Intellectual property law practices grow with Iowa’s biotech industry
Nearly 15 years ago, Pioneer Hi-Bred International Inc. filed just two patent applications and was issued one patent during the entire year. By contrast, in 2004 the Johnston-based multinational seed company filed for more than 150 patents and was issued 137.
Pioneer’s dramatic growth in patent activity underscores the pace throughout the biotechnology community as companies have increasingly recognized the importance of protecting intellectual property, which in most cases represents one of their most valuable assets.
The increased activity is mirrored within many Central Iowa law firms, particularly among large general practices and smaller, “boutique” firms that specialize in intellectual property law.
One such IP boutique firm, McKee, Voorhees and Sease in Des Moines, has added about eight attorneys within the past five years, growing to 19 lawyers who each specialize in some aspect of patent, trademark or copyright law. The life sciences are among the largest growth areas where intellectual property specialists are needed, said Heidi Nebel, the firm’s managing partner and head of its biotechnology group.
“In 1990 our firm had one (attorney with a) life sciences/chemistry background,” said Nebel, whose undergraduate degree is in biology. “Now, about half the attorneys in our firm have life sciences backgrounds they’re using.”
In addition to holding undergraduate or advanced degrees in the sciences before earning their law degree and passing the state bar examination, an attorney must also pass the patent bar before being allowed to practice before the U.S. Patent Office.
The University of Iowa recently hired a full-time intellectual property law professor, which Nebel said is an affirmation of the field’s importance to technology companies. Also, Drake University Law School offers four courses in intellectual property law, all of which are typically taken by students that plan to practice in that specialty, said David Walker, the dean of Drake’s law school.
“We have over the last several years, really going back six or seven, noticed an increasing interest in the field of intellectual property,” Walker said. “An explanation may be our proximity to Iowa State University, from which we draw a lot of students. We also have outstanding attorney-instructors in this area.”
The McKee firm continues to add one or two additional IP attorneys each year, often hiring law students it brings on for summer clerk positions, Nebel said.
Brian Pingel, an attorney with Brown, Winick, Graves, Gross, Baskerville, and Schoenebaum PLC, said Iowa’s law schools “are doing an excellent job of giving us students that can pass the patent bar.” Passing the examination requires learning the the rules and regulations of the patent office, which generally takes about six months after an attorney joins the firm, he said.
Pingel, formerly a principal of his own boutique firm, Pingel and Templer PC, disbanded that firm a year ago and brought seven attorneys with him to form an intellectual property division within the Brown Winick firm.
“Primarily, it was to move to a firm that gave us access to larger clients,” Pingel said. “We had the resources to do a lot of intellectual property work; we were looking to join a firm that had some larger clients working with it.” The move has benefited both the firm and its clients, he said.
“The Brown Winick firm has a very large stable of clients that it wasn’t able to offer IP services to before,” Pingel said. “Now, it’s very much a convenience to our clients to be able to offer that in one stop, and to work in coordination with other attorneys in the firm in other specialties.”
Pioneer, which has five patent attorneys on staff as well as seven patent agents – non-attorneys who are registered to file patents – filed the majority of its patent applications last year for new germplasms, or seed varieties. The remainder of the applications were biotech patents, which protect processes that may take five to 10 years to reach fruition, said Marianne Michel, the company’s intellectual property group leader.
The process of obtaining the patent itself can take from two to five years, and because they are territorial, patents must also be applied for in the countries in which the products will be marketed, Michel said.
“Some of our overflow work goes to the McKee firm,” she said. “Especially our germplasm cases, and some of our biotech cases as well. For this type of work we prefer to have the boutique-type firm. We’ve worked with them for years, and we have a good relationship with them. They do a good job.”
Both large companies such as Pioneer and much smaller Iowa-based biotech start-up companies benefit from the availability of local expertise to intellectual property legal services.
“What you want is people filing for intellectual property in the field that you’re in,” said Dr. Charles Link, founder and president of NewLink Genetics Inc. The Ames-based pharmaceutical company, which is currently developing four different cancer vaccines, also works with the McKee firm.
“Heidi Nebel, for instance, has a degree in biology and had worked in the field,” Link said. “And the fact that the firm is located very close, it’s very easy for her to come over or for us to come over to strategize about how to put together an intellectual portfolio, without having to pay for a trip.”
Mike Upah, director of the Small Business Development Center at ISU, said in most cases, start-up companies that evolve from university research tend to stay with the law firm that handled the original patent work.
“If it’s a faculty person involved in the process, that faculty member probably had a hand in ‘teaching’ that patent attorney about the invention,” Upah said. “And there would also be some efficiencies in sticking with that same attorney. If it’s a new area, you may want to search for an attorney with an expertise in that area, because of their knowledge and background in that area. … If you can stay off of that learning curve, you’re going to save yourself some time, as well as some money.”
For “garage inventors” or entrepreneurs who are just beginning the process of determining whether they have a patentable idea or product, the SBDC can be an initial resource, Upah said.
“There are a lot of myths and fear about (patents),” he said. “Just to have someone to tell you, ‘Here’s what to expect through the process,’ is valuable. We also get a lot of people who call up with what they perceive as patentable inventions, but probably they aren’t. It may be novel, but it’s probably not patentable.”
Upah said he always refers clients to a patent attorney to actually determine whether an idea is patentable, however.
“Even patent attorneys at times may scratch their heads and say, ‘Gee, I don’t know, I’ll have to get back to you,’ he said. “And when you get into areas like enzymes or genes or software, finding someone with that right background is real valuable.
“Most of the patent attorneys I have worked with are very willing to sit down with people and have that 20 minute conversation about why it is or isn’t patentable, many times without the clock even running,” he added. “This is a realm, because the knowledge is limited, where people can be taken advantage of. So having people who are willing to help and not hold their hand out for $100 an hour is very useful.”