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IP Firm Goes Upstream Against The Current

In the mid-1990s, the law firm Cantor Colburn LLP was looking for a way to grow. It was the beginning of the Internet boom and investors were throwing money at any startup company with a “.com” after their name. Law firms, quite naturally, were following the money.

But as co-managing partner Phil Colburn puts it, the firms that were chasing startups were leaving their traditional client base behind.

“The atmosphere was ‘why chase the IBMs and GEs of the world when there is money to be made in startups?’” Colburn recalled. “They just weren’t getting a lot of attention and it gave us an opportunity to get our foot in the door and build up a portfolio of clients.”

By not chasing dotcom dollars and focusing on large, established multinationals, Hartford-based Cantor Colburn has become a powerhouse among intellectual property firms. A boutique shop that does nothing but IP, the 90-member firm ranks 13th on a list of the top patent firms ranked by the publication Intellectual Property Today.

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It’s the third consecutive year that Cantor Colburn has been in the top 20 firms for patents issued. The firm was issued 1,330 utility patents and 100 design patents by the U.S. Patent and Trademark Office in 2009, representing an 18 percent increase over the prior year.

Cantor Colburn LLP was also recognized by IP Law & Business for being among the firms with “most mentions” for protecting the IP of top 100 US companies.

Carl Horton, General Electric Co.’s chief IP counsel, said GE spends “tens of millions” of dollars on IP-related matters, hiring upwards of “40-something” law firms to do its IP work.

Cantor Colburn, he said, has helped GE get products to market faster in a very crowded field; Horton said it’s one of the reasons why Cantor Colburn is one of the top three firms in terms of the total work GE sends its way.

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“I can hire a lawyer anywhere, anytime, but we feel we get a higher value add” with Cantor Colburn, Horton said. “They take time to understand our business. When they work for us, they specialize in our business. They play a more active role in the process than other firms.”

In a world where strategy means everything, Cantor Colburn has taken its strategy to heart. It’s grown strategically, opening offices where clients have said there is a need: Detroit in 2002, Atlanta in 2005 and Washington, D.C. in 2007. It hires strategically: almost all of its attorneys have at least a bachelor’s degree in a scientific field, including metallurgy, electrical engineering, chemistry and biology, while 10 percent of its attorneys hold PhDs in science, including J. Michael Buchanan (PhD in chemistry from University of California — Berkeley) and Leslie-Anne Maxwell (PhD in biophysical chemistry from Yale University).

Cantor Colburn also is gaining traction as a trademark law firm, ranking 41st among the top 100 trademark firms in the country, according to a list published by the Trademark Insider Report.

While Cantor Colburn serves small-and midsize-businesses and universities, Fortune 50 companies comprise the bulk of its client base.

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When the economy gets slower, companies face increased pressure to monetize their portfolios. In the past few years, Cantor Colburn has seen renewed interest in litigation and licensing.

“I haven’t seen client needs change all that much. They are now, as before, looking for quality, responsive work,” Colburn said. “All of these well-established companies are sensitive to cost and looking to control cost, and we have to be price effective in order to compete.”

Litigation partner Steven Coyle said the firm focuses on staffing its litigation cases appropriately. Most litigation cases, he said, can be adequately handled by a partner, two associates and a paralegal. If a case focuses on a certain type of technology — telecommunications or chemistry, for example — a partner with that background may be called in to assist on scientific aspects.

“We view our clients as partners in litigation, and we use their business goals and fit a litigation strategy to it,” Coyle said. “Sometimes an early settlement works better even if the case is larger if it fits in with an overall business strategy.”

How the firm grows in the coming years depends entirely on how its clients grow, said co-managing partner Mike Cantor. The need to provide a high level of service at highly competitive rates is one thing he doesn’t anticipate ever changing.

Because of its arena and the potential for conflicts of interest to arise, the firm can’t take on more than one client in any particular niche. Because of this, as well as its size, client and geographic diversity is paramount.

One area of growth is Korea, which has become a huge business center for Cantor Colburn. Korean clients didn’t necessarily understand the U.S. patent system, so the firm has added two Korean-speaking attorneys, a paralegal and a patent agent to its roster.

“What’s become more important, and I don’t ever see this changing, is that how we live in the global economy is driven by innovation. The number one asset a company needs to acquire is the IP — it’s the new currency in the global economy,” Cantor said. For law firms to remain competitive in this environment, “the hourly billing of huge sums doesn’t cut it anymore. Companies like to get bang for their buck, and now it’s more than a like, it’s a need.”

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