Ropes & Gray's Washington, D.C. offices. August 29, 2014. Photo by Diego M. Radzinschi/THE NATIONAL LAW JOURNAL.
Ropes & Gray’s Washington, D.C. offices. August 29, 2014. Photo by Diego M. Radzinschi/THE NATIONAL LAW JOURNAL. (Diego M. Radzinschi)

About 100 lawyers and staffers are poised to leave Ropes & Gray within the next few months as the Boston-based Am Law 100 firm prepares to spin-off its patent prosecution practice into an independent firm.

The move by Ropes & Gray represents a major restructuring of its intellectual property practice, the bulk of which stems from the firm’s late 2004 acquisition of 160-lawyer IP boutique Fish & Neave. Ropes & Gray, which released a statement detailing its decision, expects the process of creating a new firm focused on patent prosecution to take several months.

Joseph Guiliano, co-head of Ropes & Gray’s IP rights management practice in New York, will lead the as-yet-unnamed new firm. Guiliano and Ropes & Gray chairman R. Bradford Malt confirmed the restructuring of the firm’s IP practice in a Tuesday evening interview with The American Lawyer. The two lawyers attributed the decision to finding the best way to serve clients, who were consulted on the proposed transition.

“We are still a committed, IP-driven firm, whether it’s in IP litigation, IP transactions, trademarks or other aspects of patents that are integrated into our other practice areas,” said Malt, noting that Ropes & Gray’s life sciences, M&A and public offerings groups all touch on certain areas of IP, whether it be through litigation risk assessments or disclosures related to new technology.

Among the many things that will change at Ropes & Gray is that the 1,160-lawyer firm will no longer do patent prosecution work, Malt said. He declined to discuss how much revenue the patent prosecution practice generated within the past year, but noted that Ropes & Gray will have a close, if not exclusive, referral relationship with the new firm being created.

“There has been a lot of talk recently about the need for law firms to innovate and do work cheaper and faster,” Malt said. “If you step back and look at this from 20,000 feet, Joe and I had to find a way to serve clients with the proper overhead, cost structure and leverage ratios. And we had to look at whether [patent prosecution] belonged in the environment of a large firm.”

Guiliano, a former Fish & Neave lawyer, said he is still working out the “size and constituency” of his new firm, which will initially have offices in New York and Silicon Valley. He estimated the number of lawyers and employees—such as patent agents and other technical staffers—expected to join the new firm at about 100. Guiliano acknowledged that not everyone affected by the spin-off might make the move to the new firm. Some individuals whose work touches on certain areas of IP that Ropes & Gray will continue to handle could stay at the firm, he said, while others will simply choose to leave and practice somewhere elsewhere.

Anita Varma, co-head of Ropes & Gray’s IP rights group in Boston, is among those leaving the firm, Guiliano said. Her biography page was recently taken down from Ropes & Gray’s website and Guiliano is now listed as the group’s sole leader. Varma, who is headed to White & Case, did not respond to a request for comment.

The American Lawyer reported in January on Paul, Weiss, Rifkind, Wharton & Garrison’s hire of longtime Ropes & Gray IP litigation partner J. Steven Baughman in Washington, D.C., where he headed the firm’s post-grant U.S. Patent and Trademark Office invalidity challenge and trial practice. Paul Weiss also recently added Ropes & Gray counsel Megan Raymond to work with Baughman as counsel for its IP litigation group in the nation’s capital.

McDermott Will & Emery has added three IP litigation partners from Ropes & Gray—Ian Brooks, Nicole Jantzi and Paul Schoenhard—this year in Washington, D.C., where Jones Day recruited Ropes & Gray IP litigation partner Christopher Harnett in January. Malt said that the increased lateral activity from the firm’s IP group was due to the upcoming restructuring at Ropes & Gray, as well as other changes that have affected the wider IP field.

As noted by The American Lawyer last month, the creation five years ago of the Patent Trial and Appeal Board—a specialty for the recently departed Baughman—moved patent disputes into a less costly litigation venue. The creation of PTAB practices tightened competition in the IP arena, even as larger, general practice firms moved into the area, many by acquiring boutiques.

“Looking at IP more broadly, PTAB definitely moved litigation to quicker, more efficient forums, and a [U.S.] Supreme Court ruling reduced some IP litigation,” said Malt (pictured right). “I think you see a lot of big firms now realizing that they’re a bit oversized in IP.”

The Supreme Court’s 2014 ruling in Alice v. CLS Bank International narrowed and clarified the scope of what can be considered patentable subject matter, which some have argued makes patent prosecution all the more important for clients. (Patent prosecution involves the act of reviewing patent applications and obtaining patents from the USPTO.)

When asked what Ropes & Gray’s decision to spin-off its patent prosecution group might mean for others in his field, Guiliano said that every firm must analyze its own situation, rather than use his group’s move to proclaim the new rise—or disappearance—of IP boutiques.

“We realized that there were certain trends that happened in Big Law, but now there’s almost a next-level type of analysis going on,” Guiliano said. “For us, it just made sense to work at a smaller firm.”

Malt, a corporate lawyer and longtime adviser to private equity executive and former Republican presidential candidate Mitt Romney, said that Ropes & Gray chief operating officer Terry Thompson and other firm staffers will work with Guiliano and his team on the logisticis of setting up a new firm, such as finding new office space and handling docketing and benefits issues.

Thompson took over as COO last year from Hugh Simons, a longtime Ropes & Gray executive who now runs his own legal consultancy and has written for The American Lawyer about law firm management matters. Malt said that Ropes & Gray handled internally the decision to separate its patent prosecution group. The firm is committed to the rest of its IP group.

“For many years, the Ropes & Gray name has been synonymous with an elite IP practice, and our lawyers and professionals will continue working hard to maintain that legacy,” said a statement by James Batchelder, a Silicon Valley-based IP litigation partner at the firm and member of Ropes & Gray’s policy committee.

Ropes & Gray has invested in other practice areas this year. The American Lawyer reported in February on the firm’s addition of Paul Scrivano, global head of M&A and private equity at O’Melveny & Myers, as a partner and head of its global M&A group in New York. Ropes & Gray also welcomed tax partner James Brown in New York from Willkie Farr & Gallagher, where he co-chaired his former firm’s tax department.

CORRECTION: 3/8/17, 8:57 a.m. EST. An initial version of this story misspelled Joseph Guiliano’s last name.

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