In June 2009, the IP Certification Committee sought to increase the “substantial involvement” practice requirement for certification from 30% to 50%. IP Committee of the Business Law Section has, at a minimum, concurrent authority to change the “Substantial Involvement” minimum requirement rule. In fact, the IP Committee can change many aspects of the certification, however, all changes ultimately must be approved by the Supreme Court and the Board of Legal Specialization (BLSE). The Certification Committee seeks the IP Committee’s approval for changing the — The “substantial involvement” requirement in Rule 6-26.3(b), of the Rules Regulating the Florida Bar, to become IP certified, from 30% of the applicant’s practice to 50% of the applicant’s practice. – -.

The reasons the IP Certification Committee approved this SI Rule change is set forth below. In summary, the IP Cert Committee believes that the current 30% practice rule is too low. The IP Cert Committee notes that applicants can “mix and match” practice hours in the four substantive IP areas (patent prosecution, patent litigation, copyright and trademark) to reach the minimum SI practice and all applicants and re-certification applicants, can meet the SI practice threshold with any type of IP licensing, Internet law, IP audits, any IP dispute resolution matters, UDRP actions and a broad range of computer related IP matters, the change to 50% is reasonable.

For the following reasons, the IP Cert Committee APPROVED the motion:

I. IP law is too diverse and the Committee believes that applicants need to spend more time than the current 30% to understand the four (4) sub-specialties, that is, (a) patent prosecution, (b) patent litigation, (c) trademark, and (d) copyright, and understand the related, ancillary legal areas such as cybersquatting, domain disputes, trade dress, trade secret law and IP licensing. Although these legal topics are generally referred to “Intellectual Property,” the areas are quite diverse and mainly comprise statutes which are quite different in scope and theory. There is little or no common legal theories shared by patents compared to trademarks and further compared to copyrights. These diverse statutes each require a separate understanding of the law.

II. The Committee believes that if an applicant only dedicates 30% of his or her practice to IP, he or she could not attain the minimum knowledge to advise clients on the wide range of IP topics a certified lawyer may opine upon.

III. After three (3) years of reviewing IP certification applicants, the Committee believed that the 30% minimum practice requirement was too low. A higher practice percentage requirement would improve the quality of the applicant pool. Current applicants seem much less qualified than the applicants reviewed by the Committee over the past 3 years.

IV. The Committee believes that IP certification and practice is more like Civil Trial (requires 50%), International Law (requires 50%), and Labor and Employment Law (requires 50%) than other less demanding practices. Most certification areas require 40% dedication to the specialty. See City, County and Local Government law, Construction Law, Elder Law, Health Law, Immigration Law, Martial Law, Real Estate Law, and Wills and Trusts. The current 30% substantial involvement requirement for IP is too low.

V. By increasing the substantial involvement percentage, consumers benefit by consulting attorneys having a higher and more diverse base of IP knowledge. Further, the labels “specialist” and “expert” are more suited to a practitioner with 50% of his or her practice devoted to IP.

VI. Lastly, when the IP certification plan was first proposed, each sub-specialty (a) patent prosecution, (b) patent litigation, (c) trademark, and (d) copyright (see Rule 6-26.3(c)(1) through (4)) REQUIRED, as a separate condition, a practice with 30% substantial involvement in that sub-specialty. However when the final rule was approved, the substantial involvement percentage was changed to a total of 30% in any area and an applicant can combine his or her work in one or more of the IP sub-specialty areas (patent prosecution, patent litigation, trademark, and copyright) to qualify. An 8% substantial involvement in each sub-specialty (which would total to 30%) is, in the opinion of the Committee, completely inadequate for certification.

Therefore, the IP Cert Committee requests that the IP Committee of the Business Law Section and the BLSE and the BOG approve this rule change. Implementation is expected for lawyers who apply in 2010.

Submitted by Robert Kain, Esq.