Morningside Family
The view from our corner of New York City...
Thursday, September 8, 2011
Wednesday, August 31, 2011
Some things seen and heard

Monday, August 29, 2011
After the storm






One flight up

Sunday, August 14, 2011
Nel mezzo del cammin di nostra visa

Tuesday, August 9, 2011
Guest post--Bob talks about why we're moving to Italy and other stuff

A week ago, my husband Bob gave a lunchtime talk at his law firm. The talk was part of a series in which the different attorneys have been talking about their practices. Bob used the opportunity to explain how he ended up taking a job in Italy. But before that, he took a long running start which goes back to a few years before our marriage, from an educational and work point of view.
We were married twenty-four years ago yesterday, by the way. At that time, Bob was in his last year of vet school.
What follows is more like a transcript than an essay. It has a lot of "inside" references. It lacks full written polish, more than rudimentary punctuation, and of course, the je ne sais quois of Bob in a room. But it should, include, at least, some of "the rest of the story" behind the events I describe in this blog.
And although perhaps it goes without saying, Francine was the attorney who introduced Bob at the beginning of the talk:
* * * *
Thank you, Francine.
Good afternoon. Let’s start with a joke. How do you know if a patent attorney is extroverted? When he talks to you he looks at YOUR shoes.
I'd like to make this payday lunch talk very informal so please feel free to ask questions or comment on anything I say over the next few minutes during which I will briefly discuss (1) my educational background; (2) my 14 years working in New York; and (3) my plans going forward in Italy. Past, present and future, as it were. As a bit of incentive to make this talk more interactive, on my first visit back to New York from Turin, Italy in October, I’ll bring a box of famous Turin chocolate and give it to the person who asks the best question or makes the best comment as determined solely by me.
Point 1. I grew up in the South, mainly in the Atlanta, Ga. area. I speak fluent Southern. [Repeat in Southern.] I went to the University of Georgia as an undergrad, also for vet school and after deciding not to be a veterinarian, I went to the University of Georgia law school. I've occasionally thought that the University of Georgia should name a building after me given all the time and money I've spent there. Ok, we're already done with Point 1.
On to Point 2, the New York years. After graduating from law school in the spring of 1997 and dealing with some goofiness from a mysteriously vanishing first job offer, I was left scrambling to find permanent employment. I was fortunate to meet a patent attorney in Atlanta who gave me the names of 10 people at IP firms throughout the U.S. By the way, up until the meeting with this guy, I had never considered for a moment working or living outside of the southeastern U.S. or even outside of Atlanta. But I wrote to all 10 people on my list who were in places like Los Angeles, San Francisco, Portland, Oregon, Seattle, Minneapolis, Chicago, New York and Boston. I got one response. And this was from a guy named John White at a firm called Cooper & Dunham, here in New York.
John White asked me to fly up to New York later that week for an interview and so I did. This was the first time I'd ever been to New York. I was basically offered a position on the spot. As I later learned, I got the job because a senior associate at Cooper & Dunham had just given notice that he was leaving. This associate was responsible for, among other things, a portfolio of cases related to recombinant DNA technology for veterinary vaccines. My resume came across John White's desk within a couple of days of this associate giving notice and my background in veterinary medicine was a perfect fit.
By the way, the name of the associate who had just given notice at Cooper & Dunham: [pausing for effect] Mark Cohen.
(Laura's note: The pause for effect is because Mark Cohen is now a named partner in his current firm.)
So my wife, Laura, our 3 year old daughter, Sara, whom we call Sarie, and I drove a U-Haul from Athens, GA to our new home on 72nd and 3rd Ave. on the Upper East Side of Manhattan. We planned to live in New York for about 2 years and then return to live and work in the Atlanta area. Well 2 years somehow became 14 …. and our 3 year old somehow became 17. As Woody Allen once said: If you want to make God laugh, tell him your plans. Indeed.
So what have I been doing the last 14 years? I'll tell you very briefly and I'll limit my comments to work-related activities. Marathon running, bicycle racing, snow skiing and gelato eating, while certainly more interesting, are beyond the scope of this talk.
I started by suffering through 14 months at Cooper & Dunham. Anyone who knows John White understands that when you work with him, time is measured in something more akin to dog years.
So after 14 months or about 8 dog years at Cooper & Dunham, I took a position in the IP group of a big general practice firm called Kramer Levin Naftalis & Frankel. There my IP experience expanded greatly beyond patent prosecution for veterinary vaccine technology. Over the years at Kramer Levin I had the opportunity to work in almost every area of IP law: patents and trademarks; prosecution and litigation; opinions, transactions, counseling.
I developed somewhat of a specialty in ANDA-related matters (ANDA refers to the process by which pharmaceutical companies get approval to market generic versions of branded drugs) and I often worked with technical experts on their expert reports and taking and defending experts in depositions. A couple of these experts have actually become friends. One, a guy named Sandy Bolton, interestingly (at least to me), played Bobby Fischer to a draw in a chess match in the mid-1960’s.
Probably the most high profile matter I worked on at Kramer Levin was the fairly well-known ANDA case, Purdue v. Endo, both at the district court and for the appeal to the Federal Circuit.
As the economy started to falter in 2008 and some of my own clients started suffering, I began looking for an exit strategy from the big firm life and lifestyle such as it was. So I began seeking alternatives and was successful in getting 3 separate offers all of which were available for me to consider at the same time side by side by side. One offer was for a position with an Atlanta based firm called Troutman Sanders which was starting an IP group in their New York office. I was also offered a position in beautiful Portland, Oregon as an in-house patent attorney for the technology transfer office of Oregon Health and Sciences University, and finally, I was offered a position in a grubby little boutique firm tucked away in the southeast corner of midtown called Lucas & Mercanti. I also had the fourth option of staying at Kramer Levin.
For reasons I’m still not quite sure about, although I believe autonomy played a significant part, I chose the grubby little boutique firm. My Kramer Levin clients followed me over to Lucas & Mercanti appreciating, I’m sure, that my billing rates went from close to $700 down to about $400 per hour.
Now at this point my story should end with me working through the years at this little firm, enjoying relative autonomy and a reasonable income. So what happened to interfere with this happy if somewhat dull ending?
Last summer - summer 2010 - my daughter was signed up to participate in a music festival in northern Tuscany. She’s a very talented classical violinist by the way. We decided to make it a family vacation. Since the festival would take place over a 3 week period I agreed to visit some of Lucas & Mercanti’s Italian clients, especially some of the satellite offices of the big Italian IP firms based in Rome and Milan. Lucas & Mercanti gets a substantial amount of work from Italian law firms and people from the firm pay frequent visits to offices in Milan and sometimes Rome, but never the smaller offices in between. So my task was to spend 1 of my 3 weeks in Italy speaking with IP professionals in smaller towns like Parma, Bologna and Florence, all places relatively close to the location of the music festival. And aside from all of the parking tickets, it was actually a lot of fun. By the way, the Bolognese sauce in Bologna is excellent.
So we now arrive at the fateful day – Thursday, July 1, 2010 - 13 months ago today. I had a mid-afternoon appointment to meet with two patent attorneys in the Florence office of a firm called Notarbartolo & Gervasi. Their office is in a beautiful 18th century building near the center of Florence. I met with the attorneys there and spoke with them about several U.S. patent issues. They told me a little about what it was like to work in Florence, including their commutes to and from work by Vespa. The following moment I recall like a dream. As our meeting was winding down one of the attorneys, Livio Breghenti, said something like the following in a typically mellifluous Tuscan accent, which I’ll not try to imitate: Wouldn’t it be great if we had a U.S. patent attorney like you working in our office all the time. While he was saying this, the other attorney, Silvia Valenza, opened the shutters of a large window revealing a framed view of Florence’s main duomo. And as I recall it a choir of angels was singing too.
Thus an idea was born.
After returning to New York and convincing myself that I hadn’t been hallucinating that afternoon in Florence, I spent a few weeks writing up and refining a business plan listing all of the benefits I could think of that a U.S. patent attorney could provide to an Italian IP studio. In October – just a little over 9 months ago – I sent my business plan to 8 IP studios in Milan, telling them that I could meet with them in November. All 8 studios contacted me stating that they would very much like to meet with me. That was the first big indication that I was on to something. 8 out of 8.
All of those meetings went very well and everyone agreed that my business plan was right on target. I narrowed the 8 firms down to the 3 largest IP groups in Milan and met with those 3 again in February – less than 6 months ago. I received offers from 2 of the 3 firms while I was still in Milan. I ended up agreeing to work at the largest IP firm in Italy – Jacobacci & Partners – in their Turin office beginning September 1st, one month from today. I chose Jacobacci for a number of reasons: One, it’s the largest IP firm in Italy. Two, and related to the first point, Jacobacci is capable of handling all technical areas and is not over-specialized in any one area to the detriment of other areas.
Besides the personal logistics of moving from New York to Italy there were a few other things to consider. One part of the business plan included selecting a single U.S. firm, preferably in New York, to develop a nice reciprocal relationship with. While I could do some U.S. work for Italian clients on-site in Italy, certain matters I would need to send to the U.S. At the same time, the firm I selected could send European work to me. So I began considering which firm might be the best fit.
On my list of people to contact was Caleb. Caleb and I had both worked at Kramer Levin in the early 2000s just prior to Caleb leaving to work in Israel. Caleb thought the idea sounded interesting and suggested that we speak with Zeev. So Caleb, Zeev and I met a few times and it seemed like this firm would be a good fit. It also made sense that I should come over here for a few months before heading off to Italy. Among other things this would allow me to meet people here and also would allow me to bring my clients to Pearl Cohen and to continue working with them to some degree as I will continue to be Of Counsel to this firm. This type of arrangement would not have been possible at Lucas & Mercanti.
Several things make Pearl Cohen particularly well-suited for this overall arrangement. First, as you all know, Pearl Cohen has offices in the U.S. and in Israel so reciprocity can work in multiple jurisdictions. Second, and related to the first point, this firm has an international outlook. Third, the U.S. office is in New York but the rates are very competitive. So you get the convenience of New York without the typical New York big firm fees. Fourth, I've come to appreciate this firm and the people here very much. From what I can tell there are no oversized egos. People here seem genuine and this is actually quite rare for a law firm, at least in my experience. And finally, it may be a bit odd, but it’s probably a good sign that the managing partner here uses smiley faces in his emails.
So I decided to cast my lot with Pearl Cohen. I walked away from Lucas & Mercanti on Friday, April 1st and walked into Pearl Cohen on Monday, April 4th.
As I mentioned earlier, when we first arrived in New York, we thought we would be here about 2 years before returning to the Atlanta area. As it turns out we have been here nearly 14 years and we’re not moving back to Atlanta - we're moving to Italy – and in less than 4 weeks.
So that’s the story of the last 14 years, also known as Point 2 of my 3 points. Point 3 – Italy and the future - will take much less time to discuss. In fact, we’re nearly done.
By the way the country of Italy was unified in 1861 so it’s celebrating its 150th anniversary this year. And the firm I'm going to, Jacobacci & Partners, was founded just 11 years later in 1872. And even though Jacobacci has been around for 139 years, I believe I will be the first U.S. patent attorney born in Knoxville TN to ever work there - or in any Italian IP firm for that matter. I may even be the only person born in Knoxville TN to ever visit Italy. Anyway.
Over the past year or so I’ve learned a lot about the inferiority complexes of Italian IP professionals. They seem to look at themselves as the red-headed step children of Europe. And it's somewhat understandable. For every 10 cases they send to the U.S., they may get 1 case back for filing in Europe. Think how frustrating this must be. 10 cases go west to the U.S. and they wait and wait and wait and finally one case comes back east to them and they continue to wait and wait and wait. And that's it. The other 90% of cases go instead to Germany and the U.K. even though costs there are much higher. And the Italians are so emotional - the stereotype is basically true - so this must feel like unrequited love to them.
So Jacobacci has hired me to make things right, at least for them. How will I go about doing this? They want me to do 2 main things. First, they want me to work on certain U.S. matters for their European clients directly on site in Italy. If they don't send a case out, they don't have to worry about getting one back – no unrequited love problem there. Second and most importantly they want me to use my connections in the U.S. to generate more European filings. By the way, a substantial performance bonus is tied solely to this second point – new European filings.
And now I have to apologize for sounding like a Jerry Lewis telethon, but I do need your help to make this venture successful. I can't do it without you.
I’ve brought a number of clients here from Lucas & Mercanti. I believe that number is 12 – some little, but some big. For example, Abon is a start-up pharmaceutical company in New Jersey co-founded by Sandy Bolton (the guy who played Bobby Fischer to a draw in a chess match). Dyna, is a Brazilian company that makes windshield wipers. Bracco is an Italian-based company which develops contrast agents for ultrasound, MRI and other modalities. Schott is a German company that makes different types of glass for many different products. Baumer Electric, a Swiss company that makes high tech sensors. And from Italy I will send you U.S. work whenever I can, both to the New York office and to Israel.
In return, please remember me, [plaintively] please, when you have clients interested in filing European patent applications, especially for your clients with budget concerns. Fees in Italian IP studios are about 20% less than in Germany and about 40% less than in the U.K. and the quality is very, very good. The Italian IP attorneys, at least in northern Italy, are very competent. In fact, Italian practitioners are regularly beating German and English attorneys in opposition proceedings in Munich, for example. Low price plus high quality means value, right?
But not just new European filings. Any matter – patent or trademark, prosecution or litigation, even validations.
Finally I want to let you know that Fabrizio Jacobacci (the great, great, great, great grandson of the founder) and I will be in New York on October 17th and 18th - I'll be here a few extra days. He and I will be happy to speak with you about the various things Jacobacci can do for you. And I will honor my commitment to bring a box of chocolate to one of you.
I have now reached the end of Point 3 which is also the end of my payday lunch talk. Grazie mille per la vostra attenzione. Thank you very much for your attention.
Monday, August 8, 2011
This and that post


