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Baker Botts Partner Rob Scheinfeld: Analyzing the Patent, Trademark Legal World Since 1995



NEW YORK, October 30, 2013 -- Nearly two decades ago, Rob Scheinfeld embarked on a secondary career as an occasional columnist for The New York Law Journal without thinking it would last so long.

The NYLJ celebrates its 125th anniversary today, October 30, and Scheinfeld has been a regular contributor to its countless pages of analysis for some 18 years. And the New York-based Baker Botts Partner, and New York office IP department chair, intends to keep writing columns as far into the foreseeable future as possible.

Scheinfeld’s first NYLJ article published in May 1995. The title: “Patent Update: The Death Knell of Juries in Patent Cases?” His opening paragraph: “In a decision which will surely create a firestorm, on April 5, 1995, the Court of Appeals for the Federal Circuit, in banc, severely curtailed the role of the jury in determining patent infringement.”

Since that article, Scheinfeld has provided an “outside counsel’s” point of view on issues for the legal publication focused on the patent and trademark arena.

“When Bob Neuner, a retired partner of the firm and the former columnist, decided to give up his column, the Journal had a competition and wanted to see a few articles from anyone on an outside counsel basis before designating anyone” to take Bob’s place, Scheinfeld recalled. “I wrote a few articles, and I selected one as a favorite, and so did they. It was a match from then on.”

Since it was -- and still is -- a bimonthly column, the additional workload on Scheinfeld was fairly heavy. So, he recruited Parker Bagley, then a trademark lawyer at the firm, to ease the load. Scheinfeld now covers patent issues and Bagley writes on trademark items.

“I write the first draft of three columns a year and he does the same,” Scheinfeld explained. “Then we review and revise each other’s drafts.”

Have they ever run out of issues to write about?

“The time between articles is long enough to allow us to identify new and current, and interesting, topics and cases,” Scheinfeld said. “It really forces non-complacency, keeping me current and on top of the law.”

With a hectic schedule, Scheinfeld fits research and writing the article into his travels to and from Baker Botts’ New York office in the iconoclastic 30 Rockefeller Center. Coming up with a topic is the most challenging aspect of producing a column, he confessed.

“Once I have that, I pretty much can write the article while I commute, in the span of a few train rides is when I typically write them,” he said. “I’ll also occasionally call on a junior or new associate to assist, which is sometimes a good training or ‘get-to-know-you tool.”

After writing and editing more than 100 articles for the NYLJ, Scheinfeld has never regretted presenting his point of view on key issues of the day.

“I don’t want articles coming back to haunt me or anyone at the firm.” he explained, although it happened once early on when an adversary cited in a brief an article against Scheinfeld, attacking a position he was taking in the case.

“He was flat wrong, the article didn’t stand for the proposition he cited it for,” Scheinfeld recalled. “He was sloppy, but I know opponents will Google or Bing my name and discover all my articles, so I’m careful.”

Being careful does not prevent Scheinfeld from exploring complex issues readers of the NYLJ want explained or explored. Cases involving Baker Botts, however, are off limits.

His most recent column -- “Time for a Respected Standard In Determining Patent Eligibility?” -- is a prime example of the types of topics Scheinfeld and Bagley tackle six times a year, and plan to keep providing NYLJ readers “forever.”

“Well, that’s a slight exaggeration,” Scheinfeld confessed, “but I do enjoy writing them and the feedback I occasionally get.”

In addition to his first column in 1995 and his most recent column, Scheinfeld selected three others as among his five favorites:

• “Supreme Court Reaffirms Doctrine of Equivalents,” March 1997

• “State Street: Virtually Anything is Patentable,” September 1998

• “What Internet Start-Ups Should Know about Patents,” May 2000

About Baker Botts L.L.P.
Baker Botts is an international law firm of approximately 700 lawyers practicing throughout a network of 15 offices around the globe. Based on our experience and knowledge of our clients’ industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Throughout our 173-year history, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit

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