By Vivek Jayaram
vivek@jayaramlaw.com
A few years ago a client asked me to join them in a series of meetings to vet new patent prosecution counsel (our firm handles a lot of trademark and copyright matters, but at the time did not prosecute patents). Having already established a successful lifestyle brand, my clients had developed a beta version of a mobile software application that they hoped would become a natural companion to and new profit center for the business. They sought patent prosecution counsel related to the software application.
Our first meeting was with a partner from a very reputable IP firm referred to my client from a lawyer in house. Prior to the meeting, my client (GC and CTO) had provided the lawyer with an overview of the brand and the nature of its software application in development. I think it was clear to all of us from the outset that this lawyer was skilled and experienced. And, equally as important, he had a likable personality. However, after my client provided an overview of its business in general and its nascent mobile app, the lawyer’s response began “well I don’t use my phone for anything other than phone calls, but it sounds like you may have something here.”
As soon as we boarded the elevator after the meeting – which lasted about an hour and included some technical discussions regarding a potential patent – the GC turned to me and said “it’s too bad we can’t hire him, I really liked him and he seems like a smart guy.” But, he explained, he couldn’t trust a lawyer to prosecute a patent for a mobile app when the lawyer conceded – in fact, declared – that he had no familiarity with how these applications functioned in the real, consumer-driven world. I agreed.
Knowing a client’s business is just as important as knowing the law that applies to that business. Granted, we cannot be expected to know everything about a client’s new venture or product (especially during an early stage pitch), but each time we seek to engage a new client, we need to do more than look at a LinkedIn page or glean the landing page of a website. There are simply too many resources available – and too many competitors willing to do the work – to use the antiquated “that’s a business question, not a legal one” approach.
It’s not just for posterity, either. How can I tell a client that a startup’s trademark is confusingly similar to the client’s mark if I don’t have a deep understanding of the client’s good or service that bears the mark? The more we know about what a client is trying to do, what customers they’re trying to reach, and how their company operates, the better we will be able to render advice or structure a document in a way that won’t just be legally sound, but also useful from an implementation perspective. Strong legal skills, while necessary, are not alone sufficient to advise clients.
For example, we represent a number of fashion brands who do limited run one-off collaborations with other brands, influencers, and celebrities. I am probably not going to prepare a 20-page licensing or collaboration agreement document for the client or an influencer to sign because that’s not how the industry works. Similarly, it’s likely not the right approach to draft a two-page joint venture agreement for a design firm developing a large scale interactive art museum with a multinational real estate developer. The documents might not be legally “wrong,” but they ignore the realities of these businesses. You get the idea.
We all hear from GCs that they would like us to get to know their business inside and out. When we hear this, we should remember that this is a GC’s way of mentoring us to be better advisors, better lawyers. The best part of being a lawyer at a firm that is industry-agnostic, in my opinion, is learning about different businesses, spaces, and technologies. Too many lawyers – really smart lawyers – fail to unleash their potential by ignoring the value to be added by using a client’s product or asking (off the clock) about why a new version of a product is better than the old one. We should embrace the part of the practice that offers constant opportunities to learn. Know the client, know the industry, know the business.
Next week I’ll write about what I’ve learned from GCs about the importance of predictability of legal fees.