Q & A with Paul C. Craane

Paul C. Craane, a partner at Marshall, Gerstein & Borun, has been practicing for about 15 years in intellectual property law, with a specialization in patent law.

What do you find the most interesting about your practice?

The variety.  I have the privilege to work with a large number of clients who market a wide range of products.  On any given day, I may provide legal advice on medical devices, clean energy processes and green technologies, bulk material conveyor systems, or control system software.  Additionally, while my practice focuses mainly on patent prosecution and client counseling, I still work and advise on litigation matters.  I am fortunate to be a partner at a firm that is just as diverse as my docket, where your neighbors may have a doctorate in biochemistry or microbiology on the one hand and an international trademark practice on the other.

What makes a good lawyer?

Balance.  A good lawyer knows that the client is looking for a balanced solution, one that assesses the risks, understands the benefits or advantages, and weighs the options in reaching a sound strategy.  While the client may trust you to give them your single best recommendation, implicit in that trust is the belief that you have carried out a complete analysis.  A great lawyer recognizes that the need for balance extends beyond the particular matter, permeating the entire practice.

What is the biggest legal news right now, and what is its impact?

The U.S. Supreme Court received a lot of attention this summer with the confirmation and swearing in of Judge Sotomayor to the U.S. Supreme Court.  The U.S. Supreme Court has a relevance that resonates throughout the U.S. legal system, even in the patent community.  In the last five to 10 years, the U.S. Supreme Court has taken up a significant number of legal issues relating to the validity of patents and their enforcement in the courts.

Coincidentally, the Supreme Court is presently looking to address a patent case with potentially far-reaching implications.  If the number of amicus curiae briefs filed is any indicator of the importance of this case, then Bilski v. Doll (or Bilski, for short) is poised to be one of the most important decisions for quite some time, with more than 40 briefs having been filed.  In a service-oriented economy, a shift in the standards for determining the patentability of so-called business methods could significantly affect the ability of Internet companies to obtain funding at a time where investment dollars are often difficult to secure.  Bilski has also been extended to biotechnology patents, so the pharma and biotech groups are also watching this decision closely.

On the other hand, the “big” international legal news getting less press in the U.S. is the proposed enforcement of compulsory licensing schemes in many of the new economic powers, including the BRIC countries (Brazil, Russia, India and China).

A compulsory licensing scheme permits the government to sanction the licensing of patented technology without obtaining the patent owner’s permission.  While these schemes typically articulate a limited set of circumstances in which the government could wield this power, the exceptions have the potential to swallow the rule.  Further, it has been proposed that these compulsory licenses should be used aggressively as to patents concerning clean energy and green technology, where the technology is most likely to originate outside of these countries and require significant investment.

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