It seems a bit early in the year to be giving awards for 2011, but the Google Legal Department has already been named the top legal department by Corporate Counsel, so why not take a look at the top intellectual property law firms in the United States?

Earlier this year Intellectual Property Today announced its annual Top Patent Law Firms for 2011.  Just recently they also announced the Top Trademark Firms for 2011.  The Top Patent Law Firms were ranked according to the number of utility patents issued in 2010, and similarly the Top Trademark Law Firms were ranked according to the number of U.S. trademark registrations issued in 2010.  In each case the firm received credit where the firm or a firm attorney was listed as the legal representative on the issued patent or trademark.  So while the list is a 2011 list, it is probably more accurate to recognize that the IP Today rankings relate to events of 2010, but who wants to get a 2010 award this far into 2011?

Herb Wamsley at the IPO's PTO Day, November 2010

Herb Wamsley is the Executive Director of the Intellectual Property Owners Association, and recently I had the opportunity to catch up with him to go on the record.  Wamsley was in Brussels, Germany ahead of the International Judges Conference, sponsored by the IPO Education Foundation.  Upon return from this trip there will be no travel rest for Wamsley though.  He will receive the enormously prestigious Jefferson Medal on June 3, 2011, placing him in elite company within our industry, including past winners Judge Giles Sutherland Rich, Chief Judge Howard Markey, Chief Judge Paul Michel, Chief Judge Randall Rader, Donal Chisum, Karl Jorda, Senator Orrin Hatch, Dr. Triantafyllos Tafas and many other distinguished industry contributors.

The topic of my interview with Wamsley was the IPO Education Foundation’s search for the National Inventor of the Year.  For 38 years the IPO has annually recognized an inventor, or inventive team, for remarkable achievement.  Past winners have been independent inventors, University researchers and inventors employed by corporations.  Unlike some other career honors, such as the Inventors Hall of Fame and the National Medal of Technology, the IPO seeks to honor inventors for contemporaneous inventions.  The ideal nominee is one who had a successful innovation recently patented and recently commercialized, thus giving contemporary heroes of invention recognition for their endeavors.

It’s not easy being a technology startup. There are many challenges, including racing towards product and business development milestones, recruitment and management of employees, funding goals and restraints, fierce competition from big and small competitors, changing legal and regulatory landscapes – just to name a few.

One of the costliest mistakes a startup can make is mismanaging intellectual property rights.  A company needs to not only manage its own IP rights, but also avoid those of third parties, including competitors. To be on the safe side, therefore, intellectual property management should include efficiently protecting the startup’s IP rights while also avoiding the IP rights of others.

The United States Patent and Trademark Office (USPTO), in cooperation with the Office of the Intellectual Property Enforcement Coordinator (IPEC), today announced the launch of a new online database where U.S. government agencies are now posting information about the intellectual property rights (IPR) training programs they conduct around the world.

The Global Intellectual Property Education: Training Program Database was a product of the 2010 Joint Strategic Plan on Intellectual Property Enforcement. The Strategic Plan called for the creation of a central database in which agencies that conduct international intellectual property enforcement training could deposit training materials to promote greater coordination and avoid duplication of resources.

Congratulations are in order for the Google Legal Team! Yesterday Corporate Counsel announced that Google Inc. was selected as the winner of the 2011 Best Legal Department competition. United Parcel Service, Inc., and WellPoint, Inc., were also given honorable mention recognition. The detailed profiles of all three will be published in the magazine’s June issue and also available online.

This story caught my eye because Anthony Paonita, Editor in Chief of Corporate Counsel, cited the selection of Google as the winner due to the fact that the company “has had to deal with the sometimes messy consequences of its frequent marketplace disruptions.”  Paonita went on to explain that the Google “win stems from these cases that “test the limits of laws perpetually lagging behind new technology. Can advertisers use trademarked terms in Google ads? Can Google scan and make available copyrighted but out-of-print books? Is the company liable if results of its search engine direct users to counterfeit or pirated products?”  But wasn’t the resolution of the trademark terms a loss for Google at least indirectly?  Isn’t the so-called Google Book Settlement on hold having been rejected by the district court?  And didn’t Google just set aside $500 million to cover the cost of fines relating to an antitrust investigation initiated by the Department of Justice? See Google puts $500 million in antitrust pot.

A patent is a proprietary right granted by the Federal government to an inventor. There are three types of patents available in the United States: (1) a utility patent, which covers the functional aspects of products and processes; (2) a design patent, which covers the ornamental design of useful objects; and (3) a plant patent, which covers a new variety of living plant. Each type of patent confers “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. It is important to note, however, that patents do not protect ideas, but rather protect inventions and methods that exhibit patentable subject matter.

The United States Constitution grants to the Congress the power to grant patents; this power residing in the Congress is found in Article I, Section 8, Clause 8. Unlike most of the enumerated powers granted to Congress in the Constitution, the Intellectual Property Clause is a qualified grant of power, which does limit Congressional discretion in significant ways. The Congress does not have free reign to decide that patents should be easily or freely given, but rather must limit their exercise of power to the dictates of the clause itself.   See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989).  See also Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5 (1966) (“The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the ‘useful arts.’”).

Counterfeiting and the theft of intellectual property rights is not just a matter for companies.  Such theft, or piracy as it is frequently referred to, is a major issue for the United States government.  Over the years the piracy problem has continued to grow in importance in both trade relations and in the war against organized crime and terrorists.  The United States needs to do what it can to prevent intellectual property theft because of the negative impact it has on job creation and our economy.  It is also imperative to shut off the flow of easy money to criminal enterprises.  Without money they become starved for resources, a big strategy in the fight against global terror.

On May 5, 2011, in prepared remarks in a speech to commemorate World Intellectual Property Day, U.S. Commerce Secretary Gary Locke acknowledged  that much still needs to be done regarding theft of intellectual property around the globe.  Secretary Locke said: “[W]hen over 80 percent of all software installed on computers in China is counterfeit and when first-run movies continue to appear on rogue web sites as soon as they show up in the theaters – then we know the problem is still grave.”

Congressional power to grant both patents and copyrights is derived from Art. I, Sec. 8, Clause 8 of the United States Constitution, the so-called Intellectual Property Clause.  To patent attorneys Art. I, Sec. 8, Clause 8, will forever be known as the Patent Clause.  For attorneys specializing in copyright law this clause is known as the Copyright Clause.  It is probably best to simply recognize that our founding fathers deemed intellectual property rights so vitally important to the success and stability of our new country that these rights were written into the Constitution, a document not generally known for its length and specificity.

As James Madison stated in Federalist Paper No. 43, the usefulness of the Congresses power to award both patents and copyrights “will scarcely be questioned.”  Madison, Debates in the Federal Convention of 1787, at 512-13 (Hunt and Scott ed. 1920).

‘Membah that scene in “The Time Machine” when George tries to read about the Eloi only to discover that the books have all turned to dust?   That would be bad, at least according to Google, so in the interest of über profits -ahem- literary preservation, it is endeavoring to create the world’s first digital library.  Thanks, Google!  As it turns out, there are some pesky copyright issues they probably should have sorted out first.   Among them is what to do with an orphan work.  In copyright law, the concept of orphan works is kind of obscure and doesn’t come up a lot, but I have a feeling it will be a bit more prevalent as we shift from print to digital media.  Long story short, an orphan work is a work that still has copyright protection, but for whatever reason, the owner can’t or won’t be found.  Congress had the opportunity to address this situation back in 2008, but they didn’t.   So now we have a bit of a pickle.

PTO Headquarters, Alexandria, VA, the next stop on the China Road Show tour.

The United States Patent and Trademark Office is hosting a free two-day seminar titled: “China’s Impact on Intellectual Property: Protecting Your Intellectual Property in China and the Global Marketplace.”   The seminar will be conducted April 6 – 7, 2011, at the USPTO Headquarters in Alexandria, Virginia, and is a part of the USPTO China Road Show series.  The China Road Show is a series of two-day China IP events that the USPTO is hosting across the country to help educate businesses about the realities of piracy and counterfeiting—which cost the American economy approximately $250 billion annually.

During the two-day seminar intellectual property experts from the private sector in the U.S. and China, as well as experts from the United States Government, will provide comprehensive information on protecting and enforcing intellectual property rights in China.  The program will include presentations on protecting and enforcing trademarks and patents in China, case studies illustrating these principles in practice, and real world stories and practical tips from companies on the front-line of IP rights protection and enforcement in China.  The program also will feature a presentation on global intellectual property strategy for the small business.

Intellectual Property (IP) attorneys are held to very high standards as experts in their respective disciplines. As trusted advisers, IP attorneys have a responsibility to provide their clients with the best representation possible. The reality is that most attorneys are simply unaware that they may not be representing their clients to the best of their ability. Sure, they may be able to prosecute a patent like a champ, or write an ironclad freedom to operate opinion; but, they are not wholly serving their client’s needs by ensuring they have the means necessary to financially protect their IP should it become involved in litigation.  Fortunately, there is a product available to serve the IP attorney and their client in the event of IP litigation, Intellectual Property Insurance. IP insurance can ensure that the money is there to pay legal fees to fight to the end on the merits of the case.  IP insurance can make the difference in the outcome of the case.

Certainly those of us involved with international IP protection have heard the horror stories about how IP protection in China is a waste of money, effort, time, etc. or how such a phrase may even seem to be an oxymoron. Honestly, when a study comes out showing that most government computers are running pirated Windows® software then the headlines are easy, and the politicians start pounding their fists to make political capital while the sun shines.

And certainly one can not pretend that IP in China is issue-free. However, as one who has been working in Asia for over a decade on IP matters, I tell you it is getting better.

Erik Iverson is is Associate General Counsel with the Bill & Melinda Gates Foundation, working exclusively with Foundation’s Global Health initiate.  He will be the keynote speaker at the BIO IP Counsels Committee Conference, which will be held in Seattle, Washington from April 13-15, 2011.  As a prelude to his presentation at BIO Mr. Iverson agreed to go on the record with me.  Part 1 of my interview with Mr. Iverson was published last week, and what appears below is the final segment of our discussion.  We pick up with discussion of crowd sourcing techniques to enhance innovation and the humanitarian work of the Gates Foundation, as well as the humanitarian work of all those engaged in the life sciences, which Iverson says is “all about helping people and saving lives.”

Erik Iverson is Associate General Counsel with the Bill & Melinda Gates Foundation, working exclusively with Foundation’s Global Health initiate. Mr. Iverson works with grantees in the development of intellectual property management plans, collaboration agreements and global access strategies with respect to the health solutions being funded by the Foundation. On Thursday, April 14, 2011, he will be the keynote speaker at the BIO IP Counsels Committee Conference, which will be held in Seattle, Washington from April 13-15, 2011. Mr. Iverson’s presentation at the BIO Conference is titled: “The Business Case for International Humanitarian Approaches to IP Management and Collaborations.” Several of my contacts at the Biotechnology Industry Organization (BIO) graciously put me in touch with Inverson and facilitated the coordination of an interview.  The transcript of part 1 of the interview appears below.

Sharon Barner with Bob Stoll at the White House on November 17, 2010

Foley & Lardner LLP announced today that Sharon R. Barner has returned to the firm’s Intellectual Property Department in its Chicago office. Barner most recently served as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office (USPTO).  During her stay at the Patent Office she undertook no fewer than 8 trips to China on official government business, among the 15 foreign missions she participated in.

A well rested Barner was the keynote speaker at the 5th Annual Patent Law Institute hosted by PLI in New York City last week, and she will also speak at the San Francisco Patent Law Institute in mid-March.  Barner seems anxious to get back into the swing of things as an attorney, and no doubt will be able to bring an array of useful experiences back to her litigation practice.  While it is almost crazy to contemplate, not having to work for the energizer bunny (a.k.a. David Kappos) Barner might actually have more free time, although certainly fewer frequent flier miles.