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In March 2003, David Posz and Charles Bethards formed the intellectual property firm Posz & Bethards. The six-lawyer firm is located in Reston, Va., and specializes in patent, trademark, and copyright procurement and enforcement, IP portfolio management, IP licensing, and global patent strategies. While much of Posz & Bethards’ business is dedicated to prosecuting U.S. patents for large Japanese corporations, the firm also provides IP services for U.S. corporations and individuals alike. Earlier this month, David Posz welcomed Legal Times Metro editor Joel Chineson to Posz & Bethards’ office, where Posz answered “Five Questions” about his firm’s practice. Below is a transcript of their conversation, edited for reasons of space and clarity. Why did you decide to start your own practice? I had the opportunity. I was working as in-house U.S. patent counsel in Nagoya, Japan, for the IPICS [International Patent Information Consultation Service] Corp., a wholly owned subsidiary of the DENSO Corp., which is the automotive electronics supplier for Toyota Motors. I believe it was spun off in the 1950s from Toyota and is the equivalent of what Delphi is to General Motors. Ipics handles a large number of Denso’s patent applications filed outside of Japan, with the largest portion of those applications being filed here in the United States. I was approached about opening my own firm when it came time for me to return to the United States, and Denso indicated that if I was willing to relocate to the Washington, D.C., area they would send me work. When I came back at the end of December 1999 after two years in Japan, I had a base of work from DENSO. I decided at that time to take a calculated business risk and to go out on my own and open my own firm. Four years later, we now have six attorneys, one patent agent (someone with a science or engineering degree who has passed the U.S. Patent and Trademark Office’s bar exam but who is not an attorney), two technical specialists, as well as several support staff. Tell us about your clients. For a small firm, I feel as though we have a very diverse group of clients. We file U.S. patent applications and prosecute these applications not only for Japanese corporations but also for large and small domestic corporations. A majority of the firm’s work consists of prosecuting applications here in the United States for Japanese clients. My partner, Charlie Bethards, was with Motorola for 28 years, so we handle a large number of Motorola patent applications. And then we also work with, for example, small startup companies here in the United States. So it’s a pretty diverse array of clients. We do not handle any patent litigation, which typically requires a large number of attorneys and support staff. We try to focus on client counseling and patent preparation and prosecution � the preparation being the writing of the application; the prosecution being, once the application is filed with the U.S. Patent and Trademark Office, the filing of the necessary amendments and responses, and working with the examiners to get patents issued from the applications. Patent examiners are government employers with technical backgrounds who are knowledgeable in their respective technical areas of expertise, and we work with them to find some common ground in these applications, which ultimately leads to the issuance of the patent. The key is that patent prosecution is an ex parte process, which a lot of people don’t realize. The attorneys and examiners are actually supposed to work together, as opposed to being involved in an adversarial process. So it’s very interesting. It’s a great mix because you have to use both your engineering background and your legal and writing skills in order to be able to write about these sometimes complex, very technical inventions in a manner so that someone can sit down and read the patent and understand the invention. Where do you find your clients? Word of mouth is the best advertising and basically that’s how we’ve met most of our current clients. That is, we’ve been recommended by current clients or by former colleagues who are now in-house or at different firms. Quite honestly, at this point, we’re so busy that we don’t have much time to do much business development, which I guess you can say is a good problem to have. How do you measure business success? Being a smaller firm gives us quite a bit more flexibility working with clients to create a billing scheme that is fair both to the client and the firm and that is mutually beneficial. We do quite a bit of work on a flat-fee type basis, especially in areas where we have expertise and the clients have expertise. We both know what the fee generally should be, so therefore we can arrive at a figure beforehand where the client is not surprised when they receive the bill. They know exactly what the fee is going to be for a particular piece of work. We also bill on the traditional hourly basis for other matters in which, at the beginning, neither the client nor the attorney may have a good sense of how much time is going to be involved. At this moment, we don’t have a yearly billing target, as far as hours go. But as we continue to grow, we’ll probably move more in that direction. What challenges to your practice do you foresee in the future? Continuing to grow the business and add quality people is the challenge with any firm, large or small. Especially with the smaller firms, finding good people and continuing to be able to provide personal, attentive service to both large and small clients so that the clients know that they’re dealing with, for example, me directly as opposed to a first- or second-year associate. Being able to maintain that personal level of service and maintain high standards that you’ve set are important. I would like to continue to grow, but I don’t envision us as ever being a 30- or 40-attorney firm. I envision that our firm would grow to 10, 15 attorneys. That would be a very good size for the type of work we do. Patent prosecution is very file-intensive, so there is a critical mass as far as the number of attorneys and support staff that you need to properly service large clients. Patent prosecution involves working with inventors at some of these companies to prepare and write patent applications that describe an invention in a manner so that one skilled in the art would be able, from reading the patent application, to practice the invention. So we work with the inventors to prepare applications, file the application with the U.S. Patent Office, and then prosecute the application. Along with that goes a lot of client counseling, strategizing as far as what should be patented, how and in what countries the patent application should be filed, what type of protection is needed, and all the other business decisions that go along with that. Although more and more of the boutique firms are being acquired by larger general practice firms, I still think there’s a real niche for firms like mine to supply quality patent prosecution services and provide the clients with creative billing alternatives that may not be available from larger firms with more-inflexible accounting and billing policies.

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