:::::::NETWORK::::::: the ladue news business connection ::

by Joseph E. Walsh, Jr.

Alright, it’s an old trick. I’ll admit it. I used a catchy word and I got your attention. But before you get all excited, let me give the disclaimer right here. This is not an article about some “well-kept secret” or the “dark underbelly” of patent law or anything of the sort. If that is what you were hoping to read about I apologize for duping you and I’ll understand if you move along to the next article or advertisement.

If you’re still reading, however, the point I hope to make is simple: patent law, and more correctly and completely, “intellectual property” or “IP” law (which also typically includes trademark, copyright and trade secret law) is HOT. And, for a variety of reasons mentioned below, the forecast is that it’s likely to get only HOTTER.

“Good luck Joe … ” And adding (with something akin to a snicker), “But remember, there’s no SEX in patent law … ” That was the admonishment I received more than a decade and a half ago from the managing partner in the law firm where I worked at the time, as I announced I was leaving to pursue a career in patent law.He was a nice man. He was a smart and experienced lawyer and litigator. I’ll call him “Bob.” Bob was also a well-intentioned man. No doubt what Bob was trying to tell me was my new career in patent law would, assuredly, prove duller by comparison and less gratifying than the general litigation career I was leaving behind.

It depends on what you consider sexy, I guess. If you’re anything like me, you’re more than just a little intrigued by science and technology and you marvel at the prospect of working with intelligent and dedicated people to help them achieve their goals. As a patent lawyer, I regularly have the privilege of working with women and men whose intellect, focus and passion for what they do gives me pause.

Another element – one in which the intellectual property attorney plays a critical role – is more practical and involves the significant challenge of turning that important science and technology into a valuable intellectual property or IP asset. That is where the intellectual property attorney “earns his or her salt.”

America has long led the world in pioneering scientific and technological developments. However, as engineering, development and manufacturing jobs continue to move to Mexico and overseas, the need for American businesses to zealously protect their science and technology against loss to others has probably never been greater. During my career, the world has truly become a much smaller place. We now operate in a global marketplace.As a result of these phenomena, the challenges imposed on intellectual property lawyers have increased considerably, making their services more valuable than ever before. Twenty years ago if you had asked company managers to identify their most valuable assets, it’s likely they would have said something like: “our people and our (manufacturing) facilities.” Some may have identified their company name and, possibly, other intellectual assets (e.g. patents), but it would not have been uncommon for such things to go unmentioned, or mentioned only as an afterthought. Ask that same question today. My guess is the answer would be very different. With people rotating in and out of companies more frequently now, hiring freezes, early retirement packages, outsourcing, and with the increased emphasis on contract manufacturing, it is my guess that today those same managers would be much quicker to identify their intellectual property as among their company’s most valued assets.

With the increasing role that intellectual property is playing in American society, here are some of the questions you should be asking as you consider the role of intellectual property in your business:

Choosing your IP Lawyer: I suggest that this is the first and most important question you should be asking. Consult friends and colleagues. They may have valuable information about leads or personal experiences with particular IP attorneys. Find an IP lawyer who thinks like a businessperson and who is willing to take the time necessary to understand the specific goals of your business. In my opinion – assuming the lawyer’s firm has sufficient resources – this is more important than trying to match the technical background of the prospective IP lawyer to the subject matter of your business.

What to protect: If you are like most people in business, you have a limited budget for intellectual property expenditures. The key here is to figure out how (and where) your business makes its money. Draw a schematic or flow-chart if necessary. Keep in mind it may be necessary to protect certain intellectual properties/ assets for competitive and defensive reasons that may not directly relate to revenue generation.

How to protect your IP: The obvious possibilities are: 1) Patents – design patents to protect unique and purely ornamental features of your products and utility patents to protect the way in which your new products or technology actually functions or works; 2) Service/Trademarks – if your business uses a logo, slogan or one or more words to identify (and distinguish from your competition) the products or services offered by your company, you may want to consider the relatively inexpensive measure of registering the logo, slogan or word(s) as a trademark; 3) Copyrights – you should consider protecting by way of federal copyright registration any of your company’s valuable original works of authorship. Advertising and promotional materials are a good example of such materials. The advantages of registration are considerable and the cost is minimal; and 4) Trade Secrets – information that is not public, that gives your business a competitive advantage is possible trade secret information that you may wish to protect. Often this information can be protected by limiting access to the information and by having solid contracts in place with those who know or have access to the information.

Adding IP as a line item to your budget: If you save over time to replace a leaky roof the expense is more digestible than it is if you are caught off guard suddenly with a bill to replace the roof. Given the highly competitive environment in which we now live and the other factors we discussed above, you should consider formulating a protection strategy and then investing in your company’s intellectual property on a regular basis.

Competitive Intelligence: It should come as no surprise that, today, information is available online about virtually anything you care to investigate. Pending patent applications can now even be retrieved once the application has been pending at least 18 months in the Patent Office. If your company competes heavily with a certain group of regular competitors, you may want to consider having your IP lawyer arrange to regularly troll for information about the inventive activity of your competitors. Depending upon the frequency, the cost of conducting such surveillance is relatively low.

Last I heard, Bob was retired and living comfortably somewhere out West. I wonder if he’d have the same cautionary words for a young lawyer starting a career in patent law today? I don’t think so. Like I said, Bob was smart. He’d know better today.

Joseph E.Walsh, Jr. is a partner in the St. Louis office of Harness, Dickey – St. Louis’ only national law firm specializing exclusively in matters relating to intellectual property. E-mail: jwalsh@hdp.com