|Column: Midwest Report
Patent Lawyers in General Practice Firms
By Dan Scott
I’ll preface this article by stating that I’m a headhunter who is the son of a patent attorney who had been in management in both boutique and general practice firms before he retired. Over the 25 years I’ve worked with a lot of patent lawyers and prefaced every initial discussion with that statement, in the hopes that it gains me some credibility in understanding the unique pressures they face in private practice.
While many patent attorneys are in boutiques (firms that focus exclusively in this area of practice) many others benefit from being in a large commercial general practice firm. It’s important for management of these firms to understand this practice and its fundamental differences from other areas of law in order to work with these practitioners successfully.
Patent, that is to say, patent prosecution, the process of protecting inventions by obtaining patent protections for their client, is a fundamentally different practice than any other I’ve encountered. Much of the work is performed on a flat “fee per application” basis, so the ability to leverage work with nonlawyer paralegals and technical drafters can help tremendously. I do cringe when I hear the term commodity but the reality is that it is a volume practice. Prosecuting a lot of applications per month is a key to a successful group.
A common complaint is that patent prosecution is viewed by management as a “loss leader” that will lead to patent infringement litigation. When a client believes that their intellectual property has been violated it is often critically important that they protect their interests. GP firms certainly understand how to litigate successfully, and patent litigation is often high stakes (and high rate) bet the company work, which large firms clearly know how to do.
The challenge for these GP firms is to understand how to work with patent prosecutors in a way which is conducive to their success, and unfortunately, many firms don’t do so. Prosecution can be made to work in a general practice firm too. It just requires an understanding that it’s a different business model and adjusting accordingly.
Here is what I have seen management in firms with successful intellectual property practices do:
They listen to their patent partners in terms of what they need to be successful. Group leaders are given discretion in decisions such as partnership promotion and bonuses for associates.
Revenue, rather than rates and hours are the primary criterion as to how success is defined and rewarded, because so much of this work doesn’t fall into the billable-hour model. Firms that try to shoehorn the traditional billable model into their patent practices tend to experience a lot of dissatisfaction and turnover. I always look at retention when re-evaluating a potential client.
Leveraging with nonlawyer support staff is often higher because much of the work can be done as well by paralegals, technical writers and docketing clerks.
Partners are encouraged, supported and rewarded for bringing in work from other practice groups and are perceived similarly to partners in corporate and litigation groups. Firms that have a policy of shared origination credit have an advantage in encouraging patent partners to look internally for work, because manufacturing companies may not recognize that they have made an innovation that needs to be protected.
Now to clarify, I have seen firms in different markets successfully implement different models. Many high tech oriented law firms, where the pace of innovation is accelerated, have patent practices that are highly dependent on their corporate lawyers to stay busy. But here in the Midwest, patent lawyers tend to have more independence in their client relationships.
A friend of mine who is a patent group leader in a large general practice firm shared a few thoughts on this subject with me recently. GP firms by their nature operate with more overhead than patent boutiques, it’s unavoidable. Advertising, entertainment, class A space, are part and parcel of the large GP firm. But there are concrete advantages in the GP firm if you are a partner that is skilled at originating work (i.e., work which you bring in and push to other lawyers) After all, he’s very successful, could go anywhere he wanted, and is happy where he is.
Patent boutiques are a highly successful model as well, I certainly don’t intend to give the impression that they’re not; that may be a topic for another article. One of the really fun things about being a headhunter is having discussions with lawyers about their practice and how it fits into their firm’s organizational structure. Helping you examine whether you’re in the right place for you is the essence of my business.
Dan Scott is director of the Legal Practice Group at Angott Search Group in the greater Detroit area.