Intellectual Property

Successful IP Associate Checklist: Breadth (Part I)

Acquiring breadth of experience as an IP associate bears important fruit later in a lawyer’s career.

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Checklists are important. Pilots (and their passengers) rely on them every time they fly. So do surgeons when performing even the most routine of operations. As with many things, however, a checklist is only as good as the person or people who put it together. A checklist created by an amateur pilot without deep and broad experience flying planes, for example, might be helpful to that pilot. But it would pale in comparison to a checklist created for taking off and landing a 777, created by an industry-wide consortium of expert pilots. In short, the value of a checklist is reflective of the expertise and thoughtfulness of those creating it.

In my experience, lawyers do not use checklists nearly enough. Perhaps because they are time-consuming to create. Nor are they easily delegated to associates to craft, except for perhaps the most mundane or routine tasks, like handling ECF filings in a particular court. Moreover, creating checklists runs counter to the familiar lawyer pretension that all matters are necessarily unique — thereby justifying static (and high), rather than variable, billable rates whenever the lawyer can get away with it. Either way, I have no desire to create a checklist in this series of columns. Instead, I want to encourage IP associates — particularly the newbies who may be starting work at their first post-law school firms over the next few weeks — to start thinking about what kinds of checklists a successful IP associate might aim to use.

To that end, it is helpful to consider what the true goals of a successful IP associate should be. Now that I am over a decade removed from my own time as an IP associate, I think the best articulation of what an IP associate (and any lawyer) should strive for was made by one of my own supervising partners, the inimitable and exacting Barry Schindler of Greenberg Traurig. He would often exclaim how important it was to learn how to do things right so “you know what you are doing when you are 40 years old.” A clear exhortation that I should do whatever I could to get both broad and deep experience in as many aspects of IP legal practice as possible, while I still had the guidance of more senior lawyers readily available.

At the same time, the built-in wisdom of that statement is in forcing associates to recognize that the lawyer they will be at 40 can and should be a much better version of the lawyer they are now. To get there, however, IP associates must be both curious and determined, as well as self-motivated. I have yet to see a firm where there is a genie doling out the “best experience” for each and every associate out at each step of every associate’s career. But that is okay, since it helps distinguish the associates actually cut out for long-term success in IP practice from their just-collecting-a-check compatriots. But before you can start planning how to achieve the goal of becoming a well-rounded IP associate, it is helpful to think a bit about the difference between broad and deep experience, while acknowledging how important getting both is in any successful legal field.

Let’s start with how to get broad experience — otherwise known as trying to get exposure to as wide a range of lawyers, clients, and legal matters as possible. We can discuss each in turn, but first a word of caution. It can be very frustrating to ambitious young lawyers when they don’t get the exposure they want to a breadth of matters. If you find yourself in that situation, try and remember a few things. One is that nothing lasts forever, and that good work on whatever you are stuck with will open up other opportunities later. Second, that you can and should always seize whatever control you can of your time to make sure you don’t get discouraged. So try and keep a side project — whether it is an article, research project, or whatever — going at all times. Heck, you can even create a checklist for the type of matter you are stuck on to help the next generation of unlucky souls stuck with a similar project.

Back to acquiring a breadth of experiences as an IP associate. We can assume you will seek them out, while keeping in mind that the words “I can help” carry disproportionate power at law firms. Start by taking an inventory of the partners in your group. Can you find a way to work with as many of them as possible? Expand that out over time to trying to work with partners in other offices (believe me that making a good impression on them is super important in partnership election discussions about you) and other practice groups. Grab opportunities to interact with other lawyers you are working with, whether they are local, co-, or even opposing counsel. There is something to learn from everyone, even other IP lawyers

Take a similar approach to acquiring a breadth of exposure to different types of clients. In IP, you can find yourself working with inventors and designers during one hour, followed by discussion with in-house counsel at a global technology company the next. Breadth of client exposure includes seeking out a chance to serve foreign and domestic companies, of all sizes, operating in a wide variety of industries. Again, true breadth of experience needs time, so be patient. But also be mindful of whether the firm you are at is giving you as broad an exposure to a range of clients as you think you need for long-term success.

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Perhaps most importantly, seek out breadth of exposure to as full a range of different IP matters as possible. It helps keep things from getting stale professionally, and in my view, there is little value to either a lawyer or a firm for junior associates to classify themselves as strictly patent or trademark lawyers, for example. Yes, client matters will drive an associate’s exposure to the different IP disciplines, but associates should also be seeking out exposure to each of those disciplines as well, which means looking out for patent (including design patents,) trademark, copyright, and trade secret matters. Ideally, that exposure will include experience with litigation, prosecution, and licensing matters — including at least some exposure to marketing of IP services, litigation funding considerations, and IP acquisition or divestment matters. It may not all be possible at your current firm, or with your current practice, but it is worth being ambitious about acquiring that full breadth of experience as quickly as possible. 

Ultimately, acquiring breadth of experience as an IP associate bears important fruit later in a lawyer’s career. Having broad experience can make a senior lawyer more marketable, as well as more attractive to clients with a range of IP needs. Broad experience also helps prevent burnout, while allowing the bearer to see and appreciate the interplay of different aspects of IP rights. In short, broader is better when it comes to experience for IP associates. So start thinking about how achieving breadth would impact on your personal IP associate checklist. Next week, we will strive for some depth.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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