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JUNE 2012

Legal Expert Board

45 Intellectual Property

Intellectual Property (IP) is one of the largest practice areas of law across the world, and it is a subject which touches all areas of business, from manufacturing to pharmaceuticals, to transport and media. To find out about the issues surrounding IP at the moment in the US, Lawyer Monthly speaks to R. Danny Huntington, from Washington D.C. based law firm, Rothwell, Figg, Ernst & Manbeck, P.C (RFEM).

RFEM is recognized globally as a leader in the field of IP law. RFEM’s experienced attorneys have served as IP counsel representing a wide range of clients worldwide, including public and private companies from start-ups to Fortune 500 across many technologies and fields.

What are the main issues you deal with regarding IP in your jurisdiction?

My practice is varied and tends to be result oriented. While potential clients typically contact me to discuss the possibility of attacking or defending a patent or patent application in the United States Patent and Trademark Office (USPTO), it is not uncommon for me to suggest a different approach. Patent interferences, ex parte reexaminations, and inter partes reexaminations are best thought of as tools that are useful in some situations, but not others. Depending on the situation I may recommend an action in federal or state court instead of the USPTO.

What are the main types of litigation to arise from IP-related issues in your experience?

The main types of litigation in federal district court relate to infringement, the most common actions being either allegations of infringement or declaratory judgment actions alleging a lack of infringement. Much less common are actions to appeal decisions by the USPTO. The most common state court actions are theft of trade secrets.

during 2011, WIPo’s Madrid System for the International Registration of Marks received the highest number of trademark applications ever, rising 6.5 per cent compared to 2010, reaching 42,270 filings. to what do you attribute this?

The increase in applications under the Madrid

Protocol is likely due to several reasons, the most important being that a single application can be used to obtain an International Registration in more than 60 countries without the assistance of a representative in each local country unless an official action is issued. This presents substantial cost savings, although Madrid Protocol applications in the US are often rejected, necessitating the services of a US attorney. Other advantages that may be contributing to the increase are that a single renewal will be required, and additional countries can be added during the term of the registration.

do you feel that specific aspects of IP law prevent business and economical progress due to monopolisation by certain companies?

While IP can be used in improper ways, IP tends to be more relevant to small and midsize entities than large companies. Large companies can rely somewhat upon market power to protect their markets. On the other hand, innovations by universities and SMEs can only be protected by using the IP system. It appears that many of the changes introduced by the AIA will be more useful to large companies, particularly in view of the fee structure initially proposed by the USPTO.

What have been the key areas of arbitration in the IP sector within your jurisdiction?

Arbitration is often used in situations where the parties want a rapid decision, or where the parties don’t want public scrutiny. A substantial number of patent interferences are settled by arbitration. However, it is increasingly recognized that substantial control of an arbitration must be exercised to avoid it costing as much as litigation would have.

What issues should foreigners be aware of in terms of IP when looking to invest/start a business in the US?

The importance of IP in the US is readily seen from the large sums of money recently paid by various companies to purchase patent portfolios related to telecommunications. A thorough review of the IP relevant to the products or services the company is producing or planning to produce should be made. Foreigners should understand that litigation is simply a cost of doing business in the US. However, the chances of success can be substantially improved by careful analysis. That analysis should include more than a simple search. There are many sophisticated services, such as patent landscaping, that can be employed during product development to minimize subsequent issues. LM


R. danny Huntington Email:


tel: (202) 783-6040

607 14th Street nW, Suite 800 Washington, dc

20005, United States of america

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