Arent Fox: a smart operator

23-05-2016

Arent Fox: a smart operator

Sergey Nivens / Shutterstock.com

Law firm Arent Fox has more than 110 full-time IP attorneys, specialised paralegals and staff who advise a range of clients in the US and overseas on their critical IP matters. WIPR spoke to Cristina Carvalho to find out more.

In the 21st century we are surrounded by things claiming to be ‘smart’: the iPad, iPhone and Samsung Galaxy smartphone are well-known brands that serve to improve our lives. In a similar fashion, US law firm Arent Fox works to be “smart in your world,” with principles built on the concepts of providing first-rate legal work and exceptional service for clients that will improve their bottom line. And notably, it may be just for this reason that while many intellectual property firms have been stagnant or are falling behind, Arent Fox’s practice is growing quickly.

“Arent Fox is a full service firm—by full service we mean general litigation, corporate work, healthcare, general regulatory work, government relations and contract work, and real estate,” says Cristina Carvalho, who was named managing partner earlier this year and oversees an international practice that encompasses commercial transactions, IP, licensing, and technology for leading US and foreign companies. Uniquely, Carvalho is admitted to practise law in the US and Brazil.

“The firm has a very robust IP practice and the work we do in IP is mainly divided between trademarks and patents, but we also do copyright, advertising, domain name disputes, licensing and technology transfer transactions,” she says.

50:50 split

Arent Fox was founded in 1942 by a team of transactional attorneys in Washington, DC, a town famous for its regulatory shops. That perspective has fostered a practical approach to the firm’s work, with an emphasis placed on business-oriented legal counsel that is designed to help clients achieve their commercial goals. Fast-forward to 2016 and the firm has more than 400 lawyers spread across its four cornerstone offices, including Washington, DC, New York, San Francisco and Los Angeles.

The firm’s IP workload, Carvalho says, is divided equally, with “half of our clients in trademarks and the other half in patents”, and each group concentrating on a specific range of industries. For trademarks these include general consumer products, media, entertainment, retail, fashion, technology, food companies, hospitality and others. The patent clients are, among others, in the pharmaceutical, medical devices, telecoms, software and healthcare industries.

“In patents we do the general gamut of services, including freedom-to-operate opinions, patent prosecution, patent and technology licensing, patent litigation and administrative disputes,” she explains.

Arent Fox’s team of more than 110 full-time IP attorneys, specialised paralegals, and IP staff advise a range of clients, from “big US corporations doing business in the US and abroad, to foreign corporations that want to protect their IP in the US”, Carvalho says.

Among the household brands the firm represents are Mars, Qualcomm, Par Pharmaceutical, Discovery Communications, Burger King Corporation, Olympus, Warner Bros Entertainment, and fashion icon Diane Von Furstenberg.

“Burger King Corporation is one of our largest trademark clients and they have an extensive worldwide trademark portfolio,” says Carvalho. “We coordinate all their brand development, protection and enforcement matters.” Burger King Corporation has 14,920 restaurants and is based in 85 countries.

For Mars, Arent Fox helps manage its primary trademark, copyright, and design portfolios and assists with litigation in the US.

“We manage a significant number of matters for Qualcomm worldwide,” Carvalho explains.

One of the firm’s high-profile cases last year involved its representation of the US division of Japanese company Olympus in an inter partes review (IPR) proceeding.

"One of the things we take great pride in is our ability to provide counsel that makes good business sense."

New York-based Steven Weisburd acted as co-counsel for Olympus America and Olympus Medical Systems, and won invalidity rulings against two patents owned by US-based company Perfect Surgical Techniques.

The case lasted a year and included Olympus’s petitions for an IPR, which were granted by the Patent Trial and Appeal Board (PTAB) in 2014.

Weisburd said at the time: “We are very pleased that the PTAB agreed with our argument that the challenged claims of the two patents are unpatentable.

“This is a tremendous outcome for our client,” he added.

Smart in your world

A decade ago, the firm conducted a survey with its clients to find out what attributes come to mind when they think about an Arent Fox lawyer. According to Carvalho the result was that “most clients responded that the Arent Fox lawyer is someone who understands my business, who is ‘smart in my world’, who talks my talk.”

This slogan, Carvalho explains, is the firm’s tagline. It is prominently displayed in the firm’s literature, business cards and website.

What does it mean? “Clients who come to us know that they will get high-quality, business-savvy advice. One of the things we take great pride in is our ability to provide counsel that makes good business sense, advice that applies to clients’ day-to-day business needs,” Carvalho says.

She adds: “We are able to provide a holistic approach to matters. For example, if a client comes to us and asks us to review a specific trademark or tagline, we are not only able to review that from an IP standpoint, but may also advise whether the particular trademark or tagline could encounter obstacles under other regulations.

“It’s rare to find this breadth of IP expertise in a full-service law firm. We have the ‘best of both worlds’—a large IP practice with the additional experience in varied practice areas. This is unique,” she claims.

Arent Fox has turned heads with a string of recent additions to its expanding IP practice—in 2015 alone the firm added more than 20 lawyers, including four partners. This area is a top priority for the firm, and the fact that Arent Fox chose Carvalho, a standout IP partner, to be the managing partner speaks to the practice’s importance.

From Brazil to the US

Carvalho joined the firm in 1997 and has spent nearly 20 years managing domestic and foreign trademark portfolios. In particular, she has represented clients in the consumer products, food, financial services, toys, sportswear and book publishing industries.

Carvalho stands apart for having multi-jurisdictional experience; she attended law school in Brazil and worked as a clerk at the Brazilian Patent and Trademark Office (INPI), where she drafted decisions and opinions on trademark registration appeals as well as opposition and cancellation proceedings.

Following her graduation in 1985, she practised IP law for seven years in Brazil, handling licensing, technology transactions and enforcement in North America, South America and Europe

“The IP team has many lawyers with a foreign background who speak foreign languages and who have practised in a foreign country, myself included,” says Carvalho. “I was born and raised in Brazil and I practised trademark law in Brazil before coming to the US, so I understand what clients face in a different legal environment.

“I not only understand their world in the US because I’ve been practising here for 24 years, but I also understand their challenges abroad,” she adds.

The firm is also able to adapt to recent changes in the legal industry.

“We are large, but not so large that we can’t adapt quickly, and we all know there have been changes in the legal industry,” says Carvalho. “Clients are more concerned about costs. Arent Fox is flexible and nimble and can quickly adapt to these changes.”

A costly business

Law firms are increasingly expected to provide cost-efficient legal advice.

“We have services, cost structures and teams that are tailored to specific clients, and we always aim to staff matters efficiently—we generally have one partner, an associate and a paralegal on a matter,” Carvalho explains.

“In the case of patents we have a formalities team that consists of specialised staff who are knowledgeable in patent prosecution,” she adds.

“In-house legal teams are under a lot of pressure to save money and cut costs, and they want to work with firms that are sensitive to their pressure to be cost-efficient.

“Ten or 15 years ago big corporations were not as cost-conscious, but costs are now on the top of the list of concerns for every IP counsel. We are sensitive and responsive to these concerns.”

With those challenges in mind, Arent Fox is on hand to provide smart legal services with a team of trademark and patent attorneys that is among the largest of any full-service law firm in the US. 

Arent Fox, iPad, iPhone, Cristina Carvalho, patent, trademark, Olympus, Burger King Corporation,

WIPR