Young counsel ‘love’ for pro-bono helps firms train and retain
Lawyers say doing free patent prosecution work for independent inventors and small businesses gives them more experience and job satisfaction
Michael Horton and Valencia Burton were once actors who lived in Los Angeles and worked mostly as extras in commercials and television shows. The couple, 51 and 44 years old respectively, worked in steady real estate and banking jobs before then.
Michael liked to invent things, but he and his wife never thought they would have the time or resources to make a living out of his R&D. The two certainly never thought they would be able to get a patent for his work – much less, two.
Yet the couple, who are both from the Bay Area in California, were awarded their first registration for an alternative energy car sun visor (10,079,503) from the USPTO in 2018. Michael and Valencia now run a small operation where he manages the R&D and she handles business development. They have a pending application for their second patent, for an oral hygiene instrument, which was published two months ago.
Stories such as this clearly demonstrate how patent pro-bono organisations and the IP law firms and practitioners that support them can make a huge difference to people’s lives.
Michael and Valencia got these patents with the help of California Lawyers for the Arts (CLA) – a non-profit organisation focused on providing legal services to innovators and artists – which paired them with a pro-bono patent lawyer.
“I was always creating things but never took any of it seriously,” says Michael. “One day my wife said that we should focus on all of these ideas and inventions I had. I started to focus on that and never noticed anything about pro-bono patent work.”
Valencia adds: “The lawyers were excellent; they specialised in IP, had engineering backgrounds and were able to provide us with a 360-degree array experience.”
Michael says it was very important for the two of them to have this support because he would not have been able to afford the patent – which costs an average of $10,000 to obtain – without it. He says that the CLA programme and others like it are wonderful and supportive mechanisms for inventors like him.
What these stories don’t necessarily illustrate quite as well, however, is that the lawyers involved get as much out of the experience as the inventors (minus a patent).
That’s a good thing for IP law firms. Not only does the work provide job satisfaction to lawyers who help law firms retain staff, and young talent in particular, it also helps equip the lawyers with additional skills in prosecution and managing client relationships.
“I love doing pro-bono work,” says Scott Peachman, senior litigation associate at Paul Hastings in New York. “I really do enjoy it and it brings me back to an earlier part of my career when I used to write patents.”
The best things in work are free
Peachman and his colleague Bill Belitsky, of counsel and New York pro-bono chair at Paul Hastings, work with the CLA’s New York counterpart Volunteer Lawyers for the Arts (VLA) to help low-income inventors with guidance regarding their preliminary patent application materials.
The two lawyers and their colleagues help out in the programme by analysing patents and categorising them into one of three categories: thumbs up, thumbs down or needs more work.
Belitsky says he and Peachman get enormous job satisfaction from the work because of how grateful clients are at the end of it. “Billable clients show their gratitude by paying the bill, but a pro-bono client just shows their gratitude, and that’s not something you get every day.”
He adds: “When you get that stamp of approval from someone you’ve worked hard for, it just feels great.”
That job satisfaction, they say, translates directly into talent retention. Peachman says the attorneys he knows who have done this kind of work enjoy it and continually ask to do more.
Patent lawyers on the US west coast who have worked with the CLA share these opinions. Chris Schaffer, senior associate at Kilpatrick Townsend in San Diego, who manages the pro-bono programme for his firm, says he finds the work to be particularly fulfilling and that he is sure it helps his firm retain lawyers.
“For a large company, a patent is often just another asset in a huge portfolio,” he says. “For a solo or micro inventor, though, getting a patent is a huge deal. I worked with one inventor who was a veteran and 80 years old who had a life-long dream to get a patent.
“The great thing about CLA and programmes like it is that they give us the opportunity to help out people like this.”
Pro-bono work also gives lawyers a chance to work on new and interesting projects outside their usual comfort zones, which similarly helps IP firms retain talent.
As a patent attorney in California, Schaffer points out that most of his billable clients are tech companies and that he spends a significant amount of his time prosecuting software patents. In his pro-bono cases, however, he has more choice about the kind of work he takes and could end up working on a new kind of brake mechanism for a skateboard or something equally different and fascinating.
“The work gives you a bit more choice, which you don’t usually get as a patent attorney. You get given a list of cases and you can choose those that really pique your interest.”
Pro-bono work might not bring in the big bucks, but it is a useful way for law firms to train up their talent – particularly new starters – and help them develop the skills they’ll later apply to billable work in a less pressured environment.
Thomas Fuller, associate at Perkins Coie in San Francisco, who prosecutes patents for CLA-recommended clients, says his firm got him to do a lot of pro-bono work when he started out because it enables him to learn the ropes without being pushed to meet billable client deadlines.
“The firm gives you a healthy encouragement to get into pro-bono work because it’s good for everyone involved – including the lawyer, who develops new skills. I hopped on cases immediately with pro-bono because it’s a great learning environment for younger lawyers.”
Belitsky at Paul Hastings adds that pro-bono cases present a great opportunity for younger lawyers to learn from more senior counsel at the firm who they might not otherwise have many chances to work with.
“The initial round of legwork on these cases tends to be done by junior and mid-level associates. Scott [Peachman] is an exception because he is more senior,” he says.
“It is a great development tool for junior associates to work with someone like Scott, or someone like Isaac Ashkenazi, who is a litigation partner at the firm, and really work in a different context. So rather than always thinking about enforcement at the litigation stage, pro-bono works gives young lawyers a chance to have those interactions and work on something that’s maybe a little less high pressure.”
Pro-bono work can also help lawyers develop their skills in managing client relationships by forcing them to work with people who are a little less patent-savvy. Independent inventors and small businesses often don’t have the same grasp of patent law and IP monetisation as larger entities.
That lack of knowledge forces counsel to put themselves in the shoes of their clients and provide more rounded advice on how best to leverage IP. And as any good manager knows, the best lawyers aren’t those who simply focus on the technical applications of the law, but those who try to understand why the business wants something and anticipate their needs.
“The fact that pro-bono clients are often less sophisticated in their legal knowledge can be challenging,” says Schaffer at Kilpatrick Townsend. “It can take more time to reassure them, to make sure they understand everything.”
A dedication to pro-bono work might also help law firms stand out with clients or potential clients. While in-house counsel often cannot participate in pro-bono work themselves because of company restrictions on representing clients who are not their employers, many are involved with it in other ways.
Corey Salsberg, a board member of the CLA and global head of IP affairs at Novartis, for example, is a big supporter of pro-bono work. He tells Managing IP that he did a lot of pro-bono work when he was in private practice and is glad to see law firms continuing to participate in such programmes.
The CLA has a few other in-house board members including Erik Metzger, senior counsel at US technology company Nvidia.
As well as making external counsel stand out, pro-bono patent work can be life-changing for clients and hugely beneficial to law firms. Firms across the world that don’t do it might want to consider participating in free programmes in the future.