Learning from Each Other: An Interview between Two Generations of IP Attorneys

SR: I think one of the most significant changes has been with technology. When I first started my practice, there was no electronic filing system with the U.S. Patent and Trademark Office (USPTO). We had to file everything by paper. There were a few late nights when something had to be filed that day, and we had to rush to the post office near the Indianapolis International Airport to ensure we received the express mail stamp on our papers.

I also remember one or two trips to the USPTO to conduct patent searches. The USPTO search engines were much quicker and more efficient than trying to do the searches from our office. If we did not travel to the USPTO for the searches, we would often hire a third party to go to the USPTO and do the searching. Today, we obviously have a number of online resources that allow us to search from our office, home, smartphone, or wherever.

I think another change in our practice is an increase in diversity. There is an emphasis among law firms and in-house legal departments to become more diverse, which has been a positive development in our industry. I don’t recall seeing as much diversity when I first started, nor do I think many clients focused on diversity. That has changed over the years, and for the better.

SR: That is a tough question. So many changes in technology have improved my practice, but if there was one thing I relied on early in my practice, it was my handheld dictation device. My original dictation device used small tape cassettes that when they ran out of space on one side, you had to remove the cassette and flip it over. Looking back, it was cumbersome and yet it was reliable. I never had any trouble using it, and it never malfunctioned. Today, I use a dictation device to record invention disclosure meetings on occasion or to relay something I need my legal assistant to type out, and while today I have a more technologically advanced dictation device, it has not been as reliable as my original one.

SR: We could take this entire article and talk about the many different technologies that have come out since I started my practice. However, if I am limiting it to one technology, it has to be the smartphone or tablet. The ability to have access to my law practice at my fingertips at all times is incredible. Now, I could probably institute a better and healthier balance with the use of my smartphone, but you cannot downplay the impact the smartphone has had on my practice. I imagine this is true for many other lawyers too.

SR: First, I think every person is different where that transition takes place. Some people, like myself, may enter the practice of law at an older age, whereas others enter much sooner. I would probably say after a few years of practicing law, one is ready to begin mentoring a younger lawyer. But I would encourage you, Derek, and other young lawyers to look for any opportunity to mentor someone. Every mentoring relationship is different. Each of us travels along a different career path, and so a younger attorney with many different experiences may be ready to mentor someone else sooner than one who has had fewer experiences. Plus, I truly believe that when you begin mentoring someone you pick up on some things as well that can be helpful in your practice. As I have mentored you over the past few years, I have seen how you do things in your practice and some of it has carried over into my practice. You have some great ideas, and those ideas have allowed me to grow as a person and lawyer. In the end, if you want to be a mentor, start when you feel ready and look for the right opportunity to jump in. You can really make a big difference in someone else’s practice.

SR: Derek, if one thing has been true for me, it is that success does not come without some pain or failure. I had this during my early years as a young IP lawyer, and many, including yourself, may too. I don’t think you can be afraid to fail, because through it you will learn some valuable lessons.

My definition of success is being someone who is reliable, trusted, highly reputable, and involved in the community. If you can be these things, then I believe you can achieve anything you want. If those you work with and those in the community hold you in high regard, then I believe success will follow you. If you can be trusted and relied upon by clients, then I believe you will be successful. If you are involved in some capacity to improve and make life better for those in your community, then I believe you will find success. Lastly, you may be all of those things, but I strongly believe you must love what you do and want to help others.

SR: Wow, there are a lot of things. For the sake of brevity, I will provide a few. It is not easy being a young IP attorney and being able to see the big picture. It takes time and some growing pains before you can get there. With this in mind, I recommend doing several things:

First, I am a big believer in meeting people face to face. With technology today, it is so easy to send text messages, e-mails, tweets, and other forms of non-face-to-face communication. However, I think the best way to meet someone and develop a relationship is through face-to-face networking. Now, this may simply be meeting for coffee or lunch, or playing golf or doing something outside of work. When I was a young associate, I made it a priority to ask every partner in the firm to go to lunch. Most partners were willing to schedule this with me, and when we went to lunch, I asked about their practice and how they got started. I never wanted to talk about myself, because in that moment I was not important. I really tried to learn something new from every partner I met for lunch. This really helped me get a footing at my law firm, but it also allowed me to learn from some great lawyers who had already experienced both success and failure. I learned some great tools for business development that I still use today. In a law firm, sometimes your best clients are the other lawyers in your firm.

Besides face-to-face networking, I strongly recommend getting involved in some organization in the community. I joined a young professionals group called Young Professionals of Central Indiana when I was a young lawyer, and I quickly met a lot of other young professionals both in law and outside of law. Many of these young professionals are friends and contacts today.

Lastly, I recommend never turning down an opportunity to work with someone in your firm or company. The work may not be the most interesting and it may be a bit outside of your comfort zone. However, it shows your willingness to try something new and work with anyone. I strongly believe you are never too young or old to learn and try something new. Again, you need to build a reputation in your early years that will carry forward throughout your career.

SR: For me, I had spent several years as an engineer and even continued my engineering job during my first two years of law school before transitioning to a law clerk position. I enjoyed my engineering job and it was comfortable for me. When I first started my law practice, I felt overwhelmed by the amount of work thrown at me and the never-ending issues that needed to be resolved. I felt like I knew very little and even wondered if this legal career was the right move.

I learned two things through this, and I pass this advice along to you as well. First, it is important to find someone you can go to and ask dumb questions to without being made to feel uncomfortable. We all need someone early in our careers who understands where we are at, and I think a mentor relationship is extremely valuable. Second, it is really important to be humble and accept a senior lawyer’s critique of your work. It is never easy being told that your work has flaws, or your brief has a lot of holes in it. During my first year, my patent applications had so much red ink on them you could hardly read what I had typed. It is easy to become defensive and not seek out advice from more seasoned lawyers. Plus, you may find that not all lawyers are receptive to or good at training young lawyers. With that said, there is still something to learn from everyone, so if you can humble yourself to receive proper training and refrain from being defensive toward criticism, you will find that you can quickly ascend the learning curve.

SR: I have worked on so many interesting patents that it is difficult to narrow this down to one. I really enjoy working on control systems for transmissions, since this takes me back to some of the work I did as an engineer. I have also done some power system work on agricultural and construction equipment, which has been really awesome. I think my favorite machine to work on has been a feller buncher used to cut down trees in a forest. I have had the opportunity to go to a few forestry shows in the past, and this particular machine is extremely impressive to see in person. I have written and prosecuted several patents on different control aspects of the feller buncher, and I have probably enjoyed those the most.

SR: As I mentioned previously, I wrote a few priority applications to cover a software program for transferring timeshare property before Alice was decided by the U.S. Supreme Court. At the time Alice was decided, we had an office action issued by the USPTO whereby our claims had been rejected for nonpatentable subject matter in view of Alice. My client and I traveled to the USPTO and interviewed the examiner in person. We successfully argued that our claims were indeed patentable subject matter, and my client received a patent. Following that, we filed two other applications, and neither one has successfully issued in view of Alice and additional case law that came out post-Alice.

This experience taught me several things. First, the law never stays the same. It is constantly evolving, and you have to anticipate that things may be different in the future. I now tell clients that today the law is this, but in a few years the law may be different and we need to be open-minded about this. Second, I was honest with my client about what Alice meant and the prospects of getting a second patent. Although we had been successful with our first application, I felt the second one would be tougher especially after the Federal Circuit had time to issue additional case law interpreting Alice and the USPTO published its guidance to examiners as to how to examine software applications. I expressed this to my client, while maintaining that his idea was still very good and we may eventually overcome the § 101 rejections. My client appreciated the honesty, and we have continued to keep this type of dialogue between one another through today.

SR: First, the one thing I have learned practicing for over 10 years is that you need a good team of people around you to manage everything. The legal work is just part of managing a client. There are administrative tasks, billing, and managing the relationship that also require significant time. It is important to have a good team of people to help with each of these tasks. You, for example, are a key member of my team and I trust you with doing the legal work, engaging with the client, and building the relationship. We both share a legal assistant who is incredible in helping with the administrative workload that comes with our practice. Our accounting department has a designated person or two who we work with on billing issues. There are many people on our team who collectively allow us to serve our clients, and each person performs important tasks to help us meet the expectations of our clients. So, it takes a team approach and effort to manage the workload.

I think for us to earn the trust of our clients, we have to be able to understand their industry and what issues can and do arise. If we are able to put our feet in their shoes for even just a moment, I think we can better understand the issues they face. Clients often view us as part of their team, and so we have to be able to relate to them and their circumstances.

It is critical for us to communicate clearly and timely with our clients. Clients look to us to either solve or manage problems. They need answers from us, and in today’s technological world, we are expected to respond much sooner than when I first started practicing law. If we are responsive, then clients understand they can reach us at any moment and that we are available.

Plus, we are hired to give answers. I have worked with some lawyers who add countless disclaimers before or after giving an opinion. Most clients already know the disclaimers; they just want your honest opinion so they can make the ultimate decision. If a client knows you will give an honest opinion and your rationale for that opinion, then a client will trust you.

Ultimately, though, there is no substitute for doing quality work. You can do a lot of things really well, but if you don’t provide quality work, then clients will not trust you.

SR: In my opinion, Derek, the practice of IP law has become more competitive since when I started practicing. First, without having the statistical data to prove it, it seems like there has been a steady growth in the number of IP lawyers practicing law. In addition, more law firms have added intellectual property as a practice area since I started. When I first entered the practice of law, I recall only a small handful of firms handling IP issues and having one or more IP lawyers. Now, almost all of the large and midsize general practice firms have an IP practice, and those practices have a number of IP lawyers.

I also think the increase in law firm mergers and acquisitions has increased competition. Law firms have targeted IP boutiques and smaller IP practices to increase their footprint and ability to handle complex IP issues.

Lastly, clients have added IP counsel to their legal departments to handle more work in-house. This has allowed clients to control costs better. Moreover, clients are more apt to look for fixed-fee arrangements or different billing arrangements from the traditional hourly rate. These changes have required us IP lawyers in private practice to get more creative with our billing arrangements, which has increased competition at the same time.

SR: One thing my first managing partner told me when I entered the practice of law is that we are called practitioners, not experts. We maintain a “practice,” and thus we are always learning something new and how to improve as lawyers. As you get past the first few years of your practice, remember to always look for ways to improve your craft. Never get too comfortable with where you are, as there is always something you can be doing to improve your practice.

Second, look for ways to mentor younger lawyers. As you reach your fifth year and beyond, you can offer helpful guidance to younger lawyers just getting started. Plus, the trials of those first few years are fresher to you, and thus you can better relate to them.

Lastly, I am a big believer in doing things that you love. I think this is particularly important in the practice of law. Since we spend a significant portion of our lives practicing law, make sure you are working on things that you enjoy. For me, I love my work and the clients I get to work with. I also love spending time with family and friends outside of work, and getting involved with charities and other organizations. Find things you enjoy doing both in your law practice and outside your practice, and do it well.

DL: Providing clients with guidance on developing and protecting their intellectual property is the most rewarding aspect of this profession for me. Helping a client identify the patentable aspects of their idea and developing a strategy to protect that idea in the market is very fun for me. I also really enjoy working with engineers and inventors to learn about what they have developed and why their particular idea will be useful to others. I get to see a lot of innovation and creativity in this profession, and that is really rewarding to me.

I also enjoy working in a relatively close-knit legal community where you get to know your colleagues very well. I have the privilege of working for or with attorneys who are doing some pretty complex legal work in my field, and it is great to be involved with projects that have an impact on the legal landscape.

DL: As a young attorney, it is always very valuable to get feedback on work. This can be difficult in today’s competitive markets where supervising attorneys frequently have overwhelming demands for their time. As a young attorney, work may be reviewed but it is not always common to receive constructive feedback on how you can improve professionally. I think the profession can help young attorneys grow by elevating the importance of peer review of work executed by young attorneys to create an environment that provides young attorneys with constructive feedback regarding the work they do.

Further, the profession as a whole is improved when the sum of its members are keeping each other up to speed on best practices and changes in case law. Accordingly, I think if the profession as a whole encourages constructive feedback among its members, the profession will continue to grow in addition to creating a positive environment for young attorneys to grow.

DL: For a mentor, I am looking for someone who is living their life in a way that I hope to mimic when I am their age, both professionally and personally. Professionally, this means someone who is honest, respectful, hardworking, and wise. Personally, I also look for a mentor who is easy to talk to, committed to friends and family, and eager to help others in the community. I think mastering the work-life balance can be very tricky in this profession, and I am looking for a mentor who is a good example of how to do that. When selecting a mentor, I think it makes sense to analyze all of the components of their life to determine whether they are the type of attorney and person that I hope to be. I want a mentor who will tactfully analyze my practice and provide insight on how I can improve. Further, I would look for a mentor who is well respected in the legal community. Finding a mentor who is respected by their peers is a good indication that they embody many of the traits discussed above.

DL: For a younger attorney, I think career growth should primarily focus on perfecting the technical components of the practice. More specifically, I believe career growth means both learning how to practice in your particular field and implementing that knowledge by generating work product utilizing what you have learned. It is easy to get caught up in using numbers to gauge growth, such as hours billed or salary. I try to stay away from that mentality and gauge career growth on whether I think I am advancing my skill set. Ultimately, I think career growth for a young attorney should focus on improving knowledge and practice of law and not look to arbitrary numbers that may be tempting metrics.

DL: To me, success relates directly to your reputation in the legal community. A successful attorney should be well respected among his or her colleagues. I think more traditional forms of success will follow if an attorney is well respected in the profession. For example, when the legal community believes you are an intelligent, honest, hardworking attorney, the more traditional forms of success such as job opportunities or landing big clients will necessarily follow. At this point in my career, success focuses on building a strong reputation with my colleagues and clients.

DL: My practice needs continued application of technological advances. I think the more we can rely on technology to execute the menial tasks of our profession, the more we can apply our skills to the analytical side of intellectual property. With specific reference to my practice as a patent attorney, I think fully utilizing technology to execute thorough and quick prior art searching is a continuing need. As the application of AI and the like continues to improve, I hope to see continued improvements to artificial prior art searches.

DL: I think the biggest challenge among colleagues who are at a similar stage in their career is properly addressing work-life balance. We all want to succeed and do well in this profession, and unfortunately I think that is often measured by the number of hours we work. It is easy to focus on hitting hours and neglect other aspects of our lives. I have seen many young attorneys get burnt out because they did not have an appropriate work-life balance.

DL: I really like retaining the engineering component of my education. As a patent attorney, I get the privilege of learning about all of the technological advances developed around me without having to put in the months or years of hard work as an engineer to develop them. For me, this feeds my inquisitive nature and keeps me excited about my next work project.

DL: I have a client that developed and patented a leaning trike. The trike utilized a complex pneumatic system to lean into turns similar to a motorcycle. This client built prototypes of the system and it performed very well. This particular project stands out for its innovation, interesting subject matter, and great execution by the inventor. To see more about this project, check out https://www.youtube.com/user/DiamondBackDivision.

DL: Patent law, and especially patent prep and prosecution, is a very difficult field to master academically. If you are entering the field, find an experienced mentor and appreciate any time and feedback they give you. Start generating as much work product as possible and try to keep track of the work you have done. It is amazing to me the lessons I am currently learning, or being reminded of, by receiving office actions and the like from applications I drafted years ago. You can learn as much legal theory on obviousness as you want, but forming arguments against a rejection based on an application you drafted is an invaluable experience. Try to get as much “hands on” experience as you can early on so you can build a fundamental understanding of how the practice is implemented.

DL: I think communication is the most important aspect of the attorney-client relationship. If a client fully understands their legal options, and the cost of pursuing those options, you can avoid potential issues later on. When talking with a client, it is always beneficial to outline the worst-case scenario for a proposed action to make sure they can make an informed decision on whether they approve of that action. You do not want to be in a position where the worst-case scenario is occurring and you did not properly warn your client of that possibility. Frequent and thorough communication is a great way to ensure you and the client are always on the same page.

DL: How you respond to a mistake is probably more important than trying not to make a mistake. You are inevitably going to make mistakes in your practice; taking ownership of your mistakes and finding solutions for them is crucial. Further, note each mistake and learn how to improve your practice based on what you learned. I would love to be able to say that I have never made a mistake in my practice, but the truth is some of my greatest lessons are the result of addressing my mistakes.