Ex-Finnegan Partners Open DC Patent Boutique

IPLaw360, New York (August 17, 2012, 3:29 PM ET) —

Two former Finnegan Henderson Farabow Garrett & Dunner LLP partners have split with the firm and founded a new Washington-based intellectual property boutique focused specifically on non-litigation patent services.

Les Bookoff and Roland McAndrews left Finnegan and opened Bookoff McAndrews PLLC on August 1, creating a firm that aims to handle patent counseling, prosecution and licensing services. Bookoff, a 19-year patent law vet, said the niche focus would cut down on the overhead costs associated with maintaining an in-house litigation practice.

“We’re able to provide a platform of pricing, continuity of attorneys, and a sole focus on maximizing [a client’s] intellectual property,” Bookoff said Friday. “At a firm that provides litigation, decisions on pricing, staffing and support aren’t necessarily in alignment with the pricing, staffing, and support needed for this kind of practice.”

The new outfit is going to handle “everything patents that’s outside the courtroom,” Bookoff said. That includes U.S. and foreign patent prosecution, contested proceedings at the U.S. Patent and Trademark Office like reexaminations and interferences, due diligence for IP transactions, and structuring and execution of licensing deals.

Bookoff, who joined Finnegan as a summer associate before graduating from the University of Pennsylvania School of Law in 1983, spent a good portion of his early years working on the litigation side, but said he naturally gravitated to patent counseling.

“I found that what I enjoy most is the counseling side: strategizing over a company’s patent portfolio, bringing value to their applications and patents,” Bookoff said. “That really gave me much more satisfaction.”

The firm’s co-founder, Roland McAndrews, also spent his entire 15-year legal career at Finnegan, but worked for five years as a patent examiner at the USPTO. Bookoff said the insight that McAndrew’s public sector experience brings to the firm is invaluable.

“It brings you the insight from the other side, into what makes an examiner tick,” Bookoff said. “From a practical standpoint, [it] can make for a much more efficient and productive prosecution.”

Lacking the capacity to litigate, Bookoff McAndrews will refer work to other firms if a client is in need of courtroom services, Bookoff said, adding that his experience means he knows a number of talented litigation attorneys, including his longtime colleagues at Finnegan.

But he said that doing so would be largely similar to the process at a larger firm, where the patent counseling team would hand off much of the work to the litigation team if a client found itself in court. The only difference, Bookoff said, is that now he and McAndrews will get to develop the counseling and prosecution team according to their own rules.

“It’s been a dream of mine and my partner’s for quite some time to open our own practice that has a platform that can best serve the types of work that we want to do,” Bookoff said.

The firm also brought an associate, Dinesh Melwani, from Finnegan. Like McAndrews, Melwani is also a former USPTO patent examiner.

–Editing by Cara Salvatore.