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Excellence in Intellectual Property Law

Connors & Associates PC is Orange County‘s Boutique Patent Law Firm for Inventors and Entrepreneurs

Connors & Associates PC is Orange County‘s Boutique Patent Law Firm for Inventors and Entrepreneurs

“In the broadest sense, our job at Connors & Associates is to help people make their American Dream come true,” says John Connors, who launched the boutique patent law firm in Orange County in 1983. Today, more than 30 years later, the firm has grown to include his son Thomas Connors, and grandson Dylan Connors, who together as a family-run firm, specialize in obtaining patents for clients that can be successfully enforced in court. Although the Connors men are not litigators, they create the patent lawsuits.
“Our firm’s niche lies in securing a patent that will win in court. This does not mean we have nothing to do after the patent issues. We work closely with litigators in preparing patent infringement lawsuits, and provide an opinion explaining why one or more claims of the patent are infringed. Patent claims are the legal definition of the invention covered by the patent. Because patent attorneys are responsible for obtaining the claims, the basis for the lawsuit, they can be more powerful than litigators. We potentially create a new lawsuit with each new patent we obtain for a client,” John says.
Continuing, John adds, “When you file the patent application, you can’t later rewrite the disclosure of the invention, but the claims can be amended, provided the original written disclosure supports the amendment.” Since one cannot foresee the future, the law allows filling continuation applications based on the original patent, adding more claims. This enables the inventor to guard against others easily designing around the patent. “Unlike litigators who must prove the facts in a trial, patent attorneys write the facts. In effect, what goes on trial in a patent lawsuit is the patent itself. The issue at hand therefore becomes: Is the claim valid and does it cover the accused product?”

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Early Experience Leads to Establishing a Niche
“I’m from the South Side of Chicago, and upon graduating from college with a degree in Chemistry, I realized I didn’t want to hang out in a lab, or sell chemicals. A classmate introduced me to his father, a partner in a big Chicago patent law firm. It was apparent to me being a patent lawyer was a very good livelihood. So, I decided to go to law school with the objective of becoming a patent lawyer, too” John recalls.
After graduating from law school John would spend the early years of his career as an employee for big corporations. “I worked for Standard Oil, Brunswick, and then moved my family to California to work for TRW where I managed its aerospace and energy corporate patent department in Redondo Beach. I learned a lot, most notably how a big company has access to an army of lawyers and can bury its legal adversaries in huge legal expenses. But I felt like I was just another brick in the wall,” John says.
A fortuitous opportunity presented itself, which would prove to be a game-changer in how John chose to put his patent law expertise to use. “The first client I got on my own was Dr. George A. Lopez, M.D., founder of ICU Medical, Inc., based in San Clemente. I authored his original patents that prevented competitors from copying his inventions,” John says of the beginning of his relationship with the founder of the NASDAQ company. His talent earned him a place not only as Dr. Lopez’s patent attorney, but for more than 25 years John would serve on ICU’s board, including the audit, compensation and governance committees, before retiring as lead director in 2015, when the publicly traded company was valued at over $1 Billion.
“As a board member, I approved millions of dollars in attorney’s fees spent on enforcing ICU’s patents after discussing their strengths and weaknesses with the litigators appearing in court and whom I interviewed and approved before hiring. They were enforcing the patents I authored,” he says.
With that first opportunity to work with entrepreneurs, rather than for a corporation, John launched his own firm. “I like helping clients make dreams come true,” he says. Thus, after leaving TRW, he hung out his own shingle, and become what he calls an “IP specialist” for startups, small businesses, entrepreneurs, and independent inventors. “Big corporations don’t need patents to raise seed investments like startups do. Also, a small company would have to be crazy to infringe the patents of a company like IBM. Occasionally the Goliaths will engage in patent warfare, but usually settle before trial.”
To that end, John decided to focus his efforts on serving startups, small business owners, and individuals. Though today the firm has developed an expertise in medical device and instrument technology, John says that he’s written patents for inventions in myriad industries. “I’ve done it all— copy machines, chemicals, satellites, oil refining, metal fiber technology, control systems, really anything that can be dreamed up by independent inventors.” And that’s just one of the many reasons he says he’s grateful for trusting his gut, and forging out on his own. “I’m so glad I went into private practice. We now have clients all over the country, and work with attorneys in all the major industrialized countries to protect our clients’ intellectual property throughout the world.”

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Expanding the Standards of Excellence in Patents
A second reason John continues to be grateful that he made that decision to practice patent law on his own terms has everything to do with turning his solo practice into a family affair more than a decade ago. As a corporate board director, manager of a corporate department, litigation strategist, and student of a wide variety of scientific fields, John says that the opportunity to work with his son Thomas on a daily basis these days, is a dream come true.
“I have spent over a decade training Thomas to be a highly competent intellectual property attorney, holding him to the highest standards of excellence in the field. He is very knowledgeable about all aspects of intellectual property law, including patents. He’s been working with me for almost 12 years, conferring with all the firm’s clients, reviewing the patent applications I have drafted, drafting patent applications that I review, responding to office actions by the patent examiners, filing international patent applications, doing all aspects of the firm’s trademark practice, including international trademark registrations. I concentrate almost exclusively on drafting patent applications. Thomas does almost everything else,” John says proudly.
Interestingly, at first blush, Thomas wouldn’t necessarily seem a likely candidate to become an IP and trademark attorney. “I studied music composition at UCLA, and was focused on performing arts, such as theatre and music,” Thomas says. However, a suggestion by his grandmother changed everything. “My grandmother was in her 90’s and suggested that I should go to law school,” Thomas recalls. Something about the idea frankly made a lot of sense. “I was very involved in music composition,” Thomas says. “I saw I would be composing legal documents. Composition is really at the heart of what we do,” he says. Laughing he continues, “I don’t think I’d be in business with my dad if he were a criminal lawyer, but being able to help people create intellectual property did appeal to me.”
John insists that Thomas is being humble. “He is absolutely a master of his craft, and an expert in what I call our Three C’s: We write all documents clearly, comprehensively, and concisely,” John says. Moreover, “Thomas is outstanding at breaking apart any rejections by patent examiners. In the last ten years, there have been a lot of changes to the patent law: The America Invention Act of 2013 awarding a U.S. patent to the “first-to-file” rather than “first-to-invent,” and Supreme Court decisions having a major impact on the law of obviousness and patentable subject matter. Thomas is at the forefront of all them, and has been batting 1000% in this work,” John adds.
Furthermore, since Thomas joined forces with John, the firm has been able to expand their services to better assist greater numbers of clients. Although their patent work—including international patents, patent prosecution, patent validity opinions and patent litigation strategy— accounts for the majority of their business, the firm’s services also include copyright registrations, trademark registrations, and licensing negotiations.

Premier Protection of Intellectual Property
For clients seeking copyright protection, Thomas provides both registration services along with infringement counsel, to clients primarily of an artistic bent. “Photographers, authors, musicians, and bands need to protect the expression of their ideas,” Thomas says.
Still other clients will need assistance with trademarks, which Connors & Associates also provides. From giving trademark validity opinions, to trademark searches, to trademark registrations, the firm’s mission is always to protect their clients’ brand identity, so that its distinctiveness cannot be copied. “In some cases, a trademark is more important than a patent,” Thomas says.
Yet another area of expertise that Thomas provides to clients comes in the form of drafting Work for Hire Agreements. “Work for Hire Agreements must be clearly and concisely drafted to ensure that all intellectual property is protected in a purchase or sale. These agreements can be paramount to safeguarding copyrightable subject matter.”
The firm also offers comprehensive counseling to clients in drafting the patent application, which Thomas says is particularly fascinating. “Some ideas may look simple, but we help clients see their inventions from the perspective of testifying in court before a jury. We are preparing the inventor to be a star witness. We are working with the inventor to present to a patent examiner a complete written disclosure explaining the details of the invention and several different embodiments, typically illustrated by a drawing. When being cross-examined during a trial, we want the inventor to be able to refer to the drawing and written specification of the patent and explain to the jury why his or her invention is not suggested by the prior art.”

Future of the Family Firm
The family-run firm has also added a third generation to its ranks, which both John and Thomas find to be a boon to their practice. John’s grandson Dylan Connors has joined the firm as an intern while he completes his degree in computer science at Cal State Fullerton. “I’m teaching Dylan how to draft claims that are allowed by the patent examiner and cover an infringer’s product or method. He will be eligible to take the patent agent examination upon graduating,” John says. The full crew, which also includes Beth Ellison, executive assistant, who has been with the firm for more than 20 years, operates like a well-oiled machine, in terms of both service and efficiency. “Since 2010, I’ve been operating an essentially paperless office,” says John. “All legal documents we prepare, including patent and trademark registrations, are filed with the Unites States Patent and Trademark Office over the internet. We communicate with our worldwide associate network over the internet, transmitting documents to attorneys registered to practice in the countries where our clients seek patent and trademark protection. Everyone in the firm works from their own home office, and we meet weekly face to face. Of course, we do keep in daily communication with each other and anyone else as needed by text, skype, email and mobile phone. We meet prospective clients and current clients at their places of business, or at a conference room in Newport Center in Newport Beach,” John says.

Venture Charity Fund
The efficiency with which the firm runs has enabled John to launch a unique venture benefitting startup companies, which he says is very rewarding. “I am in the process of starting a Venture Charity Fund that qualifies under 501(c)(3) to give grants to qualified medical startup companies,” John says. “Because of my experience as a board director of startups, I hope to be able to help the entrepreneurs founding these companies to avoid mistakes that too often kill startups.”
With Thomas taking over the reins of managing of the firm’s business and operations, John says he’s thrilled to do what he does best—write patents. However, he’s also excited about the time that he has now, to venture into new endeavors, which involve educating others. For example, he wrote the book Patent It and Grow Rich, which is for sale on the firm’s website. Incidentally, the purchase of the book also includes a consultation with Thomas. In addition, John has been able to spend time speaking to classrooms of entrepreneurs in local schools, while also maintaining his status as an expert-in-residence in the Applied Innovation Program at the University of California, Irvine. He says he is also excited to have time to identify qualifying startups that his Venture Charity Fund will be able to assist.
Suffice it to say, John and Thomas are looking forward to a bright future, all the while continuing to help entrepreneurs, inventors, small businesses, and any innovator to protect their ideas, products, and methods, using virtually all forms of IP. Along the way, the two plan to continue having a good time doing it. “Every client and every case is different, which keeps it challenging. I love the fact that I’m never doing the same thing over and over again,” says Thomas. John seconds that sentiment, “If you enjoy what you do, you never work a day in your life—it has always been enjoyable and challenging. That has been my experience in patent law.”

Contact
Thomas Connors
thomas@connorspatentlaw.com
949-833-3622
connorspatentlaw.com

Karen Gorden

Karen Gorden is a Staff Writer for Attorney Journal.

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About the Author: Karen Gorden is a Staff Writer for Attorney Journal.

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