SFIA Member Spotlight — Carter, DeLuca, Farrell & Schmidt, LLP

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Frank Sardone, Partner at Carter, DeLuca, Farrell & Schmidt LLP, discusses how years of career experience in intellectual property has prepared him to serve as an optimal asset to companies in the sports & fitness industry who are looking to protect their brand as they grow into bigger industry players.

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Frank Sardone, Partner

When was Carter DeLuca Farrell & Schmidt LLP founded?

Sardone: Carter, DeLuca, Farrell & Schmidt (CDFS) was founded in February 2002, and I was hired by them on day one.

Would you be able to provide some background on how and why the firm started?

Sardone: The founding partners of the firm, Carter, DeLuca, Farrell and Schmidt, started their own law firm in 2002, breaking away from their prior law firm. They had a different philosophy and wanted to pursue their own business model.

CDFS started with 10 attorneys and have grown now to about 40 attorneys. The practice focuses on intellectual property, and specifically acquiring intellectual property rights for clients via Patents and/or Trademarks, and clearing of products, slogans, names and branding. CDFS routinely prepares and files Patent and Trademark applications, prosecutes those applications before the U.S. Patent and Trademark Office, various levels of clearance work including State-of-the-Art, Patentability, Right-to-Use, Due Diligence, and Trademark searching. We do not litigate (as an aside).

CDFS is located in suburban Long Island, so we are not far from New York City. The founding Partners of CDFS have each been practicing law for well over 30 years, with time spent practicing at some top New York City firms in the past. At CDFS, our clients are getting top level service and attentions without the higher than average billing rates often attributed to some of the law firms in New York City.

When did you join the firm?

Sardone: As mentioned above, I have been with CDFS since its inception, since day one. In fact, I was one of their first hires, and am proud to have been with CDFS for some 16 years and counting.

What is your role?

Sardone: I am now a Partner, and have been since 2009. I’ve grown with them, and, over time, have taken on more and larger responsibilities, including, for example, being the hiring partner, and the Summer Intern Coordinator. In these capacities, I am in charge of receiving and reviewing resumes, making hiring recommendations to the partnership, recruiting and bringing in new attorneys, conducting interviews, coordinating the Summer Internship curriculum, as well as other business responsibilities.

Also, as my experience has grown, I am overseeing larger client Patent and Trademark portfolios, and providing clients with in-depth strategic business development planning, delivering a high-quality product and level of attention, with an eye toward saving clients on costs. My clients range from Fortune 100 companies, to Start-Ups, to small businesses, to individuals, with each client receiving all the attention they need and deserve.

I have also been asked, in the past, to present on various Intellectual Property topics for various trade associations, organizations, universities, inventor clubs, and plan to continue to do so in the future, and possibly for the SFIA.

What inspired you to become a lawyer?

Sardone: All of at CDFS practice Intellectual Property law, including patents, trademarks, and copyrights, so we all have a technical degree or background, meaning a degree in the hard sciences: engineering, chemistry, biology, computer science, physics, math, etc., including having pharmacists and PhDs. I started out going to school to become an engineer, a mechanical engineer in fact, because I loved science, and loved to build things, take things apart to see how they work, and then rebuild them. As I was working through my engineering degree, I did not see myself fitting into the traditional role of being an engineer on a day-to-day basis. I was then exposed to the world pf patents, and the more I looked into it, the more I thought it was fascinating that I would get to interact with engineers at the cutting edge of developing technology and products, and yet still apply some of my math and science skills and education to understand what they were working on. As a Patent Attorney, I would be able to help them acquire legal rights in their intellectual property or to develop their products, and hopefully see them get to market. So, it was really fascinating for me to be able to merge science and law, and it’s working out really well.

How is your business related to the sports and fitness industry?

Sardone: On the sports and fitness side, CDFS is more than capable of helping companies and individuals acquire intellectual property rights for the sports and fitness goods and/or services they are providing, and to provide guidance to help them steer clear of infringing the rights of others. Specifically, if sports and fitness companies or individuals are developing products/services that they believe are worthy or deserving of patent or trademark protection, we can help them acquire those patent and/or trademark rights. Patents basically provide a patent holder with a mini-monopoly to be able to prevent others from making, using and/or selling that which is covered in the patent. And Trademarks basically provide a trademark owner with name or brand recognition. So, acquiring patent and trademark rights may be extremely worthwhile as sports and fitness companies develop their businesses. While acquiring patent and/or trademark rights may be important in many instances, it may not be necessary in all instances, and CDFS can help to make that determination.

Additionally, if acquiring patent and/or trademark rights is not an option, a company or individual entering into the sports and fitness industry, with an entirely new, or with a competitive product or service, should spend some time to ensure that the new, or competitive product, does not infringe the patent and/or trademark rights of others.

As mentioned above, Trademarks provide name and brand recognition for goods and services, whether with a name, slogan or logo. As it relates to the Sports and Fitness industry, if you take a look around, there are many companies that have built large business based on their reputation for providing quality products that consumers can trust and enjoy. But these companies were not always big, they started somewhere, with the seed of an idea or a name, and slowly, over time, with hard work and effort, they were able to grow their businesses to the size they are today. CDFS can help to plant those new seeds, and help to tend to them as they grow.

How big is the firm overall?

Sardone: About 75 total, including some 40 attorneys and staff.

Is everyone located in New York?

Sardone: No actually, we have grown and spread since CDFS first opened its doors in 2002. We’ve grown to a point where we have attorneys across the country and internationally. We have attorneys that have moved for personal or family reasons, whom we enjoy working with and who wish to continue to work with us. So, we now have attorneys in California, Utah, Kentucky, Washington, DC, as well as internationally.

How has the law firm changed or evolved since you started?

Sardone: Since we started, we’re adopting and adapting to new technology — going paperless, so we are no longer carrying those big files of paper. We’re more interconnected now than ever, with better web-meeting capability — It’s easier to work with our attorneys that are not in our office, so we can still maintain the same quality of work without them having to be here.

While we have grown over the years from 10 attorneys to 40, I’d like to think we’ve stayed true to our core principles, which is providing high quality product and counseling at a fair value. We like to educate our clients about the technology and the law, and what they will be getting into as we travel down the intellectual property road. We try to develop more of a partnership with the clients, and have them not only think of us as hired contractors at work. We would like to be there for them as a business partner, to help them make decisions along the way, and engage us (hopefully) early enough in the process, that they don’t create issues for themselves.

Which industries do you most commonly deal with?

Sardone: Primarily, I deal with the medical industry, and specifically the medical device space quite a bit. Therefore, I’m thinking the sports and fitness industry might be a nice logical extension when you consider training and rehabilitation equipment and the like. I also do work in the toy and game industry, and many toys and games have some sporting or competitive portion to them. And I do work in the start-up community, which includes household products, consumer goods and the like.

Which type of cases do you most enjoy working on?

Sardone: I enjoy working on cases where the inventors are really excited about the product. They’ve spent some time, they’ve done some research into it, and they’ve really flushed out a well-developed idea, and they have a passion about their product. I especially enjoy working on those cases that have moving pieces and parts, the more, the better — My background is in mechanical engineering, so I gravitate most to devices that have moving pieces and parts, for example, exercise, training and rehabilitation equipment. Just understanding how all the parts work and the interconnection of those parts, how they all come together to perform whatever task needs to be done.

What’s the work environment like in your office?

Sardone: We are in suburban Long Island, so we strive to have a nice balance of personal life and work life. The culture is pretty relaxed — We are business casual, and it really helps keep everybody comfortable and welcome. Our doors are almost always open and we encourage and invite everyone to interact with each other, we are very collegial. As in many firms, we try to educate our new hires, however, due to our size and efforts, we take a more hands-on approach to doing so, where our new hires are not left to figure things out for themselves. We try to continuously bring in interns, whether they are undergraduate interns or law school interns, we try to help them learn about the legal career, and get some insights into the profession, and specifically about Intellectual Property. We also go out into the community and sponsor events, and give back in the form of education. For example, I go to local inventor meet-ups on a monthly basis, and am there to answer questions and to help provide guidance, just to give back to the community.

Do you see yourself expanding into new industries in the near future? If so, which industries?

Sardone: I think we can certainly expand into new industries, hopefully in the near future. The sports and fitness industry seems to make a good deal of sense. Our backgrounds, as Patent Attorneys, allows us to expand into any industry that’s needing. It’s more of a matter of trying to identify those individuals that need our services or are unhappy with their current situation and are looking to change what they’ve been doing from an intellectual property stand point because they’re unhappy — whether the legal costs are out of control, they are not getting the service and attention they desire or other reasons. We have the ability to handle that need for many industries. Me specifically, I am looking at the sports and fitness industry as a nice extension of the medical device, and toys & games work that I am already doing. So, I am introducing myself to the industry to see if I’m the right fit for them.

How to do see your firm overall expanding or changing in the next 5 years?

Sardone: Well, we’re not status quo in the sense that we’ve reached a maximum number of attorneys. We are willing to hire and train and educate new attorneys, as long as the work is available. So, we are actively publicizing ourselves — so people get to know us, who we are, what we do, and what we can do for them. By attending events and getting out there, to more diverse events, I think CDFS can become more recognizable, and can become a source for the community to reach out to for help to grow their businesses and avoid infringing the rights of others.

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