Re: Small IP boutique vs. big lawfirm - and more ................
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Among other things, the law says that whoever files a patent first is the legitimate patent-holder, even if someone else claims to have invented it earlier. This "first-to-file" approach brings the U.S. in line with international patent law, but not in every case.
"We have a lot of exceptions," said Hwang, of McAndrews, Held & Malloy, "so it's not exactly like the rest of the world."
The law also creates a new way of challenging patents after they've been approved — at the U.S. Patent and Trademark Office instead of in court.
"If that turns out to be an effective way to challenge patents, that could be a significant change," said Brinks Hofer's Sobieraj.
Drutchas predicted that a lot of legal action will shift from the federal courts to the U.S. Patent and Trademark Office. And this will benefit midsize IP firms, he said, since nearly all of their lawyers are registered to practice before the U.S. Patent and Trademark Office. That isn't always true for the IP lawyers at big general practice firms.
"It may mean more of a push toward smaller firms," Drutchas said.
Kilyk agreed, predicting a boom in patent office work for IP boutiques.
"It's probably going to take off," he said. "I can see a lot of companies taking advantage of that. … They're going to look at this and say, 'This is a much more efficient and cost-effective way of having a patent reviewed.'"
Companies filing patents were looking for less expensive alternatives than hiring big firms to handle the work, he said.
"I think there'll always be a place for boutique firms, frankly — especially those that want to keep their mainstay in the patent prosecution area," Hill said.
Many lawyers at midsize IP firms said they believe their work dealing with the U.S. Patent and Trademark Office gives them a depth of knowledge that helps them win patent litigation in the courtroom.
"If you've actually written some patents and prosecuted them through the patent office, you can read between the lines and get a deeper understanding of what's going on," Sobieraj said. "We can handle the litigations much more efficiently. We're not handling these issues for the first time. We don't have to come up to speed. We're there."
Among other things, the law says that whoever files a patent first is the legitimate patent-holder, even if someone else claims to have invented it earlier. This "first-to-file" approach brings the U.S. in line with international patent law, but not in every case.
"We have a lot of exceptions," said Hwang, of McAndrews, Held & Malloy, "so it's not exactly like the rest of the world."
The law also creates a new way of challenging patents after they've been approved — at the U.S. Patent and Trademark Office instead of in court.
"If that turns out to be an effective way to challenge patents, that could be a significant change," said Brinks Hofer's Sobieraj.
Drutchas predicted that a lot of legal action will shift from the federal courts to the U.S. Patent and Trademark Office. And this will benefit midsize IP firms, he said, since nearly all of their lawyers are registered to practice before the U.S. Patent and Trademark Office. That isn't always true for the IP lawyers at big general practice firms.
"It may mean more of a push toward smaller firms," Drutchas said.
Kilyk agreed, predicting a boom in patent office work for IP boutiques.
"It's probably going to take off," he said. "I can see a lot of companies taking advantage of that. … They're going to look at this and say, 'This is a much more efficient and cost-effective way of having a patent reviewed.'"
Companies filing patents were looking for less expensive alternatives than hiring big firms to handle the work, he said.
"I think there'll always be a place for boutique firms, frankly — especially those that want to keep their mainstay in the patent prosecution area," Hill said.
Many lawyers at midsize IP firms said they believe their work dealing with the U.S. Patent and Trademark Office gives them a depth of knowledge that helps them win patent litigation in the courtroom.
"If you've actually written some patents and prosecuted them through the patent office, you can read between the lines and get a deeper understanding of what's going on," Sobieraj said. "We can handle the litigations much more efficiently. We're not handling these issues for the first time. We don't have to come up to speed. We're there."
Among other things, the law says that whoever files a patent first is the legitimate patent-holder, even if someone else claims to have invented it earlier. This "first-to-file" approach brings the U.S. in line with international patent law, but not in every case.
"We have a lot of exceptions," said Hwang, of McAndrews, Held & Malloy, "so it's not exactly like the rest of the world."
The law also creates a new way of challenging patents after they've been approved — at the U.S. Patent and Trademark Office instead of in court.
"If that turns out to be an effective way to challenge patents, that could be a significant change," said Brinks Hofer's Sobieraj.
Drutchas predicted that a lot of legal action will shift from the federal courts to the U.S. Patent and Trademark Office. And this will benefit midsize IP firms, he said, since nearly all of their lawyers are registered to practice before the U.S. Patent and Trademark Office. That isn't always true for the IP lawyers at big general practice firms.
"It may mean more of a push toward smaller firms," Drutchas said.
Kilyk agreed, predicting a boom in patent office work for IP boutiques.
"It's probably going to take off," he said. "I can see a lot of companies taking advantage of that. … They're going to look at this and say, 'This is a much more efficient and cost-effective way of having a patent reviewed.'"
Companies filing patents were looking for less expensive alternatives than hiring big firms to handle the work, he said.
"I think there'll always be a place for boutique firms, frankly — especially those that want to keep their mainstay in the patent prosecution area," Hill said.
Many lawyers at midsize IP firms said they believe their work dealing with the U.S. Patent and Trademark Office gives them a depth of knowledge that helps them win patent litigation in the courtroom.
"If you've actually written some patents and prosecuted them through the patent office, you can read between the lines and get a deeper understanding of what's going on," Sobieraj said. "We can handle the litigations much more efficiently. We're not handling these issues for the first time. We don't have to come up to speed. We're there."
From Chicago Lawyer Magazine ,Feb ,1 ,2012
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