Joshua B. Goldberg

PROTECTING YOUR BEST ASSETS

Joshua B. Goldberg
Partner
Nath, Goldberg & Meyer

Nath, Goldberg & Meyer helps businesses around the world protect their patents and intellectual property (IP). In the following interview, partner Joshua Goldberg discusses the best way to operate on a global scale, and the benefits of focusing on the client’s bottom line.

Q: What sets Nath, Goldberg & Meyer apart from other firms in the IP and patent space?

A: Most U.S. IP law firms have a strong emphasis on either a domestic or an international client base. In contrast, at NGM, we have worked very hard over the years to maintain a 50-50 split in our working coming from domestic clients and international clients.

Second, our focus here at NGM is on how we can help our clients’ businesses and bottom lines. We want to be partners with our clients, spending the extra time at our own expense to learn what the client’s business goals are and coming up with a viable solution for how we can best help the client achieve these goals. We routinely meet with our clients, again at our expense, to determine how the business is going, what new projects they have underway, and find out how we can provide them with the best service possible.

Another point of emphasis for our firm is that we believe in being absolutely responsive to our clients. Over the years, we have talked with numerous clients and prospective clients who have been frustrated by the lack of information and communication they receive from their current firms. We have given our commitment to all of our clients that we will respond to any communications from them within 24 hours at the most, and that we will inform them of any actions received from the U.S. Patent and Trademark Office (USPTO) within days of our receipt.

Lastly, our combined years of experience and proximity to the USPTO have permitted us to reduce the length of patent application prosecution for our clients by one office action per application, on average, by conducting examiner interviews as often as possible.

Q: The firm does business in scores of different countries, all with different IP and patent protections. What kinds of challenges do you encounter with your international business, and how do you deal with them?

A: There are numerous challenges in managing our international business relationships and work being undertaken, from the obvious issues such as the difficulty of communicating across numerous time zones, to the more specialized such as knowing what sorts of technologies may be considered patentable subject matter in which countries. We tend to find the easiest and best ways for dealing with all of these issues and challenges are to work only with colleagues we know well and trust, and to keep the lines of communication open as much as possible. It will never stop surprising me how many issues and deep disagreements can be resolved with a simple telephone call and discussion.

Q: What advice do you have for other leaders? 

A: More than anything else, I would advise other leaders to invest the time and effort into developing a strategy and plan to know where they, and their companies, are going. After all, if you don’t know where you’re going, anywhere you end up will be fine.

Q: Founder Gary Nath is going to retire at the end of 2016. What does that mean for the firm’s future?

A: Since founding the firm in 1993, Gary Nath has worked tirelessly to not only develop and manage the business, but also to train the people working for him to be the best possible patent attorneys and business people possible. My partner Jerry Meyer and I have been working with Gary for 18 and 19 years, respectively, and have been direct beneficiaries of his hands-on training and personal attention. In addition, we had the foresight and fortune to implement a long-term transition plan, where our current contacts and clients have all been informed and prepared for the shift. This has left us well positioned to manage the business once Gary moves on from the day-to-day operation of the firm. All told, the future is as bright as can be.

Q: Why does NGM maintain a 50-50 split between domestic and international clients?

A: At one point in time, NGM was overly reliant on one client as the principal source of firm business. Recognizing how unhealthy this was for the firm, we spent a lot of time developing various strategies to diversify our client base and make us less reliant on any one client. The strategy we eventually arrived at and implemented was to focus not only on diversifying our client base, but also on diversifying the location of our client base, to achieve a 50-50 split between domestic and international clients.

This strategy achieved, and continues to achieve, several main goals. First, it accomplished our primary objective of diversifying our client base such that we are not beholden to any one client and can weather any difficulties that may arise with any client for any reason. Second, by having penetration into so many different markets, if one or several economies are in trouble, we have clients in other geographic areas we can rely on to help us weather the storm. Third, our many years of pursuing this strategy have provided us with an extensive associate network we can rely on in a multitude of countries around the world to quickly resolve any issues our clients encounter by working with colleagues we know and trust. And finally, not only is this split in our business a critical factor distinguishing our business from our competitors, but our exposure to the various laws and systems around the world has given us the opportunity to become better, more well-rounded attorneys.

Q: In the late 1990s, NGM was instrumental in a major licensing deal. How did that come about, and what did it mean for the firm?

A: One of the firm’s most important clients at the time was a Maryland-based company called Guilford Pharmaceuticals. We had represented Guilford for many years and had built up extensive patent portfolios surrounding some of their key technologies. When a Parkinson’s disease treatment advanced to a sufficient stage in their pipeline, we were asked to assist the company in finding a partner to continue and complete the research and development of the product.

Over the course of about one year, we entertained numerous questions, shared information and negotiated an exclusive licensing agreement between Guilford and numerous large, multi-national pharmaceutical companies, each of whom had different aspects of the deal they were interested in. After much discussion, Guilford reached an agreement with Amgen, Inc. for what was at the time the largest on-paper exclusive license agreement for a pharmaceutical product. This exercise not only proved the firm’s approach works in helping our clients build company value around their technologies, but our work and firm size only increased after the successful completion of the agreement, as we were able to help Amgen work through many of the issues in the project we were already familiar with due to our years of experience.

Q: How did you end up in patent law? What interested you about it?

A: My initial education and training was as a chemical engineer. I spent two years working at a small drug formulation development company in St. Louis, working with all of the equipment and materials to develop solutions and compositions that would permit various drugs to not only safely and easily be taken by various patients, but also to ensure that the drug would be delivered in the body at a time and location that would maximize its effectiveness.

After doing this work for some time, I came to the conclusion that I did not want to be a bench chemist for the rest of my career. In reviewing the other options available to me, I remembered one of my professors at Washington University talking to our class about his friend who was a patent lawyer and loved his job because he was always working on new and exciting technologies without having to do all the involved research himself. This was of great interest to me, as I wanted to stay involved with the sciences and put my chemical engineering degree to use. So I made the decision to move to Washington, DC to attend the George Washington University Law School in hopes of becoming a patent lawyer. I was hired as a summer intern during the summer after my first year of law school at my current firm, and have loved what I do so much that I have never seen the need to move on since then.

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