Growth
We kicked off 2023 by launching our International Trade Commission Section 337 Litigation and Trade Remedies practice, led by Deanna Okun, a former Commissioner and Chair of the U.S. International Trade Commission. Their addition in January provides our clients operating in the global marketplace with allies in navigating the complex rules and regulations of international trade.
Our growth is driven by our clients’ needs across industries and markets so to continue supporting their evolving business, we added a few new faces in 2023. Say hello to our new team members!
Click on the attorney's name to view their bio (in order of appearance): Alissa M. Chase, Matthew H. Chung, Isaac Estrada, Joonho Hwang, Louis S. Mastriani, Patrick T. Muffo, Deanna Okun, Michael V. Pack, Lydia C. Pardini, Lauren E. Peterson, Daniel F. Smith and Sean M. Wesp.
With an eye toward operational excellence, we also added Nicole Nowak as our Director of IP who is tasked with ensuring our procedures and staffing structure support efficiency and client service.
Innovative Collaboration
Solare – Polsinelli’s Brand Enforcement Program
Prior to the onset of the pandemic, we recognized the increase in counterfeit products, infringement, and other threats facing brand owners, particularly via online channels. We recognized the pandemic would exacerbate these issues and that our clients were unable to find meaningful solutions to identify, monitor, and prevent threats in an online environment that is becoming increasingly decentralized and where bad actors can hide in anonymity. Accordingly, we created Solare, a program where we partner with clients to provide a tailored feedback loop for mitigating threats and their resulting brand damage and lost revenue. This year, to further enhance this service, we entered a partnership with OpSec, which provides software to continuously monitor brand infringement data. Armed with this information, we can refine our IP development and business strategies and elevate enforcement, as necessary, providing you with the most powerful brand protection there is.
PatentCAD/Rowan TELS partnership
Polsinelli’s Intellectual Property attorneys go above and beyond to address new challenges and needs. So much so that, in 2020, we became inventors ourselves – similar to the clients we represent every day – when a dedicated team of attorneys – Simon G. Booth, Counsel, Lead Developer of PatentCAD; Gregory P. Durbin, Practice Chair; Thomas M. Isaacson, Vice Practice Chair; Shelton W. Austin, Principal; and Brian K. McKnight, Principal – used their collective years of experience to design, build and implement PatentCAD, an Artificial Intelligence tool that maximizes efficiency and quality while elevating client service.
In 2022, we announced a strategic partnership with Rowan TELS, a provider of tech-enabled legal services, in which Rowan acquired the PatentCAD technology we developed and is using its NLP-based features, enabled by years of patent drafting expertise, to enhance Rowan Patents. Polsinelli has implemented Rowan Patents to support our extensive patent drafting and prosecution work ensuring that we remain at the forefront of technology innovation and adoption. Earlier this year, the partnership was recognized as a Trailblazer in Legal Technology from The National Law Journal.
Our Work in the VC, M&A, and PE Spaces
Beyond our patent prosecution and IP litigation work, Polsinelli Intellectual Property attorneys also engage in M&A, venture capital, and due diligence work to complement our corporate and transactional services. The team issued a substantial number of Freedom-to-Operate (FTO) and other opinions that were used for litigation, deal facilitation, and financings. Our IP lawyers routinely interact with investor and underwriter counsel to provided analysis and explanation on the client intellectual property to facilitate investments and acquisitions. We have assisted clients with transferring or obtaining intellectual property assets as part of M&A transactions. Additionally, we worked with our clients on valuation, licensing and other monetization activities.
Intellectual Property is an integral part of what companies investing in startups and engaging in M&A deals should consider. To that end, J. Morgan Kirley, Vice Chair of Polsinelli’s Chemical Science Patent Prosecution practice, sat down with Matter Health to provide advice on what startups should do to protect their IP.
We also established a partnership with Portal Innovations, a life sciences venture development engine investing in early-stage biotech companies. As part of this partnership, we’ve sponsored a discussion on innovations in MedTech, provided IP consultation via office hours to their portfolio companies, and supported their in-person events. We look forward to this partnership continuing to grow in 2024.
Diversity, Equity and Inclusion
Perspectives from Leadership
We continue to focus on diversity, equity and inclusion – at the firm and in IP.
As IP Department Chair Patrick C. Woolley shared in an interview on Juristat: Advice from the Best in Intellectual Property Law:
This isn’t just talk; we back it in our numbers.
Our Women in IP group continues to provide mentorship and career development opportunities for the attorneys, patent agents, and scientists in our department.
DEI, for the benefit of our clients and our colleagues, is an ongoing focus for us and, while we are proud of where we are, we also recognize there’s more work to be done.
Looking Ahead
In 2023, our attorneys have monitored and shared information about developments in AI technology and their impacts on patents, assessed the decisions in major trademark cases like Jack Daniels’ Properties, Inc. v. VIP Products, LLC and Hermès International, et al. v. Mason Rothschild, and provided updates on the USPTO’s eGrant system, among other trends and regulation changes our attorneys evaluated.
Looking ahead to 2024, our attorneys share insights on emerging IP issues that could impact our clients:
In addition to AI continuing to be a “hot” technology, Taryn A. Elliott, Chair for the Product Design and User Interface Patent Prosecution practice, anticipates heightened innovation and patent prosecution activity with respect to consumer products, healthcare, aerospace, and quantum technologies.
Tara A. Nealey, Chair of the Life Sciences and Biotech Patent Prosecution Practice adds ...
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