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In an interview with CIO Applications, Dan McClure, Managing Partner of McClure, Qualey & Rodack, provides his invaluable insights on how the firm’s expert team plays an important role in addressing the challenges of securing intellectual property and why it is crucial for organizations of all technical disciplines to patent their key inventions.
What are the factors that led to the formation of McClure, Qualey & Rodack?
The inception of McClure, Qualey & Rodack goes back a number of years, to the days where I was working as a managing partner in another IP firm. During that stint, I developed a great client base. Combining my experience along with the extensive and varied experiences of a select group of the other attorneys of that firm, we established McClure, Qualey & Rodack. Our attorneys and staff are all veterans in the IP space and highly accomplished, with the junior-most attorney having practiced for 12 years.
While most legal organizations tend to extend their services portfolio into all aspects of the legal or IP spectrum, we at McClure, Qualey & Rodack chose to limit our service offerings to a more limited area of IP, in order to provide the highest level of expertise and efficiency to our clients. Though we cover a major spectrum of technical disciplines, our forte is in the electrical, electronic, computer, communications, and software areas. Also, while some of our attorneys have worked in the area of IP litigation in the past, we have elected as a firm to not offer litigation services, and instead focus our practice on the preparation and prosecution aspects of IP.
How does McClure, Qualey & Rodack capture the attention of clients in the industry? Is there a particular process followed while engaging with a client?
Our company emphasizes providing quality and timely services to the clients, and that has proven to be an effective recipe behind our loyal and expanding clientele. Most of our client base has been developed mainly through word of mouth, with existing clients recommending us to colleagues in other businesses thanks to the reputation that we built over the years through our effective and professional services. We have also found that our client base has expanded in other ways, as individuals from existing clients take new jobs with other businesses, recommending our services to their new organizations.
A number of our clients, who transferred their work to our firm when we started our journey in 2012, have been working with us for 20 years. We have never taken old relationships for granted, and we strive every day to provide our best services to all our clientele. We consider such long-standing relationships to be a testimony to the quality and value that those clients recognize in our services.
Is there a systematic approach to understand or assess the client requirements and deliver the services accordingly?
Yes. A big part of this process is embodied in the recognition that all clients are different and have different objectives.
A majority of our clients are large corporations, who have a full in-house IP staff with extensive knowledge about the process. In many of these relationships, the clients will identify and cultivate invention disclosures internally, and send those to us for further preparation. In this role, we will then work with the inventors to further characterize the inventions and develop the intellectual property protection around those disclosures.
Our expertise and experience has given us the ability to deliver superior and efficient work product at reasonable costs
Also, we work with clients of all sizes to help them improve their internal efficiencies. Some of this is done via presentations and other forms of training to help educate their engineers and other staff. We also have one-on-one meetings with engineers and managers to understand what they are working on in order to help them identify the key ideas that have value in their innovations. We then organize and present this information to their in-house general counsel or corporate officers, who make the final decisions regarding the U.S. patenting.
According to you, what sets McClure, Qualey & Rodack apart from your peers in the industry? What helps you stay ahead in the game?
What I have observed over the past 25 plus years, especially with the corporate clients, is that patent applications have become much more commoditized. Most organizations place a certain budget on the patent process, and the service providers working with them have to work within the price constraints set by these clients. While many clients have become increasingly cost sensitive, they still demand high quality in the services provided. At McClure, Qualey & Rodack, we understand this, and indeed this is a significant reason that we have chosen to focus our practice on U.S. patent preparation and prosecution services. As all of our attorneys are highly experienced, our clients know that their work is not being passed down to new associates with little experience. Not only does our experience reflect itself in high efficiency, it is also evident in the quality of our work product. Indeed, many of our clients have commented to us that we provide them with great value in our services, in comparison to other firms.
Our expertise and experience has given us the ability to deliver superior and efficient work product at reasonable costs.
Cite a case study where you have assisted your clients in their IP requirements and helped them in obtaining their desired work product
Our client base ranges from large to small-sized corporate clients, where we help them with functions spanning from substantially full in-house IP services, to limited patent preparation and prosecution services. One of our clients, a midsize corporation, did not have any in-house patent staff to identify or shepherd their innovations. Due to our expertise and reputation in the IP sector, they reached out to us for assistance. We came in and met with their engineers and management staff to help them identify the most valuable inventions that they had developed, while working within a fixed patent budget. Our team met with the engineering groups across various disciplines in the client’s organization and identified a relatively large number of inventions. We then commissioned patent searches in the areas of technology where the inventions existed, in order to assess the anticipated protectable scope of each invention. Based on the information gathered, we identified around 80 disclosures or inventions that could be patented, which we further trimmed down to about 40 in order to fit the client’s budget. Not only did we identify the numerous inventions developed by their engineers, but we were also able to work within the designated budget allowance, ultimately preparing and filing patent applications on what would be the potentially most valuable inventions.
What are the milestones that McClure, Qualey & Rodack has achieved in the past few years? Any future expansion plans for the company?
We consistently issue hundreds of U.S. patents each year on behalf of our clients. In 2018, we issued almost 850 U.S. patents for our clients, which is an astounding number— based on the number of attorneys that we have—and this number reflects the experience and efficiency of our team.
We represent many international clients and we effectively communicate with them over Webex, Skype, or other internet platforms. As of now, we do not have any geographical expansion plans and intend on staying as a nucleus here in Atlanta. We believe that working together, in a single location, is an advantage as it increases the ability to collaborate and share information, as well as to operate our business more efficiently. Our philosophy is simple: “we put our clients first, and serve them to the best of our ability.” We feel like, as long as we follow this simple philosophy, our client base and workload will take care of itself. It always has.