IP And Technology Law: At The Center Of A Firm's Practice

Tuesday, March 1, 2005 - 01:00

Editor: Would each of you give our readers something of your professional experience?

Gilden: I have been practicing as a corporate lawyer for over 30 years. Prior to joining Kramer Levin, I was the Managing Partner of the New York office of Brobeck, Phleger & Harrison, a national firm with a corporate practice focused on the representation of technology companies and their investors. My own practice has involved clients in the technology sector, with particular reference to their raising of capital and strategic transactions. I have also concentrated on the representation of Israel-based technology companies in their U.S. transactions. Currently I am a member of Kramer Levin's Business & Technology Practice Group. I joined Kramer Levin in large part because I believed its representation of mid-market entrepreneurial and technology-oriented companies would be attractive to my clients, a belief that has turned out to be well founded. During my time at Kramer Levin, those clients have been particularly well served by the firm's intellectual property lawyers.

Lipsitz: I am a registered patent attorney with more than 25 years experience in the intellectual property field. I am involved in all phases of IP law, including patent and trademark counseling and litigation, the protection of business methods and software, and a variety of transactional matters. As the founding partner of the firm's IP and technology practice - which I started in 1998 - I believe I bring to bear extensive experience and substantial knowledge of IP issues and the technology that underlies them. Within the IP department alone we now have more than 50 lawyers, and Richard and I work closely together to provide an extremely sophisticated service to the firm's clients. The IP and corporate departments - working together in the Business & Technology Practice Group - provide those clients with a group of outstanding technology lawyers who have great transactional expertise and with corporate lawyers who are uniquely skilled in technology transactions.

Editor: Between the two of you, a number of seemingly related practices are represented: intellectual property and technology law; outsourcing and technology transactions; business and technology; and information technology and e-commerce. How are these practices organized at Kramer Levin? How do they connect?

Gilden: Kramer Levin has a total of some 120 attorneys in its corporate and IP departments. Our Business & Technology Practice Group brings together the talents and experience of a large and diversified group of attorneys. The combination of disciplines, together with a firm-wide commitment to our clients' needs, results in a comprehensive service in all areas of technology and directed at a wide range of enterprises. Our Business & Technology Practice Group deals with venture capital in early stage representation, capital markets, merger and acquisition transactions and outsourcing. Our IP group handles transactions dealing with intellectual property rights and all aspects of intellectual property litigation. We also provide our technology clients with advice from our other areas of practice, including labor law, employee benefits, executive compensation and equity incentives plans. Resources such as these are among the many advantages of having a technology practice supported by a large general practice firm.

Editor: Can you tell us something about the lawyers who practice in this area?

Lipsitz: In the IP department the majority of attorneys are registered patent attorneys with specialized training. Many have advanced engineering or science degrees. By way of example, my undergraduate training was in physics, which has been extremely valuable in much of my work. On the corporate side of the Business & Technology Practice Group, many of the attorneys have years of experience with technology companies, including start-ups, mid-sized and large enterprises, and both before and after the dot-com bust.

Editor: Please tell us about the clients.

Gilden: Our technology clients range from small innovative companies just emerging from technology incubators to multinational enterprises. Most, however, fall into the category of mid-cap technology companies generally traded on the NASDAQ stock exchange. These companies have a broad range of needs, many of which interconnect between the different corporate and IP disciplines. Many of them do not have substantial in-house legal resources.

Editor: Would you tell us about Kramer Levin's outsourcing and technology practice?

Lipsitz: The Kramer Levin Business & Technology Practice Group brings together a diversified group of attorneys whose common denominator is substantial experience in technology transactions. Both the IP department and the corporate department make substantial contributions to this group. It includes, in addition to IP and corporate attorneys, those who work with our Outsourcing & Technology Transactions Practice Group. Their expertise extends to all aspects of technology practice, including mergers and acquisitions, joint ventures, IP counseling and protection, and outsourcing transactions of all types, sizes and complexity.

Editor: What are the trends here? Where do you see the outsourcing and technology practice going over, say, the next five years?

Gilden: Technology practice is evolving constantly. In the late 1990s the Internet and e-commerce companies were generating a substantial amount of work. That was a reflection of the key role played by New York in the new media arena. After the collapse of the Internet bubble, a significant amount of our focus shifted to biotech companies and to medical devices and healthcare technologies. Given the enormous concentration of teaching hospitals, pharmaceutical companies and medical device enterprises in this area, this trend is only going to continue. In addition, as the technology outsourcing trend has developed and then accelerated, we have added an outsourcing capability. I think that trend is going to continue. The telecommunications sector went into a tailspin in 2000 but appears to have made a significant recovery. We have a number of clients in this area now. Finally, I think that we will see a growing trend away from IPOs for smaller companies as an exit strategy in light of the Sarbanes-Oxley Act. Sarbanes has meant increasing costs and increasing exposure for many of the smaller, entrepreneurial enterprises, and this is going to result in more concentration in the technology sector. All of these developments will provide a substantial amount of work for lawyers practicing in this area.

Editor: Kramer Levin is also engaged in an extensive IT and e-commerce practice. Can you give us an overview of this area?

Lipsitz: Kramer Levin has been recognized for its expertise in handling the complex legal and technical issues associated with the development, distribution, licensing, and use of computer hardware, software and other advanced technologies. We represent companies that develop and license software in many different industries, including financial services, consumer products and the entertainment market. In addition to assisting clients in selecting and protecting domain names - which has become routine - and in protecting the intellectual property they develop for use on the Internet, we are engaged in general representation of a variety of enterprises, small, mid-sized and large, in connection with their software and Internet issues. To do this, we utilize an interdisciplinary approach and draw upon the resources of our IP, corporate, tax and litigation attorneys, among others.

Editor: Much of the work in which you are engaged is borderless. Please share with us your thoughts about how this fits into the global economy.

Gilden: As a consequence of technology, the world is much smaller today than it was even a few years ago. Although most of our attorneys are located in the New York office, our clients are scattered across the world. We represent a substantial number of Israel-based technology concerns that raise capital in the U.S., and our U.S.-based technology clients sell their products worldwide. Technology outsourcing is, by definition, a global phenomenon. Our alliance with Berwin Leighton Paisner in London and Brussels adds another platform for the internationalization of our technology practice, and I should point out that Berwin Leighton Paisner has a vibrant practice of its own in representing Israeli technology companies. As a result, we work closely together in advising our respective Israeli clients on the pros and cons of listing in London or New York

Editor: Is the emergence of Israel's technology industry something that has happened recently?

Gilden: The first Israeli technology company - a medical device concern - was listed in the U.S. in 1970. That trend greatly accelerated in the mid- to late-80s, and today there are more Israeli companies listed here than those of any foreign country other than Canada. The NASDAQ exchange is the most important marketplace in the world for technology companies to raise capital, and the Israeli companies are comfortable there.

Editor: Technology law has gone from being a very specialized, and somewhat obscure, practice area during your careers to being one of the absolutely essential components of law firm success. What about the future? How do you see this practice area evolving?

Lipsitz: Your assessment of what has happened in this area is correct. During my early years, IP and technology law issues were handled exclusively by patent and trademark boutiques. General practice firms were comfortable referring their IP work to these firms. That changed when large verdicts began to be rendered in patent infringement suits and, in the transactional area, technology came to represent substantial value rather than an afterthought. The general practice firms then began to merge with the boutiques or hire their own IP lawyers. They also learned that access to a whole range of disciplines and practice areas served to add value to their relationships with the clients who came to them for IP and technology law services. I think that trend is going to continue, and Kramer Levin, for one, will continue to prosper as a major service provider in this area.

The explosion of the Internet in recent years has brought an entire new array of issues into the spotlight that cannot be addressed by recourse to hornbook IP law or traditional concepts. The music download issue has radically changed the way in which music companies do business, for example, and the issues that arise from Internet advertising, the use of search engines, pop ups and a whole range of things that no one thought about just a few years ago are going to keep lawyers at Kramer Levin busy for years to come.

Editor: Is there anything you would like to add?

Gilden: Economic reality has dealt some very harsh blows to law firms that, during the technology boom, were focused exclusively on IP and technology law. From Silicon Valley to Boston, the legal landscape is littered with the casualties of the technology bust. Today it is imperative for a law firm to practice across a wide range of legal disciplines, and one which seeks to cater to a technology clientele is going to have to offer a deep bench in corporate, corporate finance, litigation and other practice areas as well as IP and technology. Such a firm is also going to have to understand the entrepreneurial spirit of such clients and possess partners willing to roll up their sleeves to help them achieve their goals. That firm, I think, is Kramer Levin.

Please email the interviewees at rgilden@kramerlevin.com or rlipsitz@kramerlevin.com with questions about this interview.