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Every once in a while, Washington, D.C., trademark lawyer Michael Clayton gets a dramatic reminder that intellectual property is truly a global undertaking. The Morgan, Lewis & Bockius partner once received an envelope containing the original trademark documents he had sought — along with the insects that had burrowed in it and died. On other occasions, he has received apologetic replies from foreign officials who explain that they haven’t had time to look for the paperwork because they’ve been too busy fighting a war or suppressing a revolution. “My personal favorite,” says Clayton, “is the time when the goat managed to get into the trademark office and feasted on the files.” The times are changing, says Clayton, who heads Morgan Lewis’ trademark and copyright practice group. “Five or six years ago I had a mostly domestic trademark and copyright practice,” says Clayton. Now, as more U.S. companies do business overseas, they must protect their IP in multiple jurisdictions. D.C. law offices with IP practices are responding to the booming demand for worldwide representation both tactically and geographically. Some, like McDermott, Will & Emery and Howrey Simon Arnold & White, have opened London offices in recent years and are now expanding further into Europe. Howrey Simon opened a Brussels office in April, and McDermott Will opened a Munich office in January. Finnegan, Henderson, Farabow, Garrett & Dunner, which already has offices in Brussels and Tokyo, is setting up a small outpost in Taiwan. In London, the firm relies on Richard Fawcett, former chief patent counsel for British Petroleum. “I keep them informed of what’s going on politically in the European Union, especially with respect to patent litigation,” says Fawcett. “I also advise on specific issues, mainly before the European Patent Office in Munich.” Fawcett’s other duties as an independent counsel include introducing the firm to potential clients and local counsel. Covington & Burling opened in London 14 years ago and now fills half of a squat, modern office building on the Strand, just down from the Royal Courts of Justice. The firm has built its U.K. practice on its U.S. strength, particularly in its IP work for Big Pharma clients. The firm handles most IP matters for the drug companies and now that it has a new Brussels outpost, a good chunk of regulatory work as well. Covington’s longtime relationship with Microsoft and the Business Software Alliance carries into Europe. Anti-piracy work is a global practice and Covington (and the BSA) pursue it. Arnold & Porter, which has had a London office for about a decade, began adding IP lawyers there about five years ago, says David Apatoff, co-chair of the firm’s 100-lawyer IP group. The firm recently closed its Tokyo office because of the long Japanese recession, says Apatoff, and now serves clients with Asian interests from its Los Angeles and D.C. offices. Almost without exception, the lawyers and other experts hired to staff these overseas IP practices are licensed in that country or in nearby jurisdictions. “For anything really meaningful, you really need local counsel,” says Apatoff, adding, “The more different the culture is, the more you want to have someone capable [in that jurisdiction].” For example, the 11 IP lawyers in Howrey Simon’s London office are licensed to practice before a number of different authorities, including the European Patent Office in Munich, the European Community Trademark Office in Alicante, Spain and the national patent and trademark offices in England, Wales, the Netherlands, Germany and Australia. Collectively, the 11 lawyers speak seven languages. To head its London office, Howrey Simon hired Jacobus Rasser, the former chief worldwide patent counsel at Procter & Gamble Co. Rasser, a Dutch native licensed to practice before the patent offices in England, Wales, and the United States, opened the U.K. office in January 2001 with one English solicitor. By the end of this year, he expects to have 18 lawyers. “Our approach to IP practice is quite different from the typical European practice,” says Rasser. His years at Procter & Gamble taught him, he says, that it is essential to develop a coordinated strategy involving both patent prosecution and litigation. “Traditionally, firms do one or the other,” says Rasser. “But your chances in litigation are determined to a large extent by the quality of the patent prosecution work. [And] you need to understand litigation to draft a good patent.” In addition, firms need to plan ahead for their clients, says Rasser. “Law firms tend to get involved after a suit is filed, and that is a bit late,” especially in a global economy with multiple forums. At Procter & Gamble, Rasser recalls, the in-house legal team would pick its battles carefully. “When we saw litigation on the horizon, we had people in-house who could sit down and develop [a] strategy for how to proceed to defend or assert a patent. If we decided, for example, that there was an easy win in Germany, we would say, ‘Let’s file suit there first,’ and then maybe we would do pre-emptive filings in other countries.” Like Howrey Simon, the London office of McDermott Will also bucks European tradition by offering both patent prosecution and litigation expertise. “It gives clients better, more integrated service,” says Larry Cohen, who heads McDermott’s 15-lawyer intellectual property practice in London. For cases that must be fought on both sides of the Atlantic, Cohen says, one project manager is designated by the firm, or by the client, to be in overall charge. The project manager “takes responsibility for making sure that what is said in various jurisdictions” is consistent, explains Cohen. It can be difficult to develop a consistent global strategy. David Marsh, a partner in Arnold & Porter’s D.C. office who specializes in biotechnology cases, notes that most patent clients want their lawyers to oversee related issues in foreign countries. The key difficulty, he says, is “to speak with a single voice.” For a major global litigation, Arnold & Porter will pull everyone together to coordinate their work under one roof, says Marsh. Typically, he says, the firm will get together with overseas counsel at the client’s headquarters. Arnold & Porter does worldwide patent work for some big pharmaceutical and agricultural companies, including Monsanto Co. Yet Marsh is very selective about his own travels and rarely leaves the country to assist in court proceedings, which are handled either by the firm’s London office or by local counsel. Instead, Marsh occasionally will go overseas at the specific request of a client or in order to attend a patent opposition hearing. Similarly, many D.C.-based intellectual property lawyers say that their overseas work is limited to document gathering, depositions and face-to-face meetings with clients and their engineers to discuss highly technical matters, which are difficult to explain by telephone or e-mail. For example, Thomas Jarvis, who specializes in representing computer chip manufacturers at the U.S. International Trade Commission, spent nearly one-third of his time last year at his firm’s office in Palo Alto, Calif., and visiting clients in Asia. Yet, Jarvis stays based in Washington, D.C., where the ITC is located and where he co-chairs Finnegan Henderson’s ITC practice. Jarvis puts a high value on the time he spends in Asia meeting with clients. “You can get the details that you can’t get from documents or even over the phone, particularly with clients where English is their second language,” he says. Connecting with the engineers is particularly important. “Engineers are not usually involved in the selection of attorneys, but they often are involved in firing them,” notes Jarvis. “It’s the engineers who know whether the lawyers can engage in a substantive discussion of their products in court.” International clients need intellectual property lawyers with ITC expertise because the ITC has jurisdiction over goods imported into the United States. The ITC can order that infringing imports be excluded from the United States. In the last year, the ITC’s caseload has tripled, primarily because of globalization and recession. “In a recession, companies are willing to litigate for market share,” Jarvis explains. Howrey Simon’s Cecilia Gonzalez also litigates at the ITC. And she, too, spends time at her Asian clients’ offices preparing them for litigation in U.S. courts, especially, she says, trying to explain the bewildering concept of discovery. “There is still a basic lack of understanding and acceptance of discovery,” says Gonzalez, who is based in Washington, D.C., and serves as vice-chair of Howrey Simon’s IP group. “Foreign companies feel it is an invasion of their privacy, and in most Asian countries there are no similar provisions for discovery.” In Japan there is no discovery law and the Japanese government frowns on letting American attorneys apply U.S. discovery law there. As a result, she says, lawyers need a special visa to take depositions in Japan and must conduct them at the U.S. consulate. In Europe, she adds, the deposition rules vary by country. “If you are on a fast track, it’s a huge problem,” says Gonzalez. “You just have to be very resourceful in doing discovery overseas.” Sometimes the tricky part of an international IP practice is just explaining U.S. law to incredulous foreign clients. Other times, it’s the need to navigate the world’s IP systems at double time. Last year, Morgan Lewis handled the trademark work for Diageo plc in its joint bid with Pernod Ricard for the Joseph E. Seagram Co.’s spirit and wine business. The job entailed worldwide due diligence on Seagram’s trademark registrations for such brands as Seagram’s VO whisky and Captain Morgan rum. Along with Diageo’s in-house counsel, Clayton, the Morgan Lewis partner, assembled a team of 16 trademark lawyers — about half of the firm’s trademark group — plus 10 paralegals to try to track down the registrations in 200-plus jurisdictions around the world. “It would be virtually impossible to independently verify each registration,” says Clayton, “but it would be foolhardy to not verify them in the key jurisdictions.” The task had to be tackled, explains Clayton, because the registrations were key to the value of Seagram’s brands — and a big element in calculating Diageo’s $8 billion offer. In the end, the job required enormous coordination, frequent trips to Diageo’s London headquarters to inspect documents, and close contact with a far-flung network of local counsel. In other words, Diageo’s D.C. attorneys provided a global IP solution to a global IP problem. Claudia MacLachlan is a Washington, D.C.-based free-lance writer.

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