Feature

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

By Stephen F. Rost and Derek B. Lavender

Published in Landslide Vol. 11 No. 3, ©2019 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Young Lawyer (Derek) to Seasoned Lawyer (Steve)

DL: What do you find most challenging about IP practice?

SR: I think there are many challenges in intellectual property. Like any practice of law, Derek, it is always challenging to find the right solution for any given issue and for each individual client. As you know, the solution for one client may be completely different for a different client, and it is always important to understand your client and their situation. As a lawyer, I think we are always striving to provide the best guidance to our clients and represent their interests as best we can.

In addition, the practice of law is constantly evolving, and it is challenging to keep up with the changes that are happening all around us. As you will recall, a few years ago we were helping a client file a patent application to cover a software program that has made a significant impact in his industry. We filed the priority applications before Alice was decided by the U.S. Supreme Court, and then, as we all know, the law under 35 U.S.C. § 101 changed significantly. It is always challenging to foresee how the law might change and provide guidance both as the law exists currently and what it might look like in the future.

DL: How would you say the practice of patent law (and IP law in general) has changed since when you started practicing?

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.

 

DL: What types of technology existed that perhaps don’t today that you felt made your practice easier?

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.

DL: Similarly, what types of technology did you not have then that you do today that help improve your practice?

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.

DL: At what point can a patent attorney start transitioning from mentee to mentor?

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.

DL: What defines success in the role of an IP attorney?

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.

DL: Can you name some things a young IP attorney should be doing to become successful in our practice?

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.

 

DL: What would you tell young attorneys entering the profession (or even in their first five to six years of practice) that you wished you were told when you were at this stage in 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.

 

DL: What is the most interesting patent(s) that you have worked on?

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.

DL: Are you comfortable talking about a situation that can be characterized a “learning experience”? What were the learnings?

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.

DL: How do you manage the workload with engaging a client and earning their trust?

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.

DL: Would you say the field of IP law has become more or less competitive since when you started practicing?

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.

DL: Any takeaway tips for attorneys who are in their first five to six years of practice?

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.

Seasoned Lawyer (Steve) to Young Lawyer (Derek)

SR: What makes this profession rewarding for you?

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.

SR: Where do you see opportunity areas for the profession to help you grow more?

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.

SR: What are you looking for in a mentor?

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.

SR: What does “career growth” mean for you at this stage?

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.

SR: What does success in the profession look like for you?

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.

SR: What do you think your practice needs to help make accomplishing your tasks easier?

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.

SR: Do you see a trend in challenges among colleagues at a similar stage in your career?

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.

SR: What do you like most about practicing as a patent attorney?

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.

 

SR: What is the most interesting project you’ve worked on (patents or otherwise)?

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.

SR: What are things you’re learning that you would pass down to colleagues entering the field?

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.

SR: What do you think is the most important aspect of the attorney-client relationship?

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.

SR: Any takeaway tips for attorneys just entering the profession?

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.

Stephen F. Rost

Stephen F. Rost is a registered patent attorney with Taft Stettinius & Hollister LLP and focuses his practice on intellectual property (IP), including patent preparation and prosecution with a technical emphasis in the mechanical and electromechanical arts. His patent experience includes technologies and products related to engines, transmissions, powertrain systems, vehicular applications, construction and forestry machinery, agricultural systems, farming, farm equipment, telecommunications and mobile devices, electromechanical devices, and IT systems. In addition to patent preparation and prosecution, he also advises clients with respect to others’ intellectual property, including auditing clients’ intellectual property and providing guidance with respect to infringement and technical design around analyses. Prior to working at Taft, Steve worked at a midsize law firm in Indianapolis. Before entering private practice, Steve was an engineer for Allison Transmission Inc. and General Motors Powertrain. Steve earned his BS in mechanical engineering from Purdue University, and received his JD from Indiana University Robert H. McKinney School of Law.

Derek B. Lavender

Derek B. Lavender is a registered patent attorney with Taft and practices in all areas of IP law, with a focus on patent preparation and prosecution. He has experience preparing and prosecuting patent applications in technologies such as medical devices, material science, electrical control systems, agricultural equipment, electropneumatic systems, electrohydraulic systems, and transmission assemblies, among others. He further applies his experience in patent law to execute patentability and noninfringement opinions and has experience reviewing and drafting patent licensing agreements. One of Derek’s primary roles at Taft includes developing and managing patent portfolios to ensure efficient and robust protection of intellectual property. Prior to working at Taft, Derek worked for several years at Harley-Davidson Motor Co. in the full vehicle test and evaluation group while earning his BS in mechanical engineering from Kettering University. He received his JD from Indiana University Robert H. McKinney School of Law with a graduate certificate in intellectual property law.

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