Choosing Outside Counsel

When choosing outside counsel, pay attention to the associates. As a former associate, I learned that they don't just support the process; they critically shape it.

Few things are more nerve-wracking than hitting ‘send’ on a draft you’ve poured 20+ hours into. If it's off, you question your competence and prepare for the hit on your efficiency (and standing at the firm).

I'd get a mini adrenaline spike whenever I get email from inventors. I'd first read the email Preview: did they say "LGTM", or was I about to spend my weekend rewriting everything?

In my 3rd year, I was tasked to write the first set of patents for Google's AI chips, now called Tensor Processing Units. I was particularly anxious because 1) the technology was state-of-the-art, 2) I billed way more than I should have to just understand the disclosure materials, and 3) it was a high priority focus for Google. Stakes were high.

It turned out well. The engineers were happy. One told me: "Impressive. You understand this better than some engineers on the team."

It's also when I realized: patent quality starts with the associate, not the partner.

As exceptional as my reviewing partner is, he simply didn't have the time to go as deep on the technical details. By the time the partner sees the draft, the groundwork has already been laid.

The associate plants the flag. The initial claims set the boundaries of the patent. Partners might adjust the framing, but full rewrites are rare. You can’t easily redraw a map without knowing the terrain. That's why the depth of the associate's understanding is the first outline of the map, and everything else builds from there.

This was one of those "how the sausage is made" moments.

Since then, when evaluating outside counsel (or any other apprenticeship structure), I'd get to know the partner but also focus on the associates. Without a doubt, partners set a baseline of work product quality. But if the associate asks great questions, the odds of an excellent patent go way up.