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Interview with Joseph Colagiovanni, Jr., Partner at Sonnenschein Nath & Rosenthal LLP

BrownHEN interviewed Joseph Colagiovanni, Jr., Brown '78, Partner at  Sonnenschein Nath & Rosenthal LLP, St. Louis, MO.

1. Joe, what are the most important legal issues that entrepreneurs must be aware of?

I would focus on three issues. One, asset protection and liability. Many entrepreneurs are unaware of different ways to invest their capital and protect the balance of their assets. Two, intellectual property. There are different ways entrepreneurs can protect their ideas and also make sure that those ideas do not infringe on others’ intellectual property. Three, regulatory concerns. Entrepreneurs need to know about different multilayered regulatory concerns that exist at the local, state and federal levels.

2. How can an aspiring entrepreneur best get legal help? How can one such find a suitable attorney?

The first time an entrepreneur thought thinks of it, it’s already too late. Lawyers in today’s world are business consultants; the earlier entrepreneurs enlist their help, the better. The trick is to find a good attorney who is experienced and who fully understands your business—whether it’s construction, manufacturing or technology—and can interpret and apply the law to your company’s unique facts and circumstances.

3. Did you ever produce another play since your undergraduate days? Are you involved in the arts in other ways now?

Actually, it was a skit that Gary Simon and I produced. I studied philosophy and political science, and was a musician during college, but I haven’t written any music since I got married. (Laugh!) Our 14 year-old son is musically inclined and is also involved in theatre. So we support his artistic efforts as well as the St. Louis Art Museum and various art-related organizations.

4.  You have had much experience in the construction industry. Please comment on the state of infrastructure in the United States at present—is Minneapolis an exceptional case? What, if anything, needs to be done?

I have spent a lot of time looking at infrastructures, roads, bridges, and power plants. Many of these were built as large scale public projects during the FDR administration. These infrastructures are aging and breaking down, and there are signs that the problems are burgeoning. In other countries, many infrastructures were built with privatized money. In America, we will probably need to review different ways of financing repair and build future infrastructure projects.

5. You were an Assistant Attorney General for the State of Missouri. Are you glad you had that experience? Why?

Yes, I am. At the time, I wanted to be a litigator and I got into the court room quickly and served as a lead trial lawyer. I learned more in my two years there than I did in two years in the private sector. The skills set that I acquired helped me later on in private practice: how to engage with my clients, how to learn and understand how their businesses operate and what they need, and how to develop legal expertise in their niches and help them.

6. Did you know you want to be in an attorney when you were at Brown?

I was interested in law and wanted to learn more about it. Fortunately, a family friend, Chief District Judge Raymond Pettine, suggested that I intern with his office. I spent the mornings and early afternoons of my entire senior year in the Chief District Judge’s office. I was exposed to many facets of the law and got very comfortable being around lawyers. I started out as a litigator, but now work as a transactional attorney who specializes in construction and development. I really enjoy helping my clients.

7. What about your expertise in construction?

Many people know in Rhode Island know about my dad’s family, which was involved in the wholesale food business. My mother’s side of the family was involved in the construction business, and I grew up around it. I understood design and construction. My first client in private practice was related to construction.

8. Does your family still live in Rhode Island?

My brothers still run my father’s wholesale food business, which is very different from 20 years. I return a couple of times a year for a visit.

9. What is the latest insight (about life, work, play) that you picked up and would like to share with BrownHEN?

As I watch my son transform from a child to a 14 year-old adolescent, I am reminded how fast life goes by. We can’t spend enough time with our family and friends, and what seems important at work is not that important, at the end of the day.

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Copyright 2007 – BrownHEN.org

BrownHEN interviewed Dan Siegel, Founding Partner of Derwin & Siegel, LLP

BrownHEN interviewed Daniel Siegel, Brown '80, Founding Partner of Derwin & Siegel, LLP, Portola Valley, CA.

1. Dan, could you please review the route that took you from a Brown undergraduate to a prominent intellectual property lawyer?

Upon reflection, I find it interesting that my journey was perhaps a typical Brown interdisciplinary one, with little pre-planning or foresight. I entered Brown with a vague interest in biomedical engineering, satisfying both the, “Mom wants you to be a doctor” concern (despite my lack of interest in the natural sciences) and my burgeoning interest in technology. Soon after arriving at Brown, I developed an interest in computer science (a new department at Brown) and felt I had found my niche. To some extent, I made a common Brown mistake, and took pride more in the courses I did not have to take (foreign languages and virtually all of the humanities) than in the opportunity to chart my own course. Fortunately, I took advantage of Brown’s many unusual offerings, including a course on the “4th Dimension,” one on “the Brain” taught by three professors from different disciplines, and another on “Cryptography.” To this day I have far more vivid memories of those unusual courses than of any computer science courses required for my degree.

Though I didn’t realize it at the time, by truly choosing those unusual interdisciplinary courses, I had begun my journey of academic exploration. Along the way, perhaps by chance, or perhaps because my father (who died when I was ten) had been an attorney, I decided to “give in” and take a course in my junior year on the humanities side of the spectrum—a political science course relating to the law taught by Professor Edward Beiser. I have a specific recollection of a meeting Professor Beiser arranged to discuss a paper that I had written on the U.S. Supreme Court’s Bakke decision, a landmark affirmative action case.  As we discussed the nuances of racial quotas (as distinguished from race being merely one of many factors), I discovered in that very meeting my passion for the law, in particular for legal/analytical reasoning. I didn’t realize it at the time, but I can honestly say that Professor Beiser is the reason I went to law school and became an attorney. I better take this opportunity to publicly thank him in case I continue to procrastinate in tracking him down to offer my personal gratitude. “Thank you Professor Beiser! You really did make a difference.”

After law school, I applied my interdisciplinary approach to my career search, combining my passions for computer science and the law in an effort to forge a career in “computer law,” a field that didn’t really exist at the time beyond vague references to intellectual property. When other attorneys explained to me that copyright law and patent law were legitimate legal disciplines, but that “computer law” had no more meaning than “car law” or “furniture law,” I only became more determined to find my niche. I quickly discovered that focusing on a particular industry or area of technology had a dramatic effect not only on my personal interest in the subject matter, but on the nature of the legal issues as well, including my ability to add value to an analysis of interrelated business and legal concerns.

Over the years, I have worked on a myriad of intellectual property matters involving the application of trade secret, copyright and patent law to computers systems, software and networks such as the Internet. I have been fortunate to be paid to learn about cutting-edge technologies from experts in many areas.

So, what led me here? In retrospect, it seems so simple. Follow your passions, even as they evolve, and continually keep your eyes open for opportunities to integrate those passions into a career, as well as into your hobbies.

2. When do you recommend an entrepreneur with an idea for a novel product first talk to an intellectual property lawyer?

My pat answer is “right away” and then “later on.” The catch is that an entrepreneur needs some good free advice (not necessarily an oxymoron) immediately. Simple advice relating, for example, to documenting inventions and establishing ownership can be invaluable at a very early stage. But, entrepreneurs rarely need a significant amount of time from an intellectual property attorney at such an early stage, which is fortunate because entrepreneurs rarely have much money at this stage. They need some basic guidance with a roadmap to avoid the obvious pitfalls as they embark upon the initial stages of market research and product development.

At a later stage, however, as they near completion of a prototype and have honed their business model, they may require greater assistance, for example, with contractual issues and development of a patent application. Funding of intellectual property work should go hand in hand with funding of other technical and business aspects of a venture. Alternative-fee arrangements can sometimes facilitate this process depending upon the timing of funding rounds.

3. Can you give a short review of how an entrepreneur can protect her or his idea before the patent process is begun? If a short review is not possible, can you suggest where an entrepreneur can learn what to do? In particular, do you recommend the use of provisional patents?

Prior to the relatively time-consuming and expensive process of preparing a patent application, entrepreneurs protect their inventions primarily via trade secret law, for example, by not using or disclosing their inventions publicly. Apart from contractual issues relating to co-founders and their employers, little else is required beyond documenting their development efforts and maintaining confidentiality—at least until a “public” event approaches (such as a demo at a trade show or a “live” test of a website).

When such public events become necessary from a business perspective, a provisional patent application may be appropriate. If sufficient time and resources are available to justify a “normal” (utility) patent application, then the value of a more thorough patent application almost always justifies the additional effort and expense. When little or no time or money is available, however, a provisional patent application will at least enable the entrepreneur to avoid being barred from later patenting the “core” invention (particularly outside the United States). A provisional patent application will typically include existing written materials and perhaps a brief write-up summarizing the invention. Its value will be limited if not followed up with a more thorough patent application, but it does at least preserve the option of filing such a subsequent application.

4. How has the globalization of business changed the practice of intellectual property?

The answer to that question depends, in large part, upon the nature of the technology and the business platform. In one respect, having global investors, customers and competitors enhances the importance of intellectual property concerns outside the United States, such as foreign patents. In my practice, however, where the Internet is often the platform, much of the potential infringement of intellectual property rights is likely to occur in the United States, or at least not be restricted to other specific countries. In such cases, the value proposition of obtaining non-US patents is often diminished. There are, of course, exceptions, such as mobile communications or other networks that might be more regionally restricted. In those cases, the global concerns of early investors often drive the focus on intellectual property rights in other countries.

5. Besides intellectual property issues, what other legal problems have you seen entrepreneurs face?  (Product safety? Disagreements with partners? Non-compete agreements, etc.)

Excluding ownership issues (which are intellectual property issues), the one issue that seems to arise most frequently in any entrepreneurial venture is one of management. At some point, investors tend to have a falling out with founders over the issue of who is best-suited to lead the company. While this may not appear to be a legal issue on the surface, it often results in a nasty contractual dispute involving lawyers and legal fees. The earlier that founders begin to think about this issue, and engage their investors in ongoing candid communications regarding this issue, the more likely they will be able to reach a consensus when this issue rises to the surface (and it will).

6. Where do you see the big entrepreneurial opportunities of the future? In particular, does software seem to offer the same entrepreneurial excitement as it did?

From my perspective, software will always provide significant entrepreneurial opportunities, particularly via the Internet and mobile communications networks.  Writing software has the inherent advantage of being a much less capital-intensive way to implement functionality than, for example, manufacturing a device (sometimes a subtle distinction). Moreover, the abstract nature of software lends itself to more modular approaches to complex problems, if only because it is less constrained than hardware to being reconfigured. Finally, with respect to intellectual property rights, software offers greater flexibility in fashioning such rights, for example via patent claims. Some see this as more of a problem than an opportunity.

As for specific technology areas, I cannot claim to offer any particular wisdom.  The growth of social networks and mobile communications services are certainly two fascinating areas, but there are many others. I personally expect to be using my mobile phone to perform tasks in five years that I cannot necessarily even contemplate today.

7. What were your reactions to the recent SFBrown's First Entrepreneurs' Forum in Silicon Valley?

I thought the forum was great, even beyond the main attraction—the presence of Dean Hazeltine. I learned a great deal from the interaction between the professionals and those who are considering embarking upon an entrepreneurial venture. I don’t attend many alumni events, but I am getting more nostalgic lately, and have always been interested in the entrepreneurial spirit, both professionally and personally. To me, the key is getting a good cross-section of attendees, from recent Brown grads to older Brown grads who have worked with entrepreneurs, and perhaps even interesting speakers who might not have a connection with Brown. It is also helpful to hear from current (or even prospective) Brown students to get a sense of where their interests lie.

8. Would you speak about fear as a motivation or hindrance toward accomplishment? How has that played a factor in your path, if any?

Certainly fear can be both. Ultimately, that depends on how each of us handles fear, whether brought about internally or externally. As for myself, I have dealt with fear at different stages of my career. I’m ashamed to admit that fear usually seems to relate to money (even when we deny it), in particular, to the prospect of having to change jobs or careers.

I have changed jobs frequently, though usually by choice when an opportunity arose. In those cases, my fears were limited to making the “best choice,” which for me involved over-analyzing the relatively small differences among good choices. In the few instances when external forces brought about the need for a job change, my fears seemed to be a motivating factor, forcing me to abandon the complacency that tends to set in when you are generally satisfied with a job or career path. My fears made me focus and become more proactive about my career path.

Overall, I would have to say that fear has been a motivating factor for me. I have never regretted any of the job or career changes I have made, and in fact the more significant changes in my career path have ultimately been the most satisfying. I still expect there are more to come. I have always admired the entrepreneur who can make a significant sacrifice (e.g., give up a well-paying steady job, if those still exist in today’s economy) for the uncertainty of a startup “dream.” I am personally slightly more risk averse, but hope to tap that entrepreneurial side of myself whenever the opportunity arises. I am always on the lookout for such opportunities.

9. Do you have a mentor who has helped you in your career path/personal development?

I cannot identify any one individual that I would consider a mentor in my professional development. I have tried to “pick and choose” different qualities from people I have worked with over the years. I would note, however, that I have been guided as much by traits that I perceive as negative as by those I consider admirable.

On the personal side, I would have to say that my wife (Amy) has been my mentor. I have learned to examine myself and better understand motivations behind my own behavior, as well as the behavior of others around me, to a far greater extent than I ever could before I met her. This has certainly aided my professional life as well, in that it helps me better understand my working relationships, which certainly shapes my decision-making process.

10. Who are three other individuals (dead or alive) who have influenced you?

That’s a tough one. On the educational side, I would have to mention Professor Beiser again, as he is the only teacher I can recall who ultimately had a profound influence on my career path. On the personal side, it would be difficult to leave out my mother, from whom I learned many of my good and bad traits, perhaps the most important of which are never to take myself too seriously and never to give up on my dreams.

Finally, I would add my son, Alex, to that list. At the age of 18, he is now able to “keep me honest” and remind me when I am being hypocritical. Even more important, he serves as a constant reminder of what is really important in life. He was recently admitted “early decision” to Penn (sorry, I tried), and even wrote an essay during the hour-long flight from Philadelphia to Providence on the “risk” of trading his legacy advantage at Brown for his “dream” of attending Penn, knowing that he might be sacrificing the opportunity to attend either one. I suspect his essay will come to mind whenever I ponder entrepreneurial opportunities in the future.

11. What is the latest insight (about life, work, play) that you picked up and would like to share with BrownHEN?

This is not a recent insight, but I repeat it so often to friends and acquaintances that I should share it in this forum as well. It is a philosophy (or over-generalization) that applies to virtually anyone who performs services. This could be your boss, your secretary or other employee, a consultant, a politician, or even yourself. I heard this years ago from a consultant friend of mine, who first heard it from his brother. I don’t really know its origin, but it goes something like this:

There are two types of people in the world—“reasons” people and “results” people. Now, “reasons” people always seem to have a reason that they could not perform some task, and often it is a very good reason. Nevertheless, there always seems to be some reason. “Results” people, on the other hand, somehow manage to perform their tasks the vast majority of the time. They are far from perfect, but it is a rare exception when they offer a “reason” for being unable to perform a task.

I have found that, over the years, I tend to categorize almost everyone I know as a “reasons” person or a “results” person. I even find myself slipping from time to time into that “reasons” category, after which I quickly try to correct my course. I don’t necessarily like being so judgmental (particularly when I’m so aware, most of the time, of my own myriad of faults), but I have been surprised how rarely “reasons” people seem to change. This doesn’t make them bad people, just not necessarily ones you want to rely on to perform certain tasks. So, I leave this as a simple “mental exercise” (as I suspect we all know some “reasons” people) and not one meant to be used to judge others too harshly.

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More about Dan...
Daniel Siegel is a founding partner of Derwin & Siegel LLP, a boutique intellectual property law firm in Portola Valley, CA. He has worked and written on computer-related intellectual property matters for more than 20 years. His practice has included infringement counseling, licensing, analysis of large patent portfolios and detailed technical specifications, as well as design and management of “clean room” projects to demonstrate the absence of copyright infringement and trade secret misappropriation. He currently specializes in invention identification and early-stage strategic patent preparation for high-tech startups, with a focus on increasing company valuations by targeting commercially significant technologies of potential competitors. Prior to forming Derwin & Siegel LLP, he co-founded the Silicon Valley office of Weil, Gotshal & Manges, following stints at various Bay Area law firms. Daniel holds a Bachelor of Science degree in Computer Science from Brown University (‘80) and a JD degree from Columbia Law School (’83 – third year completed at Stanford Law School).

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