Business—at least as waged between competitors—is war. That observation was made in 1832 by Prussian General Carl von Clausewitz in his magnum opus, On War, based on his service in the Napoleonic Wars.
We see this in the field of intellectual property (IP) rights. What is a patent, if not a competitive advantage, the legal right to the exclusive practice of your new, improved, proprietary technology? What is a trademark, if your brand confers no advantage over your generic competitors? The benefits of IP are market leadership, revenues, profits, and capital valuation.
Today’s competition spills across borders and oceans. Our clients are doing business not just in the U.S. and North America, but also in Europe, Asia (China looms large), South America and Australia. It takes thinking, strategy and action to protect and enforce IP in the U.S. and internationally. We don’t take that responsibility lightly, and we don’t go very far without checking in with our clients.
Legal ethics of client instructions
Here’s what the rules of legal ethics have to say about scope of representation and allocation of authority between client and lawyer: A “lawyer shall abide by a client’s decisions concerning the objectives of representation.” ABA Model Rule 1.2 (emphasis added). Action by the lawyer may be “impliedly authorized” by the client, however, the lawyer is not permitted to go rogue. He or she is required to “consult with the client as to the means by which [the client’s objectives] are to be pursued.”
How do we obtain the “client’s decisions concerning the objectives of representation”? We make sure we understand the client’s objectives, consulting with the client regarding the actions to be taken, and we ask for instructions to proceed according to that plan.
Getting from Point A to Point B
Clients come to us at different starting points. We work with them to assess where they are and how to advance to where they want to be.
Let’s say a client is starting at “Point A,” for example, they’re in a niche industry and they’ve developed a new, proprietary technology. We work with the client to define and agree on a set of objectives, which for simplicity, we can describe collectively as “Point B.” For example, their short term objective may be obtain “patent pending” status by having a good, thorough U.S. patent application prepared and filed in the U.S. Patent and Trademark Office.
How do we get from invention to patent? That, of course, requires development of strategy, and it requires execution. Initially we may focus on obtaining and fleshing out a good thorough invention disclosure and following through with preparation and filing of a fully detailed U.S. patent application with a view toward surviving the rigors of official examination and competitive challenge. For initiatives on other shores, we often enlist the informed assistance of our trusted foreign associates. Enforcement of IP rights brings still other actions into play.
Before we take action, we ask our clients for instructions. Further instructions may be needed at other junctures, for example, before we pull the trigger and start filing patents and trademarks in the U.S. Patent and Trademark Office, and again before we proceed further in international and foreign filings. Any decision to file a complaint for patent infringement will require the client’s authorization.
Acting on instructions
The lawyer who taught me this basic truth—that we act on instructions—had the unlikely name of Bob Jones.
Early in my career, I was talking with Mr. Jones about a client’s situation and a course of action designed to accomplish the client’s goals.
Mr. Jones asked me if we had the client’s instructions.
I responded with a blank look.
“We act on instructions,” Mr. Jones explained to me.
Until that moment, I had the mistaken impression that instructions are orders that an Army sergeant issues to a private: Take that hill! On the double!
Not that there is anything wrong with basic orders and compliance. In fact, as lawyers, we act immediately on clients’ instructions. Oh, to be sure, there might be rare situations where the orders are unclear or where it is apparent that the client has failed to consider some basic fact or legal principle or consequence. But those situations, when clarification must be sought before acting, are rare.
3 ways not to move forward
Here’s how not to ask for instructions:
- A hint—we could do this— is not a request for instructions;
- A long letter explaining alternatives and pros and cons is not a request for instructions;
- Throwing the ball up in the air and asking—what do you want us to do?—is not a good way to ask for instructions.
The good request for instructions
A good request for instructions sets forth specifically what it is that we propose to do and when and at what cost. It clearly states the recommended course of action. And it concludes with these words: “Please provide instructions.”
It is not subservient to ask for instructions: It is an essential step to make sure we’re all on the same page before taking action.
Real world marching orders
Here’s a recent real life example. We carefully laid the groundwork for certain patent filings in South America and Asia.
At the end of the day, literally, I confirmed with our client’s CEO before we pulled the trigger.
“We just needed to confirm your instructions,” I explained.
“Instructions?” The CEO sounded incredulous.
It was as if I was asking him, a business executive, to tell me, an international patent attorney, how to carry out foreign patent filings.
I backed up for a minute. “Sir,” I explained, “we’ve already outlined the specifics involved in each filing, including each key decision, and the timing and the cost.”
I continued: “What we need from you is simply the marching orders. We need a go / no go. We need your confirmation before we pull the trigger.
“Oh, OK,” he said. “You’ve got your marching orders: Go, do it.”
We acted promptly on the client’s instructions and made the filings. As a result, the client has an international advantage over their competitor.
How can we help you win your battle?
Is your company at war with a competitor over proprietary technology? If so, you might want to beef up your IP protection and enforcement. Let’s engage. Let’s map the path from Point A to Point B. We’ll ask for your instructions before we start marching toward your objectives.