Editor: Please describe your background in the nuclear power industry. Also, please tell our readers about your current practice.
Grondahl: My undergraduate degree is in chemical engineering. After graduating from college, I worked as an engineer in nuclear power plants in Connecticut and Arizona, primarily in plant chemistry control. But I was always interested in the law, and after about six years of working in this area, I entered law school. When I first graduated from law school, my practice was in general commercial litigation, but after a few years I got into the patent litigation area, and I then transitioned my practice into the IP/IT area. Now I both litigate patents and trademarks and prosecute them at the Patent & Trademark Office.
Editor: Please describe some of the patents you have obtained for clients relating to cancer treatment.
Grondahl: Our IP/IT group as a whole has clients in a variety of biotechnology areas, including clients working on treatments for cancer, HIV and other types of diseases. For example, I have worked with researchers at Yale on a cancer treatment for cutaneous t-cell lymphoma, and we have obtained several patents in treating that particular type of cancer. Attorneys in our Boston office have obtained patents for treatments of prostate cancer, cervical cancer and other types of cancer for pharmaceutical companies or working with researchers at various educational institutions such as Yale, Harvard and others.
Editor: Why is New England fertile ground for biotech and high-tech businesses?
Grondahl: One big reason is the presence of several outstanding educational institutions in New England, where there is a lot of academic research going on in these areas. Since I started my patent practice, educational institutions have become much more interested in pursuing patents on technologies developed by their professors and researchers, which has given these institutions an added incentive to pursue research in biotechnology and other high technology areas. Having such great educational institutions in the area means that there is direct ongoing research at these institutions and high-quality graduates who often like the New England area and wish to stay here. That in turn has caused many companies to locate research facilities and other offices in New England. For example, Pfizer has a large research location in Groton, Connecticut. Abbott Laboratories and Eisai Pharmaceuticals have offices in Massachusetts - at least in part - as a result of having high-quality researchers and PhD graduates who want to live in the area.
Editor: I suppose you've also got such hospitals as Mass General and Dana-Farber, which are great research hospitals?
Grondahl: Yes, that is absolutely right, and these research hospitals also work with the institutions that produce graduates who wish to practice in these hospitals and the private businesses in the area. In fact, we have worked with professors in these universities who develop patented technologies. The educational institutions may own that intellectual property but they license it back to the professors, who can start businesses using that licensed-backed technology.
Editor: What do you see as the future for nanotechnology both in medicine as well as elsewhere?
Grondahl: Nanotechnology is a very interesting area. There are a number of patents that have been filed recently in nanotechnology, for example in the area of coatings on stents and many other applications. There is a great deal of interest by business in this area, and recently we've been giving seminars or speaking to businesses on nanotechnology and the implications of nanotechnology for the future. For instance, we have product liability, labor and environmental practice groups at the firm that participate in these seminars, addressing the subject of potential liability risks associated with nanotechnology in the workplace. On the intellectual property side, we've done work for a variety of clients on nanotechnology. I know of businesses looking at using very small metal particles in lubricants to improve the performance and extend the life of lubricants by essentially putting nano-sized metal particles in oil. Nanotechnology is a field that will bloom in the future.
Editor: What are your forecasts for the growth of both biotechnology and information technology? Do you see the government subsidizing development in these areas to the extent it has in the past?
Grondahl: In terms of forecasting growth, we've certainly seen in our own practice that the research and development in these fields is continuing, and there have been some statutory developments in these areas that may lead to further growth. For example, legislation being considered for biosimilars with an exclusivity period for the first actor in that area has the potential to lead to quite a bit of growth in the biotechnology area.
On the information technology side we see more and more work being done on behalf of clients who want to outsource information technology-related aspects of their businesses. We have attorneys who help clients when they want to outsource and put the contracts in place to enable them to do that in an effective way. There is some thought going forward, particularly in the medical area, that information technology will be further developed to allow easier tracking of medical information to make the health system more efficient. That would be a huge growth area if it is brought to fruition just because of the number of people who take advantage of medical services every year.
Editor: What types of clients does McCarter & English represent in the pharma and biotechnology area?
Grondahl: We represent several so-called branded pharma companies such as Abbott Laboratories and Eisai Pharmaceuticals. We also represent, as I mentioned before, world-class universities and educational institutions. I represent professors who are doing research at universities as far away as Italy. We also represent medical device companies, such as companies that are involved in various devices for orthopedics, or sterilized containers for medicaments and medical compositions. We represent clients in virtually every aspect of the biotechnology industry.
Editor: What are the key legal issues in biotechnology today? Is the law falling behind the new areas of developing scientific knowledge and practice?
Grondahl: The patentability of gene sequences is important to the biotechnology industry. Recently there was a case decided in the federal district court in New York where certain patents that were directed to isolated gene sequences were invalidated. That case is on appeal, and many believe the ruling will be reversed. However, if that ruling regarding patenting of gene sequences were to stand, it could have a huge impact on the willingness of companies to invest in that area. As I mentioned before, the legislation regarding biosimilars is an important issue for biotechnology today. More generally, some of the cases that have come down from the Supreme Court in the patent area regarding obviousness could restrain or curtail patent rights, resulting in an adverse effect on biotechnology.
Editor: Do you think Bilski will ever be overturned?
Grondahl: Bilski is an interesting case because there is uncertainty as to how a similar case might be decided with a new Supreme Court justice. I'm not sure whether Bilski will be overturned. As a wise person once said, I can predict everything except the future. During my first 14 or so years of practice, the Supreme Court rarely considered patent cases, and then over the last four or five years the Court has seen fit to take several patent cases, sometimes two or three a term. I assume this increased activity is because they see the impact on and importance of patent rights to the economy and to businesses generally, and for this reason the justices may feel the need to be more involved in forming the law in that area.
Editor: How has the IP/IT Practice at McCarter & English grown over the years?
Grondahl: I joined McCarter & English almost eight years ago. When I joined, the IP/IT group was made up of four or five IP/IT lawyers. Over the last eight years we've grown to a total of 60 attorneys and five patent agents and other professionals. So in a matter of eight years we've grown by more than a factor of ten, adding lawyers in Boston, Hartford and Stamford in New England, as well as in New York, Newark and Wilmington, Delaware. In New England alone we now have 34 patent attorneys and five patent agents and technical specialists. Most recently, in Boston we added a group of 22 attorneys, of whom 16 are registered patent attorneys.
Editor: How do the various offices work together, say your office with the office in Wilmington?
Grondahl: Patent prosecution in particular is driven by the educational background of the attorneys. For example, when a biotechnology or a chemical application is being prepared or prosecuted, it is important to find the person with the correct technical background to handle it, and that often means reaching out to a different office. The firm as a whole is able to service almost any technology you can think of, often requiring us to work between offices. Our internal IT system lets us do that seamlessly. For instance, I frequently work with attorneys in our Wilmington office. We have an attorney there who is a PhD analytical chemist who works with me on many chemical patents. Many matters related to pharma or biotech are handled out of our Boston office, sometimes with the help of attorneys in Hartford, Stamford or Wilmington. Firm-wide we have 17 attorneys who have PhDs in technical areas, be it chemistry, biology, biochemistry or other sciences. In addition, many of our IP/IT attorneys have extensive experience in various industries.
Editor: What advantages do you see for an IP/IT practice in being part of a general practice firm?
Grondahl: The advantages we have are several. Many of our clients with IP/IT needs come to the IP/IT group through attorneys in other practice areas. In fact, we recently added six attorneys in our Hartford office who joined us in part because of our IP/IT practice. It gives them the ability to provide additional service to their clients. Being part of a general practice firm gives us more opportunities to be exposed to clients in a variety of industries who have IP/IT needs. Likewise, it gives our IP/IT attorneys the ability to offer legal services to our clients in other areas.
Editor: Do you have anything further you would like to add?
Grondahl: I would add that we are seeing clients more concerned than ever about cost and value in legal services. We are working with our clients to develop arrangements that work for them, such as fixed fees for certain types of work or other creative fee arrangements. We find that in-house counsel like to be able to count on and budget for a certain expense for their legal work, and we work with them to make this possible as much is practicable.
Published March 1, 2011.
