By Bill Donahue
Law360, New York (July 06, 2014, 9:38 PM ET) -- There are plenty of intellectual property law firms out there, but there are only 12 that offer top one-stop-shopping in prosecution, litigation and licensing work that general counsel are increasingly seeking out to handle their IP work, a new survey of in-house attorneys says.
According to corporate counsel surveyed in the new Intellectual Property Outlook report prepared by BTI Consulting Group Inc. and Law360, the 12 firms that can handle any type of IP work that clients threw at them are Baker Botts LLP, Ballard Spahr LLP, Brinks Gilson & Lione, Fay Sharpe LLP, Fish & Richardson PC, Jones Day,Merchant & Gould PC, Morrison & Foerster LLP, Ropes & Gray LLP, Seyfarth Shaw LLP, Weil Gotshal & Manges LLP and WilmerHale.
Not all firms can do it, and BTI President Michael Rynowecer said offering clients everything they need under one roof can be a huge leg up for those that can.
“Clients are much happier when they use the same firm for both litigation and prosecution, so if you can deliver across that spectrum, if you're respected across those all those individual areas of IP, that gives you a real advantage in the marketplace,” Rynowecer said.
Aside from the simple ease of dealing with one firm rather than three, a big part of why companies like the all-in approach is what Rynowecer called institutional knowledge — a deeper understanding of a company's intellectual property history and objectives that only comes with shepherding a company's IP from creation to prosecution to management to eventual litigation.
“You've got the same firm that worked on the initial application, that has worked through any issues with the U.S. Patent and Trademark Office, the same firm has this long history with how the patent developed, with how you think about the patent,” Rynowecer said.
“If you end up in litigation, that saves months if not years of thought,”
Another simple answer is that the individual components of full-spectrum IP practice — the prosecution team, the litigation team, the licensing and transactions teams — each make the other two better by working together in one shop.
"Those three points of the triangle sort of feed on each other,” said Barton Showalter, the chair of the IP practice at Baker Botts, one of the firms named in the BTI report.
“If you know how patents are prosecuted, then you know where to look for problems in prosecution during litigation; if you know how claims are drafted, then you know how to look for value in a licensing transaction; if you know the procedures at the patent office, it helps when performing a diligence effort in buying patents,” Showalter said. “All of that stuff feeds on itself.”
That notion was seconded by Rachel Krevans, chair of the IP litigation group at Morrison & Foerster — another firm mentioned on BTI's list.
“That synergy of having true prosecutors — lawyers who write patents and work in the trenches — collaborating with the litigation team brings a perspective that effectively advances our clients’ business goals,” Krevans said.
Firms are starting to figure that out. Rynowecer said his group is increasingly seeing specialist IP boutiques — the trademark prosecution pros, the litigation-only shops — moving toward more of a broader set of offerings, bringing more of each client's work under a single roof.
“We're definitely seeing a trend of firms, especially the more boutique firms, trying to build out their practices and their experience base,” he said. “This firm will add on a litigation group, that one will add on a patent prosecution practice.”
And this kind of single-firm integration will probably continue to speed up, according to Baker Botts' Showalter, citing as one example the increasing importance of inter partes reviews and other administrative procedures that require both prosecution and litigation attorneys.
"These crossover talents are in higher demand,” Showalter said. “It's not just about defending patent litigation anymore, but about strategically using IPRs and other sophisticated USPTO procedures to compliment litigation and get your client the best result.”
Methodology: BTI interviewed over 175 general counsel and “IP decision makers” at Fortune 1000 companies. The survey was conducted from Dec. 3, 2013, to June 10, 2014.
--Editing by Jeremy Barker.
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