(Author) Intellectual Property Attorney

My manager is awesome, I have autonomy, empathy, and respect. But, I am the 2nd attorney in the entire company and the legal gaps give me anxiety. I’m considering moving on after less than a year. The business has no idea about the role legal should play. But they are willing to listen. I get the C-Suite’s ear a few times a year. I think the next time I get before them I need to level with them that things need to change and their legal needs are far beyond the status quo. 

Things to know about the company and situation:

• It was founded in the 80s (not a startup and is very mature), acquired in 2000s, has 3k+ employees and around a billion in revenue.

• I’ve spent my first year building trust and they already come to me for everything. However, I’m only IP and I know they need support in other areas of law. Which they do not have. Also, now that they come to me for everything… it’s a lot. Enough for three IP attorneys and at least one specializing in technology transactions. Not to mention employment, and all the other areas of law that are not covered by any legal counsel at all.

• I’m not trying to get them to address all risks. I’m trying to get them to understand there’s more to it than what they’ve been looking at in the past. And have the infrastructure to at least be AWARE of the risks they want to ignore.

• Right now they have me focusing on IP which in their mind involves filing patents and trademarks. But there are a million other IP-related and IP-adjacent issues that they’re not even aware of.

• They release products without ANY legal review other than me doing freedom to operate and identifying patents and trademarks to file. I KNOW there’s a lot more to consider than that when releasing a product. They do field tests with sh*tty NDAs. They collect data and there’s nothing in any of the agreements about any of that. No one is looking at any of it. A lot of the products are in emerging technology where the law is in flux and always changing. AND they’re releasing globally. They have a strong presence in Europe and Asia (I’m a US IP attorney). I cannot know ALL LAW in all countries. But they’re not even using outside counsel outside of filing patents and trademarks.

• There’s another person who’s referred to as “legal” in Europe but not an attorney, and is basically a contract manager that they refer to as “legal.” And this person told me it’s always been like this since they’ve been there for 5+ years. And historically they’ve been told there’s no budget for outside counsel.

• This is my first in house position. They only address IP via myself and one other attorney. 98% of all other legal issues go unaddressed. I don’t even know where to begin when bringing this up.

My other issue is I have no accounts for westlaw or Thompson Reuters or anything (yet). I’ll have to ping my law firm friends to pull things for me from those sources.

Please advise how to persuade?

General Counsel Responses:

• As the sole attorney for a regional company of nearly 400 employees - I applaud you for taking this step. I hope they listen to you better than mine has.

• Your job in-house is to highlight real (not theoretical) risks and let the business decide what they want to put resources into. You probably have like 50 things you think need to be done. You get to pick three (maybe four) to focus your time on and get the business to devote resources to. 90% of your job is figuring out what things you and the business can ignore (because they aren't real risks or the risk is minimal given your size/scope or because the effort is outsize versus risk reduction) and for how long (eventually you should get to some of it) as the business grows. - Foster growth. Manage risk. Control costs. In that order of priority.

• Here's a more detailed summary of what you should be doing from a similar post. https://joinfishbowl.com/comment_n8qq2k3ncx.

• That sounds pretty normal for early-stage companies (even most places around for 5-10 years are still working on those things). Take this opportunity to educate them and build trust. They need to understand you're there to help them, not slow them down. If you do it right, they will come to you about everything, rather than you having to find out about it or hunt them down to address issues.

• Wait... There are only two attorneys? You should have at least 10.

• I encountered this recently and put together a memo and powerpoint with a road map of the minimum we needed to start doing. I included concrete examples of legal issues/losses/etc. and gave it at the C-Suite level. They were shocked to see some of the legal outcomes I presented to them from broken NDAs, DOJ, SEC, private litigation, etc. The good news - it worked. The bad news - it worked and I am now trying to implement it with a very small team. Better news, they approved me for 2 additional heads just this week!

• IP attorney: there are a ton of resources out there especially from Thompson Reuters, the big legal services about structuring your legal dept. Some gaps are universal - contract/commercial, L&E, compliance, etc., but others will be closely tied to your business, e.g., regulatory specialties. You should also evaluate support functions to address any gaps there. I find it useful to pull DOJ cases on particular gaps for the company and add those in. So, likely anything you pull together will be/should be different. If there is a Board, even if it is private, there is a ton of good stuff about good corporate governance that will help you make your case for addressing gaps. I find it particularly impactful when I include cases about the officers or director being held personally liable. That typically really hits home 😂

• Is the company in trouble or stable? Start-ups or in trouble, or both, can lead to some behavior that is a bit cowboy in nature, and can come back and bite the company in the tush.

• Company may have some bad news brewing and are rolling the dice. Are the big bosses acting strange?

Counsel Responses:

• It's your job to advise, and if there are only a few attorneys, you should have the gravitas to command the ear of at least one C-Suite to explain the needs. And, if you don't, the other attorney should. Put it in practical terms, be direct but also within your role. Point out what you see and what in your history allows you to make that determination.

• That all sounds crazy, but if they’ve been doing this for 40 years without a problem it might be hard for them to see why they should change.

Attorney and Associate Responses:

• Is your manager an attorney? - Small legal depth cannot do it all. Read up on Legal triage. Do a risk and gap analysis. Ask for more OC budget. You can't fix everything. Focus on what's important. Raise the issues, then execute what is reasonable and humanly possible.

In-house? Be a part of the conversation on Fishbowl (anonymous).