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VOL. 121 | NO. 95 | Thursday, May 4, 2006

Patent This: Baker Donelson Attorney Regularly Navigates Intellectual Property Issues

LESLEY J. GUDEHUS | Special to The Daily News

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"Because of my technical background, going into patent law was a natural option."
- Peter L. Brewer
Name: Peter L. Brewer
Position: Member
Company: Baker, Donelson, Bearman, Caldwell & Berkowitz PC
Basics: Brewer, who has a background in engineering, specializes in helping employers and inventors understand their legal rights and responsibilities in the areas of intellectual property, patents and trademarks

Many aspects of the law seem abstract and incomprehensible to the lay person, but probably none more than the concept of intellectual property.

Part of Peter L. Brewer's job is to help employers and inventors understand their legal rights and responsibilities in the areas of intellectual property, patents and trademarks. Brewer is a member of the Intellectual Property Group of Baker, Donelson, Bearman, Caldwell & Berkowitz PC.

All three of those topics have made major headlines in the past several years. A federal judge in East Texas recently ruled against Microsoft Corp. and Autodesk Inc. in a lawsuit filed by the Michigan technology business z4 Technologies. z4 charged that two of its patents had been violated by Microsoft's Office and Autodesk's AutoCad software programs without paying royalties, according an Associated Press article titled "Microsoft a Loser in Patent Suit" that appeared in the April 20 edition of The New York Times.

On the international front, in the article "Google's China Problem (and China's Google Problem)," which appeared in the April 23 edition of the Times, writer Clive Thompson noted that although movie and music piracy judgments in the United States have led Americans to understand such actions to be theft of intellectual property, U.S.-based Internet companies entering the Chinese market are finding Internet piracy is a matter of course for many Chinese users. Who can predict the effect this practice might have on international intellectual property rights over time?

In June 2005, Rep. Lamar Smith, R-Texas, introduced the Patent Reform Act of 2005, proposed legislation that suggests sweeping reforms to fundamental aspects of U.S. patent laws and procedures. That legislation is pending.

Brewer frequently speaks and writes on his areas of practice. His most recent article for the Tennessee Bar Journal is "Who Owns the Invention?" published in April 2006. His work for Baker Donelson includes preparing transactional documents involving International Paper, as well as assisting with insurance coverage issues involving IP. Brewer evaluates patents and drafts freedom-to-operate opinions, validity/invalidity opinions, patentability opinions and non-infringement opinions.

He also works in the preparation and prosecution of patent applications in a variety of technologies, such as semiconductor fabrication, magnetic storage discs, maritime vessel designs, petroleum subsea architecture, downhole production tools and methods, offshore drilling tools, hand tools, medical equipment, signal processors and business methods. Brewer often serves either as lead counsel or co-counsel in patent infringement, trademark infringement and copyright infringement cases.

He graduated from Texas A&M University in 1984 with a bachelor's degree in petroleum engineering. He was associate editor of the South Texas Law Review in 1986, and he earned his law degree from South Texas College of Law in 1987, graduating cum laude.

After law school, Brewer became a briefing attorney for the Texas Supreme Court. He was admitted to the Tennessee Bar Association in 1996, practicing in Knoxville for five years before moving to Memphis and joining Baker Donelson. 

Brewer is a member of the American Intellectual Property Law Association, the Tennessee Intellectual Property Law Association, the Houston Intellectual Property Law Association, the Tennessee Bar Association Intellectual Property Section, the State Bar of Texas Intellectual Property Section and the Society of Petroleum Engineers.

In November 2004, Brewer was on the faculty for the Advanced Intellectual Property Seminar held in Dallas, which was attended by more than 200 intellectual property attorneys.

Brewer grew up in Midland, Texas, and went to the same elementary school as President George W. Bush and the same high school as First Lady Laura Bush. He has an 18-year-old son, Matthew, who is ranked in the top 15 in his age group by the United States Tennis Association.

Q: What kinds of changes would the Patent Reform Act of 2005 bring?

A: There are 12 or 13 points of change, but the one most people talk about is "first to invent," so the first to invent gets the patent. Under the proposed legislation, the first to file would get the patent. The act has bipartisan support. The area of IP is neutral, not Republican or Democrat, but the industry representatives cannot agree. Software companies are on one side of the aisle; pharmaceutical and biotech companies are on the other. The primary sticking points are the injunction issue and post-grant opposition.

In the first case, for example, a laptop [computer] would have components with hundreds and hundreds of patents. If someone owns a patent, a judge in some little town somewhere can issue an injunction for one part of that laptop that would shut the whole laptop down. Companies want the injunction to be flexible so that could not happen.

In post-grant opportunity, if you believe a patent is invalid, you can go ahead and apply for a new patent. Patent litigation is so expensive and the stakes are so high that anyone can go to the patent office to file and show a patent to be invalid. Pharmaceutical and biotech companies don't like this. It takes them years to develop products, and they want to be able to beat back their competitors.

Q: Did you have any mentors during your time in school or early law practice?

A: I didn't really have an individual mentor that I followed. I grew up in Midland, Texas, during a time in which the oil industry was booming. At one point during the late 1970s, Midland was said to have the highest income per capita of any city that wasn't in the New York metropolitan area. The isolated Midland/Odessa area with a population that was barely 200,000 people had its own Rolls Royce dealership in 1980. I grew up very middle class, so it was natural for my friends and me to want to become petroleum engineers and/or petroleum geologists to have good jobs. That led me to Texas A&M to study petroleum engineering. Because of my technical background, going into patent law was a natural option. 

I worked for a patent attorney in Knoxville for five years named Bob Pitts. I admire him in many ways, and he could be considered my professional mentor.

Q: How did you make the transition from engineering to law school?

A: During my senior year of college, the price of oil dropped from almost $40 a barrel to just over $20 a barrel. That meant that many job opportunities were lost, and those that were present generally involved working in remote field offices, sometimes overseas. I decided to go to law school as a way of increasing my education until the price of oil recovered and there were more job options. Unfortunately, that didn't happen for more than 10 years, so I just practiced law.

 I did well in law school and was given the opportunity to serve as a briefing attorney for the Supreme Court of Texas. The Court had several high-profile oil and gas cases on its docket, so I was able to help with those.

Q: Does having an engineering degree help you in your work?

A: You must have an engineering or science background to be a patent attorney.

Q: Are you involved in litigation?

A: There are two types of patent practice. One is patent litigation, and the other is preparation and prosecution, which involves research and writing patents. It is rare to have someone who does both. I do the latter - writing patents for companies and individual inventors.

Q: What kinds of clients do you serve?

A: Being in Memphis, we represent a lot of different kinds of companies. I like that variety. On one hand, I work for a large law firm with sophisticated clients, but in the last five or six years, I have had the opportunity to work with an oil company and an oil field in Houston, applied materials in Silicon Valley, with the hunting industry on a patent for camouflage, and the golf industry - every golfer has the next invention to improve the game. I also seem to get a few business method patents a year.

It's an interesting time to be a patent attorney. In the electronics industry, sometimes companies go bust, but their patents are still out there. You actually can go to lobbies of hotels and buy these patents. Investment companies buy the patent portfolios then look for someone to sue for infringing on the patent. They are called "trolls" because they're metaphorically sitting under a bridge waiting for someone to walk over it.

Q: Does your son's talent for tennis run in the family?

A: I played tennis in high school and picked it up again when I graduated from law school. I taught my son to play, and he was always very natural with it. When he was 12 years old, he was endorsed by the Southern Tennis Association to compete at the Hard Court National Championships in San Francisco. He placed in the top 12 at that tournament.

 Since that time, Matthew has competed in a number of national and international tournaments. He is currently one of three boys from Tennessee ranked in the top 15 nationally in the USTA Boys 18 rankings. It's an extremely strong class for Tennessee. Hitting with Matt pushes me to be a better player, although I'm afraid he passed me by a couple of years ago.

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