Changes on the horizon in intellectual property domain

April 11, 2014 7:27 AM By RECORD NEWS

More companies are involving intellectual property (IP) legal counsel in business strategy to help integrate their valuable IP assets into business development and marketing strategies.

“The economic and social impact of new technologies are redefining the IP landscape and vastly increasing the potential value of a company’s intellectual property assets, including many that may have undervalued or overlooked in the past,” said attorney Michael A. Kahn of law firm of Capes, Sokol, Goodman & Sarachan, P.C. in St. Louis.

More change is on the horizon, Kahn says.

“Over the next three months, the U.S. Supreme Court will hand down decisions in several important patent, copyright, and trademark cases that will literally change the IP landscape,” he said.

“As I explain to clients, copyrights are no longer just for authors, songwriters, poets and publishers, and patents are no longer the sole domain of white-coated scientists in labs. Increased media attention about trademarks, trade dress, publicity rights, copyrights, patents, trade secrets and IP litigation is prompting more shareholders to follow a company’s IP assets, and to expect better performance from the companies involved and better legal protection of those IP assets.”

Kahn said that more top executives are rethinking business strategy with the contributions by IP legal counsel.

“Protecting unique knowledge or creations and guarding against their illicit use is crucial in a world where IP assets are among the most valuable assets a business can possess,” he said.

“These factors – including that patent litigation continues to escalate due in part to the anti-joinder rule of the America Invents Acts of 2011 – are influencing how corporate managers are considering their IP assets with legal counsel’s advice when approaching their markets and defining new markets in the U.S. and internationally.”

Kahn was voted 2013 St. Louis Lawyer of the Year, Litigation-Intellectual Property, and 2014 St. Louis Copyright Lawyer of the Year by The Best Lawyers in America. He earned his J.D. cum laude at Harvard University and is an adjunct professor at Washington University School of Law.

He focuses his IP legal practice at Capes, Sokol, on matters of commercial litigation, media and entertainment, and First Amendment issues. He has negotiated intellectual property licenses with professional sports leagues, publishers and musicians, serving as counsel of record for the National Basketball Association, Oprah Winfrey, Lions Gate Entertainment, Mark McGwire, McFarlane Toys, Radio One, Emmis Communications, the St. Louis Business Journal, Eveready Battery Company, The New York Yankees, Paramount Pictures, and The Topps Company.

Law firm Mintz Levin expands intellectual property practice

By Chris Reidy | BOSTON GLOBE STAFF APRIL 10, 2014

Boston-based law firm Mintz, Levin, Cohn, Ferris, Glovsky, and Popeo PC said that it has expanded its intellectual property practice by hiring three partners from Nutter McClennen & Fish, another firm.

William (Bill) C. Geary III, Lisa Adams, and Christina Sperry have joined as members of Mintz Levin’s Boston office, the firm said in a Thursday press release.

Over the course of their careers, Geary, Adams, and Sperry have represented Johnson & Johnson and Massachusetts General Hospital as well as many start-ups, medical device manufacturers, and medical and research institutions, the firm said.

“The need for sophisticated intellectual property capabilities has never been greater as companies, particularly in medical technology and life sciences, continue to develop breakthrough innovations and seek access to the public markets,” Robert Bodian, managing member of Mintz Levin, said in a statement.

Mintz Levin’s press release also included a statement from Geary.

“We are thrilled to be joining a firm with a national and international presence that will provide a broad platform for our clients and a deep bench of talent, not only with respect to prosecution, but in the corporate and litigation areas as well,” Geary said.

In a statement wishing their former colleagues well, Nuttern McClennen & Fish noted that in today’s “fluid” legal environment, lateral moves between firms are not unusual.

“With deep roots, a strong base of loyal clients, and a team of great lawyers, we are well positioned to navigate changes,” Nutter McClennen & Fish said.

Chris Reidy can be reached at

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