Intellectual property lawyers operate in the ‘gray space’


To practice law is to work in a field where the rules are in a state of constant change. That may be even truer in intellectual property law than any other arm of the legal industry.

With intellectual property, not only do laws change, but also the industry and technologies being used are continually shifting and improving.

“Particularly in patent law,” said Chad Kleinheksel, patent attorney and chair of Warner Norcross & Judd’s Technology and Intellectual Property Group.

“It’s always about that piece of it. They’re making improvements to products that, in many cases, have been around for a long time, trying to make them better, easier to use and sell. So to practice IP law is very dynamic because all of those things are constantly changing,” Kleinheksel said.

As far as the law is concerned, there are several major changes IP lawyers are monitoring.

On May 11, President Barack Obama signed the Defend Trade Secrets Act into law, designed to create a federal cause of action for asserting trade secret rights. Kleinheksel said since the law went into effect, he has been working with clients to update employee agreements to include language that would fall under the new law.

Another hot topic among IP lawyers, he said, are the laws relating to patent-eligible subject matter. A recent ruling from the U.S. Supreme Court opined that an invention must be “significantly more” than a law of nature, a natural phenomenon or an abstract idea in order to be patentable.

However, those terms have not been clearly defined, leaving quite a bit of gray space, especially when it comes to one of West Michigan’s fastest-growing industries: software.

“Patents to software — often called business method patents — have been in a state of flux since I started practicing law 13 years ago,” Kleinheksel said. “So what we’ve moved into is that a patent has to be more than an abstract idea. But there isn’t a whole lot of guidance from the courts as to what that is.”

In addition to keeping up with all the latest changes to law, IP attorneys have to be up-to-date on the latest technologies. Patent lawyers are required to have a degree in science and pass a separate bar exam to practice law.

An up-and-coming issue in intellectual property law is the advent of social media. Kleinheksel said from a patent perspective, he advises his clients to be very careful about what they post and when — because once an idea is publicly disclosed, the clock starts to tick.

In the U.S., an inventor has one year to file a patent after a project is publicly shared. Filing after that would result in a denial of application.

“It’s so easy to tweet out a new idea that you had, or post online pictures of your prototype, and that could have serious implications on your ability to later file for patent rights,” he said.

Kleinheksel said much of his job is educating his clients on the latest laws but also educating himself. He spends a great deal of time reading about industries and talking to inventors about their projects to stay on top of everything.

Working in West Michigan makes that much easier, as Kleinheksel has opportunities to personally meet with inventors at each step of the process.

“I think we have a really creative workforce in West Michigan,” he said. “You can have areas that are very industrial and actually a lot of assembly, for instance. But we don’t have just assembly; we have R&D departments — those people are here, and they’re right down the street.”

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