Spokane attorneys who specialize in intellectual property law say the field is expanding and changing, whether it’s in copyright, trademark, and trade secrets or patent law.
Intellectual property law encompasses several doctrines. Patent law protects inventions, and copyright law protects original forms of expression. Trademark law protects words and symbols that identify goods and services, and trade secrets law protects information about a company’s products or service that is generally unknown and gives a business its competitive edge.
Intellectual property, as its own asset class, is a growing field, says Dan Wadkins and Brett Nelson, two attorneys with Lee & Hayes PLLC.
K&L Gates LLP partner Mike Keyes, based in Spokane, says intellectual property law is one of the most dynamic areas in law practices today.
“So much has changed, it’s an evolving area for sure,” he says.
K&L Gates is a global law firm with more 225 lawyers, working for clients in creating, developing, and leveraging patents, trademarks, copyrights, trade secrets, and other rights to protect intellectual property, he says.
Keyes is one of 18 attorneys in the firm’s office here who work on IP cases.
Intellectual property law has been the bread and butter for law firms such as Spokane-based Lee & Hayes. The firm celebrated its 20-year anniversary last year, after being founded here in 1994 by Lewis Lee and Dan Hayes. Located at 601 W. Riverside, the firm occupies 32,000 square feet on two floors at the Bank of America building downtown.
As demand increases, so have the numbers of attorneys and staff in the field, says Kristen Paul, Lee & Hayes spokeswoman. After hiring 12 new attorneys this year, the firm now employs more than 150 people in all, of which nearly 90 are attorneys, she says.
The firm’s client list includes Spokane-based companies such as Next IT Corp. and Telect Inc., as well as such major companies as Amazon.com Inc., Microsoft Corp., Hewlett-Packard Co., and Alibaba. In addition to Spokane, the firm has offices in Seattle; Vancouver, Wash.; Washington, D.C.; Austin, Texas; Rochester, N.Y.; and Atlanta, Ga.
More companies are acknowledging the importance of IP law, and businesses are seeking to understand how to protect those fundamental assets, Nelson says.
Every business, large or small, has some intellectual property, even if it’s the mom-and-pop grocery store down the street, the attorneys who were interviewed contend. “They all have a trademark at least,” says Wadkins.
Nelson says some companies might not realize they even have intellectual property, or know what assets are patentable.
“It’s like the company that has machinery and they employ someone to maintain the machines, but there’s only this one person who knows that there’s one particular machine that needs to be kicked every 45 minutes,” says Nelson. “That’s a trade secret and there can be a patent developed around that,” Nelson says.
At Lee & Hayes, attorneys are organized into groups by industry, including fashion; wine, beer, and spirits; government relations; electrical and computer engineering; chemical and life sciences; and mechanical engineering.
Wadkins is part of the wine, beer, and spirits group, while Nelson is part of the chemical and life sciences group. Both attorneys possess specialized knowledge and experience within those industries.
Wadkin’s group has a major focus on legally protecting trademarks, brands, trade secrets and copyrights for wineries, breweries, and distilleries, as they continue to start up and grow. He says the firm works with clients who may have issues with land use, water rights, and state and federal alcohol regulations.
Wadkins says IP attorneys can help businesses build and acquire intellectual assets, as well as help them after they’ve built the business. He also advises clients on how to protect IP, how to monitor it and to put procedures in place with policy, he says.
Lee & Hayes acts as key business advisers to its clients and also handle commercial litigation, and contracts. Nelson says the firm often works with innovative and startup companies that need to protect their intellectual property assets.
A lot of startups understand that they’re creating assets that need protection, says Wadkins, and he’s worked with many of them, even helping them to raise funding.
“When startups want to raise funds, they have to do it properly because of security laws which they have to comply with, and we advise them in ways that they can bring in investors,” he says. “We know what investors want to see.”
Lee & Hayes received the prestigious U.S. News Best Lawyers designation as a Spokane Tier 1 firm for commercial litigation. Bryce Wilcox and Leslie Weatherhead, litigation attorneys at Lee & Hayes, were recognized in the 2015 Best Lawyers in America list for commercial litigation, and Lewis Lee was among other attorneys on the list for patent law.
Keith Grzelak, a director at the Spokane-based Wells St. John PS law firm, says patent law has undergone some of the most dramatic and significant changes in recent years. The America Invents Act in 2011 changed U.S. rights to a patent from a “first to invent” system to a “first inventor to file” system for patent applications filed on or after March 16, 2013, he says.
Grzelak, who recently spoke to 150 IP attorneys on different aspects of patent reform at a Seattle meeting of the Washington State Bar Association, says he believes the new patent system favors large corporations that have more expertise and financial means to file a patent quickly, and places small entities at an enormous disadvantage.
“We’ve already seen a decline in the number of small entities filing for patents,” Grzelak says.
Under the old system, an inventor had one year from the conception of an idea to file for a patent, which provided time to perform a patent search, determine whether the idea was patentable, whether it infringed on other patents, and essentially test its marketability before filing, he says.
A first-to-file system erodes the grace period, he adds.
“Since it’s not been tested by law, I advise attorneys and clients to just act as though there is no grace period,” Grzelak says. “If you show the (invention) publicly trying to get investors, without a confidentiality agreement, you may have already risked your idea and lost your legal rights to that patent.”
K&L Gates’ attorney Keyes says copyright law and trademark legal work have increased in volume, even during the Great Recession. He attributes the rise to the nature of competition.
“It’s an interesting phenomenon,” he says. “Companies are competing much more vigorously and there is no shortage of disputes. It’s a significant area of the law.”
Keyes says he continues to see growth in other areas of IP law as well, such as false advertising.
One case Keyes handled involved Carmex, the maker of a popular healing lip balm product. He says he represented the company in a class action suit over the amount of product contained in the plastic case.
He says a judged ruled in Carmex’s favor in its refusal to certify the class action lawsuit.
“Which means the case is not pursued and that’s what happened in this case,” he says.
He says he currently has a pending case in which he’s representing a major online retailer from Washington state that’s been accused of trademark infringement on its online advertising.
In large part, changes in technology have been responsible for increases in other areas of intellectual property law, such as the issue of domain names, and the protection of online trademarks and copyrights, he adds.
Litigation in trade secrets also has been a consistently busy area within IP law, Keyes says.
He says he expects continued growth in disputes between companies over technology and software, and increases in infringement and enforcement. “With digital, it’s so easy to copy and it can create lots of issues,” he says.
Licensing of software is another whole segment of IP law that’s growing Keyes says. “There are so many facets of licensing,” he says.
Subscribe today to our free E-Newsletters!SUBSCRIBE