By MATT CHANDLER
Buffalo Law Journal

Though the economic skies may be gray, at least one legal practice group is seeing plenty of green.

Intellectual property law, including trademark and patent applications, is a bustling practice area in Western New York and one that appears to be largely insulated from rising unemployment and falling consumer confidence, according to several local IP attorneys

"We really haven't seen much of a difference in business," says Doug Smith, an IP attorney with Kloss Stenger & LoTempio. "Most of our clients are smaller solo inventors, and we've been seeing a pretty steady stream of those."

Trademark attorney Ellen Simpson echoed Smith's observations, calling business at Simpson & Simpson PLLC "as busy as ever." She said her firm, which generates business internationally, never saw the downturn that others experienced.

"Some clients were cutting back a little bit just to see what was happening, but for the most part our practice stayed the same and even increased a little," she said.

Simpson credits her firm's "broad client base" for helping to survive the economic downturn.

"If one sector of the economy was down, we had clients in other sectors globally who were doing well," Simpson said.

Driven in part by the faltering economy and high unemployment, Smith and Simpson both say they saw solo inventors coming in higher numbers seeking patent protection for their inventions.

"People want to make money, and for the solo inventor, if they think they have that really good idea and they want to move forward and earn that extra income, they are going to go for it," Smith said. "They are trying to realize their dream."

Stuart Shapiro, of Cohen Lombardo PC, said trademark business at his firm has risen 50 percent in the last year. He attributes the increase to clients' concerns about protecting their Internet identities.

"Businesses are learning that trademark trumps domain name," he said. "Clients can spend considerable time, effort and resources to build up a Web site only to find out someone has trademarked a name that gives them preference over the person using the URL."

Despite the huge jump in business, Shapiro said he still feels like the economy is keeping business down from where it could be.

"We see more people coming to us and wanting to hold off on the trademark to save some money, but with the World Wide Web it is so easy to lose your work to someone else without that trademark," he said.

Competitive practice area

Though the firms we spoke with all reported business is strong, they said there is tough competition to earn and maintain clients, fueled in part by the global nature of the practice group. Smith said at his firm they have started an IP blog (www.lotempiolaw.com) as a means to educate themselves as well as provide value to their clients.

"We try to pick topics that are relevant and up to date in the field, and then we educate ourselves so that we can write about it and help other people," he said. "It is basically the patent community educating itself."

Simpson said the majority of her firm's business comes from referrals, and when competition gets tough, losing a client can mean not only losing that business, but any referral business.

"It used to be that there was so much work it really didn't matter for patent and trademark counsel, but now it is getting much more competitive," she said. "But I feel as long as you are doing good work, your clients are going to stay with you."

Cost-cutting clients

With a trend toward self-publishing by authors, musicians and artists, has the IP field taken a hit?

Ranjana Kadle, who heads the intellectual property practice group at Hodgson Russ LLP, said her firm works primarily with larger companies and universities on patent applications.

"We haven't seen that with the clients we deal with," she said. "Anybody can file pro se on their own patent application, but we haven't seen that impact our work."

Part of the reason may be the complexities involved with filing a patent or trademark application.

"In the trademark area, where I practice, the U.S. Patent and Trademark Office has put most of the forms that you would use to apply for trademark registration online. They make it look like all you have to do is fill out some forms and you can do it yourself," Simpson said. "What we find happens, if the examining attorney finds a problem with it, the person who filed the application will get this report back and not know what to do with it. People will come to us and want us to fix the issues, but the problem is you can't always fix what an individual has done."

That, she said, can create headaches for the applicant and may leave them with no option but to start the application process over.

Another challenge facing IP attorneys is coming from the bench. Smith pointed to the Bilski case, a matter involving an attempt to patent a business method that was challenged all the way to the Supreme Court last year. He said this has caused attorneys to take a wait-and-see approach to how they handle patent applications. Kadle agreed, saying IP attorneys need to analyze patent applications more carefully.

"Some recent cases are sort of directing us to be more cognitive of what really is the invention and how broadly can we claim it," she said. "More and more, from those court cases, it seems the patent office is not willing to grant broad patents."