The Global Intellectual Property Practitioner
The Bencher—November/December 2017
By Adam G. Kelly, Esquire
As an intellectual property lawyer, my practice involves helping clients maximize and monetize their commercial creations—copyrights, patents, trademarks, and trade secrets. It’s an increasingly global endeavor, requiring daily interactions with foreign lawyers and practitioners from around the world—an area where the continued lessons in civility, education, and ethics championed by the American Inns of Court, specifically the Richard Linn Inn of Court in Chicago, have been immeasurable.
In the courtroom, as a trial and appellate lawyer, I help companies enforce and defend against patent infringement actions. My challenge in these cases is to identify the key legal issues tied to a novel technology and then to explain those issues in plain language to a judge or jury.
Outside the courtroom, I advise decision-makers on how to effectively use their company’s intellectual property portfolios to drive revenue, increase market share, and protect valuable product lines. I also counsel clients on how to identify issues arising from a competitor’s portfolio and formulate strategies for how to address those issues. For example, a client may wish to develop a new product, but before committing meaningful resources to do so, that client must first examine its competitor’s patent portfolio. In another example, a client may wish to create a competing, design-around product to a competitor’s patent-protected product. To effectively design around that product, I would analyze that competitive portfolio and suggest design-around options. The client may then include those suggestions into its designs.
My clients want and need to have a global intellectual property strategy—one that comports with their business objectives. Fast-paced changes to intellectual property law in other countries have presented significant opportunities for companies. For example, in the past five years, China, the European Patent Office, South Korea, and the United States have experienced changes in patent-eligible subject matter and the examination and invalidation processes. Those changes have caused savvy companies to revisit their individual patent strategies. These changes have also brought challenges, however, including the challenge of understanding the subtle—and not so subtle—differences between patent practices in the United States and foreign countries.
Take China, for example. As U.S.-based practitioners, we sometimes take for granted that intellectual property laws arose from Article 1, Section 8 of the U.S. Constitution circa 1789. The United States has been refining its laws ever since. China did not enact any intellectual property laws until the 1980s. Since then, China has passed sweeping legislation to harmonize its laws with many industrialized countries, employed thousands of patent examiners over dozens of regional offices, and created highly specialized intellectual property courts with the power to hand down stronger monetary remedies.
Understanding these developments is critical to helping clients maximize the full value of their patent portfolios. Consider the question of where to file a patent application covering a novel business method. Filing an application in China may be advantageous because novel business methods are patent-eligible there; whereas in the United States, the Supreme Court eviscerated similar patents in U.S. Bank v. Alice. For a U.S.-based company, the Chinese enforcement system continues to develop positively, presenting additional opportunities for damage and injunction awards against competitors and knockoff artists.
Increasingly, my work inside and outside the courtroom takes place on a global scale. To enforce and defend their global IP rights, I find myself litigating on my clients’ behalf in jurisdictions all over the world. In order to effectively implement a global IP portfolio strategy, I also need to coordinate and supervise the work of foreign counsel. Building and relying on strong relationships with foreign lawyers across the globe is critical. Once we engage foreign counsel, I spend a significant amount of time overseeing them.
For example, for one particular client, we engaged a South Korean law firm to challenge the validity of a competitive patent based upon a combination of prior art patents. Arguably, that combination of patents rendered the challenged patent “obvious” and therefore invalid. Simultaneously, based upon a similar combination of prior art patents, we decided to challenge a similar but unrelated competitive patent at the U.S. Patent Office. Again, we argued obviousness. At the same time, we were actively prosecuting our own patent applications in Taiwan and addressing that same prior art. Our goal was to characterize and describe the prior art patents in the same way for South Korea, Taiwan, and United States. Why? Because we wanted to convey one common view for how we interpreted the prior art patents. That common view stemmed from our understanding of our own patents and the prior art patents—a view that we did not want to be contradicted by inconsistent statements in a foreign jurisdiction. Obviously, our message is strategic.
My relationships with foreign counsel often have me overseeing additional legal projects for my clients in areas outside intellectual property, such as advertising, capital markets, corporate, customs, grey goods markets, litigation, international trade, and tax—projects often arising from the increased global scope of their intellectual property portfolios.
Over the past decade, my intellectual property practice has grown steadily from regional to national to international. That growth has enabled me to represent interesting clients on challenging issues while interacting with skilled lawyers from around the globe. Sometimes those issues are complex and hard-fought, so maintaining a high level of civility and ethics is mandatory. And thankfully, I have the American Inns of Court for support now and over the coming decades.
Adam G. Kelly, Esquire is a partner in the law firm of Loeb & Loeb LLP in Chicago, Illinois. He is the vice president of the Richard Linn AIC.
© 2017 Adam G. Kelly, Esq. This article was originally published in the November/December 2017 issue of The Bencher, a bi-monthly publication of the American Inns of Court. This article, in full or in part, may not be copied, reprinted, distributed, or stored electronically in any form without the express written consent of the American Inns of Court.