I was looking back on my past blogs recently and I realized that it has been a while since I discussed issues related to intellectual property (“IP”). This week, I’ll try to remedy that oversight. For just about any company, IP is an important part of its assets be it trademarks, trade secrets, copyrights, or this week’s topic, patents. Most of my in-house career has been spent with technology companies (or working with divisions of those companies focusing on technology). Everything I know about the topic I picked up along the way. I am not a computer science graduate, nor did I study IP issues during law school. And I handled a few minor IP-related issues at my first law firm. It really wasn’t until I became the General Counsel at Travelocity that I had my initial experiences with patents. First, as the victim of the initial wave of “patent troll” cases. Second, when by default I became the leader of our patent harvesting committee. It wasn’t much of a program to start with but I decided to dig in and learn as much I could about patents and why it was important that we, as a company, tried to develop them. It actually turned out to be a lot of fun, especially getting to interact with our software engineers and other super smart people who were developing the next wave of company technology. Our patent program got better and more refined over time and the USPTO issued a number of patents to Travelocity. I was never one of the inventors on any of our patents but I like to think the legal department played a critical role in developing those patents. In my new job, I realize that we have a similar opportunity to build our program and enhance how we develop patents. So, for this edition of “Ten Things,” I am reaching back to my past to lay out the key points in developing an in-house patent program. I am going to assume you don’t know a whole lot about patents and (to keep things simple) I will focus on the US patent system – but the principles below work in just about any country:
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Most of my friends know that I really enjoy Halloween. While the free candy part is pretty good, I have always liked a good scare. And this time of the year is full of them. Horror movies are a great example. I especially like that the jolt of adrenalin, increasing heartbeat, and sweaty palms you get when you’re watching some knuckle-head fraternity boy decide that he must go down into the dark basement to see “what’s making those weird noises.” Hey, moron, we know what’s going on down there: It’s a monster that’s going to rip your head off and splatter the walls with what little brains you apparently have! Horror movies are fun because you know it’s not real and nothing bad has really happened. There are some scares I don’t like, however. Driving on Texas highways is one. Some of the others are things I have seen at work. I have been an in-house lawyer for a long time. That means I have seen a lot of things. Some good. Some bad. Some downright scary. As I start to think ahead to 2018 and my “to do” list, I have been thinking back on these scary things. I want to be proactive in 2018 and make sure the Legal Department is taking steps to keep bad things from happening or planning what to do if they do happen. Being proactive (and not reactive) is when in-house lawyers add the most value to the company. In honor of Halloween, this edition of “Ten Things” identifies ten things that should scare the bejesus out of in-house lawyers:
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Fall is my favorite time of the year. The weather’s cooler, the trees change color, and football (American style) permeates the airwaves. If you’re big into Halloween (and I am) you get to decorate the yard with zombies and gravestones and then hand out free candy to the neighborhood kids – and snag a few Twix bars for yourself. However, there’s more going on in the Fall than wearing a Nebraska Cornhuskers sweatshirt, admiring the foliage, and handing out candy. If you are in-house counsel, you know this time of year means one particularly thankless task: preparing an annual Legal Department budget. Adding to the fun is that you must figure out in October what you’ll be spending in August of the next year. But no one in the business is crying any tears for Legal. They are all going through the same process. And as we all know, Finance is telling you to be prepared to cut spending (or at best be flat year-over-year). Somehow, someway, you’re going to have to find a way to come up with a spending plan that tries to account for the knowns and unknowns associated with providing legal services to the company.
I recently got back in the in-house game and took on the General Counsel role for Marketo. Which means after two+ years of not having to worry about legal budgets, here I am with my dry-erase markers and my big white board of numbers planning for 2018 legal spend. And as I sit staring at this mess of numbers, I figure that there might be in-house lawyers out there who have never prepared an annual budget, are going through it for the first time, or are just interested in learning how others do it. While there is a lot written about budgeting for specific legal matters, I found very little written about preparing an annual budget. So, this edition of “Ten Things” will walk you through the process I am going through right now as I prepare our annual Legal Department budget:
This past week I was honored to be the keynote speaker at the 2017 ACC Alberta Annual Conference in Calgary. First, let me say that Calgary is a wonderful city and a great place to visit (and the people are awesome too). Second, a big “thank you” to ACC Alberta for inviting me and hosting a tremendous event. One of the topics I spoke on was what to do when you are faced with a data breach. It was a very interactive session with lots of great questions and feedback from the lawyers in the audience. In particular, we spent some time discussing the recent Equifax data breach and the very negative fallout that company is experiencing – mostly because it seems Equifax was very unprepared to deal with a breach. This is very surprising given the nature and the amount of sensitive data in its possession. We also talked a lot about things in-house counsel should be doing before there is a breach. Some of those things were in my presentation, others were brought forward by members of the audience. And as I stood on stage listening to the discussion I knew I had my next blog forming right before my eyes. As important as it is to know what to do if you have a breach, there are a number of things that all in-house lawyers should focus on before there is a breach and by doing so, you can substantially limit the potential damage caused by a breach. So, with big thanks to my friends from Canada, this edition of “Ten Things” will discuss ten things to do to get your house in order before you are faced with a data breach:
I have been an in-house lawyer for almost 25 years, with a large chunk of that time spent as the general counsel. During my time, I have seen my peers and people who worked for me do some really great things and some really foolish things. I certainly did my share of both. As a manager and as general counsel, I often had lawyers ask me, “What are the things I need to do to get ahead here in the legal department?” This is an excellent question and one every manager hopes/expects to hear from their employees, especially those who show the skills and drive necessary to move up the chain. A good manager or more experienced colleague, however, also consider the flip side of that same question and is ready to proactively, or in response to a specific question, counsel in-house lawyers on the things they need to avoid doing to succeed in the in-house world. To cut to the chase, being an in-house lawyer is much harder today than it was 10 years ago, and the wrong move can be your first-class ticket to Unemploymentville. I know that over the long term, I was able to claim the general counsel chair because, among other things, I asked a lot of questions about what I should be doing, but I also listened hard when people told me what not to do or, if I did mess up, I learned the lesson then and there and did not repeat the mistake. That can be easier said than done, especially when the day is jammed with work that needs to get done vs. spending time thinking about what you did – or might do – wrong. I thought this edition of Ten Things should share my list of 10 things that can kill your in-house career:
I was a panelist at the 16th Annual Advanced In-House Counsel Course in San Antonio, Texas on August 18, 2017. I was joined once again by Jason Smith of Apttus and Jane McBride of Optimus Legal to discuss ways lawyers can work smarter and not harder – a worthy goal if ever there was one! Of course, one of the main ways to accomplish this is through the use of technology which we all touched on at some point during the discussion. If you follow this blog regularly, you know that I have recently written on the impact of artificial intelligence on in-house legal departments as well as ways to slay the “Email Jabberwocky.” Both highlight ways technology (and common sense) can help you do more in the same or less time. You also know that I enjoy writing about the use of technology generally by in-house lawyers. And now that I have gotten back in the General Counsel game after two years of private practice, I am focusing even more intently on ways technology can make my and my team’s lives easier. What all of this means is that it is time for my annual “Cool Tech” blog post. You can read my past posts for Cool Tech 2015 and Cool Tech 2016 (and I still recommend all of the technology mentioned there), but this edition of “Ten Things” will discuss an all-new list of cool tech for in-house lawyers. As always, I do not receive any compensation or anything to endorse these products, it’s just my opinion about technology I think in-house lawyers might find useful:
[Note: this is a summary version of a four-part series I wrote for Thomson Reuters earlier this year with some key updates and new sections. You can find the full series by clicking here]
Some of the best scenes in the television show Star Trek (the original version) involve the crew members asking the computer a question and the computer spitting out the answer in the form of a conversation. I was utterly amazed by this and, of course, wanted my own computer that would “answer” my questions. Alas, I was ahead of my time. But, I was recently reading an article comparing the Google Home with the Amazon Echo, two devices that allow you to ask questions and get an answer. From a computer. Just like Star Trek! This brought back two important memories from the TV show: 1) intelligent computers that can talk and answer questions; and 2) never be the crewman in the red shirt. I always lived by the latter and now, it dawned on me, I could start to live by the former too.
Managing a legal project is not an easy task. Not for in-house counsel or for outside counsel. There are simply too many ways for a project to “come off the rails” and turn into a disaster. Usually, the disaster has to do with cost/budget. While blowing the budget is definitely not good, a worse scenario is when the disaster results in the project failing, be it a contract, and merger or acquisition, or a piece of litigation where the stakes are high. A project “fail” can mean big problems for in-house lawyers, all the way up to being shown the door. This is why it’s so important for in-house counsel and outside counsel to be on the same page any time there is a project of material size or risk. The key for in-house counsel is understanding that you cannot simply turn the project over to outside counsel and “hope for the best.” Successful legal projects require the involvement and input of in-house lawyers every step of the way.
Over the past decade or so, “Legal Project Management” has grown into an accepted (and in-demand) way to manage legal work sent to outside counsel. However, it can be a rather involved process and while I am a big believer that it does pay off not all in-house lawyers are ready to step up to the level of commitment required to really do “LPM” right. That’s okay. I think any in-house lawyer can apply the basic concepts of LPM and even a cursory application of the basics will lead to better project management and better results. This edition of “Ten Things” discusses the basics of Legal Project Management and how you can utilize them as a “beginner” to the process:
Almost all in-house lawyers have dealt with mediation at some point. If you haven’t to date, you will. Mediation is a process to resolve disputes between parties where a neutral third party helps facilitate the discussions, negotiation, and (hopefully) ultimate settlement of the dispute. Unlike arbitration, mediation is generally voluntary and non-binding. Meaning, in addition to picking their mediator, the parties get to decide whether and how they will resolve their dispute. There are times when mediation is mandated, i.e., the parties must go through the process such as, for example, when their contract requires it as part of a dispute escalation process. Likewise, there are times when a court will require mediation with the judge (or magistrate judge) acting as mediator (sometimes called a “settlement conference”). Mediation is often your best opportunity to settle a dispute before undergoing the expensive process of all-out litigation and trial. Unfortunately, many in-house lawyers — or their clients – treat mediation like a poor cousin to arbitration and waste the opportunity. This is usually because of either indifference or the idea that you can “just show up” and mediate. Wrong! There are many things you need to know about mediation in order to have the best chance at a successful outcome. This edition of “Ten Things” discusses the key points in-house counsel need to know about mediation.
I realized the other day that it has been a while since I posted an index to all of the blog posts – November 2016 to be exact. Since the last time I did this the blog has grown to well over 2,000 direct subscribers and the American Bar Association has published my book (based on the blog) entitled “Ten Things You Need to Know as In-House Counsel: Practical Advice and Successful Strategies.” Speaking of which, last week I received the highest compliment I could imagine about the book: my Dad read it and said it was “pretty good!” All heady stuff for a guy who started out just wanting to jot down some of the things he learned over the course of a 20+ year career as an in-house lawyer.
I know there are a lot of great blogs and websites out there for you to read (and I’ll be writing about those later this year). So, I am very appreciative of the fact that you make time to read my posts. Based on the comments, the emails, and from talking with many of you directly, I hope I can continue to write about things that interest you and do so in a way that is practical and useful. If not, then I have missed my mark. I know I have missed my mark with being able to prepare a proper index on the actual blog site. I am still a bit wary about messing with the technical aspects of WordPress because I think I’ll delete everything. I know that’s not really likely, but that’s my biggest fear. Anyway, I promise I’ll keep working on it but in the meanwhile, by popular demand(?), here is an index of all of the posts from the beginning back in November 2014 through today: