Hi Lance, tell me a little bit about your background and your practice?
Currently I have a solo IP practice in Fairfax, Virginia, just outside Washington, DC; and I have been a patent examiner for 4.5 years. I spent 27 years in private practice doing patent and trademark and copyright litigation, prosecution, opinions and things of that sort. In general, my client basis is primarily midsize companies and startups that need help getting their IP portfolio off the ground, and managing it going forward.
When did you join the Law Practice Division?
I’ve been a member since the early ‘90s. So it’s been a little bit over 20 years now; but I’ve only been really active within the last three or four years.
Is being more active with the Law Practice Division related to starting your own solo practice?
Actually, it was more in connection with the changing and maturing role within the firm I was with at the time, and a need for greater management input and guidance.
Has being a member of the Law Practice Division had an impact on your previous practice or your current practice?
Yes. The first is that the marketplace for legal services is changing and the Law Practice Management Division has resources to help firms and attorneys adjust to, and follow, that changing environment. I find those very helpful, and certainly as I was investigating the prospect of starting my own firm. Then when I did start my own firm, there were even more resources that helped me get that going and move forward.
Is there a particular area of the Division that you found particularly helpful?
For the most part I found that the Division’s focus on technology as a productivity tool and a review of that technology both from the legal and ethics viewpoints could be very helpful.
Then from a technology standpoint, based on what you’re seeing, what do you think is going to be the biggest shift in practice management over the next five years?
I believe over the next five years the number of online, cloud-based and practice-based tools is going to continue to expand. So that it will enable those who want to go out on their own, or to start a small virtual practice, to do so better and more effectively than they’ve been able to do so before. It also means that if you are in a practice group, maybe a smaller group or you have opportunities for client development, you can use those same sorts of tools to help expand your practice within the firm, so that not only are you more valuable to the firm as a whole, but if there comes a day when you wish to move out on your own, you really have fundamentals in place to be able to do that.
Do you have any practice management goals that you’re working on or thinking about implementing?
For me as a virtual practitioner, there is a lot of room left yet for becoming visible in the virtual space. Not only in social media, but in business media. These avenues for information that relate to my practice.
When you say “virtual practice”, what do you mean by that?
A virtual practice, as I define it, is when one has a home office and you conduct the vast majority of your business through the telephone, internet and email communications. On-site visits with clients are typically at their facility or at some mutually convenient meeting place in between, where one can, for example, get a cup of coffee or have lunch. It really is an opportunity to use a more extended lunch engagement as a business tool, to have more time with the client and talk in greater depth about what they need.
So in some ways it’s part social, but you can actually do some productive work over the course of lunch as well?
Yes, it also gives rise to a greater personal sense of connection between the lawyer and the client so that I can better understand what they need, and they can better understand me and trust my background when I give them advice and counsel. They have some framework in which to evaluate the merits of that advice.
Given that you are a virtual practice, is there one specific technology that you find indispensable?
There are two. And both are cloud-based software systems, because it allows me and my paralegal, who is in another state, to share the same files, to enter time, to keep track of a docket and get the bills done together without having to be physically in the same spot, or trying to share the same physical server in an office somewhere.
And what are those tools?
I use Dropbox for file storage. It has a very convenient way to share files and allow others to gain access while still retaining security. And the other is a practice management tool for docketing and billing that is written for IP attorneys and it goes by the odd name Appcoll.
What’s the biggest difference between what you thought practicing law would be versus what it actually is?
I guess this goes back to kind of my prelaw days for me and my first exposure to patent law was when I was a photographer, more known for being willing to take pictures anywhere, anytime and anyplace. Whether it’s hanging out of a helicopter or scuba diving to take underwater pictures. I got hired for a project to take pictures of a fishing line to determine whether or not it glowed under water.
We had a patent law expert who was on the boat with us who was also a certified diver and I had a lot of time to talk with him. We talked a lot about litigation and litigation tactics and how one sets up the case. When you go through law school, it’s a very litigation-heavy environment for issue spotting and strategic thinking and getting to the right answer using the proper procedures. When you graduate from law school, there’s a lot of thinking about how that plays into the given fields of law.
I was also an examiner at a patent office while I was going to law school. So I saw how patent applications made it their way through the examination process at issue. I figured that there was greater field of law that was primarily transaction work and litigation. I found that there’s both a much greater human dimension and a counseling dimension that really hadn’t been fully explored in law school, that is, to many clients, more important than either trying to defend or prosecute a lawsuit or drafting up a document.
What’s the most unique or unusual case you’ve worked on?
I would say that there are two that kind of bracket the practice. One was an astoundingly simple and elegant invention, and was the foundation of a new business that did quite well. That product was an extended warranty card for consumer electronics that was blister pack that you could buy off the shelf next to the product that you were getting the warranty from. You tear off a card and you pay for it at the register. Then they tear off the card with your name and send it in, and you are covered for that extended warranty. That apparently had never been done before in the insurance market and it was a new physical product that we had some interesting patent issues to get around. But it was for a company called National Electronics Warranties. It continued based on an invention or the skill of the inventor to become a rather a substantial company in the extended warranty product market. I feel pretty good about that.
There was a second product. I do a lot of agrochemical work, and this was a product that was a slug and snail bait that had been developed by a Vietnam veteran. The company became aware of that, and ultimately purchased the patent rights for. It was a product that was made very simply on the notion that snails and slugs are attracted to the scent of beer. And they will feed on tablets that contain a beer aroma and this particular insecticide. They will in fact consume enough of it that they will kill themselves so they will be drunk, happy slugs and snails and ultimately die. It was a really interesting product and I enjoyed working on that one.
What would you describe is your most lawyerlike characteristic?
I am married to a lawyer and she’s now become a merchant on Amazon. But we still have conversations about legal issues and precedents over the dinner table. I’m kind of a topic junkie in that regard. And I really never get away from it. And that unfortunately is very lawyerlike.
What’s your most un-lawyerlike characteristic?
My son and I like to play paintball and we like to go out in the woods with 50 other guys and shoot paint at each other. I still get time to do legal stuff, but getting out and having that sort of fun exercise is nice.
Are there any concerns of liability when you’re doing that?
You sign a field waver before you go out there. So everybody has waved liability for the field and they assume completely all of the risk, but the game itself with the right safety equipment, which is mandatory, is very safe and it is absolutely unlike the experience of sitting behind a desk or talking to clients. I have never heard of a client who looked at me and say, “Quick! Run behind that 50-gallon drum. I will cover for you.” That just doesn’t happen.
Jason Marsh is a digital marketer, and founder of Orlando-based internet marketing agency MARSH8. He frequently writes and speaks on how law firms can implement better online marketing strategies to acquire new clients. Jason is the Chair of the ABA, Law Practice Division, Legal Marketing Interest Group and Editor of Member Spotlight in Law Practice Today.