Q&A With Frost Brown Todd's Steven Goldstein

May 7, 2012

Steven J. Goldstein is a member in Frost Brown Todd LLC's Cincinnati office, where he chairs the firm's intellectual property department. He joined Frost Brown Todd as chairman of the intellectual property department in June 1994. He previously spent 19 years at The Procter & Gamble Company as a patent attorney and legal manager, ultimately serving as an associate general counsel-patent and world patent coordinator.

Goldstein's practice emphasizes all aspects of U.S. patent prosecution, portfolio management and counseling, as well as licensing, trade secret and antitrust law. He is also an adjunct professor at the University of Cincinnati College of Law, and a member of the MIT Education Council, the Research Committee of Cincinnati Children’s Hospital, and the board of trustees of BioStart.

Q: What is the most challenging case you have worked on and what made it challenging?

A: Since I specialize in patent prosecution and counseling, and I do not handle litigation matters, the challenges I face are a bit different from those typically faced by attorneys. For me, the greatest challenge is to develop creative approaches for obtaining commercially meaningful patent protection on an invention when there is close prior art. This is difficult because you need to claim the invention so as to cover its most important aspects in a way that precludes competitors from copying it, while not being so broad as to overlap known products or other disclosures.

For example, we wanted to get protection on a method of treatment for building bone in an osteoporosis patient; the method utilized two known pharmaceuticals given in a specific regimen over a one-month period. In addition to claiming the method, we also claimed a dispenser containing the tablets in a calendar arrangement that provided the correct pill on the correct day. The complexity of the regimen, and the high probability of patient error inherent in the method, made the dispenser a much better way to administer the medicines, rather than taking individual tablets out of the pill bottles each day. This claiming strategy gave us valuable product protection on a device the doctors wanted to prescribe, rather than relying solely on method coverage.

In a more conventional sense, I prepared and argued (and won) the federal appeal in Tofe v. Winchell, a case which changed some long-standing law relating to the role of the best mode requirement in patent interferences. This took place early in my career, and it was very exciting.

Q: What aspects of your practice are in need of reform and why?

A: I think the major problem in patent prosecution right now is the long pendency times for new patent applications in the U.S. Patent and Trademark Office. Multiple-year waits before receiving the initial review from the patent examiner greatly lessens the value of patents (especially in fast-moving technologies, like information technology) and erodes public confidence in the system. This affects life sciences product development since it means that applicants have to wait longer in the development cycle before they understand the patentability prospects for a given development.

The USPTO is working actively to alleviate this problem, by adding examiners (to the extent budgets will permit) and by providing an expedited prosecution track, by paying a premium fee, for a limited number of applications. While this expedited prosecution option is useful for applicants who can afford it, long pendency times is an issue for all applicants, and the USPTO is actively working to address that issue.

Q: What is an important issue or case relevant to your practice area and why?

A: The America Invents Act, which became law in September 2011, makes some fundamental changes in the patent system over an 18-month period. The implementation of that law in the USPTO and in individual practices is a major focus area in patent practice right now and will be for the next several years. These changes include, among many others, the switch to a “first inventor to file” system for awarding patent rights, and a new procedure for third-party opposition of newly granted patents. This will not only require procedural changes by service providers (USPTO and attorneys), but will also require significant re-education of clients so that they understand how they have to change their day-to-day operations to most effectively operate under this new patent regime.

Q: Outside your own firm, name an attorney who has impressed you and explain why?

A: Mike Brennan, at Harness Dickey & Pierce in Troy, Mich., is an outstanding patent practitioner. In addition to his deep experience and knowledge base in patent law, Mike is very pragmatic and provides real business-focused legal advice which is extremely valuable to clients.

Q: What is a mistake you made early in your career and what did you learn from it?

A: There have been many, both in terms of my role as a lawyer and my role as a legal manager, but one key mistake I made early in my career was “writing like a lawyer.” While that’s a natural thing to do when you first graduate from law school, my mentors at Procter & Gamble (the home of the one-page memo) taught me to keep my writing simple, succinct and business/client-focused. Good writing is what distinguishes great attorneys from good attorneys. It is not only valuable when waiting for decision-makers and adversaries, but it is also an excellent way to build strong bonds with your clients. This is an important lesson I bring to the attorneys that I train and the students in my law school classes.