Andrew Berks

PROTECTING YOUR MOST VALUABLE BUSINESS ASSET

Andrew Berks
Patent and IP Attorney
Cittone & Chinta LLP

As an attorney in the fields of patent and intellectual-property law, Andrew Berks protects perhaps the most precious resource your business has. His work for clients is informed by a 14-year career in the pharmaceutical industry and a deep grounding in the regulatory issues shaping the protection of patents and intellectual property.

Q: Cittone & Chinta works in the intellectual-property space. What are the main issues facing your clients?

A: It’s really impossible to generalize, because I work with a range of clients, who include startup businesses and established companies.

For the startups, funding is their biggest problem. In technology areas that will need patents to get funding, funding for legal work (including patents) is a problem, because government grants cannot be used to pay for legal expenses. So startups that otherwise qualify for this kind of money need to find friends and family money to get critical legal functions taken care of. I tell them a rock-bottom minimum of $10,000 is necessary, but projects that can find $20,000 or $30,0000 will be in a lot better shape. The successful startups I’ve come in contact with that are three or four years old all had this kind of funding available.

For my established business clients, I’m not really involved in their business strategy issues. But since I’m in the patent business, I’ll give my patent perspective that affects established companies. The problems with patents these days is excessive delays at the patent office; spotty examination quality; meddling by the Supreme Court that has muddied several aspects of patent law; and concerns over inter partes review (and other post-grant procedures new in the America Invents Act) that are having a big impact in certain technology areas. The sum of these various factors is generally recognized in the patent bar as having weakened patents in recent years. There are current proposals in Congress that also threaten the power of patents to protect business investment. This is potentially a dangerous trend that could weaken U.S. competitiveness in international markets if allowed to continue unchecked.

Q: What attracted you to the practice of intellectual-property law?

A: I was a scientist in the pharma industry and was looking for a career upgrade, and I felt that IP law was a good fit for my talents. I’m happy with that choice and love being a lawyer now!

Q: Before going to law school, you spent many years working in the pharmaceutical industry. What lessons did you learn there that you’re still applying today?

A: I still keep up with chemistry and biotech and other areas of technology. I also use the business management skills from that period in my current day-to-day work, advising clients on IP strategy they need for their business.

Q: Being an attorney in a competitive market is a demanding proposition. What do you do to find balance?

A: I take plenty of time off and do a lot of fun things!

Q: Cittone & Chinta is looking to work with some larger clients, including Fortune 500 companies. What are you doing to attract those clients?

A: Our firm is fleshing out its team to be more attractive to larger clients. We are able to tap into a pool of legal talent that is highly experienced, which I believe our potential clients want to see. My general plan is to give superior customer service and listen to and understand our clients’ needs to recruit and retain them.

Also, I’m always in the lookout for venues where I can give presentations to potential clients. I blog fairly actively now, and hope to raise that game to a broader audience. I do my homework also, so when I do make good contacts, I do the research and make the follow-ups, which has resulted in a number of engagements. Finally, I’m working with coaches and mentors who are helping me out.

Q: What advice do you have for other business leaders?

A: My job is to protect intellectual property, so my advice is to stay in contact with IP counsel to make sure the IP is protected. I hate to see business opportunities lost because a client avoided a few thousand dollars on IP expenses.

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