What are the main challenges you face leading your firm’s IP practice?
Fox Rothschild has grown substantially in the past decade, so my challenge as department chair has been to ensure that all our lawyers have the resources that they need to be successful. We now have more than 50 patent attorneys and agents, more than 80 IP attorneys in total, and are spread across four time zones in 27 offices. I aim to ensure that everyone in the group receives support and training and integrates with the team. We do that well through video conferencing, regular meetings and in-house training sessions, but it is a never-ending challenge.
If I look at this through the client lens, another challenge is tailoring our communications to match each client’s style. Our clients have many different billing systems, task code requirements and communication guidelines. My goal is to ensure that our teams make it easy for clients to communicate with us, using the tools they prefer, with clear and concise communications.
Thankfully, at Fox we have a full-time director of IP services who is focused on helping us meet these administrative challenges.
How have client expectations changed over the years?
Clients increasingly want to know that they are hiring not only great attorneys, but also great project managers. Clients want to know that we can quickly provide them with detailed snapshots of the work we are handling – including budget, status, who is working on it, unexpected changes and predicted completion date. They need this in real time, with frequent updates. It is important that we, as outside counsel, can respond and demonstrate that we are on top of not only the legal tasks that we perform, but also all of the administrative and project management details.
This is one reason why Fox recently created the position of chief knowledge and innovation officer. In addition to providing skilled legal advice, we must make our clients’ lives easier and provide value-added services that complement the specific tasks that clients hire us to do. Our knowledge management and innovation department is essential in this because it equips our lawyers with the tools to be better project managers, and that makes it possible for clients to have direct access to many of the resources that we use.
When building an IP strategy, what are the key questions companies need to be asking themselves?
There is no one-size-fits-all answer. When it comes to securing patents and trademark registrations, businesses should be asking:
- What value does this asset provide to the business?
- Can it be used to strengthen market position?
- Will it help defend against risk?
Strategising is in large part financial planning. It is about ensuring that every dollar that a client spends on patent or trademark procurement makes sense. It is also important to think about the bigger picture. Companies need to consider the IP landscape – what their competitors are doing – and understand the scope of their competition’s IP patent portfolios.
IP counsel should be a partner in this strategising. Companies should be asking:
- Is my outside counsel merely reactive?
- Are they doing things only in response to what we ask them?
- Are they proactively helping us to build value and finding information that helps us make strategic decisions?
To enable outside IP counsel to be most effective, it is important that companies invite that counsel to participate in the strategy.
In which technologies are you seeing the most growth in patent interest currently?
As an electrical engineer, my answer is going to be biased, as I personally have been seeing a lot of robotics, complex software and electronic devices. Interestingly, another strong trend that we have seen is in traditionally lower tech sectors, such as consumer products (eg, sporting goods, toys and pet products).
If you were to make one prediction about how the US patent system will develop over the next few years, what would it be?
This is going to depend largely on what, if any, patent reform Congress implements in the next few years. If they do act, I hope we get more predictability about subject matter eligibility. This is particularly important for clients that seek patents in the software and life sciences areas. The question of what is eligible for protection under the US patent system is fundamental to the stability of our patent system. Whether Congress increases or decreases the field of eligible subject matter, we need more predictability.
Partner [email protected]
James Singer is chair of the IP department at Fox Rothschild LLP, a national law firm with more than 950 lawyers in 27 offices. Based in Pittsburgh, Mr Singer handles patent prosecution, freedom-to-practice and design-around analyses, technology licensing, tech-focused supply chain agreements and IP due diligence. He is also an experienced electrical engineer and project manager, a mentor at start-up accelerators and a frequent author and speaker on issues relating to technology and the law.
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10