Proactive and Preventative I/P 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:

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."

Of course, this approach won't neccesarily be successful in every technological area. For example, some technologies might arguably change so quickly that the 18-month patent publication blackout period makes most patent research hopelessly obsolete. Some practitioners feel that the availability of enhanced damages for willful patent infringement in the U.S. makes monitoring a competitor's patent claims just too risky. However, for clients who want to actively monitor and proactively manage their legal risks, this approach can provide a valuable insurance policy againt the hidden costs of resolving intellectual property disputes.