When an entrepreneur first walks into the office of an intellectual property lawyer, he’s usually in trouble, according to Michael D. Rounds with Brownstein Hyatt Farber Schreck, LLC.
“It’s not uncommon depending on the industry, for a startup to bring a new product to market and be faced with a patent infringement lawsuit,” said Rounds, who has more than 27 years of law practice focused on intellectual property litigation. “You don’t have to copy anything to be dealing with infringement. If you bring a product to market without doing a patent search, you may find you’ve infringed on someone else’s patent.”
One of the basic functions of intellectual property law firms is a comprehensive patent search, which results in a Freedom to Operate opinion informing the client whether or not its product infringes on another company’s patent.
“For a startup company with a limited budget, lawyers can be expensive,” Rounds said.
“But the truth is, it’s going to be a lot more expensive down the road if they don’t budget for (legal) opinions from the outset. Lawsuits cost 20 times more than a Freedom to Operate opinion.”
Intellectual property — which includes patents, trademarks, copyrights, trade secrets, data and business methods — is becoming a hot commodity as Reno entrepreneurs create startups to turn their ideas into marketable products.
Rounds said his legal specialty has grown in recent years, partly spurred on by the economic crash that resulted in extensive layoffs in 2008-2010.
“A lot of very talented people started up their own companies after they were let go,” he said.
Then Tesla announced it would locate its gigafactory in the Tahoe-Reno Industrial Center and an influx of data centers and technology companies followed.
“I think technology is going to continue to come to this region in a way that hasn’t happened in the past,” he said. “There are a lot more entrepreneurs in this area that are doing startup work then there has been in the past.”
Startups need to protect their products early on, but not too early.
“It’s a difficult balance,” Rounds said. “I can’t help a client who comes in and has a general concept of what they want to do. But, definitely at the prototype stage they need to be talking to lawyers.”
Intellectual property protection is a two-way mirror. Entrepreneurs need to both protect their own intellectual assets and avoid encroaching on another company’s protected.
“Any startup company needs to think from the very outset about intellectual property. That should be from both sides of the fence,” Rounds said, “not only protecting their assets, trademark, patent, copyright and protecting trade secrets, but ensuring they are not infringing on (intellectual property of other companies) that predated their business.”
Increases in the need for legal counseling for intellectual property has led to Brownstein gearing up to meet those needs.
Sept. 1 it acquired Watson Rounds, the 20-year-old firm co-founded by Rounds, who stayed on as a shareholder after the merger.
Brownstein is based in Colorado and has offices throughout the West and in Washington, D.C.
Its Reno office in the former home of Watson Rounds houses eight full-time lawyers, and 10 support staff.
At the time of the acquisition, Rounds commented in a written statement, “As a niche firm focused on intellectual property litigation and counseling, we (Watson Rounds) were only interested in joining a firm that had a proven interest in IP as well as the talent and resources to back it up. Brownstein is one of the only large Western law firms with a clearly defined market niche in intellectual property law, and its strategic vision is clear.”
Not much has changed for Rounds since the transaction.
“I think the only thing that has changed for the most part is the increased opportunities we have with Brownstein,” Rounds said Wednesday. “What I do on a daily basis, literally, that stays same.”
As Rounds continues his practice under a new firm name, he’s glad to be helping Reno’s intellectual assets grow.
“This is an exciting time in the Reno-Tahoe region,” he said. “We are looking forward to continued growth, with (local) entrepreneurs and people coming here.”