King & Wood gets in-house patent counsel
When climbing the corporate ladder, in-house counsel must challenge stereotypes around what a lawyer does within a business, finds Tom Phillips.
“My boss won’t listen to me” is by no means just a lawyer’s lament. Many people get frustrated when trying to push issues higher up on their manager’s agenda.
But it is exciting for lawyers who practice IP right now that the rising importance of their stock in trade means they are more likely not just to be heard, but to be participants in some of the most important decisions made in the boardroom.
To do so, those who have climbed to positions of influence must change themselves and the work of their teams from being seen only as “legal” into essential, C-suite partners.
How common is it for in-house practitioners to have a seat at the table? A new International Trademark Association report, to be released in early December, offers some telling insight. The association’s 'In-House Practitioners Benchmarking Report' reflects benchmarking research on the changing roles and responsibilities of in-house brand teams and incorporates data from 500-plus in-house practitioners from 300-plus organisations.
According to the report, only 6% of respondents said their company’s head of trademarks reports to the CEO. But there are other touchpoints: when asked which internal business partners the trademark team has collaborated with, 60% said they work with the C-suite, ranging from multiple times a week (14%), to two to four times a month (26%), to only when necessary (27%).
Psychology: breaking the mould
“The first step is to earn the trust of the C-suite. Without that trust, IP lawyers can be kept out of the discussion,” says Kenneth L Ng, client liaison principal at Davies Collison Cave.
“If an opportunity arises to deliver a legal solution, thus building trust, over-delivering can be a good inroad to that relationship,” he adds.
Although now working at a law firm, Ng spent nine years working as senior trademark counsel within corporations and knows what it takes to get a seat at the top table.
“Wear your legal hat, of course, but wear your business hat too because our clients and the C-suite speak a different language.” - Melissa Rotunno, Blue Cross Blue Shield Association
Someone who also understands this is Melissa Rotunno, vice president and deputy general counsel, brand, for the Blue Cross Blue Shield Association.
Working at an association that represents 36 independent health insurance companies, Rotunno taps into her long-standing professional philosophy: provide practical advice and find ways to allow colleagues to meet their business goals, rather than stymie them with legalese and roadblocks.
She is passionate about what an in-house lawyer needs to do to raise his or her profile and status. According to Rotunno, the challenge is to break away from a traditional view of the legal function within a business; the days of trademark lawyers being one-dimensional and task-orientated are over.
“It’s key to be considered a business partner, a business enabler, and not a block to business goals. Wear your legal hat, of course, but wear your business hat too because our clients and the C-suite speak a different language,” she explains.
Some IP lawyers are lucky enough to have roles that contribute to their company’s bottom line, rather than solely being an expense item. Raymond Millien, chief IP officer, Volvo Car Group, has the enviable position of being able to show value directly through his team’s own deal-making.
“The first step is to earn the trust of the C-suite. Without that trust, IP lawyers can be kept out of the discussion.” - Kenneth L Ng, Davies Collison Cave
Aside from his role as head of IP, Millien is the chief executive officer of Volvo’s corporate venture arm, Volvo Car Technology Fund. The technology fund is living proof for non-lawyer decision-makers that innovation, IP, and revenue are connected, and a good example of a company realising the importance of having an IP lawyer with access to the top table.
“When I walk into the room, people see me just as much as a businessperson as a lawyer, so I think that helps,” he suggests.
Reporting to Volvo’s general counsel, but able to brief the executive management team when needed, Millien says he spent his entire in-house career dispelling the historic reputation of the IP lawyer as a hindrance to commercial activity.
“In my time at Volvo I’ve established the IP team as deal-makers and not deal-breakers. Often, we’re the ones driving the deal,” he says.
Not everyone can work in an IP-rich industry like automotive, which Millien agrees is flourishing with activity right now.
“I’m not sure every company has made that pivot, but here we’re well on our way. It’s a matter of whether your boss gets it.
“IP is typically the biggest spender within any legal department and they want to see the importance of this spend. You have to show value,” he adds.
“When I walk into the room, people see me just as much as a businessperson as a lawyer, so I think that helps.” - Raymond Millien, Volvo Car Group
As the senior lawyer within Alibaba’s Southeast Asia business, Christopher Y Chan has implemented a training regime for new hires that is designed to challenge stereotypes about what a lawyer is and does.
Chan is group EVP and head of legal and government affairs at Lazada Singapore and RedMart (Singapore), two of Alibaba's fastest-growing e-commerce businesses in the region.
“In e-commerce, you have an industry that is just starting to be regulated in Southeast Asia,” he explains. “It’s an industry where everything moves quickly. Generally, it’s better to have a lawyer in the room to at least triage the situation before you get too far down a path you can’t reverse from.”
Chan believes his business background helps his inclusion in the C-suite. He previously worked as a corporate lawyer at Finnegan, Henderson, Farabow, Garrett & Dunner in the US before leaping into the creation (and sale) of two startups.
“I study the business intently, not just from a legal perspective but from an operational perspective,” he says. At Lazada and RedMart, newly hired lawyers have a unique introduction to their roles. During the first three months, they are tasked with shadowing delivery drivers, taking customer service calls, and working in the warehouses.
One reason for this approach is that this industry sector will not wait for lawyers to catch up. “You can’t just read a book on e-commerce: it’s evolving so quickly,” Chan says.
The other reason he “breaks in” new recruits in this way speaks to how he wants the rest of the business to perceive the legal department. It’s about respect, he says, noting, “I have my lawyers delivering groceries with the operations team so they don’t see us as ‘suits’ but as partners who are trying to learn the business.”
“It’s better to have a lawyer in the room to at least triage the situation before you get too far down a path you can’t reverse from.” - Christopher Y Chan, Lazada Singapore and RedMart
Business sense: know what they know
Some IP lawyers may think they already demonstrate their value by providing legal counsel. After all, isn’t that what they are hired to do? Well, yes, but there is more, explains Rotunno.
“Ensuring any legal missteps is a given, but what value are you adding?” she says.
According to Rotunno, to add business value, it is a must to understand your company thoroughly. Studying your company’s corporate goals and long-term strategic business plan are ways a lawyer can tune in to senior management’s thinking.
For example, she asks, “Have you met with the leadership team responsible for articulating those goals to see how the brand, or technology, weaves in and how your role supports those functions?
“Relationships are key to engendering trust in your team that they can be relied upon,” she continues, adding that building networks allows the legal team to anticipate and guide the business team when it pivots—essential in relation to COVID-19 issues.
Jennifer Hamilton, vice-director and senior counsel, IP Americas, at Diageo North America, prefers to limit meetings with senior stakeholders to an as-needed basis.
“Creating a scenario where you can get an audience is the most important thing,” says Hamilton.
Time spent building relationships with senior managers puts an in-house lawyer in a position to influence the creative process along the way.
“You must avoid an ‘us and them’ mentality,” she added. “If you want to be a good in-house lawyer you have to be a good partner, building the relationships so you’re sitting in the meetings, helping the creative process—that’s how you will be successful.”
It requires a different mindset from that of, for instance, outside counsel, whose job it is to assess risk, pass along information, and then walk away. The best in-house counsel are the ones who will brainstorm a problem until they find a solution, Hamilton suggests. It is also her “favourite part of the job.”
One of her proudest moments at work came when the company was onboarding a new creative agency last year. The company said it was going to invite Hamilton along, but the agency recoiled, saying: “Don’t bring the lawyers, they shut everything down.”
Hamilton recalls that “the business responded with: ‘You haven’t met our lawyer. Trust us, she will help move everything forward’.”
Hamilton and Ng both say it boils down to trust. Business-minded colleagues will trust a lawyer who has read up on their company’s business and marketing strategy, knows the sector, and can run a strengths, weaknesses, opportunities, and threats (SWAT) analysis.
“You must avoid an ‘us and them’ mentality. If you want to be a good in-house lawyer you have to be a good partner, building the relationships.” - Jennifer Hamilton, Diageo North America
Communication: mind your language
The way a lawyer speaks, the terms he or she uses, and their methods of communication all play a huge part in being accepted into the C-suite.
“I once asked the chief innovation officer about my role and value to her, and her response was that I was approachable, practical, and strategic in my advice. She says I considered long-term impact while simultaneously working to solve the present-day question,” recalls Rotunno.
A question that lands on Rotunno’s desk is never an issue—it’s an opportunity. She explains: “An issue presents a red flag, creates the impression that a roadblock exists.” Getting to the point quickly and limiting the use of legal jargon also help.
“It’s all a part of bringing value,” she adds. “The C-suite has to understand what you are saying—plain high-school English works—and the limited time anyone has to get their argument across means being concise is vital.”
Similarly, Millien insists that the difference between good lawyers and “great” chief IP counsels is communication skills and emotional intelligence.
“Can you explain the complex to someone with a non-technical background in two minutes?” he asks.
His other advice: “They don’t want you to say ‘no’ all the time. They want to know how to achieve their objectives within the legal framework. To understand your clients, you have to understand their business. To understand their business, you have to speak their language.”
Ng suggests another approach. “Learn to tell stories,” he said. “Infographics have been a friend of mine in the C-suite. The right image, coupled with the right narrative, can get you exactly where you need to be.”
Confidence: never mind a little risk
Confidence is a personality trait that appears to be essential among top in-house counsel.
“You have to have some confidence and the ability to lead to succeed in this role,” Rotunno says.
“Being confident is important to me. When I know what I am solving, what the expectations are, what the risk tolerance is, and the political issues I will have to get through—that’s when I am most confident and impactful.”
Millien seconds that. “Often you’re making multimillion-dollar decisions in 30 seconds,” he notes. “So, you have to have some confidence.”
But, he clarifies, he does not mean “blind” confidence. Knowing that his law and engineering degrees “get older every day,” Millien keeps learning by reading material relevant to his industry, such as technology, geopolitical, and legal articles, and speaking to people with different perspectives. “I urge my team to do that as well,” he says.
While it may go against a lawyer’s inclination, learning to take a little risk is also essential, according to Ms. Hamilton. “Without it there would be no business,” she says.
“It’s about recalibrating your own perspective to ask: ‘What is the right risk level for the company?’.”
This takes time, and sometimes things will go wrong.
“That’s OK,” she says. “If you’ve made good decisions with your business team, it shouldn’t be the end of the world.”
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C-suite, INTA 2020, in-house counsel, IP lawyers, trademarks, health insurance, Volvo, automotive industry, e-commerce, COVID-19, innovation