InsIghTs of In-house IP Counsel – InTervIew wITh roberT grAvoIs
Intellectual Property Law Section Chairs : Andriy Lytvyn – Hill Ward Henderson & Patrick Reid – Hill Ward Henderson
“ My favorite part of the job is getting to see the latest technology ADT is working on and helping protect the IP surrounding it .”
Robert Gravois recently left private practice as a partner at an Atlanta-based intellectual property firm to become the Assistant General Counsel , Intellectual Property at ADT , the provider of security , smart home , and solar solutions headquartered in Florida .
Andriy Lytvyn , co-chair of the Hillsborough County Bar Association ’ s Intellectual Property Section , asked Robert to share his perspective as a new in-house IP attorney .
What is your role at ADT ?
I report to our Vice President & Deputy General Counsel of Intellectual Property and Privacy , and I ’ m generally involved in the day-to-day operations of all areas of intellectual property for ADT . Most of my time is spent on patent harvesting activities , client counseling , managing outside patent prosecution counsel , handling our trademark matters ( which are all managed internally ), assisting with our IP litigation , and developing internal IP training resources .
Why did you decide to leave your position as a partner at an intellectual property firm to go in-house at ADT ?
I decided to leave private practice and go to ADT because the ADT job closely aligned with my favorite aspects of being an IP attorney : ( 1 ) driving innovation and capturing the IP resulting from innovation activities ; ( 2 ) working directly with business units and product development teams ; and ( 3 ) creating IP strategies . I wanted to do more of those types of things than I was able to do as outside counsel , and the ADT job focuses on those opportunities , so I decided to make the jump .
What is your favorite part about working in-house at ADT ?
My favorite part of the job is getting to see the latest technology ADT is working on and helping protect the IP surrounding it . I also enjoy seeing when inventors file their first patent application or receive their first patent .
What is the most challenging part about your new role at ADT ?
The most challenging part is learning the business . ADT is a large company with over 20,000 employees and several different divisions , which can sometimes make it difficult to find the information I need to advise the business .
What do you miss about working at a law firm ?
In addition to the friends I made at my former firm , I miss the feeling of winning an argument that I personally drafted and argued in front of a judge .
What is your advice for outside counsel when they start working with a new in-house attorney for their existing client ?
I recommend reaching out to the in-house attorney to learn about their preferences and expectations for procedures and work product . Outside counsel guidelines may not always be up-to-date or address all policies and procedures , so it is helpful to discuss these issues to ensure everyone is on the same page . Additionally , I believe an introductory conversation is a great way to develop a relationship with the in-house attorney and demonstrate your desire to be a preferred partner .
What are some things that you like to see from outside counsel ?
In addition to the usual things like responsiveness and efficiency , I appreciate when junior attorneys are given the opportunity to directly interact with in-house counsel , sign filings , and argue certain issues at oral arguments , rather than only the senior attorneys having those opportunities . I was fortunate to have those opportunities when I was a junior attorney in private practice ,
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