November 7, 2016

“Who’s Winning: Big Law Moving into IP Practice or IP Boutiques Holding Their Own?” IPWatchdog, November 7, 2016

As the dearly departed Prince once sang, it could be a sign of the times. Only in this case the reference is about big law firms moving into the intellectual property (IP) space, including acquiring IP boutiques. For example, Polsinelli acquired the Novak Druce IP practice in early 2016. However, when big law firms acquire IP boutiques it does not always—or even usually—work. Because if a big firm acquires a patent prosecution-based boutique it may not make sense because billable hours and rates for patent prosecutors do not compare with those of litigators. It also creates internal conflicts of interest.

But the situation could have changed. This time the acquisitions might work because in many respects IP boutiques focus on administrative trial work at the USPTO due to the America Invents Act (AIA), which is more like litigation, and will not create the same conflicts of interest. But not everyone has the same opinion.

“AIA has been helpful to boutiques who have a strong litigation group but too often get passed over for the ‘monster’ patent infringement work,” says Robert M. Siminski, attorney at law, principal, Harness, Dickey & Pierce, PLC. “Because boutiques tend to be staffed by USPTO qualified attorneys with strong technical backgrounds and vast experience dealing with the USPTO the playing field often skews in their favor as to being selected to handle administrative trials as to patent validity.”

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