IP Handbook - Home
The comprehensive guide to the world's leading tax firms

At-a-glance: United States Patent and Trademark Office Mailing address: PO Box 1450, Alexandria, VA 22313-1450 Tel: +1 800 786 9199 (in US or Canada), +1 571 272 1000 Email: usptoinfo@uspto.gov Website: www.uspto.gov United States Copyright Office 101... [more]

With competition in the IP market soaring ever higher, the pressure on firms to recruit talented attorneys and build and maintain client rosters has never been more intense. The collapse of venerated firms such as Heller Ehrman, Howrey and Dewey & LeBoeuf – the latter example occurring in March 2012 and constituting the largest law firm bankruptcy in US history – further underscores the necessity of adapting to a shifting landscape through flexible billing arrangements and other efforts to rein in costs.

In the midst of such realities, many IP professionals see the appeal of IP-focused firms and small boutiques increasing. "You're going to see a lot of general practice firms who are sucking wind once they get priced out of the market," says the managing partner of one IP firm, who touted his firm's combination of competitive rates and specialised expertise. "They've often times got these large groups and they don't know what to do with them."

But others see the pendulum swinging in the opposite direction, and highlight the broad-based capabilities of general practice firms, many of who continue to distinguish themselves as market leaders across a range of contentious and non-contentious law. "One of the tremendous advantages we have is the ability to leverage the really phenomenal talent within the firm," says a top IP partner at a well-known, full-service firm. "We can call on the corporate folks to weigh in on privacy and data considerations, licensing agreements – a whole range of issues. Being able to bring that multi-disciplinary approach to bear is a tremendous advantage today."

With the America Invents Act still fresh in the minds of IP professionals, attorneys unanimously say they anticipate inter partes review and post grant review proceedings at the USPTO becoming important "What I'm seeing is the patent office is now getting the depth they need," says one attorney, referring to new administrative patent judges. "The patent office is going to be the place to go. I think they are going to have more and more credibility in terms of the quality of what they do, their responsiveness, and using better discovery approaches."

The International Trade Commission (ITC) continues to serve as a highly popular alterative venue, as concerns remain about the speed and cost of litigation proceedings in federal court. "There has been an explosion of work at the ITC," says one attorney. "I believe we will continue to see this play out over the next few years."

Attorneys tell Managing IP that another growing trend is the appeal of firms capable of offering deep transactional expertise, particularly with respect to emerging companies across the high technology and life sciences industries. "We have seen a huge uptick in the amount of patent licensing and patent counselling work," says one partner who heads up their firm's technology transactions group.

When it comes to high-profile cases with far-reaching implications, 2012 did not disappoint. In what was described by some commentators as "the patent trial of the century", Apple obtained a landmark $1 billion jury verdict against rival Samsung related to smartphone design patents – although that award was cut in half in March. The two companies are still hashing things out around the globe over various design and utility patents.