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A Path to Partner—An Interview on Patents, Research, Business Development and Passion with Charles Macedo

Charles MacedoCharles R. Macedo is a partner at Amster Rothstein & Ebenstein LLP, an intellectual property law boutique located in midtown Manhattan. Mr. Macedo is an authority on intellectual property issues. He is the author of The Corporate Insider’s Guide to U.S. Patent Practice and a frequent contributor to The Journal of Intellectual Property Law and Practice, IP Law 360 and other publications.

Career Paths and Opportunities

Real Law: Can you tell us about your firm and what you do there?
Charles Macedo: Our firm is an intellectual property law boutique. We can handle all sorts of legal issues related to patents, trademarks, copyrights and other types of intellectual property, but not other kinds of law. I personally focus primarily on patent and trademark law, and have developed a specialty in helping businesses with computer-implemented inventions, including financial institutions, social media and software-related intellectual property issues.

RL: How did you get involved in patent and trademark law?
CM: I realized early in my career that the Internet and software would be an important part of our nation’s economy, an important focus of the patent and other intellectual property laws, and that I would be good at it. It also happened to be something that I really enjoyed. In 1998, the U.S. Court of Appeals for the Federal Circuit, a court at which I clerked and where all patent appeals are decided, issued two seminal decisions on patent eligibility: State Street Bank v. Signature Financial Group and AT&T v. Excel Communications. At that time, I decided that I wanted to work in this area and develop my credentials.

RL: How did you develop your credentials?
CM: I first started learning about this area of law, and was then fortunate to be able to do work for a few clients who gave me some direct experience. This helped me go on to writing articles and getting speaking engagements on this topic. I also started working on amicus briefs on important cases in the area. It all started to add up. The more I did, the more people turned to me for my expertise.

RL: Can you describe some of the other things that have shaped your career?
CM: It helps that I love what I do. My job marries together all my interests: science, law, history and even science fiction/science fact. I often get to work on projects that would have been science fiction years ago, that are now science fact … and I get paid for it. What we do in our careers is a function of who we are and what opportunities we are exposed to. In my personal life, I have been involved in fundraising and assisting various charitable organizations that help people I know and care about. I would assist those organizations in their legal issues, which led to my development of a subspecialty in addressing intellectual property issues unique to nonprofit organizations. Many of the original projects were pro bono or at cost. The expertise and goodwill I developed with such projects then translated into getting other bigger projects for both nonprofit and for-profit organizations. So pursuing something that was important to me personally helped develop my professional career. I was able to work on both my legal and business development skills.

The Changing Face of Business Development

RL: There’s been increasing talk about the role of business development in law firms. How has it changed?
CM: When I first graduated law school in the 1980s, I was repeatedly told that while bringing in business is helpful, being a good lawyer and having the right people like you was more important. I think that was the old law firm model. However, as the “practice of law” has become more a “business of law,” I think that this has changed. The new economics of the law firm has made bringing in business much more important. The mergers and dissolutions of many long-standing firms and the increased portability of partners and their business have made bringing in business much more important.

Quality of work, diligence and people skills are still crucial, but business development is much more important today than it was 20 years ago. Personally, I believe that success in business development has helped the progress of my career.

RL: What do you see as the biggest challenges of new business development?
CM: I think over the past decade, the legal market has become more and more competitive. I think the tough economy has caused many organizations to be more cost-conscious and driven many firms to emphasize getting business.

As a result, I understand from my in-house counsel friends that they often will get a lot of pitches. I have heard them joke, complain and lament that every time their company gets sued they will immediately receive 10 to 15 emails from outside counsel—some they know and some they don’t—advising them of the lawsuit and asking for the business. This means that it’s important to be smart and careful, knowing that these events occur and how and when to approach them.

RL: How does that affect how you approach new business development?
CM: It’s important to hear about new lawsuits involving important clients or prospective clients, but it’s also important to learn of the new patent cases filed in important jurisdictions. To do that, we use CourtLink® Alerts, which gives us an opportunity to proactively reach out to clients or prospects. Of course, it’s important to make sure that we act quickly, but also to reach out in a smart and constructive manner. Sending a bad email to in-house counsel can be worse than sending no email at all—that’s why it’s important to do your research immediately and get the right information from the right tools. By sending appropriate and targeted pitches early, we have gotten new business that we may not have otherwise, or simply improved the success and speed of securing business from our existing clients.

RL: How do you approach business development with existing clients?
CM: The best business development for existing clients is providing excellent service and great results. But to deliver, it’s clear that knowledge is power, and the tools for research and case strategy development are an important part of that. For example, many patent cases are brought in the Eastern District of Texas. Keeping track of how the judges in that court treat certain kinds of motions can save your clients a lot of time and expense in preparing litigation strategies. Tracking dockets and decisions is a great tool to achieve that.

We also use tools like CourtLink Track to monitor changes to ongoing cases. This allows us to provide much better client service. It is so helpful to be able to track decisions in cases involving the same judge or opposing counsel or client or opponent. I once had a trial scheduled in a case with a new judge—we wanted to know more about what the judge was doing, so we created a CourtLink Track to update us on any decision by that judge in the months leading up to trial. We read every case, and were able to see decisions that helped us develop a better litigation strategy, pursuing some motions and avoiding others.

Development Tips for a Changing Industry

RL: What kind of training do you have in business development?
CM: I never received any formal training in business development. Although, when I was a young associate, a partner of my firm at the time gave a lecture that I never forgot. The idea I took away with me was that whatever you’re doing, people are judging you. So no matter where you are, at a business appointment, a cocktail party or a little league game, you should always present yourself how you want others to think of you—because that is what they will remember.

RL: How much time do you spend on new business development and how do you focus your effort?
CM: I like to work hard. I bill about 2,100 hours a year and spend another 200 to 300 hours a year on new business development. Most of the latter time is spent on weekends, writing my book or articles, preparing presentations, and posting my most recent publications and speaking engagements on social media. During the week, business development includes giving either live lectures or Webinars, participating in Bar Association activities, and speaking with prospective and existing clients.

It’s important to understand what type of business you are seeking, and likely to get, and how to get it. One way of getting new business is simply doing a good job for existing clients, and they will send you more work and recommend you to others. This is certainly a good thing to do and important, but it is not necessarily enough, especially as a young attorney without connections. So getting to meet and know those potential new clients can be a real challenge.

RL: What advice would you offer associates and new hires?
CM: For associates coming up the ranks, I think it’s still most important to do good work and get along with people. But today, I am also looking at whether he or she will be bringing in new business as a partner or at least helping the firm bring in business.

For someone just starting a career in law, I recommend figuring out what you want to do up front. Work hard and do a good job at whatever is asked of you, but also seek out opportunities to do what you want to do and work even harder to take advantage of those opportunities. You’ll end up presenting yourself as being capable and also very good at doing what you want to do. Overall, it’s important to know who you are, what you want to do, what you can and cannot do. Work with what you have and don’t sell yourself as having what you don’t. Having the right knowledge, tools and relationships will get you there.

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