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Successful IP Associate Checklist: Depth (Part II)

Last week’s column focused on the importance of acquiring broad experience as an IP associate.  This week, it is important that we consider the value of also getting deep experience as early and often as possible as an IP associate. This may seem an ambitious goal, particularly for IP associates who may not feel like control over their careers is fully theirs yet. But with the right ambition, coupled with a willingness to learn, it is possible for IP associates to accumulate both broad and deep experience. It will take some time, however, say at least eight-to-10 years of practice for most. Step one is realizing there are no shortcuts, particularly when it comes to earning deep experience. It helps as well to have some guidance, which I hope this column can provide in at least a small measure.

For even the best IP associate, getting broad and deep experience will not be easy. It could even require moving firms if the mix of matters one is assigned to is too restrictive or superficial. But an ambitious, proactive IP associate can and should be able to get the experience they need, as well as the experience they want, if their goal is a long and satisfying career practicing IP law. Whether their future job is in-house, or as a law firm partner, or as something else is irrelevant. Building your foundation as broadly and deeply as possible — in terms of your technical legal skills, your understanding of legal economics, as well as your marketing skills — is essential to longevity and satisfaction in your career. Since we have already addressed the elements of acquiring breadth of experience as a young (experience-wise) lawyer, we can now focus on what deep experience means for IP lawyers. Because knowing what you need to do is the first step towards doing it.

In some ways, acquiring deep experience can be easier than acquiring broad experience — particularly in a law firm setting. Especially for IP lawyers, who tend to focus on one area of IP practice, sometimes even from the earliest days of their career. Say you are a young trademark associate, working for a firm that does trademark prosecution and enforcement for large multinational clients. There is a good chance you will be spending the overwhelming majority of your time exercising responsibility over the paralegals and more junior lawyers responsible for maintaining the trademark dockets of the firm’s key clients. In addition, you may also be the primary interface between the more junior members of the prosecution team and the relationship partner. 

In that scenario, there is a good chance you will be doing a lot of the same types of things on a daily basis. Your practice would be focused on docket management, responses to office actions, supervising new trademark filings, and perhaps occasionally drafting cease-and-desist letters or co-existence and other trademark-related agreements. By doing so, you will be acquiring deep experience in the area of trademark prosecution — which is a good thing. To fully reach the depths of experience in that area as much as possible, however, you should be looking at the delta between your experience and that of the senior lawyers you work with. Where is there is a gap between your experience and theirs? That is precisely the area of depth you should be striving to achieve — and the types of experiences you should be aiming to acquire.

Let’s make things concrete, using our trademark prosecution associate as an example. At a certain point, any young lawyer will get comfortable with a certain task, provided they are given enough chances to produce a similar work product. Let’s say our associate is at the stage where they have sent out a dozen cease-and-desist letters to infringers of the client’s trademarks. Or 10 takedown notices to Amazon, seeking to remove infringing listings. At that point of that associate’s career, we may be able to say that they have acquired deep experience in those specific aspects of a trademark practice.

The trick, however, is not to get complacent about your depth of experience. Ever. That same trademark associate may be sending out cease-and-desist letters. But are they the ones negotiating with opposing counsel when the response letter comes in? Or are they handing the matter off to a more experienced lawyer at that point? If the latter is true, then in order to acquire deeper experience, our trademark associate must find a way to get a chance to negotiate with opposing counsel at some point. 

The trick, therefore, is to focus on what more senior lawyers are doing that you are not yet doing. And if you are the most experienced lawyer at a particular level at your firm, you should be looking at lawyers outside your firm to see what you should be doing to get deeper experience. It never ends. But that is part of what makes IP law so interesting and fulfilling. There is always something to learn, at least if you have the humility to realize that more learning is something that can benefit you. 

Ultimately, IP associates who thoughtfully compare their experience levels with their more senior colleagues — and find ways to position themselves to close the experience gap — are much more likely to acquire deep experience in the areas of IP practice they find themselves focusing on. While acquiring deep experience is never easy and often fraught with setbacks and mistakes along the way, there is no substitute for actually getting that experience if the goal is to know what you are doing as a 40-year-old lawyer. Because no IP lawyer wants to end up well into their career with limited and superficial experience. So aim wide and aim deep, so that your hard work early on pays off later.

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.