48 hours, we had transformed the web site entirely. My wife Amy had been a television news producer, and she helped me write a script and she put out a press release which got our new firm national attention in the legal press. It is wonderful to start your own practice and have your clients provide encouragement along the way.
In the 15 years that I have practiced law, I have seen some changes:
Those of us who attended law school at night and worked during the day did not have any significant opportunity to take on a job as a legal intern or a law clerk. Even though this limited our exposure to lawyers who could help guide us on our paths, many of us find other ways to connect with attorneys in the communities in which we were already working. Many of us in the night law school saw ourselves as having already achieved some success in our careers, being in technically challenging professions or working in business, and we looked at attorneys more as peers in another profession rather than as enlightened gurus that we must revere. In considering a mentor, I recommend a person with whom you feel comfortable being yourself.
Technology will continue to play an increasingly important role in the delivery of legal services.
I expect that more corporations will do more work in-house and look to niche law practices for support. I anticipate that there will be more do-it-yourself support services like Legal Zoom, and law firms will increasingly partner with these businesses.
Define your niche now, do not wait. Ask your clients what they want to see and implement the changes that they want which will improve your services and bring in even more business; be proactive – it is called market research.