UK - Law Firms Portrait Of A Tech Group: At Home In The U.S., The UK And The Global Arena

Sunday, January 1, 2006 - 01:00

Editor: Ms. Hildebrand, would you tell our readers something about your professional experience?

Hildebrand: I was admitted to practice in early 1985, after a mid-year graduation from Duke University School of Law. I spent 5 years or so engaged in general civil and IP litigation. As the field of technology law emerged, however, it attracted my interest, particularly the concept of commercializing intellectual property. I moved on to lead the IP transactional practice at Friedman Seigelbaum, first as an associate and then as a partner. For the last five and a half years, I have been a partner at Goodwin Procter, where I chaired the firm-wide IP Transactions & Strategies Practice. I am very excited about my latest professional move, which occurred on December 1st. when I became a partner at Lowenstein Sandler PC and a member of the firm's Tech Group.

Editor: Would you share with us the things that attracted you to Lowenstein?

Hildebrand: The quality of the work at Lowenstein, as reflected by its outstanding reputation, was the single most important factor for me. I was also drawn to the firm's longstanding commitment to pro bono undertakings and to community service. Lowenstein's Tech Group is an exceptional team of highly skilled practitioners with a commitment to working with businesses where IP is the driver. This practice group has built what I believe is the finest technology practice in New Jersey, one that is celebrated throughout the Tri-State Area. Our practice is notable not only for the quality of our attorneys, but because of the sheer breadth of subject-matter covered - including both technology and life sciences - and the range of legal services offered in these industries. Another interesting feature of this practice, which I believe will contribute to its bright future, is that in addition to the needs of technology companies - the clients that are already into the high tech arena that so defines the future - our team is also attentive to the legal requirements of more traditional "bricks and mortar" enterprises that are in the process of acquiring technology. The client pipeline, in terms of the variety of services that the group provides, is an interesting comment on acceleration of technology in American business. For instance, we provide commercialization, licensing and outsourcing services - areas where I have extensive experience - and a very sophisticated patent and trademark registration and portfolio service.

Finally, I think a very important aspect of what Lowenstein does for its clients in the technology area derives from its extensive experience with respect to the investment needs of technology-based businesses, together with its connections to the venture capital community. Lowenstein founded the New Jersey Angel Network, now called Angel Vine, and my partners have assumed prominent roles in the New Jersey Technology Council and the New Jersey Biotechnology Council. Lowenstein's ability to offer all of these services from a single platform is rare, and I am delighted to be part of a firm that is, if not unique, certainly abundantly blessed in this regard.

Editor: Please tell us about your practice. How has it evolved over the course of your career?

Hildebrand: That is a very interesting question because my practice has changed - often very quickly - in response to an evolving legal framework as the law attempted to keep pace with technological change and the resulting business impact. When I first started handling IP matters, the very notion of technology expertise in the law was new. There was a time when no one was even certain about the applicability of the Uniform Commercial Code to software licenses. Those of us engaged in this area helped to create the applicable law and to develop and refine the business models to be used in this new technology arena. These were concepts, such as outsourcing, distribution deals, data privacy and data protection, OEMs, and a whole host of theoretical business models that have now been refined over time into quite concrete realities and part of the mainstream of business life.

What has happened is that the practice of technology law has grown from the representation of technology companies to include representation of organizations that acquire or develop technology to run their enterprises. That, of course, means just about any business entity. I have represented licensees and vendors in many different types of transactions across industry lines.

In the most recent incarnation of this evolution, I see an enhanced level of sophistication across the board - in all types of organizations, for-profit, non-profit, and governmental, and in all industry sectors - and an increasing international component. Israel, Ireland, India and even Vietnam come to mind as key players in the globalization of technology. And with these new participants in the global arena, it is clear that globalization is both driven by, and driving, technology. That is, technology is both symptom and cause of globalization, if not the only symptom or sole cause.

Editor: As a member of the firm's Tech Group, you are concerned with a variety of IP issues pursuant to U.S. law and the laws of other jurisdictions. What ought a general counsel of an American company thinking about extending its reach abroad be concerned about?

Hildebrand: The first task for a general counsel contemplating expansion in foreign jurisdictions is to perform an intellectual property audit for the organization. This includes patents, copyrights, trademarks and trade secrets. Once that has been accomplished, it is necessary to consider which jurisdictions are appropriate for the company's business. This is a crucial step because the IP protection and enforcement structures may differ considerably from jurisdiction to jurisdiction. IP and transactional counsel are of great assistance to general counsel in determining the registrations that would be most beneficial to the company. Each company will reach its own particular conclusion here based on a variety of factors, including the nature of its intellectual property, where it wishes to conduct business, its IP registration status, and commercial product lines.

A general counsel should be aware that in the United States there is a one-year grace period in which to seek patent protection from the time an invention is first commercialized. However, the U.S. is just about the only country that offers such protection. In addition, the U.S. has certain export regulations that pertain to technology. Since 9/11 these regulations have been tightened considerably, so if the company is considering the export of its technology a general counsel will need to examine whether export is legally permitted and what licensure requirements may apply. A related concern is whether source code on the company's server which may be accessed from a foreign jurisdiction constitutes a "constructive export" under the export regulations.

Editor: How does the UK fit into the global structure in this regard? Any significant differences between English law and that of the U.S?

Hildebrand: England is a signatory to many key international intellectual property treaties, so in terms of the protection of IP I would generally characterize the UK as a friendly jurisdiction. In terms of culture, there are differences in the approach taken to protect and commercialize IP, but the goals are substantially similar as between the two jurisdictions.

Editor: Please tell us about privacy legislation in England. How is it different from what exists in most U.S. jurisdictions?

Hildebrand: It is substantially different. England is a member of the European Union, and the EU has issued a directive on privacy that requires each member country to implement legislation that reflects the concepts set forth in the directive. The scope of data captured under the English legislation is substantially different from what exists in the U.S., and it includes a great variety of personally identifiable information - dietary preferences for travelers on international airline flights, for example, because that information might indicate a religious preference or health status - together with financial, healthcare, sexual preference and living accommodation information. There are significant penalties imposed with respect to violating the privacy extended to this broad range of personal information, including fines and, in some instances, imprisonment. Something as seemingly innocuous as the transfer of employee data from a client's Italian facility to its personnel office in the UK is subject to the legislation and, if care is not taken to ensure that the requisite protection is extended to this information, the consequences can be significant. Compliance with the directive is taken very seriously in the UK.

Editor: Would you share with us some of your experiences in this particular arena?

Hildebrand: Several years ago I handled a rather substantial outsourcing transaction for a major medical device manufacturer. The organization providing outsourcing services had locations throughout Europe and a number of subsidiaries to manage European operations. A primary server was maintained in the U.S., but the data was to be transmitted to and from Europe. A key issue hinged on which party would undertake responsibility for maintaining the privacy of the data during these processes. Neither party could avail itself of the safe harbor rules then in place in Europe, so the discussion revolved around whether each employee would execute a written consent to the transfer of information, or whether EU standard agreements would be executed between the U.S. organization and each of the service provider's subsidiaries. In the end, the latter alternative was implemented. While this choice also entailed a substantial amount of work, it was deemed by the parties to be relatively less of an effort than that required to obtain informed consent from each affected employee.

At the present time, there is no comprehensive privacy legislation in the U.S. Canada has adopted a structure very similar to the EU and established a central agency with authority to enforce the privacy regulations. In time, the Canadian initiative may encourage such a step in the U.S.

Editor: Please tell us about Lowenstein's Tech Group. What kinds of skills sets do the lawyers in the group possess?

Hildebrand: Our attorneys possess excellent academic credentials, and often significant experience in disciplines relevant to the technology industry such as electrical engineering. A very important attribute of our team is the ability to translate seamlessly between legal, business and technological concepts to assist our clients in making realistic risk assessments in a wide range of business transactions. This "translation" process is key to the success of any attorney serving the technology sector.

As I indicated, our clients include IP driven businesses, life science and biotechnology organizations, and mainstream business enterprises that are acquiring or developing technology. Our practice, as a result, permeates the entire firm. We are "on call" for our colleagues in other practice groups and, in turn, we draw upon the skills and expertise of virtually every legal discipline and practice area within the firm in order to optimize the delivery of legal services to our clients.

Editor: What about the future? Where would you like the Tech Group to be in, say, five years?

Hildebrand: I envision that Lowenstein's Tech Group will be the undisputed "go-to" firm for comprehensive legal services in support of organizations engaged in the technology and life science industries, as well as for those enterprises that are seeking to acquire and develop technology. We will meet the challenge of maintaining our cutting edge expertise as the industries and the law governing them continue to evolve and mature.

Please email the interviewee at mhildebrand@lowenstein.com with questions about this interview.