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Howrey Simon Arnold & White is rolling out a new model this spring — an intellectual property consulting business based on one developed by Ford Motor Co. The new venture is the brainchild of Roger May, a longtime in-house lawyer at Ford who rose to assistant general counsel in charge of IP and then founded a subsidiary company that managed the automaker’s trademarks and owned all its other intellectual assets — know-how, specifications, drawings, inventions, patents, copyrights and software. The subsidiary, Ford Global Technologies Inc., added “hundreds of millions” in shareholder value to Ford, says May, by maximizing the worth of the company’s intellectual assets. Its operations included hammering out licensing agreements, commercializing technologies from brakes to advanced engines and managing a technology venture fund. In addition to housing about 25 IP lawyers who transferred into the unit, the Ford subsidiary employed staff engineers and brought together board members from research, finance, marketing, strategy, e-commerce and product development. After four years as CEO — and a total of 28 at Ford — May retired a year ago with hopes of applying what he built within the company to a broader range of clients. “I thought that I had gone just about as far as I could within an automotive company,” he says. May was courted by more than a dozen law firms, including IP boutiques and firms with large general practices. After spurning Howrey’s first recruitment effort, which came through a headhunter, he eventually was won over last fall by overtures from then-chairman Ralph Savarese, managing partner Robert Ruyak and Q. Todd Dickinson, the former director of the U.S. Patent and Trademark Office who now co-chairs the firm’s sizeable IP practice group. “I became very impressed, not just with the premium nature of the law firm,” May says, but also with “the genuine enthusiasm that they had for this new area of business. They had been thinking about it before they ever talked to me.” Howrey’s previous experience with similar ventures provided the firm with another selling point in its discussions with May. Between 1985 and 1994, the firm set up three in-house consulting groups, Capital Economics, Capital Accounting and Capital Environmental. With a combined staff of approximately 50 economists, accountants, scientists and other professionals, the groups provide help with research and expert testimony on firm matters. They also are available for hire directly by outside clients. Though May joined Howrey as a partner, most of his attention will be devoted to his role as president and CEO of the new IP management business. Its goal, says May, is to get the most out of a client’s intellectual assets by marshaling a combination of legal, technical and business acumen. “Initially when you talk to many companies, surprisingly even very large ones, they really don’t know what they’ve got in terms of intellectual assets,” he says. The first step might be to create a database inventory of intellectual assets. Or May’s group might identify patents not directly related to the client’s core business and determine a best course of action, such as licensing, spinning off a new company, finding a partner or even donating the assets to a university for tax purposes. Other possible assignments include performing competitive analysis, seeking out joint ventures or joint development agreements and developing infringement risk management and enforcement strategies. Howrey IP partner Robert Taylor says the new business unit will provide a more systematic and formal approach to the services already provided by the firm’s IP group. “Being able to counsel clients in being able to use their IP as a business tool — that’s very much a part of what we do,” says Taylor. But the expansive growth in the value of intellectual property over the past two decades warrants a more business-oriented approach, he adds. “What you had in place across America in 1980 were a lot of corporate law departments and patent departments that had built themselves up around patents that didn’t have nearly the significance that they have today,” says Taylor. “This new organization is really addressing something that has originated in the corporate world in the last 10 to 15 years.” May hopes to have the new group, which will be headquartered in Chicago, open for business by the end of March. While the legal expertise will be supplied by the firm, May says his core staff of about eight people will include analysts, consultants and engineers, but not attorneys. Says May, “My experience at Ford taught me that one of the big sells you have to make is that this is not just a bunch of lawyers out to peddle something.”

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