What will they think of next?
Intellectual property law keeps attorneys in Tech Valley busy
As Tech Valley has grown, so too have the opportunities for intellectual property attorneys.
Experts at several law firms based in Tech Valley attribute this expansion to the proliferation of research and development facilities and the potential among start-ups and emerging companies for innovation and invention –– and ultimately the issuance of patents for their intellectual property.
Heslin Rothenberg Farley & Mestiti P.C., for example, is the largest intellectual property law firm in Tech Valley, with 28 attorneys and patent agents helping clients in a variety of industries throughout the world.
“Our firm is focused exclusively on intellectual property law,” said David Miranda, partner. “We work on patents, trademarks, trade dress, trade secrets, copyrights, and any litigation involved.”
The firm is divided by industry into more than a dozen practice groups, including pharmaceutical, mechanical engineering, electrical engineering, nanotechnology, biotechnology and computer science. “We try to have clients meet with someone who speaks the language of their industry,” Miranda said.
Heslin Rothenerg Farley & Mestiti was listed among the “Top Patent Firms” in the nation in the March 2008 issue of Intellectual Property Law Today; the firm was ranked 155th out of 352 firms with 210 patents issued in 2007, and ranked 66th for design patents in 2007. “It’s nice to be listed there, and we’ve done quite a lot of work to earn such a ranking,” Miranda said.
During the past 10 years, as Tech Valley has grown, so too have the number of patents applied for and issued. The pharmaceutical area has been very active as has nanotechnology, which “wasn’t even on the radar screen 10 years ago,” Miranda said.
He sees continued growth in those fields as well as clean energy, including solar power, wind/turbine power and hybrid/electric vehicles.
The firm attributes much of its recent growth to increases in intellectual property litigation, design patent filings and foreign origin work, and the emergence of Tech Valley has also proven to be a fortuitous development.
“For us, we feel very fortunate to be here in Tech Valley, and we’ve grown as intellectual property opportunities have increased,” Miranda said. “There’s tremendous opportunity in this region, and we’re proud to be part of it.”
Whiteman Osterman & Hanna LLP provides a full range of services relating to trademark, copyright, trade secret, unfair competition and related intellectual property matters.
The firm's representation includes trademark, software and other intellectual property licensing, transactional due diligence, trademark and copyright prosecution and counseling, trade secret protection and intellectual property enforcement litigation.
Ten years ago, partner Marty Ricciardi formed a technology company law group to advise companies on the legal aspects of forming, operating and financing their businesses, as well as protecting and licensing intellectual property.
“As clients’ needs grew, we started the technology company law group,” Ricciardi said. “Originally, we catered to start-up companies, but we’ve since shifted more toward middle-market technology companies.”
Generally speaking, clients are becoming more educated on the importance of licensing, trademark usage and copyrights and the ways in which they can protect their intellectual property while increasing their profitability.
Although there has been a lot of enthusiasm in the media for software development, Ricciardi said he has actually seen a contraction in that field in recent years.
Still, the overall notion of Tech Valley has clearly taken shape and become more recognizable throughout the region and beyond, which will only enhance the reputation of the area’s intellectual property law expertise.
“The Capital Region has become synonymous with Tech Valley, and as more technology companies come to this area, the perception of the quality of law practice in Tech Valley will come through,” Ricciardi said.
Jeff Armstrong, also a partner at Whiteman Osterman & Hanna and external counsel to Rensselaer Polytechnic Institute, has seen significant growth in intellectual property not only at the school but throughout Tech Valley during the past decade.
“There are more players in the area, there’s more complexity to intellectual property law and it’s become a more heavily regulated area with greater sensitivity,” he said.
One reason for the increase in intellectual property pursuits is the number of start-ups in Tech Valley, particularly at the collegiate level.
“Inventors are getting more active and developing more intellectual property. There’s more entrepreneurial activity among students who are staying in the area, and teachers are starting their own companies,” Armstrong said. “Intellectual property has been growing, and we’ll continue to see more growth.”
Spencer Warnick, head of the nanotechnology and mechanical groups at Hoffman Warnick LLC, has kept a close eye on the number of patents issued locally during the past several years.
Each quarter, the firm releases its Tech Valley Patent Index, which tabulates the number of patents issued in several categories: the Capital Region, Tech Valley, Tech Valley excluding IBM and General Electric, and the Capital Region excluding GE.
Although IBM and GE have accounted for the bulk of patents issued in recent years, Warnick envisions the University at Albany College of Nanoscience Technology yielding its share of patents in the coming years, as well. “It’s a world-class outfit that will have international recognition,” he said.
Warnick also is optimistic that the number of patents issued to start-ups will increase.
“Many start-up companies break off from larger companies, and I think you’re going to see more of these companies and more patents from these companies down the road,” he said. “There’s been a dearth of start-ups locally, but I think that will change.”
With the backlog of patents issued and a waiting period of three or more years, in come cases, Warnick wonders whether there shouldn’t be a patent office closer to Tech Valley than Alexandria, VA.
“I think a patent office in Albany would be perfect. It would be strategically located between Boston, New York City and Montreal, and with all the intellectual property submissions in these areas, it would make sense,” he said.
Maxine Barasch & Associates, PLLC provides intellectual property counsel primarily to small businesses, filling a niche among emerging companies from a time and cost perspective, according to Maxine Barasch, principal attorney.
“Many of our clients are start-up companies,” she said. “It’s important for these companies to protect their intellectual property, because if they don’t, it could lead to their demise within a few years.”
An Albany native, Barasch spent time in Binghamton before relocating to the Capital Region and opening her law firm a year ago. She sees the potential Tech Valley has to offer from an intellectual property standpoint.
“The growth that I’ve seen in Tech Valley is incredible, and it’s only going to grow even further,” she said. “Companies are forming here because they know what Tech Valley is and why it’s such an ideal place to do business.” Software, particularly for business method, is one area where Barasch has seen expansion locally.
With the presence of several academic and research institutions in Tech Valley and the continued support of local chambers of commerce and the Center for Economic Growth, intellectual property will remain a hot commodity.
“The resources coming into Tech Valley and the great minds emerging from universities and research centers are really driving the growth that’s happening here,” she said.
