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With companies such as Johnson & Johnson, Cephalon and Morphotek in its own back yard, Woodcock Washburn does not need to look too much farther than Philadelphia for its patent work within the field of biotechnology. In a current survey of firms that prosecuted the best biotech patents, using a newly formulated patent ranking model, Philadelphia-based Woodcock Washburn ranked second nationally. The survey was unique in that it rated patent firms by the value of patents prosecuted rather than by the sheer numbers of patents prosecuted. The listing was published in the June issue of IP Worldwide, an American Lawyer Media publication. Woodcock Washburn partner John W. Caldwell said that while Philadelphia had lagged behind most of the country during the growth of computers and electronics, when it came to biotechnology, “Philadelphia did not miss the boat the second time around.” A number of Woodcock Washburn’s most profitable clients are Philadelphia-based. The biotechnology market within the Delaware Valley is rapidly expanding. According to Caldwell, while every law firm would like to service this market, Woodcock Washburn’s comprehensive set of expertise within intellectual property law gives the firm almost exclusive rights to much of the area. The firm prosecutes patents for a number of internationally known corporations and institutions such as Merck, Comcast, Princeton University, the University of Pennsylvania and Baylor College of Medicine. According to Caldwell, the field of biotechnology took large strides within Philadelphia during the 1990s. That was naturally followed by the need for biotech patent law litigation. Fellow Woodcock Washburn partner Joe Lucci agreed, citing the abundance of universities and research institutions within the area. “The region is a growth area because of the infrastructure, the corporations, and the large number of research institutions,” he said. “Many people are staying home after graduating and doing work here.” Woodcock’s growth accompanied the surge in biotechnology through its maintenance of a virtual monopoly over litigation services for a majority of valuable patents from companies within Philadelphia. Caldwell said that most of the firm’s competition for this type of litigation is located nationally rather than within the confines of the city itself. He pointed to firms in California, New York and Washington, D.C., as its premier rivals. VALUE, NOT NUMBER The assumption that more is better does not hold within the realm of patent law. Conventional thought may have measured a firm’s worth by the number of patents prosecuted, but this left the value of these patents unaccounted for. “One landmark patent could be worth the equivalence of thousands of other patents,” said Jonathan A. Barney, a former patent law practitioner and the founder of Patent Ratings, which took the survey. According to Barney, the patent ranking process takes 34 factors into consideration, as opposed to previous valuation systems, which only accounted for the number of prior citations. Barney said that while prior citations do bear a significant correlation with the patent maintenance rate, many other factors must also be taken into account in order to generate statistically accurate results. After accounting for factors ranging from number of claims to length of disclosure, a regression model spits out the Intellectual Property Quotient, which corresponds with a human IQ, 100 being the average score. The patent term generally lasts 20 years from the day on which the patent was filed. A maintenance fee must be paid every 3.5 years, 7.5 years and 11.5 years after the patent is granted in order to keep the patent alive, once activated. The maintenance fee gets successively larger each time. Barney said that more than half of all patents are abandoned before their full term, which is a tribute to the value of those that are held throughout the long haul. Before the advent of Barney’s modernized rating system, there was no standardized system of distinguishing these patents from the scores of patents cast aside as worthless. While Barney stresses that numbers should not be the primary focus, they do count for something. A great majority of the 10 firms listed in the rating, published in IP Worldwide, have devoted more than 20 percent of their patent law practice toward biotech patents. Barney admitted that familiarity and expertise within the practice of biotech patent law do weigh in heavily toward the success rate during the arbitration process. BIOTECHNOLOGY EXPERIENCE Caldwell said that unlike other types of law, patent law requires a great deal of experience. Having devoted more than 30 percent of its 559 patents litigated from 1997 to 2001 toward biotechnology patents, the firm already has an extensive background within this type of litigation. On the other hand, a handful of firms undermined the widely assumed theory on experience. New York’s Fitzpatrick, Cella, Harper & Scinto, the only firm ranked above the Philadelphia-based firm, set aside 3 percent of its 290 patents to the field of biotechnology. “My only explanation there is that they do a stellar job all around,” Barney said. “Many of their patents in other fields have ranked highly in our studies as well. They’re just a good all-around firm.” With big name players such as Canon, the international printing company, on its client list, Fitzpatrick Cella’s success within other fields of patent law has also seeped into the growing field of biotechnology. The practical applications of the new rating system stretches into the practice of patent law by enabling firms to distribute their resources according to these specified valuations. Barney said that the system also creates standards for patent litigators. The firm can accurately monitor portfolio quality and take remedial steps to improve their status by negotiating for a higher quality of patents. Lucci described the rating as “a testament to our investments.” “These patents warrant the devotion of our resources,” he said. Nonetheless, Lucci maintained that the company does not screen clients. However precise the system of measurement, there is no impeccable manner of determining the significance of a client’s invention, he said. In addition to its recent accolades, Woodcock Washburn has also been chosen along with 13 other national law firms by the National Institutes of Health to provide patent services under a five-year contract. In anticipation, the firm has already been expanding within its offices in Philadelphia and Seattle. “We have been hiring people while others have been laying off,” Caldwell said.

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