This content is from: Patents
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
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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.”
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.”
Gravy training
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.”
In-house appreciation
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.
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