how to start an intellectual property law practice
TRANSCRIPT
#ClioWeb
How to Start an Intellectual Property Law Practice
A Clio Webinar
Joshua Lenon – ClioNehal Madhani – Alt Legal
#ClioWeb
• CEO of Alt Legal• @nehalm
Instructors
Joshua Lenon• Lawyer in Residence at Clio• Attorney Admitted in New York• @JoshuaLenon
Nehal Madhani
#ClioWeb
Agenda
• Intro to Intellectual Property (IP) (10 minutes)• Setting up an IP law practice (15 minutes)• Ethical obligations and pitfalls in IP law (15 minutes)• Tools for IP lawyers. (10 minutes)• Assessing IP Needs with clients (5 minutes)• Questions (5 minutes)
Nehal [email protected]@AltLegalHQ
Nehal MadhaniFounder & CEOAlt Legal@nehalm
Nehal Madhani is the founder and CEO of Alt Legal, whose software makes it easy for law firms to create and manage IP filings. Before starting Alt Legal, Nehal practiced as an attorney at Kirkland & Ellis, LLP. He is a Python/Django programmer.
Nehal has a J.D. from the University of Pennsylvania Law School, a Certificate in Business and Public Policy from the Wharton School of Business, and a B.A. from Northwestern.
INTRO TO IP
DEMAND FOR IP LEGAL SERVICES IS GROWING
Source: BTI Consulting Group, http://www.bticonsulting.com/ip-and-ip-litigation-outlook
• IP is a critical business asset that every business should protect.• Companies are being brought and sold just for their IP portfolios.• Nearly $2.7 billion is spent on IP litigation legal fees every year.• Surge in the number of small businesses and startups is driving an increase in the number
of IP filings.
350K
400K
450K
500K
550K
2012 2013 2014 2015
Growth in US Trademark Applications
Sources: USPTO, http://www.uspto.gov/dashboards/trademarks/main.dashxml; Kauffman Foundation Startup Activity National Trends 2015
Trademark applications filed with the USPTO rose nearly 10% in 2015. In 2015, the USPTO has already received over 500,000 trademark applications. This is in part driven by the jump in the national rate of new entrepreneurs.
TRADEMARKS OVERVIEW
• Scope: Protects word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods or services of one party from those of others.
• Expiration: None as long as use and filing requirements are satisfied.• Attorney requirements: Must be an attorney in good standing in at least one US jurisdiction
to prosecute trademark filings.
PATENTS OVERVIEW
• Scope: Protects machines, manufactured articles, industrial processes, and chemical compositions.
• Expiration: 14 years for design patents; 20 years for utility and plant patents.• Attorney requirements: Must be admitted to patent bar to prosecute patents. A scientific or
technical training is a prerequisite for the patent bar.
COPYRIGHT OVERVIEW
• Scope: Protects works of authorship that. have been tangibly expressed in a physical form (e.g., songs, books, movies, and works of art).
• Expiration: Varies depending on the type of work and authorship (e.g., life of the author + 70 years or if it’s work for hire or anonymous, it’s shorter of 95 years from publication or 120 years from creation)
• Attorney requirements: Must be an attorney in good standing in at least one US jurisdiction to prosecute copyright filings
USPTO INTRODUCES REGIONAL OFFICES
Source: USPTO Locations, http://www.uspto.gov/about-us/uspto-office-locations
SETTING UP AN IP PRACTICE
IDENTIFYING THE SCOPE OF YOUR PRACTICE
Prosecution
Filings
Trademarks Copyrights Patents
License Agreements
Litigation
Administrative Proceedings
Trademark Trial and Appeal Board
Patent Trial and Appeal Board
Federal Court
FIND YOUR NICHE
• Like any practice, you should identify your niche within IP after determining the scope of your work in this field.
• You can more effectively focus your limited resources.• You can quickly build expertise. • You can rapidly develop a client base and network.
HOW TO FIND A NICHE
• Consider your interests and passions• Identify trends in your current client base and/or network• Assess your professional and personal strengths and weaknesses • Explore the competitive landscape
A STRONG IP NETWORK IS CRITICAL
• IP law is a complex, global practice.• The right network allows you to serve clients as a “full-service IP firm.”• You can grow your practice through referrals.
BUILDING YOUR IP NETWORK
• Social media (Check out our list of Twitter influencers here: http://www.twitter.com/AltLegalHQ/lists/ip-law)
• Read blogs and write your own. Popular ones include Likelihood of Confusion, TTABlog, Everything Trademarks, and IP Watchdog)
• Become a member of the over 50 state and local IP bar associations• Join trade organizations:• International Trademark Association (INTA)• American Intellectual Property Law Association (AIPLA)• American Bar Association - Intellectual Property Law (ABA-IPL)• Copyright Society of the USA (CSUSA)
CASE STUDIES OF SUCCESSFUL IP PRACTICES
• Background: Meet Rina. Rina is a former Big Law corporate attorney who set up her own legal practice a few years ago. She focuses largely on emerging companies and securities law.
• IP work: Over the last couple years, her emerging companies clients have become mature companies and have sought trademark protection.
• Results: Rina has prosecuted over 60 trademarks for her clients and netted nearly $50,000 in legal fees ($800/trademark).
• Advice: Attend CLEs and IP conferences to learn the fundamentals and leverage close relationships with experienced IP lawyers to help you avoid mistakes.
CASE STUDIES OF SUCCESSFUL IP PRACTICES
• Background: Meet Jason. Jason started his career at a mid-size IP law firm and worked there for a couple years. About five years ago, he branched out on his own and initially focused on TM and copyright prosecution and TM litigation.
• IP Work/Results: He has prosecuted over 500 trademarks and charges $1,000/TM filing ($400,000 in legal fees from TM prosecution alone). He also recently hired a patent lawyer and litigator and grown his firm organically into a a full-service IP practice.
• Advice: Focus on growing your network, and particularly an international network of fellow IP attorneys.
BILLING MODELS
• Fixed: Common arrangement for trademark registrations, copyright registrations, and provisional application for patent. Be sure to carve out the scope of your engagement.
• Hourly: Common for patent prosecution, licensing agreements, and IP litigation work• Success Fees: Hybrid model that combines fixed fee with a contingency amount due upon
successful registration of the client’s IP rights.
STEPS IN PROSECUTING IP FILINGS
Protecting: Maintain IP rights through renewals and active monitoring
Prosecuting: Monitor and update IP filing and deadlines
Filing: File documents and forms with government IP office
Assembly: Assess filing and prepare documents and government forms
Intake: Gather client information and documents re IP rights
ETHICAL OBLIGATIONS AND PITFALLS
KEY RULES
• Competence: “Competent representation requires the legal, scientific, and technicalknowledge, skill, thoroughness and preparation reasonably necessary for the representation.” 37 C.F.R. § 11.101.
• Unauthorized practice of law: “A practitioner shall not practice law in a jurisdiction in violation of the regulation of the legal profession in that jurisdiction, or assist another in doing so.” 37 CFR § 11.505.
• Candor towards tribunal: (a) Prohibitions against false statements/evidence; (b) disclosure of criminal behavior…and (d) disclosure of material facts to tribunal in ex parte proceedings. 37 CFR § 11.303.
ADMINISTRATIVE ERROR: MAKING FACTUAL ASSERTIONS
• US trademark applications must be signed by a person that can legally bind the applicant or has first hand knowledge of the facts asserted in the application and authority to act on behalf of the applicant, or a US attorney authorized to practice before the USPTO.
• Attorneys who execute trademark applications on behalf of clients may become a fact witness and disqualified from representing the applicant if the application or registration is disputed.
• You should email the application to your client to execute (despite the inconvenience) through TEAS.
Source: BTI Consulting Group, http://www.bticonsulting.com/ip-and-ip-litigation-outlook
ADMINISTRATIVE ERROR: MAKING EXCESSIVELY BROAD ASSERTIONS
• Medinol Ltd. v. Neuro Vasx Inc. (TTAB 2003). The mark "NeuroVasx" was granted for use in connection with "medical devices, namely, neurological stents and catheters."
• A petitioner wanted the mark cancelled because it was not being used in connections with stents. Neuro Vasx attempted to amend their application to remove stents, which were included because of an oversight.
• The court found fraud because Neuro Vasx knowingly made a false statement to the USPTO to obtain registration, which would not have been issued if the USPTO knew it was not being used for stents.
• Fraud cannot be cured by the deletion of goods from the registrations.
MISSING DEADLINES: IN RE TACHNER
• In re Tachner (USPTO D2012-30): The Office of Enrollment and Discipline brought an action against a solo patent attorney after he missed several filing deadlines for clients’ filings.
• The attorney relied on an office manager and a manual docketing system. Through 2005, he docketed matters by recording dates in a notebook. After 2005, his office relied solely on a Word document that listed actions as single-line entries (no table and no calendar).
• The attorney admitted to a pattern of neglect of management of his law firm, including reliance on an “unsound calendaring system for tracking deadlines.”
• The attorney was suspended for five years for violating several provisions the USPTO Code of Professional Responsibility.
MISSING DEADLINES: THE MEDICINES CO. V. FISH & NEAVE
• In The Medicines Co. v. Fish & Neave, Medicines Co. sued Fish & Neave for missing a patent term extension (“PTE”) application deadline that jeopardized about 4.5 years of market exclusivity ($2 billion in sales).
• PTE applications allow applicants to extend the life of a patent for certain delays beyond the applicant’s control. Here, it was the time MDCO spent seeking FDA approval of their drug. Fish & Neave was to submit a PTE application within 60 days of the FDA approving the drug.
• Ultimately, after a protracted, decade-long legal and legislative battle and nearly $20 million lobbying Congress, MDCO was able to reverse the docketing and patent filing errors and restore the exclusivity period.
Ropes & Gray Settles, law360.com/articles/692712/ropes-gray-settles-patent-filing-malpractice-suitPatent Bill Viewed as Bailout for a Law Firm, http://nyti.ms/1OR7Rra
TOOLS FOR IP LAWYERS
TOOLS FOR IP LAWYERS
• Malpractice Insurance• Docketing System• Practice Management• Client Intake
MALPRACTICE INSURANCE
• IP malpractice insurance is a must if you are going to do any kind of IP filing (even trademarks).
• Typically, it’s more expensive than other practice areas given the high stakes of IP and the liabilities associated with missed deadlines.
• Explore discounts that may be available through trade organizations (e.g., National Association of Patent Practitioners).
• Consider policy limits, scope of coverage, retroactive dates, and expiration dates in selecting a provider.
DOCKETING SYSTEM
• Timely filings for office actions, renewals, revivals, and objections are essential to protect your clients’ IP rights.
• Complexity increases exponentially as you grow your IP practice.• Key factors in selecting an IP docketing system• Scope of your practice (e.g., trademarks or patents, domestic or international, litigation
or prosecution)• Security• Ease of use• Automation• Calendaring support
COLLECTING IP INFORMATION CAN BE A TIME-CONSUMING PROCESS.
Initial inquiry
Assess IP needs
Collect specific
informationReview
client intakeFollow-ups with client
BEST PRACTICES FOR IP INTAKE
• Present your client with questions that are easy to understand or not overly technical to solicit accurate and complete answers.
• Leverage electronic forms to collect client information in the first instance to speed up the process for both you and your client.
• Keep records of the information that your client provided to you.
PRACTICE MANAGEMENT
• IP practice (like other practices involving government filings and processes) can be administrative at times.
• Practice management software will help you manage your contacts, organize your matters and documents, and get paid faster.
• Reflect on your workflow to identify any administrative bottlenecks by considering which elements are repetitive and don’t require any subjective assessments.
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ASSESSING IP NEEDS WITH CLIENTS
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IP Needs Stretch Beyond IP Law
• Divorces can include issues of valuation or division of future income derived from intellectual property
• E-2 Visa (Treaty Investors) may contribute IP as a capital asset to their U.S. venture.
• Criminal charges for both copyright and trademark violations• Copyrights outlive creators by a statutory 70 years creating Estates
issues
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Tips for Talking to Clients About IP
1. Identify what is newly created2. Identify what was originally filed3. Ask about the intangible4. When in doubt, document IP5. Be aware of ticking clocks
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Let Clients Identify Their Own IP Needs
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Sync Platforms for Maximum Utility
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QUESTIONS?
