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Patent firm adds new associates to ease caseload

Nicholas Mihalic

Howard Wernow

Legal News Reporter

Published: November 18, 2011

Since President Barack Obama signed the Leahy-Smith America Invents Act into law Sept. 16, intellectual property offices have been running at full steam trying to become privy to, and adjust accordingly, to the changes going into effect.

For a patent law firm in Richfield, Ohio just south of Cleveland, the new law meant that its senior partner was suddenly just as knowledgeable as his two green associates who he recently hired to help with the firm’s extra caseload.

“Everyone was starting from zero,” said Howard Wernow, who was recently hired, along with newly admitted attorney Nicholas Mihalic, by John Gugliotta, a professional engineer, registered patent attorney and senior partner at Patent, Copyright and Trademark Law Group, LCC.

Gugliotta said he and the new associates bring the firm to five attorneys. About 50 percent of their clients make up independent, small inventors. The other half is small- to medium-size businesses.

“Between 2008 and 2010 we lost some attorneys through attrition,” Gugliotta said. “I didn’t replace them. Now the work is back and we’re replacing them.

“Moving forward, it will create a whole new time frame (for prosecuting applications),” he said of the changes to the patent process, some of which have gone into effect immediately and others go into effect 18 months from the date Leahy-Smith was enacted.

With the old system, when he drafted an application on behalf of a client, documented it, and got it to the patent office within 12 months, Gugliotta said, “you would not lose your rights. Now, every minute counts when it comes to drafting that initial application.”

This ‘”first-to-file” versus “first-to-invent,” change is significant, added Mihalic, and it means inventors will be coming to the firm to get their patent filed immediately rather than risk losing their invention.

“I get a lot of joy helping out the new inventors,” Mihalic said. “You get to see all of the technology.” A 2011 graduate of Cleveland-Marshall College of Law in Cleveland, he is conducting patentability searches, writing freedom to operate opinions and drafting applications.

Wernow, who is scheduled to graduate in May 2012 from The University of Akron School of Law, is the firm’s full-time law clerk who like Mihalic, is drafting patent prosecution.

“John also brought me into firm to handle litigation matters,” Wernow added. “Right now we farm out litigation to another law firm in the area. What we’re trying to do is develop another side of the firm to handle in-house litigation.”

Wernow came to Akron from the Jacksonville, Florida area to study intelluctual property after working in the engineering field for a year. Before joining PC&T Law Group, he became skilled in civil litigation by clerking with personal injury firm Aronson and Associates in Fairlawn.

“Processing patent applications, that’s the bread and butter of a patent law firm,” he said. “(But) we want to be the total package for an inventor, to see their idea go from a patent to a total market production, starting with an idea–getting the patents–marketing the patent and enforcing the patents.”

The young associates aren’t taking the present for granted, either.

“We’re really blessed,” Wernow said, “because no one else in our class is getting jobs, but this opportunity is potentially limitless.”