Tech lawyers come in all shapes and sizes. Their skill sets vary dramatically.
So when a company sets out to pick a tech lawyer to serve as an arbitrator or mediator, it’s important to understand the 101 flavors of tech lawyers out there.
Litigators and Transactional Lawyers
One major distinction is litigation versus transactional experience. Arbitrators and mediators who have a litigation background are trial lawyers at heart; they are trained to focus on the nuances of claims and defenses. With their litigation background, they have an upper hand in handling the procedural process, evaluating evidence and applying the law to the facts in reaching sound decisions.
Transactional lawyers, on the other hand, are mostly business lawyers; they are trained to focus on the details of business deals. Arbitrators and mediators with a transactional background usually have a deeper understanding of the way a particular industry works. They often have a solid appreciation for transaction details and may have significant deal negotiation experience.
Patent Prosecution, IP Licensing and IP Litigation
It’s not enough to know whether an arbitrator or mediator handles intellectual property matters. There are major differences in skill sets among those who have handled patent prosecution, IP licensing and IP litigation.
Patent prosecutors and licensing lawyers are generally transactional lawyers. Patent prosecutors almost always have a hard-core technical background in a specific engineering field and are experienced in the intricacies of drafting and prosecuting patent applications submitted to the patent office.
IP licensing lawyers, on the other hand, are skilled in contract writing and contract negotiation; their technical skill set may be much more limited, particularly if they focus more on copyrights and trademarks than patents and technical trade secrets.
Like other litigators, the skill set of IP litigators is in preparing and presenting cases. Although some IP litigators have engineering or other scientific backgrounds, many do not. Advocacy skills are as important as technical knowledge in handling patent validity and infringement cases. Although technical mastery is not required of a litigator, a good IP litigator with the right technical background has a major advantage.
In any case with complex technical issues, lawyers – and arbitrators and mediators – will rely on experts to address technical issues and get them up to speed. Still, it saves clients time, money and effort when lawyers, arbitrators and mediators have some basic understanding of the technology and can speak the language.
Some IP litigation cases involve technical issues; others do not. The technical skill set required of a lawyer handling a major patent dispute is more demanding than the skill set required to handle a website domain trade name dispute.
Accordingly, it’s critical to check IP litigation credentials. An arbitrator with IP litigation experience may have handled many trademark cases but may have little, if any, experience in patent litigation.
Industry Focuses
The technology sector covers a broad array of industries. The technology sector includes semiconductors and computer hardware, software and applications, computer networking and telecommunications, biotech, pharmaceuticals, aerospace, alternative energy, automotive, nanotech and materials sciences, to name a few. Within each of these segments, there are many different markets and skill sets vary widely. Obviously the industry expertise of an arbitrator whose legal background is in medical devices will be different than one who focused on mobile apps.
The benefit of industry expertise varies from case to case. Obviously it’s more useful in highly technical cases. In every case, however, arbitrators and mediators don’t need to know the industry better than the parties and the expert witnesses. Still, it’s good to have some level of experience.
Likewise, size matters. An arbitrator or mediator who has worked only with Fortune 500 and other large enterprise companies will have had a very different practice experience, and will likely have a very different perspective, than another who has dealt only with early stage emerging growth companies.
Finally, the level of industry exposure varies among tech lawyers. Lawyers with in-house experience will probably have a deep and focused industry expertise. Law firm transactional lawyers may have the experience and insights gained from working closely with multiple companies in the same industry. Whereas, law firm litigators may have a much broader, but more pinpointed, exposure to multiple industry sectors.
More Practice Skills: Corporate, Trade Regulation, Government Contracts and Employment
Tech lawyers work with tech companies – and that work includes skill sets beyond IP. While most lawyers can handle a basic contract dispute, some legal practices are more specialized. Even contract work for tech companies can call for specialized knowledge in areas such as patent licensing, tech financing or outsourcing.
Corporate/securities tech lawyers handle the specialized needs of tech companies in venture capital and private equity financing, M&A, IPOs and corporate governance. Trade regulation includes work by antitrust lawyers who advise on or litigate business competition matters. Regulatory lawyers in the defense, telecom and certain health and energy sectors handle government regulatory matters. Some tech company lawyers focus on government contracting. Likewise some employment lawyers may focus their practices on the particular needs of tech companies.
International Experience
Local versus international experience is another important differentiator among tech lawyers. Lawyers who focus on US companies, US laws and US courts may be very good at what they do but an additional skill set is required in dealing with international business disputes.
Lawyers working with companies doing international business need to be aware of foreign and international law and customs. Knowledge of international law is particularly important in international arbitration because it involves a critical interplay between foreign and local laws, courts and treaty protections.
Increasingly tech companies are engaged in international business: IP is transmitted effortlessly across national borders; work is outsourced to foreign countries; product and service are provided worldwide. Tech lawyers, including arbitrators and mediators, who have some understanding of international law and business, and the risks, practices and customs associated with particular regions, offer an important skill set. That skill set can come from working on international projects in a larger company or international firm or from on the ground experience in a specific country.
Tech Lawyers Serving as Arbitrators and Mediators
It goes without saying that a tech lawyer will almost certainly have a better understanding of tech industry disputes, and the relevant law, than most judges and juries.
As discussed, there are lots of different kinds of tech lawyers. For a tech lawyer to serve as an arbitrator or mediator requires additional skill sets. And for that matter, the training, skills and mindset required to be a good arbitrator differ greatly from those required to be a good mediator.
It also goes without saying that every arbitrator and mediator is different. Some have had focused practices, others have practiced in multiple sectors. Few will fit perfectly into the categories addressed above. Levels of training and ADR experience and skill also vary. And finally, personality always comes into play.
One of SVAMCs goals is to provide resources to tech companies considering or engaged in tech arbitration or mediation. Providing an understanding that industry experience, practice focuses and skill sets distinguish tech lawyers is a start. SVAMC is continuing to develop online resources and other services to help businesses involved in tech sector disputes identify the right arbitrator and mediator skill sets.
Gary