Saturday, September 5, 2009

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Sunday, August 2, 2009

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Tuesday, July 21, 2009

Corporate IP Managers: There are Bargains Galore Available at Some of the Most Prestigious Law Firms

With corporate legal budgets being cut more than 10% in 2009 it might seem like challenging times to manage a corporate IP department. To add to the difficulties, such reductions are occurring even while many corporations are increasing the focus placed on creation of value using strategic IP management. Corporate IP managers must therefore obtain more valuable IP with smaller budgets.

Fortunately for corporate IP managers, the current economic climate has forced many prestigious law firms to, perhaps for the first time, to develop innovative billing and practice models. This has not only resulted in the effective billable rates of these law firms effectively dropping more than 10%, but many law firms have or are developing more efficient ways to deliver legal services to their clients. Smart law firms will pass these cost savings on to their clients to build loyalty.

It should first be noted that there will always be some law firms and lawyers who think they are "above" bargaining. Such legal service providers may agree to shave a few percent off their billable rates, but corporate clients may not obtain additional concessions. In addition, some prestigious law firms may possess management structures that do not allow partners to cut rates and fees to individual clients in order to "chase business." For example, I recently heard of a prestigious Atlanta law firm where partners have not been paid since early 2009 in large part because individual attorneys have not been permitted to pursue or maintain clients by lowering hourly rates.

If your longstanding IP legal service provider is one of these that will not or cannot significantly modify their rate or practice structure, then your company will not be able to capitalize on the new legal service environment. Also, even if your lawyer or law firm does offer deep discounts, it is likely that they will not call you up and say "We would like to significantly reduce your legal fees." And, why should they--if you have not complained, why should your legal service provider believe that you might leave after all of these years? As a result, in order to benefit from the new climate of cost reductions from prestigious lawyer and law firms, corporate IP managers must undertake the effort to present their company's work out for bid to multiple law firms and to recognize that they may need to ultimately change IP legal service providers.

That being said, I am pleased to report that I have seen a number of well-known and high quality law firms respond to their client's concerns about IP legal costs, and a sampling is reproduced below. The response of each of these law firms to the current legal services environment is different, but each is innovative and client-focused in its own regard. Readers who manage corporate IP departments would be well-served to discuss these models with their existing lawyers or law firms. At a minimum, such discussions can be used to start a non-confrontational dialogue that could result in significant cost reductions. If your law firm or lawyer is not willing or able to bargain, then you need to know that also, and act accordingly. There are many reasons why your company may not wish to leave a long-standing IP law firm, but you certainly want to know whether you can get the same service for significantly lower cost.

Top 5 US IP Law Firm Reduces Client Costs by Developing Efficiencies in Delivering Services
Fish & Richardson PC (Nationwide)

Tina McKeon is one of my oldest friends in the IP business--we have also been law firm partners and I have been her client while a corporate IP lawyer, which allows me to speak frankly with her about the IP legal business. Tina's hourly rate is well above $500 an hour, which puts her out of the reach of many potential clients. However, Tina has worked to reduce the need for clients to actually need her services and, as such, the need for them to pay her rate on a regular basis. Instead, she has assembled an efficient team of professionals with rates from about $175 an hour and up. At the low end of the rate scale, Tina's team includes patent engineers (i.e., people with science degrees effectively working as "super patent paralegals") and technical specialists (i.e., typically Ph.D. graduates tasked with working on the scientific details of an invention. Each member of her team provides clients services at the level of her ability and the project is passed up to a someone with a higher level of skills as appropriate. This approach results in the blended hourly rate for Tina's team being $310 an hour, which is the hourly fee of a 2nd or 3rd year associate at other prestigious IP law firms.

What Tina has realized is that she can provide better client service by applying basic business concepts to her legal practice. As related by Tina:
I tell my clients: "My rate is my rate--I can't do much about that." What I can do is modify the standard way IP legal services are provided to clients to provide as much value to them as possible. By treating my legal practice like a business, I can provide better value to my clients so they can afford to bring their IP issues to me and my team even while their budgets are being drastically cut.
Small IP Boutique Drops Rates Across the Board (Without Being Asked!)
Gardner, Groff, Greenwald and Villanueva PC (Marietta, GA)

I asked my long-time acquaintance Brad Groff of Gardner, Groff how his IP boutique law firm has responded to his clients' budgeting concerns. My thought was that his firm might be feeling the pinch of client cuts because they are smaller and likely have smaller IP portfolios where cuts would be more apparent. I was surprised to see that they have actually gained business this year. Here is what Brad had to say:
We listened to our clients last fall, and heard loud and clear that their budgets would not tolerate "business as usual" annual rate increases from their outside counsel. It's standard practice for lawyers' rates to increase every year because a firm's overall rate structure inflates, and because each lawyer moves up another rung on the years-in-practice ladder of that rate structure. So clients effectively get hit with a double-whammy.

We took a close look at the numbers and decided to implement a complete freeze on hourly rates for 2009 (no change to the 2008 rate structure, and no moving up the ladder). But what really got people's attention was that we actually reduced many of the charges on our flat fee schedule--some by as much as 12% compared to 2008. Since a lot of the work we do is billed on a fixed-fee basis, this allowed our clients to avoid cutting back on their patent and trademark filings even if their IP budgets had been reduced.

The strategy seems to have worked. We're busier than we've ever been, and we have added two lawyers and a patent engineer in a time when other firms have been laying people off.
Century-old IP Law Firm Stays Viable by Changing with the Times
Merchant & Gould (Nationwide)

Kent Stier, a partner at Merchant & Gould's Atlanta office, serves as Chair of the GSU Corporate IP Roundtable (on which I am co-Chair). In developing topics to discuss with our Atlanta IP colleagues, we have discussed the changing nature of IP law firm practice. In this regard, I have discovered that Kent understands that the old-way of billing and servicing clients will not suffice today. As Kent states:
We have been in the intellectual property business for well over 100 years and we fully intend to continue to be a key provider of high quality intellectual property legal service. In order to do this we know we must continue to evolve along side our clients and potential clients. We know that this evolution must include creative cost solutions including, for example, blended fee work, fixed or capped fee work, and levelized annual billing arrangements to name a few. Notwithstanding, we are open to any arrangement that creates a win-win partnership with our clients and potential clients.
UK Law Firm Promotes Innovative Litigation Funding Model (Where "1 Size Doesn't Fit All)
Addleshaw Goddard (UK)

Via Jeremy Phillips, proprietor of the great IPKat blog, we find out that innovative legal service models are being tried outside of the US. This website of Addleshaw Goodard provides an overview of this UK law firm's novel solutions for funding litigation.

What I find interesting about this law firm's solutions is understanding that it can be highly desirable to share or shift the risk of litigation. Specifically, Addleshaw Goddard purports to reduce the financial risk of litigation:
through sharing or transferring some of the risk to Addleshaw Goddard, to insurers, or to specialist third party litigation funders with no connection to the claim or its management. Our litigation funding package offers an integrated solution that will help you to retain control of litigation costs and reduce the financial exposure you face.
While the risk issues are certainly heightened in the "loser pays" UK system, such innovative risk shifting idea could no doubt be useful to address the high costs of IP litigation. With the average cost of patent litigation per side often amounting to several million dollars through trial, I think that US law firms would be well-served to investigate how they might help their clients identify innovative ways to fund such costs. Those law firms that develop partnerships with their clients instead of viewing them as litigation "cash cows" will be better able to convince their clients that litigation is an appropriate business risk.

Monday, July 13, 2009

Improve Your Chances of Obtaining a Patent at a Reasonable Cost and Time by Demonstrating the "Wow Factor" in the Application

A strong majority of people seeking patent protection to protect their products or technology leave the details the drafting process to their patent attorneys. That is, given the specialized (and, frankly, arcane) nature of the patenting process, even highly accomplished business professionals believe that a patent specialist (i.e., attorney or agent) is better equipped to understand how to best describe their invention to the US Patent Office (“USPTO”). This can be an ineffective way to handle the front end of the patenting process because it can result in the process being more contentious. Such contentiousness can result in narrower claims than desired and can make the patent take longer to issue and make the process considerably more expensive.

In determining whether a client’s invention meets the legal requirements for patentability, a patent specialist thinks about how to legally distinguish the invention from those that have come before. Specifically, the patent specialist must demonstrate to the USPTO—as represented In the person of a patent examiner—how the invention is new and not obvious in view of what others have done previously. The patent specialist must also determine how to describe the invention in a way that satisfies the precise technical and legal requirements. While working in this “legal silo,” a patent specialist quite possibly does not have any knowledge about the commercial benefits the invention provides because the client's business team typically is not involved in the patent drafting process. This means that when drafting the application, the patent attorney presents the invention in relation to the “check boxes” that the invention must satisfy in order to meet the legal requirements of patentability.

Moreover, even if such business information is available to the patent specialist, they rarely possess specific expertise in marketing or business. Without such training, a client cannot reasonably expect their patent specialist to present the invention in a way that effectively convinces the patent examiner that the invention “the best thing since sliced bread.” Most patent attorneys thus will wholly ignore what I call the “Wow Factor” associated with an invention.

This “Wow Factor” sounds quite a bit like marketing, doesn’t it? Exactly! And, given the fact that business professionals best understand the benefits their products and technology provide over others that have come before, a critical factor in a successful patenting effort is to not only demonstrate to the patent examiner that the claimed invention is legally patentable, but also that the invention is SUBJECTIVELY deserving of a US patent. It is this subjective aspect that is best handled by those who understand the benefits that a product or technology brings to the relevant consumer—that is, the marketing team charged with building a business case for the product or technology associated with the invention. While often absent from the patent drafting process, I believe that this marketing story serves as a critical factor any successful patenting process.

I will note that many patent specialists have disputed my contention that a significant aspect of a successful patenting process should involve developing a marketing story. These discussions typically center on the contention that “if an invention is patentable, the patent examiner is legally obligated to allow the patent application.” This is no doubt true, but often an invention that is legally patentable enters into a contentious examination process when the examiner develops a point of view (albeit one that is legally wrong). When this happens, the examiner will often “dig in her heels” and refuse to allow the patent application based upon her misperception of the legal merits of the invention. Such a contentious examination process will, at a minimum, add considerable cost and time to the patent application process, but is also likely to result in undesirable amendments that will result in the final patent being insufficient to protect the commercial product or technology from competition.

In drafting a patent application covering a client’s invention, many patent specialists fail to recognize that there is a person on the receiving end of each patent application. This person—the patent examiner—spends her day reviewing patent applications in a fairly narrow technological area. Moreover, the patent examiner labors under a quota system that requires her to complete her examination of each application in a fairly short period of time. One can picture this examiner working on, say, light bulb patent applications. Each patent applicant (and his attorney) likely believes that his invention is unique and a “game changer.” However, for the patent examiner who spends her work time examining light bulb inventions day after day, each application likely seems like a slight variation (if that) on what she has seen over and over again.
One can therefore picture the patent examiner effectively yawning at most patent applications that come across her desk. Add to this the short time the examiner has to gauge whether the invention meets the requirements for patentability and it should be clear why many worthy patent applications are subjected to contentious and expensive patenting process prior to issuance.

Further to these issues that are personal to the patent examiner’s job, on a broader scale, one must also remember that the patent examiner’s decision is imbibed with public policy considerations. That is, if the patent examiner allows a patent to issue covering the claimed invention, no one else will be able to legally do what the patent covers. The issued patent will thus effectively restrict the public’s freedom of action in the area of the issued patent. To justify this, a patent application should demonstrate to the patent examiner why the public should be prevented from doing what it would otherwise legally be able to do—to practice the product or technology covered by the patent claims.

By remembering during the patent drafting process that there is a person who stands between the patent application and an issued patent much cost, time and effort can be eliminated from the patenting process. Put simply, in addition to presenting a legal basis of why an invention is patentable, a patent application should also present a MARKETING STORY the invention to the patent examiner. The key is to include in the patent application a “hook” or “theme” that is directed to building a story for the patent examiner why the invention is not only legally sufficient for patenting but also that the invention bears a business reason for existing. A critical part of this effort centers on demonstrating to the patent examiner why the invention merits allowance, especially given the fact that the patent will prevent others from freely acting. To do this, a patent search should be conducted and analyzed, as the patent literature will likely serve as the primary source of rejections posed by the patent examiner.

To build this strong marketing story, the patent specialist should collaborate with one or more persons on the business team responsible for building a business case for the product or technology underlying the invention set forth in the patent application. This will allow the patent specialist to craft the underlying patentability story—or “Wow Factor”—that can result in the patent examiner picking up the application and thinking “this is not the same old light bulb invention that I see day after day.” While the patent examiner will likely not allow the patent application on a first review, I contend that the subsequent examination process can be rendered less contentious by developing a marketing story to support the patentability story.

It should be noted that many patent specialists will not be amenable to this strategy because it is a deviation from the traditional methods of patent drafting. Specifically, many patent specialists have been trained to discuss only the invention in the application and to ignore the prior art unless it is brought up by the examiner. This strategy was certainly a viable one before the explosion of patent filings in the last 10 or so years, but now there is so much prior art available in most technology areas that a patent applicant must realize that the prior art cannot and should not be ignored. I believe that by facing the prior art head on and preparing a patentability strategy and a marketing strategy the patenting process will likely be less contentious.

Lastly, some patent specialists might look at my recommendations as a reason to rail against the USPTO and patent examiners. While there are many problems that need to be fixed, the truth is the system is what it is today. One can wish for legal purity in the patent system, or one can be pragmatic about what it takes to successfully obtain a patent under the conditions existing today where the patent has suitably broad claims to protect the underlying product or technology from competitive knock-offs, where this patent was obtained at an acceptable cost in a reasonable time frame. At the end of the day, most clients would prefer the latter.

Friday, July 3, 2009

Start-up Entrepreneurs & CEO's: If Your Goal is Investment or Acquisition, You are Probably Patenting the Wrong Things

(Ed. Note: Due to the July 4 holiday weekend, I am posting this from the archives of the IP Asset Maximizer--it was first posted in August, 2008.)

Do you treat your patents as a fence or a tollbooth? If you wish for your start-up technology company to obtain investment from or acquisition by a bigger player, you had better understand the difference.

Most start-up technology company entrepreneurs and CEO's understand that patents can be key to establishing the value of a new business idea. Typically, entrepreneurs and CEO's such as yourself will engage patent attorneys to build an IP portfolio that protects the start-up's technology and products to the fullest extent possible. The motivation for this effort and expense is, of course, to to protect your start-up's idea from use by others. As management of a start-up you may be seeking to build an ongoing business around the patented technology, but often the goal of building a solid patent portfolio is to make your business an attractive target for investment or acquisition by a larger company.

I believe that such an inwardly focused patenting strategy is a misguided approach for companies that wish to obtain investment from or be acquired by larger companies. Why do I think this? Let me use a simple analogy.

Let's say you have worked diligently for several months of weekends to get your yard perfect--and it is perfect. When you finish the yard, you realize that if someone walks on your lawn, perfection will be lost. So you put an expensive fence around your lawn--and it is the best expensive fence you can buy: a virtual masterpiece. But what good is the fence if no one wants to walk on your lawn anyway? You wasted all that money on the fence.

The great majority of patent seekers (including those at otherwise sophisticated large companies) believe that patents are best used to keep others off their "technology lawns". As such, patents are generally focused inwardly--that is, on the patentee's own technology or products. This is known as "defensive patenting". Defensive patenting is a tried and true patent strategy, but it can be a poor choice for companies that wish to obtain investment from or be acquired by bigger players. Like the example above, if these bigger players have no interest in walking across your technology lawn, your defensive patent fence is a wasted expense.

So how does a technology start-up company such as yours get the attention of these big players? It is quite simple--by putting a patent fence around the big company's technology lawn. When properly formulated and executed, this strategy (which is not surprisingly called "offensive patenting") makes technology or products patented by your company an attractive target for a bigger player. Your company's patent(s) will reduce or prevent the bigger player's free movement in its desired business space. Such a savvy offensive patenting strategy effectively requires the bigger player to ask your start-up company for permission to play on its own technology lawn. Your start-up company can provide that permission in the form of a licensing of the patent(s) at issue or by sale of your company to the bigger player. Either way, the your start-up company is benefiting financially from this smart offensive patenting strategy.

Of course, if offensive patenting was easy, smart entrepreneurs and CEO's such as yourself would already be executing on it in droves. In truth, however, offensive patenting can only be effective against big players through use of expert competitive patent and business intelligence. Such techniques have unfortunately not been readily accessible outside of the large corporate and investor environments.

This is changing, however, as more intellectual property professionals with corporate business experience are focusing more on strategic business issues relating to IP. As an example of such a strategic business approach, I have worked with a startup client using patent filing data analysis to identify where a large company was likely going to be focusing its technology or product efforts in 3-5 years. Together, the client and I will brainstorm a "next generation" improvement to that technology or product. We then will work with the client's patent attorney to draft, file and prosecute patent applications that are directed toward reducing or preventing the large company's future ability to freely compete in that business or technology space. The objective is to end up with the client owning patent(s) that would be infringed by the large company's future business plans. Rather than change its business plans, the large company will pay a patent "toll" in the form of a license or acquisition of the client.

Admittedly, offensive patenting is a bit like looking into a business crystal ball. However, the information needed to successfully execute on this patent strategy is out there and, when collected and analyzed by the right person, it is actually hiding in plain sight. Experts nonetheless believe that those who collect and act on available data are more likely to be successful in today's data-driven economy. I believe that smart entrepreneurs and CEO's of startup companies can achieve the investment or acquisition they want for their companies by collecting and analyzing patent filing data to make it necessary for big companies to pay for permission to play in their desired business spaces.

So stop thinking about patents as a fence, but instead as a toll booth. One can usually walk around a fence, but if the toll booth blocks the only road to a big company's business destination, the toll is likely to be paid.

Saturday, June 27, 2009

IP Business Congress: Blog Summaries for Those Who Couldn't Attend

The IP Business Congress ("IPBC") was held on June 21-23 in Chicago. This meeting, established by IAM Magazine, brought IP business experts, both lawyers and non-lawyers, from around the world to discuss issues relevant to IP. If, like me, you were unable to attend, you will appreciate the blog authors who have thoughtfully posted their summaries and thoughts about the Congress. (If anyone comes across any more, please let me know and I will add them.)

Joff Wild: IAM Magazine Blog

Michael Martin: Broken Symetry Blog

Duncan Bucknell: IP ThinkTank Blog

Peter Zura: 271 Blog (Great overview of the NPE break-out session) Securing Innovation (Interviews with IP Hall of Fame Inductees)

Friday, June 26, 2009

Everything's Negotiable: How Corporations Can Drastically Reduce Their IP Legal Costs without Sacrificing IP Quality

Corporate legal managers and the business teams they support complain seemingly constantly about outside counsel expense, and intellectual property ("IP") is no exception. And, why wouldn't they complain when every dollar spent on legal representation is money that is effectively removed from the company's P&L statement? This sets up an ongoing tension between corporations and law firms to reduce legal costs even while lawyers' incomes have sky-rocketed in recent years.

For most corporate buyers of legal services, however, the ability to obtain substantive cost reduction has been somewhat limited due to the lack of transparent information available about legal fees. It may be even more difficult for corporate legal services buyers to gain meaningful reductions in IP costs because of the highly specialized nature of this area of law practice which, arguably, makes IP more of a "Black Box" than most areas. Moreover, regardless of the type of law involved, clients just don't talk about what they pay for lawyers because of the confidential nature of the details underlying such information. In any event, even if they could share such information with their peers, the highly subjective nature of legal representation--IP or otherwise--would make cost comparisons between clients not particularly meaningful.

IP law firms have benefited markedly from the lack of pricing transparency. This effectively allows IP lawyers to set the baseline for negotiation on legal fees. If a lawyer thinks the market rate for her services are $500 an hour (and that's what her peers are charging), any discounts or reductions take place from this starting point. In this context, a 10% discount would seem like a "win" for the client, irrespective of the actual business value of the work being done by the lawyer. In fact, value rarely comes enters the conversation between a lawyer and her client.

One must wonder why IP law firms have managed to exercise such pricing power in a world where "everything is negotiable." My opinion is that lawyers have been able to perennially convince clients that price equates with value obtained. And, to validate this ostensible value, a client could look at the opulent downtown offices occupied by his lawyers, as no "cheap" lawyers would reside in such an expensive location. Corporate clients have also seemingly relied on a "wisdom of crowds" theory of IP lawyer value. That is, a law firm wouldn't have so many prestigious clients unless they were good, right?

It is my belief that corporate legal buyers have not pushed IP law firms hard on pricing because it has been too hard to have a conversation about value conferred in the "Black Box" world of IP legal representation. In the business world, if you can't measure it, you can't manage it and IP legal service buyers can neither objectively measure price nor value aspects of their IP legal representation. As a result, corporate IP legal service buyers have failed to develop methods to effectively manage legal costs while still maintaining IP quality, a fact which has been to the great advantage of IP lawyers and law firms.

This is starting to change, however. The current economic environment has made it increasingly untenable for corporations to continue business as usual in regard to how they deal with their IP lawyers. Indeed, a friend of mine who is Chief IP Counsel at a multi-national technology company puts it this way:

I don't care about marble and mahogany. My IP lawyers are welcome to have it, but I won't pay for it. Moreover, I am drastically cutting now in my department but still expected to maximize the value of my company's IP, and I expect my IP lawyers to do the same. Yes, it will hurt our law firms to get less money from my company, but those law firms that walk through this dark valley with me will get my company's enduring loyalty when things ultimately improve. But, if my lawyers don't sacrifice with me, I will drop them, and I will do so no matter how long they have been doing my company's legal work.
Another friend of mine, who recently took a job as Chief IP Counsel at a mid-sized chemical company, just put out her company's patent work for competitive bid. She said that never before in her 15 years of corporate legal practice had she seen IP firms more willing to negotiate on price and she was surprised at some of the concessions that were made on price without her asking. Moreover, once she obtained the first round of bids, she went back and asked them to cut again, pitting these law firms against each other on price. Notably, the law firms seeking her work did not push back, presumably because they were willing to do almost anything to get her company's work. At the end of the process, my friend stated that she gave the work to those law firms that she had previous relationships with while at another company, but she was nonetheless able to obtain these same lawyers at a deep discount over what she had paid just last year.

I will note that the firms who got my friend's work are known to be the best and brightest IP law firms in the Southeastern US. These firms were competitors of mine when I was a law firm partner and I purchased their services when I was a senior in-house IP counsel at a major US corporation. These firms did not offer such discounts in the past and, if someone dared to asked for such a deep reduction in costs, no doubt would they likely politely "be shown the door." Times have certainly changed.

Interestingly, however, my Chief IP Counsel friend indicated that her "legacy" firms (that is, those firms that had done her company's work for many years prior to her joining the chemical company) did not come to her and offer her discounts in order to keep the business. Her belief is that they enjoyed "milking" her company for fees and saw no reason to proactively reduce the fees they charged her company, even when they found out she was bidding out the work. This comports with what I saw as an in-house IP lawyer: several prestigious firms apparently historically saw my company as a "cash cow" and charged outrageous fees for legal work of dubious quality as long as no one complained.

These anecdotes should demonstrate to corporate buyers of IP legal services that your current law firms are likely not going to proactively offer your company a discount, even when it would be the right thing to do to help you address the budget pressures you are feeling even while your business teams are placing increasing focus on IP as a corporate asset. And, why should they--does your business proactively lower the costs of products when there is no competitive reason to do so? But, as my Chief IP Counsel friend's competitive bidding experience indicates, and as I can confirm from my in-house experience, most corporate IP legal service buyers should assume that they can save considerable outside IP counsel expense by sending their work out for competitive bid.

Unfortunately, corporate legal managers must themselves be proactive in order to get "the right price" for IP legal counsel, where the right price is what the law firm is willing to charge other corporations for similar legal services that presumably also provide comparable overall business value. (This sort of makes IP legal service pricing seem a bit like air travel--the guy next to you may have paid $100's less than you to fly to the same place.) Moreover, one should not feel reticent about "firing" a long-standing IP law firm if the law firm is not willing to sacrifice some of its income to, as my other Chief IP Counsel friend says "to walk with [you] through this dark valley." Loyalty should be a two-way street.

Law firms should acknowledge that their clients can no longer justify paying for IP legal services without also understanding and justifying the business value obtained. As such, law firms must decide whether they can stand to lose a long term client's business forever if they do not move proactively today to demonstrate the specific value they bring to their clients. Law firms must also be willing to modify their pricing structures to provide measurable relief in this time of economic uncertainty. Moreover, law firms must recognize that their competitors are actively seeking their clients and even the most prestigious firms are willing to provide innovative pricing and practice models to gain business (more on this in a subsequent blog post). It is also worth adding that once a client leaves a law firm because of price, chances are that the client will never come back. A bit of proactive "sacrifice" today may provide immeasurable long term benefit by demonstrating to corporate clients that their loyalty is well-deserved.
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