Bridging the Chasm between Entrepreneurial Engineers and Attorneys

How entrepreneurial engineers can make effective use of lawyers and the legal perspective they offer on the challenges their startup faces.

Bridging The Chasm Between
Attorneys & Entrepreneurial Engineers

We are trying something different this month at the Lean Culture March Meetup. We have invited Steve Swernofsky, an experienced patent attorney who also worked as an engineer before going back to law school, to explore how entrepreneurial engineers can make effective use of lawyers and the legal perspective they offer on the challenges their startup faces. Steve did a fantastic job on a November 2016 panel I moderated at Hacker Dojo on “Cofounder Legal Challenges,” so I was delighted when he agreed to help explain the legal perspective to entrepreneurial engineers.

There are a number of different skills that a successful startup team needs to encompass either directly or on a contingent basis: engineering disciplines of many different flavors, user research and customer development, user experience, quality assurance, sales, marketing, finance, and legal. Entrepreneurial engineers who have worked in larger firms as engineers before branching out are often exposed to many of these other disciplines but the legal problem solving mindset may be one that they have never experienced first hand until they become a founder.

customer interviewsEntrepreneurs tend to look at how to build on success; attorneys are more concerned with making failure if not avoidable then survivable. While entrepreneurs often focus on how to build on anticipated success attorneys are more often constructive pessimists, concerned with having a plan for how things may go wrong with a business relationship with a cofounder, customer, partner, or investor. Startups typically face high near term viability risks which means that an entrepreneur has to provide guidance on the level of risk mitigation advice that is needed from an attorney.

Attorney Steve Swernofsky is uniquely positioned to help bridge the gap between engineering and legal mindsets as he started his career in engineering before becoming a patent attorney. Steve will offer a briefing for engineering founders on common challenges they face in understanding a legal perspective.

Key take-aways

  • The best ways to approach your relationship with an attorney.
  • How to make cost effective use an attorney’s time for risk mitigation.
  • How to include an attorney in your negotiations with early customers but still close the deal.
  • Key problems you need to get legal input on early.

About the Presenter

Steven A. Swernofsky serves as Founding Partner at Los Altos Law, a boutique Intellectual Property firm in Silicon Valley. He has over 25 years’ experience with intellectual property and technology. This includes over ten years’ experience with various types of Intellectual Property litigation, and extensive experience with Intellectual Property due diligence, for Venture Capitalists, Angel Investment groups, and companies seeking funding. He also has extensively advised clients with respect to issues involving patent portfolio planning, infringement, validity, licensing, technical design work-around, and other related technical concerns.

Mr. Swernofsky has worked with inventors and entrepreneurial engineers on many areas of technology: artificial intelligence and machine learning, analog and digital circuitry, augmented and virtual reality, bioinformatics, biotechnology and medical devices, business methods, chaos theory techniques, clocking circuits, communications and communication protocols, component manufacture, computer construction and design (including memory, processors, storage, databases, and failure modes), distributed computing and storage, graphics computation and control, handwriting and signature recognition, lasers, natural-language translation, network interconnection and routing, network monitoring and security (including systems and techniques for detection and repair), power monitoring and control, program code modification, robotic and computer-controlled systems, software engineering, telephony, television and video, wireless communication

Mr. Swernofsky has a BS from MIT, where he studied Electrical Engineering and Computer Science with special projects in computer networking and security. He worked in at The MITRE Corporation and at Bolt, Beranek & Newman (BBN) in both computer networking and security before attending UCLA School of Law for his JD.

When, Where, and How to RSVP

Update: Some Key Take-Aways

Consider writing a briefing on your situation. When working with high billing rate attorneys (aka Silicon Valley) who charge $1,000 or more per hour, consider spending time before your first meeting composing a written briefing (and e-mailing it advance). This way the attorney can read through it in advance–or in front of you, which is still quicker than you verbalizing all of the details–saving time during the meeting. You will still have a conversation but at least the key points have been communicated.
Do not rely on a contract alone to manage counter-party risk. Be careful who you do business with, especially when doing business for first time with a stranger or firm you have little direct knowledge of. A good agreement starts with a plain English document that outlines the key points, common and distinct goals, and any issues the parties will need to manage. It’s legitimate to ask for some payment up front and to create a phased or milestone based payment schedule depending upon the nature of the business relationship. It’s important to react to slow payment and any changes in scope or failure for either party to meet its obligations.
A rule of thumb for risk management: spend 1% of the contract value for a risk assessment. Depending upon what risks are uncovered you may need to spend more to modify the contract to address or ameliorate the risks.
If you have a limited budget for the work be clear up front. Ask the attorney to determine the best way to allocate efforts, where senior staff or specialists may be required and where junior staff or paralegals should be adequate.

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Image Credit: Bakhtiar Zein

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