By Sarah Propst
Jennifer McGrew earned her B.S. in Business Administration from Portland State University and earned her J.D. from Lewis & Clark Law School, graduating Cum Laude and with an Intellectual Property certificate. Admitted to the California, New York, and Texas State Bars, Jennifer is a senior Associate at Wilson Sonsini Goodrich & Rosati (WSGR), in the Technology Transactions Group. Jennifer’s practice focuses on intellectual property-related business transactions.
Jennifer, your educational background is not in a field that is traditionally considered technical. How has your educational training benefitted you in ways a technical background would not?
My mother was a computer teacher, so I was exposed to technology growing up and I was an early user of the internet. I liked how technology could bring people together, but did not have much exposure to or interest in coding.
During undergrad, I worked in a number of corporate positions at technology companies, and that led me to decide to pursue a business degree. The classes I took as a business major exposed me to many aspects of the corporate world, which is very helpful in working with companies, giving me insight into the interplay of accounting, marketing, legal, and other corporate functions.
Are there any tips you have for lawyers or entrepreneurs who don’t have a background in technology for getting into the field?
Keep abreast of what is going on in the tech world, read tech email newsletters and articles. If there’s something you’re particularly interested in, consider expanding your knowledge to become an expert on that topic. If you are still in law school, or have CLE opportunities, take contract drafting classes. Make sure you keep networks in place; in Portland many of my jobs were obtained through my connections that I made at the companies I worked at and the service providers I interacted with in connection with those roles. Strategically place yourself in environments where there are opportunities. For me, having a gap between undergrad and law school helped develop my experience, maturity, and confidence and increased my certainty that transactional law is what I wanted to practice.
Being curious and willing to explore are two characteristics that are going to help make a technology transactions lawyer successful. If you don’t know what a term means, have the confidence to ask for more information. If for some reason you are unable or uncomfortable asking during the original meeting, reach out to a more senior person on the project, or a mentor or sponsor, to clarify any questions you have. I appreciate when associates I’m working with ask these questions because it shows they’re listening, they’re interested, and that they are taking our clients’ needs seriously.
Before you began your legal career, you worked in various technological industries. Did these experiences shape your career path? Do these experiences effect how you see your work today?
My first tech job during undergrad was working for a company that sold network packet sniffing technology. That company was acquired and I moved to another company specializing in CRM software after the acquisition. Near the end of my time as an undergrad, during the dot-com bubble, I got a job in the professional services team at WebTrends, a web analytics company.
My initial role at WebTrends included responsibility for scheduling professional services engagements and customer training courses, including managing the contracts process. After being in that role for about a year, I was recruited into the company’s newly formed legal department. It was a small legal department, and I worked under the same General Counsel for the next 8 years, following him to FEI Company, a scientific instruments manufacturer, after WebTrends was acquired. During my time at WebTrends and FEI, I learned about technology licensing, purchasing and sales contracts, securities work, product marketing, trademarks, patents, and the realities of business. This helped me decide that law school was right for me.
In my experience, lawyers that have previous in-house or general corporate experience get up to speed more quickly in a technology transactions role at a firm. Having non-school experience helps bridge the gaps inherently present in a law school education. Real-world exposure to the types of clients you are going to help as a lawyer helps educate a lawyer about the realities of business, not just the formalities of law. For me, having had exposure to numerous corporate environments and technologies helps me advise a wide range of clients through many types of transactions.
Having in-house experience is also a great education about the importance of fostering relationships. For example, when handling customer-related agreements, a good working relationship between sales and legal departments is critical. A lawyer needs to be able to explain the formation and structure of contracts in layman’s terms so the sales team will ensure they can manage expectations and contractual commitments appropriately.
How are technology transfers different than other typical business transactions?
These days, there are technology aspects in nearly every commercial contract or M&A transaction, so, depending on the transaction, I’ll either be leading the transaction, such as with a license agreement, or acting as a specialist, assisting the corporate team that is managing the transaction. In those transactions, I handle the IP and commercial contracts aspects of the deal documents.
Deal-related projects I work on include private and public buy-side and sell-side M&A transactions, financings, and IPOs. My role with those projects typically includes drafting and negotiating the IP and commercial contracts terms of the definitive deal agreements and any needed ancillary agreements, as well as managing the IP and commercial contracts’ due diligence and disclosure schedule processes.
With commercial contracts projects, I work on all aspects of drafting, reviewing, and negotiating agreements, as well as helping my litigation colleagues navigate resolution of disputes that arise out of commercial relationships.
As with other business transactions, a key value add of a transactional lawyer is being able to advise clients on what typical (known as “market”) terms the client could expect to ask for or agree to in a particular commercial contract or deal and advise them when it is appropriate to deviate from those market terms. Additionally, it typically doesn’t serve the client well if their technology transactions lawyer is inappropriately aggressive during negotiations, since we’re often helping our clients enter into what both sides hope is a long term, mutually beneficial relationship. Once the lawyers are done with their portion of the projects, our clients and the counterparties have to continue working together. However, most commercial relationships will eventually end, so I also help my clients think through what can go awry in their proposed business deal and prepare for the relationship to, at some point, end.
It’s hard to hang up a shingle straight out of law school doing technology transactions work unless you have a lot of relevant pre-law school experience, since a lot of the key skills that help make a good tech trans lawyer are built up as a junior associate or junior member of an in-house contracts team. For example, performing commercial contracts due diligence on M&A deals provides really good exposure to a wide range of commercial contracts, which helps a junior lawyer learn what terms are common in particular industries or types of contracts. There are also a lot of different types of technology-related contracts, some of which will not come across your desk for long periods of time, so it’s very useful to have access to colleagues that do similar work who can help you through projects that are new to you.
How well do you need to understand the technology to execute an effective deal for your client?
The required breadth and depth of technology expertise you need depends in part on what resources you have available to you. If you’re in-house and working on a two-person team, you’ll typically have to know more about your company’s technology than a lawyer working at a firm with more resources and specialists who can jump in to help on specific issues. It’s also important to know the limits of your expertise and who to seek out to fill in the gaps.
Similarly, what you need to know may depend on your client. A smaller or newer company that is outsourcing commercial contracts work will generally need more technology-specific advice than a client that is a larger company with its own in-house legal team. A lawyer working with a client that is entering into a commercial relationship covering technology that is unfamiliar to the client will benefit from having detailed specifications and services requirements in their contract, so a technology transactions lawyer can help scope out and document those requirements, ensuring the correct terminology is used and detailing how the technology is supposed to be implemented and operated.
Are there any differences in how you approach technology transactions when working with start-ups, versus with mature companies?
On the deal side, the differences are largely based on why the deal is being done and how big the deal is. A project that involves a company that is selling its assets because it is running out of money is a very different project from a public company acquisition, so I have to tailor my advice and involvement accordingly.
On the commercial contracts side of my practice, my approach to a project is also project-specific and varies depending on the size of the company, the complexity of the proposed commercial arrangement, and the resources available within the client. A larger client may have in-house legal team but they may be working on other matters so they engage my firm to help negotiate commercial contracts or help refine their contract terms or processes. A client at a smaller or newer company may need help developing those processes and I enjoy helping them through that by creating forms and then helping them negotiate agreements based on those forms. An early stage company may be more inclined to take on more contractual risk to get new customers, so I get to help them analyze the balance of that potential risk versus potential reward. Some clients come to us after they have tried to handle their commercial contracts and IP processes internally without formal legal support and look to us to help clean up issues with past agreements (or lack of agreements) and establish good go-forward processes so everything is in order in connection with an upcoming financing or M&A deal, and I enjoy helping clients through that process as well.
You’ve worked in firms on both coasts, and now reside in Austin. How does location play a factor, if at all, in the work you do?
Portland was tight-knit, collegial, and comfortable community where I had a strong network. This network helped me when I was starting my career. I knew a lot of people in the Portland tech scene from my various jobs in Portland, and I was a summer associate at a firm whose attorneys I knew because they had performed work for the companies I was working at during and before law school. However, Portland is a somewhat small legal market, so I was excited to have an opportunity to start my career as a lawyer in New York. I recommend seeking out opportunities in New York to anyone who wants to work with large companies. New York is set up for working professionals and there is often a lot of international work available, which was interesting to me having worked at an international company prior to moving to New York. However, when I was in New York I was part of a small technology transactions team, so there was less variety of work and it was harder to get coverage to take time off. My team at the firm I was at in New York was structured as a transactional sub-practice group under a group that was mainly composed of IP litigators. In contrast, WSGR was one of the first law firms to establish an independent Technology Transactions practice group, and we have a large, supportive team, which means I have more people to bounce ideas off of, we can take on a wider variety of projects, and we have a large body of precedent agreements to help us with new projects. Austin is also located in a great time zone to serve clients all across the country, as well as clients that are also supported by our new London office.
Speaking of international clients, what are some different concerns that arise when a technology transaction is an international endeavor?
My work on international deals and contracts often involves working with international lawyers inside and outside of my firm. Within the United States, a client in a non-regulated industry has a lot of flexibility to design a commercial relationship in a way that works for them and their counterparty, but internationally there are sometimes more restrictions on what contract terms are allowed or enforceable. For example, in the United States you can typically include liability caps in commercial contracts, but some foreign jurisdictions limit the types of caps that can be included in a commercial arrangement. The WSGR technology transactions team can review commercial contracts for consistency and appropriateness with American contract laws and customs, and then we collaborate with our foreign colleagues and international lawyers from other firms as needed to ensure that our clients’ goals can, to the extent possible, still be achieved when the contract is subject to foreign governing law or otherwise may be impacted by international legal issues.
One of the issues I personally had to address with a US-based client related to different ownership rules in Russia that are quite different than those in the United States. In Russia, there are some restrictions on forward-looking assignments of IP rights, so there are certain steps that have to be followed to ensure a company obtains the rights they want to IP developed by its employees or contractors that are based there. When these issues come up, we work with licensed counsel in the appropriate jurisdiction to help the client get the right documents in place to accomplish their IP ownership goals.
What has been the most surprising thing about working in the technology sector of the law?
It’s been surprising how much this industry has changed and the new opportunities that come with that. I’ve been in it for 20 years and there is always something new to learn. Staying on top of the lingo and new trends gives you exposure to technology before it becomes mainstream. For example, it has been fun to watch the growth of Bitcoin and related technology into the now broad cryptocurrency field.
Has mentorship played a role in your career path? If so, how?
I think sponsorship and mentorship are both beneficial to a young lawyer, but for me, both types of relationships seem to be more effective when they are established organically. A sponsor is someone who champions your career path, encourages you to take a meeting, or go to law school. Mentors may more interpersonal, rather than specifically career focused, helping through more short term goals or issues, though some people can fill both roles. I’ve had lots of sponsors who also helped as mentors, whom I’ve found through seeking out work or after doing multiple projects for them.
What advice to you have for people just starting their careers (law students or young lawyers) who are interested in technology law?
My advice for law students interested in this kind of work is to take transactional-focused classes, such as contracts drafting, and get out in the community and network. You can make yourself into a much more appealing candidate to a law firm if you show interest in the firm and show up to firm events to meet the lawyers that work there, compared to someone who just goes through the OCI process looking for any big law job. Find a firm, or a senior lawyer, whose work you’re interested in and work to establish connections. Moreover, if you have time to get to know the people at a firm, that helps to make sure you like the people that you’re going to be spending a lot of time with. Also, be willing to change—what you’re doing at 25 isn’t necessarily what you’ll be doing at 35. Make sure your firm or your network supports opportunities for growth, lateral moves, or exit strategies, such as going in-house.
My biggest piece of advice is place yourself in a position of opportunity. Say “yes” when you can to opportunities, even if it means you might be very busy for a period of time. The counter to that is be careful not to over-commit and under-deliver.
I recommend joining a professional affinity group. Personally, I participate in a group for lawyer moms, which provides both professional and personal resources. It is also important to build upward relationships, with experienced lawyers who can either sponsor your career and help you get through day-to-day issues.