Jones Day Deploys Global One-Stop Intellectual Property Practice

Monday, November 1, 2004 - 01:00
Theresa M. Gillis

Editor: Ms. Gillis, would you review for us the growth of Jones Day's IP practice and give us a profile of its capabilities today?

Gillis: When I came to Jones Day 15 years ago, the firm was clearly an IP leader in quality, but some boutiques boasted greater size. What was really unique about Jones Day then, and in fact the major reason I joined, was that here was a general practice firm with a serious commitment to IP.

The IP practice has, of course, grown enormously since then, both in the United States and globally. The most significant growth in the U.S. in recent years resulted from two acquisitions, one on each U.S. coast. We acquired a group that had been with Lyon & Lyon in California and a larger group from Pennie & Edmonds, mostly in New York and Washington. Globally, we have also opened an IP-dominated office in Munich, made significant additions in London, and have been growing the practice in several Asian offices. Jones Day is one of the very few firms with a truly international IP capability. In terms of sheer numbers, we have about 300 IP lawyers globally and expect to further expand our practice outside of the United States. That's bigger than most IP boutiques and perhaps the largest of any general practice firm. Unlike IP practitioners in some general practice firms, our lawyers are specialists who have practiced IP law substantially, if not exclusively, for their entire careers.

The scope of our practice has also grown. While we have always been strong in litigation and transactional work, thanks to the expansion we now have great depth in patent prosecution. Jones Day has about 150 lawyers registered to practice before the United States Patent and Trademark Office, as well as a significant presence in the European Patent Office and capabilities in Asia. I doubt there is another non-boutique firm that can say that. The non-U.S. prosecution capabilities are important because now services which Jones Day had outsourced can be provided from within the firm, creating increased efficiency. More importantly, when both U.S. and foreign issues are handled in a single firm, the discussion can be more open and probing. This increases the opportunity for securing a strong and uniform patent portfolio. This can be particularly important if patent litigation occurs where failure to have a global patent strategy that is properly and uniformly implemented can reduce the likelihood of successfully defending the portfolio.

We've also increased our depth in specific technologies, most significantly biotech and pharma. This capability is at the heart of a new life sciences industry initiative, which I'd like to talk more about later. We are now fully capable in essentially all the important technologies, including electronics and mechanical as well as the life sciences.

Another new dimension for the firm is our expansion in non-technical IP. We now have a number of trademark specialists in California, New York and Ohio. Historically, Jones Day has been engaged in significant trademark litigation. For instance, we litigated one of the first cases under the dilution statute. But we had few lawyers focused exclusively on trademarks. Now we have a number of IP practitioners at the firm who are not technology oriented and whose primary focus is trademarks and unfair competition. These specialists not only litigate trademark and unfair competition matters, but also have substantive experience and expertise in trademark procurement and contested proceedings in the United States Patent and Trademark Office.

Jones Day has also developed significant trademark capacity in Europe and Asia to complement the strong U.S. practice. With Jones Day's increased trademark expertise, the firm is able to provide significant assistance in terms of management of a company's portfolio around the world. As with the patent situation, having a single firm manage the entire portfolio results both in efficiency and in a stronger portfolio.

Because Jones Day has significant expertise in both IP litigation and IP prosecution, it is able to counsel clients concerning procurement strategies that enhance the probability of successful enforcement of their IP portfolios. It is also able to provide comprehensive advice concerning IP risks associated with its clients' transactional matters.

Editor: What general advice can you give to corporate counsel concerned with the management and protection of IP assets?

Gillis: The climate in terms of litigation has changed in recent years. The number of cases that are going to trial and the damages that are being awarded in IP cases have increased significantly. As a result of this, I believe corporations have to take a somewhat different approach than they have historically. They have to focus on the acquisition of IP as well as the management of litigation. In patent litigation, it is extremely important that a defendant have its own IP to be used as leverage in settlement efforts. In addition, the plaintiff in patent litigation has to be certain that its IP can withstand the scrutiny of litigation. Companies need to be focusing on securing patents that can be used effectively both defensively and offensively. This may involve increasing expenditures in the patent prosecution side of the practice. But such a strategy is likely to be less costly in the long term than being confronted with the very significant damages we see being awarded today. Nevertheless, with more trials, and with jury trials now the norm, it is critical that companies retain lawyers with significant trial experience and with the necessary support from those with an appropriate technical background.

In the patent procurement area, I would advise companies to be creative in the sorts of inventions that are patented. Companies sometimes mistakenly focus only on the product itself rather than looking at subcomponents of the product, uses of the product or how the product is made. Frequently, inventions in these areas provide the greatest leverage as less prior art has been published and it is more difficult to attack the validity of these patents.

Companies also need to take a more global view of patent procurement. In litigation, a company that has only United States patents may be at a significant disadvantage relative to a company which has secured patents globally, even if those patents seem to be less significant. Having global patents increases the royalty base and the return on the patents.

The global marketplace is even more significant in the trademark and copyright areas given the rise of the internet and of global marketing. It is critical that companies take a global view of their trademark and copyright management. Jones Day is currently assisting a number of clients in auditing their portfolios to eliminate trademark registrations which are of no continuing value and to bolster trademark registrations which have continuing commercial significance.

Because of the increased importance of IP and the significant risks associated with IP, I would also caution clients to be careful in the context of transactions involving IP. Again, Jones Day offers what may be unique services for clients involved in transactions. Whether the transaction is IP-driven or IP is simply one asset among many in a business deal, Jones Day enlists the aid of IP lawyers to ensure that the client is fully informed with respect to any potential IP risks. Often clients do not appreciate the enormous potential for damages in the IP context and, without the input of IP lawyers, may be undertaking risks that can alter the economics of a deal. In other contexts, such as securities offerings, clients may not appreciate the potential for IP assets to be subject to attack and lose significant, or even their entire, value. Jones Day's ability to provide its clients with one-stop shopping increases the likelihood that IP issues that arise in a transaction or other business context, whether of U.S. or foreign origin, will not be overlooked and can be efficiently and effectively handled.

Editor: You mentioned a new initiative in providing comprehensive legal services, including IP, to life sciences companies?

Gillis: Historically, Jones Day has tried to organize itself not just by traditional legal specialty but also in multidisciplinary teams centered on particular legally intensive and highly regulated industries like energy and healthcare where we have the resources to meet their comprehensive needs. And this is not just a matter of organization charts and marketing. We add dedicated researchers and make a group-wide effort to become very familiar with that industry's particular business and regulatory problems and think about creative ways in which we can be helpful.

In the life sciences industries, Jones Day has long represented major companies that focus on pharmaceuticals, biotechnology and medical devices in their corporate and transactional work. Now with the expansion of our IP practice - we have about 70 lawyers now with specific bio/pharma IP expertise, many of them with advanced scientific degrees - we decided we were ready to establish a Life Sciences specialized industry practice. This team addresses not only business lawyering and IP, but specialized versions of all of the firm's relevant resources, including tax and antitrust. Lawyers in both U.S. and foreign offices participate to insure that these issues will be dealt with on a global basis.

We assist publicly traded life sciences companies, early-stage ventures, and research institutions as they evolve their scientific innovations into successful enterprises. They range among a wide range of disciplines, from pharmaceuticals and medical devices to genomics, proteomics, cell therapy, and bioinformatics. Our team provides sophisticated advice appropriate to a life sciences firm at each stage of its development. We guide our clients through their most critical phases, including choosing an entity, identifying and structuring venture financings and strategic partnerships, protecting intellectual property assets, product sales, manufacturing, and licensing; and formulating public offerings, mergers, and acquisitions.

Editor: You are based in the New York office. The New York and Washington offices are among the three largest in the firm. Can you tell me something about the IP practice in these offices and how they interact with the others?

Gillis: The New York and Washington IP groups have actually seen the most dramatic growth in the firm in recent years. For instance, it wasn't that long ago that neither office had a significant patent prosecution capacity. The two offices have grown from approximately 20 IP lawyers to nearly 100, including over 40 lawyers with significant patent prosecution expertise. From a technological standpoint, the added lawyers provide a deep capability in biotechnology and pharmacology.

But beyond that, every Jones Day client, regardless of location, gets the full benefit of our global resources. Jones Day is not one of those firms that takes a regional view of the practice of law. Litigations are commonly staffed across offices, as are transactions. For instance, it's not uncommon to have transactional lawyers based in Cleveland handling a matter and drawing upon antitrust advice from the Washington office and from London, and with IP lawyers in New York weighing in, and so on. The firm's strong technology infrastructure allows lawyers in all of its offices to seamlessly work together on client matters.

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