While the biotech explosion in San Diego is apparent, few are aware of the role intellectual property law played in its growth. It began in the early 1980s when startup Hybritech developed an innovative monoclonal antibody pregnancy test. This breakthrough revolutionized the industry, and Hybritech was forced to aggressively protect its patent — or die. With the aid of intellectual property attorneys from Brobeck Phleger & Harrison, Hybritech successfully enforced its claim against several giant pharmaceutical companies.

Many small San Diego biotech companies took notice.

The lesson? Startups could prevail by not only patenting their work, but by going to court to protect those patents. As San Diego’s biotech revolution boomed, it was followed by rapid growth in the electronics and telecom industries. Within two short decades, this technological boom transformed San Diego from a city with a handful of patent attorneys to a global center for intellectual property law.

John Benassi, a partner with Brobeck, says the number of patents filed by San Diego companies in 1999 was a record-setting 1,828, vs. a mere 261 in 1980. “Intellectual property law is booming,” he says. “San Diego has become another Silicon Valley and our work has doubled and tripled here. IP is important to companies to maintain market share. If they’re a small startup, it’s the only way to stop huge companies from running them over. And in downturns, there’s more of a likelihood to use litigation to gain market share.”

Like many IP attorneys, Benassi didn’t start with that specialty. Born in Northern Italy, he obtained undergraduate and graduate degrees in engineering. During a college job, he worked with a patent attorney who encouraged him to attend law school. His technical background has proved invaluable.

“Technology drives these new industries, and the law hasn’t caught up with it yet,” he says. “So we’re at the forefront of technology and law. That’s what makes it an incredibly exciting area.”

A widely published author in the IP field, Benassi has been involved with such cases as Lindows.com vs. Microsoft (operating systems), Bristol Myers vs. Gensia Sicor (chemotherapy drug cisplatin) and Amylin vs. University of Minnesota (diabetes drug treatment), as well as the Hybritech matter.

“People are beginning to realize the importance of IP,” he says. “It’s a very fertile area for litigation.”

IP now is an integral element of a company’s business strategy, points out Mitchell P. Brook, a partner with Luce Forward and co-chair of its technology law/intellectual property practice group. He has litigated many patent and trademark cases, helping companies obtain more than 1,000 patents.

“IP really goes to the heart of business,” says Brook, who has a background in mechanical engineering. “It goes to how a product is designed, developed and marketed. Biotech companies are finding they have to have a patent strategy in order to survive. That’s why major (law) firms are recognizing that IP is a valuable area.”

A recent landmark case in the Supreme Court confirmed the importance of IP. In Festo Corp. vs. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd., the court ruled on the doctrine of equivalence, returning to the former “flexible bar” standard for patent infringement. This is particularly important in fields like biotech, where patents are written more broadly to protect what companies are struggling to develop.

“The impact of this ruling is that it’s made patents more valuable than ever,” says Brook. “Now that companies don’t have to face the whole bar, they can be more aggressive in protecting their intellectual property. That’s why, as our society becomes more technology-centered, patents have become more important.”

Another factor in the rise of IP law is the considerable money involved. For instance, the patent infringement case of Polaroid vs. Eastman Kodak that Brook worked on resulted in a $900 million judgment for Polaroid. Awards like that are hard to ignore, especially when it comes time to finance a new product. In biotech, it can take $800 million to get a drug from idea to pharmacy shelves.

Investors realize the importance of strong IP as well. “There’s better awareness now of the value of an IP portfolio among investors,” says Jacob Reinbolt, a partner with Procopio, Cory, Hargreaves & Savitch LLP and head of its business and technology team.

Reinbolt’s background is in finance and securities, and he works extensively with technical companies looking for capital to develop products. For instance, he represented a technology company in the $50 million acquisition of all its shares of stock by an NYSE-listed company. In another case, he represented an American Stock Exchange-listed company in a secondary public offering that successfully raised $28 million.

Reinbolt enjoys this work because it brings out his creative side. “The people I work with tend to be very creative,” says Reinbolt, who enjoys oil painting. “Anyone who creates things needs to be protected. It’s often intangible ideas that are protected by patents, not just a bolt or a hammer.”

As technology continues to move at an increasingly frantic pace, Reinbolt sees an increasing need to protect ideas, especially with the Internet accelerating the worldwide nature of commerce. That’s why educating businesses about the value of IP law can be crucial. Sometimes, a jury needs to know about the different science and technology behind the patent, as well as the way the law applies. That means translating highly technical ideas into a language others will understand.

Mark Danis, who majored in philosophy, is particularly aware of the importance language plays in applying the law to technical issues. “A lot of battles fought in patent cases are about what the language covers,” says Danis, a partner at Morrison & Foerster’s San Diego office. A former software programmer, he specializes in biotechnology, medical devi-ces, telecommunications and software. “A lot of cases are won or lost based on a judge’s interpretation of the language.”

Danis is interested in technology. When a judgment can mean hundreds of millions of dollars, language becomes even more critical. “You can never be careful enough in wording the contract or patents,” he advises. “That’s why IP continues to be a critical piece of any company. Companies are willing to get patent protection because they know at sometime they will need it as an offensive or defensive weapon.”

Danis represented Alpha Therapeutic Corp. in its patent infringement case against Coval, receiving a favorable ruling protecting Alpha’s process for the purification of intravenous gam-ma globulin. “IP is just one more piece of insurance,” he says.

But firms that want to incorporate IP protection into their portfolios often have a problem finding attorneys with the necessary technical background. That’s why Richard Warburg, a partner with Foley Lardner, entered the IP field. A scientist with Brandeis in England, his colleagues were frustrated with how little patent lawyers knew about science. When his 70-year-old mother-in-law started law school, Warburg decided to do the same.

For this former scientist, the best part of his IP practice is meeting scientists at the forefront of their fields. “They tell you everything they’re doing,” says Warburg, an identical twin who specializes in DNA sequencing and cloning. “If you understand science, law and business, there aren’t many people out there who can do that. If you can, you’re playing with the big boys. And they’re spilling the beans on everything. I really enjoy that I’m helping them get into the marketplace.”

Warburg represented a company whose technology made it possible to decode the human genome and worked on another patent case involving the cloning of animals. “It’s an incredible field,” he says. “You feel like you’re contributing to something that directly affects mankind.”

As technology continues to escalate in breakthroughs and frequency of new generations, IP will continue to struggle to keep up. But the good news is that it has become an essential part of the way San Diego — and the world — does business.

“IP law is a very healthy field,” says Brook. “It boomed during the economic boom and didn’t crash with the Internet bust. I see that it’s only getting more important to our economy.”