Q&A with Christopher Carroll, IP Partner at Burns & Levinson

7/13/20

Christopher Carroll

Q. You joined Burns & Levinson right before the COVID-19 crisis hit. What attracted you to the firm and how are you adapting to being at a new firm while working remotely?

Carroll: I looked carefully at firms of all sizes from intellectual property (IP) boutiques to big law firms providing IP services in the Boston area. Burns & Levinson has the best combination of top notch IP attorneys and competitive pricing for clients. The firm also has one of the strongest electrical engineering IP practices in Boston, which made them the best firm for my practice and clients.

Q. You have a very unique patent practice that spans both the U.S. and Europe – tell us about that.

Carroll: I am a U.S. patent attorney and a Solicitor in England & Wales and I am registered before the United States Patent and Trademark Office (USPTO) and as a legal practitioner before the European Patent Office (EPO). I have been prosecuting both U.S. and EPO patent applications directly for over a decade. My dual qualifications and experience means that Ican handle a company’s U.S. and European patent portfolios in a more efficient, less costly and more coordinated manner than other firms.

Q. How does your electrical and computer engineer training influence the work you perform for clients?

Carroll: I have over 17 years of experience advising clients on their patent, trademark and copyright strategies. My work typically involves very complex computing, communications and electronic technology. Before law school, I supervised research related to wireless communications network security at Verizon and GTE Laboratories, and I am a named inventor of eight U.S. patents related to wireless security. I truly understand my clients’ IP issues from the ground up and from all angles – both as a practitioner and now as an experienced IP lawyer. There are not a lot of attorneys with my depth of expertise protecting software and computer-implemented inventions in the U.S. and Europe, especially with respect to patent eligibility issues related to software. s & Levinson as part of its Executive Committee and as Chair of the

Q. How is the pandemic affecting patent activity right now? Is it boom or bust?

Carroll: Patent activity has traditionally been resistant to economic downturns such as during the great depression. So far, patent activity has been quite steady.

Q. Companies are facing so many challenges related to the COVID-19 crisis, but what are the biggest opportunities right now in regard to patents?

Carroll: The race to develop new vaccines, equipment and therapeutics against COVID-19 is in the news every single day. Americans have always been innovators and inventors. Biotech, high technology and big data companies, for example,will likely expand their R&D with investments from the federal government and venture firms. This will stimulate more patent filings is various technology areas.

Q. What do you love most about what you do every day?

Carroll: I worked for many years as an engineer and enjoyed solving technological problems. But, at one point, I reached a ceiling where I was confined to the same type of work. As a patent attorney, there is always a new challenge or a new area of IP law to explore and expand my advocacy. I also enjoy working with innovators and inventors. They are naturally very optimistic people.

Q. What is your long-term outlook for patents?

Carroll: Over the past decade, we’ve seen an erosion in the value of U.S. patents in response to U.S. Supreme Court decisions in cases like KSR and Alicethat have made it more difficult to obtain U.S. patents. Also, the implementation of post grant proceedings at the Patent Trial and Appeal Board (PTAB) under the America Invents Act have made it easier to invalidate U.S. patents.Understandably, one reason for the more restrictive and limiting approaches by the Federal Courts and USPTO toward U.S. patents was the rise of so-called patent trolls.

More recently, there seems to be a recognition that the pendulum may have swung too far against U.S. patents. Congress is exploring new legislation intended to alleviate issues with restrictive interpretations of patentable subject matter and more recent decisions in PTAB proceedings seem to be trending more favorably toward patentees. As the pendulum swings back toward a more favorable view of U.S. patents over this next decade, the value of U.S. patents and opportunities to provide patent legal advice will rise.

The U.S. has always had an innovative spirit driving inventors to obtain patents for their ideas. In the long term, I expect the demand for U.S. patents and patent legal services to continue to be robust.

Christopher Carroll is a partner in the Intellectual Property Group at Burns & Levinson in Boston and London. He has 17 years of experience advising clients on their patent, trademark and copyright strategies to the firm. He is licensed to practice before the U.S. Patent and Trademark Office, the European Patent Office and the UK High Court. An electrical and computer engineer by training, Carroll develops patent portfolios for clients around the world. He regularly prepares legal opinions regarding patent validity, infringement and freedom-to-operate, IP due diligence, and technology-related license agreements. He can be reached at ccarroll@burnslev.com or 617-345-3209.

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