An IP Practice Riding The Wave Of Expanding Technology

Wednesday, March 1, 2006 - 01:00

Editor: Mr. Evans, would you tell our readers something about your
professional experience?

Evans: I am a graduate of Cornell University, with a degree
in chemical engineering, and I worked as an engineer for five years while
attending NYU School of Law in the evening. I have been practicing IP law since
graduating in 1965.

Editor: How did you come to Kramer Levin? Would you share with us the
things that attracted you to the firm?

Evans: I was with an IP boutique firm, Curtis Morris & Safford,
until 1997 when it disbanded. I then started an IP group at a general practice
firm, Whitman Breed Abbott & Morgan. The group grew rapidly and was very
successful, but in 2000 Whitman Breed merged with Winston & Strawn and my
colleagues and I declined to participate. We thought that Kramer Levin would
provide a much better environment for our clients and ourselves. I have been at
Kramer Levin since then.

At the time, several general practice firms offered interesting
opportunities. Kramer Levin was uniquely attractive because of its strong
commitment to building an IP practice - a talented group was already in place
and growing - as well as its professionalism and strong management.

Editor: How has your practice evolved over the course of your career?

Evans: The field has grown dramatically. When I started out, I worked
for clients in the plastics and textile industries. Today, I am involved in
biotechnology, nanotechnology, and computer science, fields that hardly existed
a few decades ago. Patents covering these technologies have become much more
important and visible corporate assets than they were years ago. Our practice is
more important than in the past. IP law practices have expanded to meet these
new challenges and are now integral parts of general practice firms.

Editor: Please tell us about the representation of high tech companies at
Kramer Levin.

Evans: One of the benefits of having been in the practice for a long
time is the opportunity to work for clients in emerging areas of technology. Of
the 50 attorneys in our IP Group, about 30 have technical degrees in such areas
as computer science, chemistry, and engineering. Another ten or so practice in
the area of trademarks, and others practice unfair competition and false
advertising law.

Our IP Group is deeply involved in diverse technical areas, including
environmental science, nanotechnology, diagnostics, pharmaceuticals,
communications, computer science, information technology and business methods.
We do everything within our specialty, including basic patent preparation,
prosecution, litigation, licensing, due diligence and transactional work. We
provide a seamless web of intellectual property services.

Editor: How does this practice fit into a large general practice firm like
Kramer Levin? Is it a self-contained practice within the firm, or is it
integrated with other practice areas?

Evans: Kramer Levin has about 300 attorneys, including the
approximately 50 who constitute the IP Group. We are a separate group within the
firm and have our own clients and cases, but we frequently work closely with the
other groups, including the corporate, litigation, trusts and estates and tax
groups.

We provide services to clients of the corporate group in patent and trademark
matters and are called upon to assist in mergers, acquisitions and other
transactions where IP assets are involved. We refer work for IP clients to the
other groups and have even referred work to our trusts and estates and tax
groups where successful license transactions have made our clients in need of
their advice. There is a very satisfactory working relationship among the
practice groups at Kramer Levin.

Editor: Is there a place for the stand-alone IP firm in today's
environment?

Evans: There may be some areas where boutiques continue to have a
role. I think the trend is elsewhere, however. There is an important inherent
advantage in practicing IP law from the platform of a general practice firm. I
think that boutiques will find themselves increasingly marginalized and less
competitive in the future.

Editor: It has been five years since the tech bubble burst. For starters,
how did this event affect your practice?

Evans: My personal practice was not affected. Having a chemical
engineering background, much of my work is with biotechnology, pharmaceutical
and other life science clients. The IP Group at Kramer Levin did not suffer when
the bubble burst because we were never just concentrating our practice on
Internet or eCommerce clients, as our client industry base is very diverse.

Editor: Speaking of the biotech industry, what are the important issues
facing that industry today?

Evans: One issue is the quality of the patents being granted. There
have been complaints from the federal bench and elsewhere about the poor quality
of patents being written. A second issue is the delay in the examination and
grant of biotech patents by the Patent & Trademark Office. Another area of
concern is in the expense of litigation and the time it takes to litigate
complex patents. This can be prohibitively expensive for small companies and
individuals. One solution proposed is to have post-grant patent challenge
proceedings in the Patent & Trademark Office like those in Europe and Japan.
I think this is a good idea. More streamlined and cost-effective procedures are
needed. Finally, there is the need to make patent assets more "reliable." In the
past, trademarks and copyrights have been bought and sold and made the subject
of securities transactions. It's going to be exciting to see patents bought and
sold in the same way in the future. For this to happen, however, the risks of a
patent being invalidated have to be reduced. The benefit will be that patent
owners will have assets which can be valued with confidence and made more
liquid. Universities, for example, will be able to sell their patents to
investors to realize more immediate gains.

Editor: Can you share with us some of the matters you have handled
recently?

Evans: I represented a medical diagnostics company that grew from
three to many hundreds of employees, developed an international patent estate
for them and was engaged in a variety of license transactions and litigations in
the U.S., Europe, and Japan. The company was sold to a major pharmaceutical
company. Most satisfying to me is that its technology is providing a real
benefit to hospitals throughout the world.

I represented two surgeons in connection with their patents on surgical
devices. I have been successful in concluding licensing transactions and
litigations for these individuals.

I am working these days with an entrepreneurial company that has a process to
convert sewage to hydrogen. This technology is exciting because it will
simultaneously solve energy, global warming and environmental problems. Another
client is developing methods to produce carbon nanotubes for all kinds of exotic
purposes. Others are developing neonatal pharmaceuticals, diabetes therapeutics,
drug discovery systems, methods for growing and using stem cells, public
healthcare systems and interactive methods for creating works of fiction. And to
keep things hopping, I am counseling a client in a consumer goods counterfeiting
case.

I represent generic drug manufacturers in bringing their products to market,
and I have acted as a consultant to the Internal Revenue Service on IP issues,
particularly in the licensing area.

The matters I handle are extremely varied, and that is what makes my practice
so interesting.

Editor: Please tell us about the international dimension to your practice.
Where does this take you? Are there any trends in the international arena with
respect to high technology companies that our readership ought to be made aware
of?

Evans: The international dimension of my practice has been
fascinating. If a new technology is important in the U.S. market, it is also
going to be important abroad. And vice versa. And the international arena is
growing. China and India have patent systems today that were non-existent 10
years ago.

I have been involved in cases in both the courts and the patent offices of
many countries and the European Union and have worked extensively with patent
agents and attorneys throughout the world, in particular in the United Kingdom,
the Netherlands, Germany, and Japan.

Editor: Are there trends in foreign patent practice?

Evans: There are major opportunities to extend patent estates today to
emerging countries as well as to developed countries where systems are already
in place for obtaining good and reliable patents. While the legal systems in
China and India are undergoing a process of transition, the trend is in the
right direction. In time, I believe it will be possible to obtain, license, and
assert patents there. In general, the patent laws in many different countries
are coming into a rough alignment. Proceedings can sometimes be conducted in
English, and the processes to file and prosecute patents abroad, generally
speaking, are becoming more user-friendly. Differences remain, however, and it
is important to work with knowledgeable local attorneys.

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

Evans: We are riding a giant wave. Our practice will continue to
expand exponentially as new technologies emerge, and it will become even more
international than before. I think patent assets are going to become more like
other corporate assets so they can be bought and sold. The place to be is in a
general practice firm with a wide array of
resources.

Please email the interviewee at bevans@kramerlevin.com with questions about this
interview.