Arent Fox: an IP shop for tech companies

From protecting IP for online gaming and music companies to advising on high-tech patents, Arent Fox is making a name for itself among innovative companies. We hear from four of its lawyers about their practice and thoughts on the year ahead.

What have been the biggest developments in your practice this year?

Paul Fakler, copyright partner: “The impending close of the Department of Justice’s (DoJ) three-year review of the American Society of Composers, Authors and Publishers’ (ASCAP) and Broadcast Music’s (BMI) antitrust consent decrees.

“In the US, the right to publicly perform musical compositions is licensed though performing rights organisations, and ASCAP and BMI are the oldest and largest two. They have each aggregated the rights to so many songs that they have significant market power. For this (and other) reasons, the DoJ sued them in the 1940s for antitrust violations.”

James Bindseil, patent partner: “In addition to continuing to be one of the top firms handling 5G telecommunications technologies for Qualcomm, we have been asked by another top ten filer of US patent applications to assist with software and device-related patent application drafting and prosecution. Working with companies that have complicated technology innovations is a big strength for our group.”

Sarah Bruno, privacy partner:“We have expanded our practice significantly in the online and console gaming space in the last year. As a result, we are routinely advising on fun and interesting IP issues tied to the clearance and protection of elements of these games.”

Craig Gelfound, patent partner: “IP has emerged as one of the most important business assets for many clients. As a result, our clients are increasingly looking to counsel to monetise the IP to maximise return on investment.

“In the technology sector, this effort has become particularly challenging due to an unprecedented level of government intervention into US patent law. The impact of the American Invents Act coupled with a dramatic increase by the US Supreme Court in asserting appellate jurisdiction over the US Court of Appeals for the Federal Circuit has resulted in uncharted waters for the patent practitioner.”

What are the biggest challenges you have faced and how have you overcome them?

Fakler:“One of the biggest challenges has been the advantage big music companies have in policy venues, stemming from their ability to use famous songwriters and recording artists to sway various policy makers. I have learned that, by making the case for my clients’ interests on the merits and based upon detailed facts, I can overcome the initial celebrity advantage enjoyed by the music companies.”

Bindseil: “Clients are becoming more and more focused on budgets and on timeliness, especially with the switch in the US to a first-to-file patent system. I have made sure that we are adding high-quality patent attorneys to meet the increased workload.

"sound practice requires that we continue to provide robust monetisation strategies to allow our clients to weather future storms.”

“Since we have many clients that are heavy patent filers, we have reviewed our internal systems and procedures, optimised them, and set them up to be scalable to support our clients’ needs.”

Bruno:“The pace of the work in the technology space continues to increase, as clients are under pressure to meet the deadlines imposed by investors and the public, based on what has been advertised.

“To overcome these issues, we continue to grow our team and have a deep bench. Not only do we have a number of associates that are able to assist with projects, we also have paralegals and IP consultants that we rely on to investigate or clear certain concepts.”

Gelfound:“Today, patent strategies must go beyond the traditional defensive construct and include offensive components that are sufficiently robust to maximise return on investment in a changing legal and business environment.”

How has the setup at Arent Fox allowed you to navigate these challenges?

Fakler:“The combined experience and relationships of Arent Fox’s strong government relations team has been instrumental in helping me devise an efficient, long-term strategy for advancing my clients’ interests with policy makers.”

Bindseil:“The IP practice accounts for about 20% of all our attorneys, and within the firm there is an incredible appreciation and support for IP. Our managing partner, Cristina Carvalho, is an IP attorney and we have IP attorneys at all levels of firm management. As a result we have access to a wide-range of resources to make sure we can get the job done.”

Bruno:“Arent Fox is a US firm but with global ties. We have many law firms that we routinely partner with to ensure that we are able to serve clients on all aspects of their IP issues.

“We also have several senior paralegals and staff who understand the importance of every deadline, and what needs to be done to meet that deadline.”

Gelfound:“Patent practitioners at Arent Fox possess a combination of technical expertise and business acumen that enables them to implement monetisation strategies that best meet the business objectives of the client.”

What lies in store for the next year?

Fakler:“I expect to remain quite busy dealing with the fallout from the conclusion of the DoJ consent decree review. The music publishing industry is quite unhappy with the outcome of that review, and is assessing its options, which may include litigation or lobbying—most likely both.”

Bindseil:“I am looking forward to growing our relationship with our new clients, as well as continuing our support of Qualcomm.

“Additionally, I am interested to see how the courts and the US Patent and Trademark Office continue to deal with patentable subject matter issues following the Alice v CLS Bank decision.”

Bruno:“We are continuing to do more gaming work and are enthusiastic about the growth that we see in this area.”

Gelfound:“Patent reform legislation continues to stall in Congress and the Supreme Court’s involvement in US patent law has declined over the last term. Therefore, we may see more stability in our patent doctrines. However, sound practice requires that we continue to provide robust monetisation strategies to allow our clients to weather future storms.”

James Bindseil prepares and prosecutes domestic and global patent applications, provides strategic patent management counselling, and performs due diligence for clients in the telecoms, software, and electromechanical technologies space.

Sarah Bruno advises clients on intellectual property, privacy, advertising and marketing, and e-commerce.

Craig Gelfound is recognised for prosecuting, managing, and enforcing the domestic and global portfolios of major corporations.

Paul Fakler helps clients with copyright and computer law, and has litigated numerous cutting-edge cases involving digital media and the intersection of copyright and the internet.