Interview with: Mike Jakes, Partner
Finnegan, Henderson, Farabow, Garrett & Dunner LLP | View firm profile
What do you see as the main points that differentiate Finnegan from your competitors?
Finnegan is one of the few firms of its size that focuses on intellectual property law. With more than 350 IP professionals, we have the capacity and depth of experience to hit the ground running with virtually any technology or legal issue. But we didn’t get to be one of the world’s largest IP law firms by just growing our lawyer ranks and adding offices. We got there by truly believing in our clients while protecting, advocating, and leveraging their ideas.
Our culture is based on a simple concept—that all clients are clients of the firm. While this seems logical, the fact is that in many law firms, a client is the property of an originating partner. Since Finnegan’s founding in 1965 by good friends Marc Finnegan and Doug Henderson, the decision was deliberately made that every lawyer in their growing firm should have the same interest in serving a client as any other. And so it has always been at Finnegan that every client’s needs are the concern of every attorney and member of our staff.
Which practices do you see growing in the next 12 months? What are the drivers behind that?
Post-grant review in the U.S. Patent and Trademark Office has greatly changed the landscape of patent law in the United States, and we expect that it will continue to be a significant and growing part of our practice. Finnegan has already represented clients—petitioners and patent owners—in nearly 700 proceedings before the Patent Trial and Appeal Board (PTAB) since 2012. The U.S. Supreme Court, in Oil States Energy Services v. Greene’s Energy Group, just rejected a challenge under the U.S. Constitution to inter partes review of issued patents so those proceedings are here to stay. They will continue to be important as the validity of patents is often decided in PTAB trials rather than the courts.
Biologics and biosimilars will also be an increasing practice area for Finnegan. The main driver is the Biologics Price Competition and Innovation Act (BPCIA), which opened the door for companies to seek FDA approval to manufacture and sell biosimilar or interchangeable versions of brand name biological products. Finnegan advises clients on virtually every intellectual property issue related to this complex and evolving area of branded biologics and biosimilars, including patent prosecution, due diligence investigations, portfolio management, and litigation.
Practice before the U.S. International Trade Commission (ITC) has also rebounded in a big way. After a downturn in the number of investigations at the ITC, that has turned around completely in the last two years. Beyond the cases involving electronics, such as the “smartphone” wars a few years ago, these investigations have involved technologies such as medical devices and biotech. For example, Finnegan recently represented Ajinomoto in a rare biotech investigation involving patents related to genetically modified organisms to make commercial quantities of tryptophan. The ITC found Ajinomoto’s patents valid and infringed and issued limited exclusion and cease-and-desist orders barring the respondents from importing infringing products into the United States. With injunctions still hard to obtain in the district courts, patent owners are turning back to the ITC to protect their IP.
What’s the main change you’ve made in the firm that will benefit clients?
Our clients’ businesses and IP assets are global. To meet this challenge, Finnegan has offices in the key global markets of London, Seoul, Shanghai, Taipei, and Tokyo. This expansion has been gradual, but the change to a truly international IP firm gives us the resources and experience to formulate and execute global strategies for our clients. Our professionals are multilingual and multicultural, and they work with clients in real time around the clock and around the world. Our clients obviously benefit when we can provide them with a single coordinated strategy to protect their global IP.
Is technology changing the way you interact with your clients, and the services you can provide them?
As a firm focused on technology, Finnegan itself has always taken advantage of new technology to better serve our clients. Although we take much of it for granted today, the advances in communication have greatly improved the way we can interact with clients in real time. The proliferation of electronic documents has made litigation more costly, not less, and we’re constantly looking for ways to use technology to reduce costs while delivering the same results. We have applications that give clients access to the latest developments in the law in a focused and timely way. These are just a few of the ways that technology has changed our practice. Our clients come to us to protect their cutting-edge technology, and we need to have the best tools to do that.
But because we understand technology so well, we also know that it is only a means, not an end. We can have the best technology in the legal business (and we do), but it’s still no substitute for the investment in our people. Technology greatly improves the delivery of legal advice and services, but it’s still the knowledge and advice that matters!
Can you give us a practical example of how you have helped a client to add value to their business?
Finnegan adds value to our clients’ business by protecting their intellectual assets. As a full-service IP firm, we have the ability to protect these assets in creative ways, using patents, designs, trademarks, copyrights, trade secrets, and other techniques. We can license these assets for monetary value, or when necessary, litigate to protect them. A recent high-profile example where we did just that was a temporary restraining order we obtained for Patagonia against jackets bearing a replication of Patagonia’s mountain-peak logo.
Protecting these intellectual assets is increasingly challenging, however, as the law is constantly changing. We don’t just keep up with the rapid changes in the law though—we set the pace. For example, after the America Invents Act in 2012, Finnegan was one of the first firms to file a covered business method review petition at the PTAB, the first to argue at an oral hearing before the Board, and the first to win a trial before the PTAB.
Are clients looking for stability and strategic direction from their law firms – where do you see the firm in three year’s time?
Clients certainly look for stability and strategic direction from their law firms. In a topsy-turvy legal market, Finnegan has been remarkably stable. This is largely due to our focus on intellectual property law—we don’t chase after every hot new practice area or need to dump unfashionable practice groups. But with our depth of IP experience and technical expertise, we’re able to stay in front and lead the development of the law, such as we have with the PTAB trial practice. Our clients benefit because we can provide the strategic direction to protect their IP assets as the law develops and not just react to changes after they happen. Because of our solid foundation, Finnegan will continue to lead in the global protection of IP.