Recap of Day One of the APLF 2010 Annual Meeting

Last week I attended the Association of Patent Law Firm’s (APLF) Annual Meeting at the Hyatt Regency hotel in Chicago, IL. The APLF is currently in it’s 13th year of existence and was formed as a result of IP litigation increasingly going to big firms rather than smaller boutique firms. The organization decided to add discussions on Social Media to this year’s annual meeting agenda. Those that follow me on IPWatchdog know that I write on business related topics including Brand Building, How to Build Credibility and Share Your Expertise, Increasing Website Traffic and the Importance of Social Networking for Small Business. Because of my expertise on Social Media, I was invited to speak on the topic as it pertains to the IP Attorney. I opted to speak on using social media to demonstrate expertise and build credibility. Because so many interesting topics were covered, following is a recap of day one of the event. Subsequently, the second half of the event, including my presentation will constitute part 2 of this series.

While attending the conference, I had the distinct pleasure of meeting some of the most interesting people within the IP community including the President of the APLF, Todd A Van Thomme, a Partner with Price, Heneveld, Cooper, DeWitt & Litton, LLP, Chief Counsel at Invista, David Berdan, Senior Counsel at Whirlpool Corporation, Kirk Goodwin and Principal at Innovate Marketing, Inc. along with others from all around the world including Australia, the UK and Germany. Unfortunately I missed the initial round tables as my plane did not land until after 7:00 am.  by the time I got to the location of the conference it was already 8:30 AM, the round tables were ending their discussions and continental breakfast was well underway.

After the initial round table discussions, the annual meeting opened with APLF President Todd Van Thomme going over some of the interesting things going on with the APLF. A Schedule of Events can be found on their website, but Todd pointed out that many Webinars have been added to the curriculum of late, round tables are done monthly within the organization, they continue to add to their Brand of Excellence programming and anyone can now have the APLF Bugle come to them for free via email. Todd also reminded members that they are encouraged to share their “time and talent” as the APLF is looking for people to volunteer for committees in the coming months.

David Berdan Chief Counsel at Invista(a subsidiary of Koche) and a seasoned Veteran of the US Military, talked about how, in his experience, organizations choose their IP firm. Companies look for someone they can trust and form a personal relationship with. The firm needs to understand the company’s business. With the bad economy we are in, budgeting plays a bigger role in firm selection than ever before. Corporations are paying closer attention to their budgets and making sure they stay within their limits while always looking for efficiencies. Berdan pointed out that attorneys should keep in mind that if they know the business at hand and have formed a relationship with the company, then the company will often look at that attorney as a potential candidate for in-house hire even if they were not necessarily looking to hire in-house counsel.

Berdan stated that accountability is important as well. Not always pointing fingers at others is crucial. He stated that his typical experience is that smaller boutique firms seem to have more accountability often engaging him rather than his needing to chase after them. A firm needs to be the driver to make sure things are getting done and communication is critical. He also reported that another thing attorneys need to consider is that more companies are also looking for fee arrangements and requesting them of the firms they work with. Berdan stated that attorneys need to talk with their clients and ask them about their budget and know what you have to work with. Attorneys engage in house counsel, asking, “How can we get you what you need to effectively manage your portfolio?”

Next on the agenda was Kirk Goodwin, Senior Counsel at Whirlpool Corporation whose topic of discussion was on how firms can create a mutually satisfactory partnership with their clients. Kirk was funny and entertaining and his presentation was very informative and fun. During his presentation, Goodwin stated that outside counsel’s three main battles are 1. The opposing side, 2. their clients and 3. their own partners. He stated that there are four main things that in-house counsel wants from their outside counsel partnerships; 1. To make them look good; 2. To give them no surprises; 3. To do excellent work and 4. To be trustworthy with their legal work, the company’s legal needs and the careers of in-house counsel.

1. Make them look good – Goodwin stated that “If we don’t look good, then you likely will look worse.” Three ways in which this can be accomplished are a. learn the companies business, goals and plans, b. bring solutions, not problems and c. keep updated and current on changes in law through continuing education.
2. Give them no surprises – Bring alternative/creative billing options, frequent status reports and be proactive.
3. Do excellent work – Staff each job appropriately, improve and streamline processes, and always utilize appropriate attention to detail.
4. Be trustworthy with their legal work, the company’s legal needs and the careers of in-house counsel – This of your clients not only as lawyers but as a business as well.

The remainder of the day’s agenda focused on topics leaning more toward the legal and ethical implications of different areas facing the IP Attorney. Topics covered included:

• Ethical Issues in IP Practice– The boundaries of ethical responsibilities and malpractice have changed in response to the fast-evolving development of IP Law. James Grogan, Deputy Administrator and Chief Counsel of Attorney Registration and Disciplinary Commission of the Supreme Court of IL along with Bradley Hubert of McDonnell, Boehnen, Hulbert & Berghoff, LLP, discussed the fact that the increasing stress of the practice of law raises new questions about ethical implications and consequences of attorneys and firms within Intellectual Property law.
• Avoiding Bad Faith and Fraud in the Trademark Rights Cycle– Steven Quigley of Ostrolenk Faber, LLP discussed how the act of searching and clearing a trademark can frequently require the balancing of the cost to the client with the practitioner’s responsibility to provide reliable advice. He discussed the question, “What are the potential consequences of insufficient searches or explanation of risks on good faith adoption, fraudulent statements that can result in cancellation of a registration and malpractice?”
• After Bilski; the US and Global View– During this session, attorneys Jeremy Dobbin from Australia, André Moreira from Brazil, MBM from Canada, Walter Maiwald from EU & Germany, Victor Garrido from Mexico and Hai Yen Thieu from Vietnam discussed their countries’ diverse viewpoints of business method/process patents as a result of the Bilski Decision here in the United States. They discussed what is and is not likely to be patentable subject matter and focused on what, if any additional subject matter is likely to be considered patentable in the near future.
• Best of the Rest: The Other Cases in This Years Top Ten– Joshua D Sarnoff, Associate professor at DePaul University College of Law along with attorneys, Scott Brown of Hovey Williams, LLP, Stacey Fluhart of Sughrue Mion, PLLC and Brian Tollefson of Rothwell, Figg, Ernst & Manbeck, PC reviewed the ten most important patent, trademark and copyright decisions besides Bilski, that were handed down by the United States Supreme Court over the past year.  In addition they analyzed what they feel the impact will likely be on law and its practice.
• EPO Developments: The New Rules– Robin Browne of Hepworth Browne discussed the New European Patent Office rules that were put into place on April 1, 2010 that impacted both filing of applications and prosecution strategies used to enforce those patents. He explored how US and other foreign attorneys can take the best advantage of the opportunities provided and what pitfalls need to be avoided in doing so.

And yes, that was just day one! The day wrapped up around 5:30 and was followed immediately by a reception sponsored by Cardinal Intellectual Property. Those who attended were easy to talk to, the conversations were engaging, the wine was tasty and the Coconut Shrimp were to die for AND the talk of all! Many groups got together and joined one another for dinner after the reception as well. I had the pleasure of going to the Chicago Pizza & Oven Grinder on North Clark Street, with 11 other attendees where we enjoyed pizza pot pies and the best darned sweet and sour poppy-seed dressing I have ever tasted!

In the next day or two I will post details of the second day of the APLF Annual meeting including my presentation on using Social Media to showcase expertise and build credibility. For those who wish to see my presentation, you can go to my LinkedIn profile to check it out in advance or you can wait and be surprised! If you are with a small boutique patent law firm, I highly recommend you look into Membership with the APLF and get involved where you can!

To Be Continued…