Wisconsin Lawyer Highlights America Invents Act, E-Discovery Costs, and Attorney Fees
Oct. 8, 2012 – Last year, Congress overhauled U.S. patent law with the America Invents Act. In the October issue of Wisconsin Lawyer magazine, available online and in mailboxes soon, two seasoned patent lawyers provide a general overview of the major changes.
In addition, Madison attorney Timothy Edwards explores the question: Who bears the cost involving discovery of electronically stored information? And consumer lawyers David Dudley and Frances Reynolds Colbert discuss reasonable attorney fees post-2011 Wis. Act 92, which creates a presumptive cap on attorney fees under fee-shifting statutes.
America Invents Act
The Leahy-Smith America Invents Act (AIA), the most comprehensive reform to U.S. patent law in 60 years, contains four primary changes, according to Madison patent lawyers Edward Pardon and Shane Brunner in “America Invests Act: Boosting Creative Competition.”
The authors explain that under the AIA, the U.S. moves from a “first-to-invent” system, creates new procedures for challenging patents, implements several litigation reforms, and gives the U.S. Patent and Trademark Office greater control to set fees relating to patent filings.
“Much has been written about the AIA, directed toward patent attorneys who have been kept busy by the law’s many nuances,” the authors write. “This article, however, provides attorneys who are not patent practitioners with a general overview of some of the major changes to the system and attempts to explain their significance.”
E-Discovery and Cost-Shifting
The presumption in state and federal court litigation is that each party should bear its own cost of producing discovery upon request. When it comes to electronically stored information (ESI), however, the presumption can lead to unfair results, says attorney Timothy Edwards.
“In certain situations, the high cost of producing ESI may justify a departure from the standard presumption that each party bears the costs of its own production and allow for the imposition of costs on the nonproducing party,” Edwards writes. “This is called cost-shifting.”
Edwards’ article, “E-Discovery: Who Pays?” tracks the appropriate standard for analyzing a request for cost-shifting in ESI disputes in Wisconsin courts and gives attorneys practical tips for dealing with such disputes in both state and federal litigation.
Reasonable Attorney Fees after 2011
In Wisconsin, parties are generally responsible for paying their own attorney fees. In certain cases, however, it is possible for prevailing parties to recover reasonable attorney fees.
Hoping to increase “litigation certainty,” the Wisconsin Legislature in 2011 created a presumption that reasonable attorney fees should not be more than three times the damages awarded, and codified the factors courts must consider when determining attorney fees.
In their article, “Determining Reasonable Attorney Fees,” consumer lawyers David Dudley and Frances Reynolds Colbert discuss the state’s “fee-shifting” statutes – and provide a list of more than 200 fee-shifting statutes impacted by the law – post-2011 and explore how courts may interpret and apply the new law, which affects consumer cases and many others.
The authors, who worked for the Madison-based Consumer Protection Law Office that has now closed, suggest that attorneys should be more hesitant to take on cases with relatively small amounts of compensatory damages at stake regardless of the case’s strength on the merits.
Finally, don’t miss the magazine’s columns on managing risk and ethics. Attorney Tom Watson, senior vice president and director of communications at Wisconsin Lawyers Mutual Insurance Co., discusses the rising complaints filed by clients against their lawyers and what can be done.
“One of the primary keys to avoiding a grievance is to communicate with your clients,” writes Watson in, “Top OLR Complaints, Grievances on the Rise,” noting that grievances often involve fee disputes or failing to keep the client informed.
And in his article, “Can I Represent a Relative against Another Relative,” Dean Dietrich, past chair of the State Bar’s Professional Ethics Committee, addresses that question with a question.
“Although the rules do not prohibit such representation, lawyers contemplating representing a relative against a relative might ask: How much do I value my family relationships?”