The Indiana Lawyer

Don’t let intellectual property be an after-pandemic thought

December 10, 2020

Whether next month, next year, or even beyond, at some point, the COVID-19 pandemic will begin to end. The world may look and feel a bit different, but the intangible intellectual property system will still be here, and we can take steps now to better position you (or your clients) for what comes next.

File now to protect new business

Before we look too far ahead, it is important to take inventory of what already happened. The pandemic forced widespread changes in a matter of weeks to how businesses deliver goods and services. Did your intellectual property protection strategy adapt as quickly? (I didn’t think so.) The obvious example is virtual services — things like telemedicine, educational videoconferences, and livestreamed entertainment. But there is also an explosion in delivery of physical goods and alternate purchasing methods. Do your trademark registrations cover how you are doing business in this new world? (I didn’t think so.) If you developed new technology to deliver your services, maybe you need to look into patent protection as well. You can abandon cases later. You can’t get retroactive filing dates.

Or maybe you now sell (or give away) masks? Did you already have trademark protection for masks last January? (I didn’t think so.) At the beginning of the year, the USPTO would have issued you a trademark registration on “protection masks” in International Class 9. Now, faced with a flood of “mask” applications, the USPTO requires applicants to specify things like “protective face masks for the prevention of accident or injury” in Class 9 (safety equipment), “sanitary masks for protection against viral infection” in Class 10 (medical devices), or “fashion masks” or “knit face masks being headwear” in Class 25 (clothing). The list of acceptable “mask” descriptions has been updated five times since June. Thanks, COVID. Masks are a new accessory that will outlive the pandemic in some capacity. They are a new promotional item. To quote my favorite movie, “It’s just they’re terribly comfortable; I think everyone will be wearing them in the future.” (“The Princess Bride,” 1987.)

Reevaluate enforcement and usage decisions

You are not the only one to adapt in the last several months. The virtual, streaming world presents an array of potentially confusing trademark uses, public performances and copying of protected works, and distributed infringement problems. While these online infringement opportunities existed in the before times, the extent of their use and adoption may warrant reevaluating whether to take action to enforce your rights. And search engines, social media, and digital archiving can make it easier to uncover these activities.

On the other hand, those same technologies make it easier for you to be found. In the rush to adapt this spring, intellectual property clearance likely got overlooked, and your operations may not line up exactly with your pre-pandemic practices. Some of your business model changes will still be here after the pandemic (as will the Internet’s memory), so this is a great time to check that your activities are (still) permissible.

Update (or create) IP systems to look forward

If your business has an office, it probably looks a lot less busy these days. But the work is still somewhere, buried in brains in employees’ basements. That brilliant inventor with the terrible communication skills — you can’t even corner him in the hallway to extract a progress report! There are reports that many people enjoy working remotely (my hand is raised) and that businesses are looking to shed expensive office space. To make this work long term, you will of course need secure technology infrastructure. But from an IP perspective, you need systems.

One of those systems is a way to get your employees to actually use the technology appropriately. You will want policies to govern use of company equipment and data and employees’ personal devices, and communications and training to ensure compliance with said policies. If the VPN or other remote systems are too slow, users will be tempted to do things on local equipment and valuable competitive information may be left up to the vagaries of user’s personal habits on operating system updates, home antivirus software, and wireless router configurations. Or users turn to cloud services without authorization and with untold number of additional personal devices synchronized and backed-up in third-party server facilities. So a key first step is driving use of information to your controlled technology environment.

Assuming you have control of your information, systems can help turn it into assets. Creative insights are often developed in informal interactions, and a lone employee at his kitchen sink may not be a good substitute for the office water cooler here. So you need to make a deliberate effort to mine the workforce for intellectual property — whether it be sales leads, marketing angles, or technological advances — in a way that works for your organization. That may be something like a recurring team meeting to review IP or assigning this task to a coordinator who connects with sources on an ad hoc basis. Proactive steps will go a long way to protecting your ideas, but you will need to do this in moderation.

Generating “intellectual” property requires good ideas, and an endless parade of virtual meetings is even more draining than a sterile conference room at the office.

Of course, an IP attorney can help you get started on all these processes.•

As published in The Indiana Lawyer.

New associates: Step one — develop your skills

November 2, 2020

Many of you recently passed the state bar exam and were sworn in to practice law within the last couple of months. Now it is time to start practicing law, implement what you learned in law school and begin to learn from your colleagues how to be a lawyer in the real world. Some of you may be looking for advice on how to proceed following your law school experience. I was in your shoes one year ago and will now impart some of the “knowledge” I have learned in my first year as a lawyer. It is up to you to decide if what I have learned is helpful to you or if I am full of it.

Develop a solid foundation

It is tempting to want to hit the ground running. Many lawyers want to try the biggest cases and to leave their mark on the profession. However, in order to do so, you need to develop a solid foundation of skills. In every area of the law, there are steps you must take to develop those skills. My advice is to learn what they are and become proficient in each no matter how rudimentary. Learn how to use a calendar, how to file a document with the court, how best to communicate with partners and clients, and how to work well with others in your firm including the paralegals, staff and assistants. Do not shy away from difficult work or hide from a partner with a reputation for being tough to work for. If there are partners at your firm willing to teach you, be grateful and learn as much as you can from their experiences. I believe the best way for anyone to learn is to do — make sure to gather as much work as possible. Working on a variety of matters will provide you with real-world legal experience and exposure to clients, helping you build your client service skills.

To read the full article, visit The Indiana Lawyer


What I Learned In My 7 Months of Practice

May 27, 2020

At the time I sit down to write this article, I have been a practicing attorney for a whole seven months. I have learned a lot in this time and want to share some tips that have been helpful to me. Do I recommend you at least consider them? Sure, but as with most everything in life, everyone needs to decide what works best for them. So without further ado, here are my top tips for new attorneys just starting out.

Develop your craft

Often, attorneys want to hit the ground running right out of law school and acquire as many clients as fast as they can. This sometimes includes getting involved in as many groups as you can fit into your schedule. While these are all good things to start developing immediately, the first and most important thing you want to accomplish is becoming a great lawyer. Do not get me wrong, I do not think I have accomplished this in a mere seven months, nor do I think anyone can; the learning curve is just too high. However, it is important to start developing the skills and habits necessary to develop your craft. If you work to obtain the largest client base possible before you actually know what you are doing, you are doing a disservice to your clients and yourself, and you probably won’t have any repeat clients once they figure out you aren’t a great lawyer yet.

There are several things you can do to help develop your skills:

To read the full article, visit The Indiana Lawyer

Thomas Q. Henry Honored with Leadership in Law Award from Indiana Lawyer

April 29, 2020

The law firm of Woodard, Emhardt, Henry, Reeves & Wagner, LLP is proud to announce that Thomas Q. Henry was chosen as a Distinguished Barrister by The Indiana Lawyer as part of its 2020 Leadership in Law Awards.

The Indiana Lawyer annually recognizes Indiana attorneys who have demonstrated a commitment to their profession, the clients they serve, and to the community by presenting Distinguished Barrister award.

As a senior partner with the Firm, Mr. Henry concentrates his practice on the strategic development and management of IP portfolios with special emphasis on providing business-focused legal advice. He assists clients in evaluating IP coverage, protecting core IP assets, handling Hatch-Waxman cases, domestic and international patent prosecution, and preparing infringement, non-infringement, freedom to operate, and validity opinions.

Mr. Henry has served as President of the Indianapolis Bar Association and as a member of the Board of Directors of the Indiana State Bar Association. He served on the Board of the Indiana Bar Foundation and was as an Adjunct Professor at the Indiana University Robert H. McKinney School of Law, teaching both Intellectual Property Law and Patent Law to more than 1,000 students over a 20+ year span. He was also Chair of the Indianapolis School of Law Alumni Association, and recipient of the school’s Distinguished Alumni Award. Mr. Henry has also served on multiple community boards and held several leadership positions with nonprofit organizations including Chairman of the Board of Directors of Make-A-Wish Foundation of Indiana, and of the American Pianists Association, and on the Board of Young Audiences of Indiana. He also served as a member of the Board of Directors of the Indianapolis Zoological Society, Indiana Repertory Theater and Indianapolis Symphony Orchestra.