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Archived updates for Thursday, April 14, 2005

Proactive Intellectual Property Lawyering

In "The New Marketing Frontier" (Law Technology News, April 2005), Danielle Rodier explains why the best attorneys don't just sit around, and wait for an existing client to pick up the phone to ask for help. Instead, they take advantage of innovative technology to proactively protect clients from crises — which in many cases, can generate billable hours:

Bill Heinze, an intellectual property attorney with Atlanta-based Thomas Kayden Horstemeyer & Risley, uses technology to present himself almost as an oracle who can predict and fend off clients' problems before they even begin to fester. Heinze, of counsel to the 28-lawyer firm, provides clients with free patent and trademark watch services. He even e-mails alerts about new filings their competitors have entered with the U.S. Patent and Trademark Office.

"I use the free U.S. patent database at www.uspto.gov/patft/index.html and U.S. trademark database at http://tess2.uspto.gov," says Heinze. "I develop a search strategy 'watch list' using the names of the client's key competitors and the types of products that they sell." When a client has an intellectual property problem, the opposing party is added to the list, he explains.

Heinze's secretary runs the searches, and prints out paper summaries. After Heinze reviews the documents, his secretary sends electronic copies to key business and technical managers, whose names he stores in Microsoft Outlook distribution lists. "I have already given these business leaders a free seminar on how to spot intellectual property problems, so they can quickly spot the ones that might affect current and/or future projects."

"Although various paid services offer additional information (such as unregistered 'common law' trademarks), and we use those sources when we need them, I like to stick with the free stuff when screening these monthly watch services," says Heinze. "The watch service helps me spot IP problems for clients early in the product-development process, while they're still relatively inexpensive to solve. I streamline searches for particular clients and try to find information that will affect their business," says Heinze. "I started doing this as a way to do preventative lawyering, to help clients avoid some of the last-minute crises I've seen them go through. It seems to work."

Once Heinze alerts a client to the potential for trouble on the horizon, he says the client is generally happy to pay for extra services that will dispel future litigation. Clients expect their lawyers to stay current on the latest legal trends, Heinze says, so attorneys must know how to get that information and disseminate it to clients through the most cost-effective means. The wealth of free information on the Internet makes it cheap to meet this need. But, Heinze cautions, the process can be time-consuming and tough to learn. Most lawyers are turned off because they can't bill for it, he says. But that's false pride, he suggests.

Unlike some firms, Heinze does not charge his clients for the monitoring services. "I'm willing to do this free educational work if it brings the client up to speed and lets me provide a better service," he says.

In marketing the watch service, Heinze has been hit with mixed responses. While Heinez's more sophisticated clients have appreciated that, as an outside lawyer, he has taken an active interest in their businesses, other clients shy away from the extra information.

"Some clients would rather not know about looming IP problems, because they say 'If we know about this we might be looking at increased damages for willful infringement.' But they might have a false sense of security. They can be put on notice simply by a competitor appropriately marking a product," explains Heinze, who also authors the blog, "I/P Updates," a member of ALM's Law.com Blog Network.

"It can be a tough balance for a client to decide how much they want to be involved in this. Some might say the risk is low, that a suit might never be filed. But once a suit is filed, they're looking at a huge headache."

Wow, thanks again Danielle!
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12 Comments:

Anonymous Bill Black, CPA, PC said...

Bill,

I was quite impressed by the favorable description of your marketing strategy in Law Technology Newsletter (copy attached). Identifying potential problems ahead of time, and having a process in place to communicate your findings to clients and potential clients makes you a much
more valuable resource to people who can really benefit from your expertise.

I also admire the commitment to providing value for free. Like you, I am convinced that making yourself a valued counselor to your clients will pay off soon and in the long term. I have provided free or discounted insight and analysis into financial possibilities for my clients for quite some time now, and would be happy to assist your efforts in support of intellectual property opportunities.

The "Damages Diagnostic" is one way to focus attention on the likely results of litigation, but I am also prepared to help with cost/benefit analyses and financial projections in
support of project development. Your marketing program will develop good opportunities for you, and I am ready to support you when needed.

Keep up the good work, and thanks for keeping me in mind when you need some help.

Regards,

Bill Black
770.698.8020
http://billblackcpa.com
http://billblackcpa.com/intellectual_property.htm

April 13, 2005 10:29 AM  
Blogger Bill Heinze said...

Bill,

Thanks for your positive feedback on the Law Technology News article ("The New Marketing Frontier," Law Technology News, April 2005). Sometimes I feel a bit out of step with clients and colleagues who act as if billable hours are the only thing that really matters.

Thanks Again,

--Bill

April 13, 2005 10:55 AM  
Anonymous Anonymous said...

We already create monthly bulletins for our staff. One is an awareness bulletin with 18-month publications and the like. The other is on issued patents. The only downside is that it does generate some additional screening of issued patents.

What makes it problematic is that the US do not (appear to have) an adequate opposition procedure. I have been told on various occasions that one should not file an opposition before the USPTO (inter partes), but that it is better to argue your case in court. Although this may be true, I wonder whether anyone has seriously tried the opposition proceedings and I am surprised that the findings from the participants in such proceedings are not shared and discussed.

I liked the TGIF [at http://ip-updates.blogspot.com/2005/03/tgif-for-us-patent-no-35600_25.html]. Apparently you have had business patents for already a very long time.

April 15, 2005 11:17 AM  
Anonymous Caroline Schroder said...

Bill

I try to warn and thus forearm clients as well and am amazed how often they do ignore the potential problems, but the interesting response you receive from some clients (See below) makes me wonder whether such specific notices are advisable:

Could the headache could be compounded by the attorney being called as a witness in a subsequent suit to testify that he/she had indeed specifically placed the client on notice for the purpose of proving willfulness?

Do you think this is a valid concern?

You wrote:
"Some clients would rather not know about looming IP problems, because they say 'If we know about this we might be looking at increased damages for willful infringement.' But they might have a false sense of security. They can be put on notice simply by a competitor appropriately marking a product," explains Heinze, who also authors the blog, "I/P Updates," a member of ALM's Law.com Blog Network.

"It can be a tough balance for a client to decide how much they want to be involved in this. Some might say the risk is low, that a suit might never be filed. But once a suit is filed, they're looking at a huge headache."

April 16, 2005 7:24 PM  
Blogger Bill Heinze said...

Although I have not researched the issue, you could always argue that any such correspondence was an attornet-client communication and/or attoreny work product.

Besides, if your competitors are marking their products, then it is quite possible that you could incur six years worth of financial liability before they (or their bankruptcy trustee) decide to enforce the patent. Alternatively, if your competitors at watching, your likely to also get stuck with a warehouse full of infringing inventories and/or an unuseable manufacturing process if they are able to succeed on a motion for preliminary injunction.

At least if you know about potential problems, you can try to minimize that risk up front. And this is especially true as in most industries where there is a lot of deliberate copying of competitors successful products.

Perhaps the problem with this whole doctrine of willful infringement is that attorneys and clients use it as an excuse to hide their heads in the sand until the problems get out of control. Maybe purposefully avoiding an examination of others intellectual property rights ought to be the real basis for wilfull infringement?

April 17, 2005 10:51 AM  
Blogger Bill Heinze said...

Maybe the latest patent reform legislative campaign will finally put this problem to rest. Section 6 of the latest "committee print" proposal (http://ip-updates.blogspot.com/2005/04/live-webcast-of-patent-reform-hearing.html) includes the following changes to 35 USC 284:

"Increased damages may not be awarded based merely upon the knowledge of a patent or its contents by the defendant prior to suit."

April 22, 2005 9:33 AM  
Blogger Bill Heinze said...

See also http://ip-updates.blogspot.com/2005/04/proactive-ip-lawyering-bad-thing.html

April 22, 2005 9:51 AM  
Anonymous Anonymous said...

From Peter Zura at the 271 blog:

. . . I suppose the anti-disclosure sentiment can be summed up this way: your chances of getting struck by lightning is less than 0.00001% - but everyone knows to run like hell from the golf course when the thunderclouds roll in . . .

April 27, 2005 11:46 AM  
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