International Intellectual Property - USA

International Intellectual Property - USA

Published August 2019


Aoife Elizabeth Butler

Firm: Aoife Butler Esq
Country: USA - New York

Practice Area: Intellectual Property

  • Greater New York City Area
    New York, New York
    NY, NY

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Services cover all aspects of IP, e.g., complex patent litigation (enforcing patents and defending accused infringers in disputes involving a wide range of issues and technical disciplines, ranging from financial trading software technologies to pharmaceuticals), due diligence investigations, counseling innovative entities to evaluate and develop IP strategies for business success, patent landscaping and analytics for start-ups and established companies, preparing reports to seek VC funding, confidentiality and non-disclosure agreements, assessment of competitors’ IP portfolios. Coupling more than 15 years’ experience in the IP sector with the diversity of my skills, qualifications and background, I offer a unique perspective from both the business and legal perspectives.

An interest in developing an IP strategy means you are already on the right track – it is surprising how many entities, large and small, have no strategy. The key is to contemplate IP relative to and integral to the business goals, and not view it in isolation; and, to do it as early as possible – no point in trying to classify your cake recipe as a trade secret after you have already demonstrated how to make the cake on live TV!

That is not to say that if you are a small start-up you need to invest significant resources in formulating the same level of strategy that a multinational may have to cater for its substantial portfolio that is leveraged globally. A simple strategy can be effective, and it can be scaled or adapted as the company progresses. Some essential elements to consider when building the strategy that works best for your organisation:

  • Account for the protection and confidentiality of IP in employee and other business agreements – whether or not you think you have any IP on day one.
  • Educate employees as to IP, the value and the risks.
  • Identify the IP you have (g., patents, trademarks, trade names, trade secrets, copyright, designs, publishing rights, covenants not to compete, know-how, licences, etc.) – and don’t forget to consider the IP of others that you may have licensed.
  • Classify the IP, g., directly supports the business goals; does not support the business goals but could be used as leverage in the industry; no longer relevant to business; etc.
  • Establish processes for maintaining existing IP and capturing new IP.
  • Establish processes to monetise IP.
  • Continually assess and evaluate IP portfolio for alignment with the business and value to the organisation.

Continually assess and evaluate the IP of your competitors and other IP in the industry.

One step at a time, and client specifically! One challenge facing organisations in a global market is the desire to patent globally, but the lack of understanding that not every jurisdiction allows patents on the same technologies. Informing clients as to these hurdles from the outset and encouraging them to be flexible and working with them to cast claims differently can lead to very positive outcomes in challenging circumstances. Another challenge is the almost peer-like pressure to patent, without considering that the technological developments are moving way faster than the patent offices. Situations like this highlight the need for innovative entities to understand that patents are not always the answer to their specific needs, and there are other forms of IP that can offer protection that may better serve their business and their technological developments.

The healthcare sector is pretty active for me right now, specifically medical devices. With healthcare spending expected to rise in the coming years, it is an attractive field for innovative entities that want a piece of the pie, and the opportunities and perspectives/angles from which that pie can be approached/tapped are endless. In addition, specifically with respect to medical devices, I think it is busy as a sector because medical devices typically have a faster track to market than drugs; also, organisations like a faster track because it is cheaper, and the quicker they get to market, the quicker they can start to generate revenue.

I used to be a member of a number of networks, but realised my focus was being spread too thin with little return on my investment. So now my membership is limited to networks where I see value – value for me in addition to where I can add value for others. One such network is Irish International Business Network (IIBN) – an incredible group of entrepreneurs and business professionals with a connection to Ireland. In my experience, it is not memberships that aid or assist the work; it is what you do with the membership, and IIBN affords a platform to do a lot. It is one of the few networks that truly facilitates connectivity among members, fosters and develops the goals of members, and propels members to do better individually and collectively. Through that kind of environment, it is the friendships you develop, the bonds you build, the trust you earn, the skills you demonstrate, the perspectives you garner, the contexts you can utilise for colour, the concerns you address, etc., that aid and assist the work.

Publications and conferences are two very different mediums. Publications can be an important means of sharing new developments and contemplating new perspectives, and they are typically low-cost and more readily accessible than conferences. Conferences have the platform to take the sharing and contemplation further and facilitate the exchange of developments, the opportunity to debate interpretations, and the ability to afford collaboration like no other medium. However, in my experience, given the time and financial commitment that conferences demand, they rarely reach their potential.

I am fortunate to have been the recipient of a number of awards, both IP-related and not IP-related, e.g., SuperLawyers Rising Star 2013-2017; Global Awards – IP Litigation (NY) 2015; Fortune Women Leaders in Law 2013 and 2014; Irish Voice Legal 100. However, the best “award” or “accolade”, from my perspective, is a little more unconventional, i.e., a happy client, and especially one for whom IP becomes a newly appreciated and valuable asset for their business.

A recent Federal Circuit opinion (Arthrex v. Smith & Nephew, Inc.) determined that the appointment of APJs to the PTAB violated the Appointments Clause of the US Constitution. The impact of the decision and ramifications for the PTAB remain to be seen, but it will definitely be one to watch in 2020.

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