Read our latest coverage of patent law and intellectual property issues, from Silicon Valley to the U.S. Supreme Court.
Joseph Yang went to Skadden to help veteran IP attorney Ronald Laurie establish the New York firm’s IP licensing and transaction practice in Palo Alto.
But after getting repeated calls from clients who told him they’d pay premium rates if only he’d guarantee he would give 100 percent of his time to their projects, and not train associates on their dime, he decided it was time to set up his own practice.
One client, Cryptography Research Inc. in San Francisco, offered him a management seat as general counsel even while he works for others as well. He took it.
“I’ve always wanted to go in house, but I also liked the variety of having your own practice. I don’t think any law firm would have allowed me to do that,” he said. “So when that opportunity came up, I just thought it was too good to pass up.”
FOCUSED ON GENERALIZATION
The professional field of IP law has expanded in recent years. These days IP lawyers compete with other professionals who can be placed into a few broad categories: Agents who act as middlemen in licensing deals, consultants who analyze and manage patent portfolios, and so-called patent brokers who help buy and sell IP rights.
But the Yangs have carved out a micro-niche within the profession by combining all of these varied disciplines.
“We really pride ourselves on being able to do all the things that our clients need us to do in order to leverage their IP assets,” Roxana Yang said. “And the best thing is that we don’t give them generic advice, we really try to understand their business and customize our strategic advice according to their needs.”
After getting an engineering degree at UC-Berkeley, Roxana Yang graduated from Boalt Hall, then worked at IP specialty firm Pennie & Edmonds as a litigator and patent prosecutor. After going solo, her work revolved mostly around writing patent applications.
Joseph Yang took his Caltech Ph.D. in jet propulsion engineering to Stanford Law School, then passed through Weil, Gotshal & Manges � the former McCutchen, Doyle, Brown & Enersen � and Skadden. He served as outside corporate IP counsel for more than 100 tech firms. When he decided a big-firm practice wasn’t what he wanted, he and Roxana Yang saw a chance to combine their expertise into a very small, but definitely full-service, partnership.
INCREASINGLY SELECTIVE
Because of the highly involved services they provide, the Yangs said they have to really be selective about whom they represent. No startups; they focus on large to midsize public companies that can afford their high billing rates.
“We act as virtual insiders, and our clients need us to be responsive,” Joseph Yang said. “Clients have even suggested that we raise our rates so there’ll be fewer firms that can afford us.”
The Yangs are slowly phasing out their patent prosecution practice, which has become more commodity work. Instead, Roxana Yang, who handles the patent prosecution end, simply counsels clients on the best way to draft patent claims, and clients have another firm write and file the paperwork.
“There is just such high demand for our services that we feel we really need to focus our resources,” Roxana Yang said.
IP recruiter Gary Davis of Patterson and Davis in San Francisco said the kind of work the Yangs provide is not something easily imitated.
“Not every IP lawyer has the multi-disciplinary skill set that is necessary in this area,” Davis said. “You have to be a singularly talented IP lawyer to really excel and survive on your own in this business.”
Though business is booming, Joseph and Roxana Yang have no immediate plans to expand their practice beyond themselves and one assistant. They enjoy being each other’s only partner.
“The great thing about our firm is that I don’t ever have to worry about office politics or how to divide profits,” Joseph Yang said. “I think I’ve found my perfect law partner.”
