Gesmer Updegrove LLP- Practice Areas: Consortium & Standards

GU created and hosts www.ConsortiumInfo.org, the most complete and comprehensive site on the topics of standard setting and consortia on the Internet. GU also publishes the Consortium Standards Bulletin, a free monthly electronic newsletter of articles and news on standard setting and consortia

Since 1988, Gesmer Updegrove has represented more than 70 standard-setting and promotional consortia, including many of the largest high technology consortia in the world. In most cases, the firm assisted in the structuring and launching of the organization, and has represented it ever since.

In the process, GU has acquired a great depth of knowledge in how to structure, operate, evolve and dissolve successful consortia in an effective fashion. Although typically we work with the founders of a consortium from the earliest stage, GU has also frequently been engaged to convert a non-incorporated consortium into a corporate form, or to succeed earlier counsel. We have also been retained by major technology companies to advise them on implementing a standards strategy. Andrew Updegrove, who leads the consortium and standard setting practice group, is nationally recognized for his leadership in the development of consortium structures, best practices, and intellectual property rights policies.

Areas where special expertise is necessary in representing consortia include non-profit representation issues, trademark law (including with respect to certification testing), intellectual property ownership and transfer, domestic and international antitrust, and governance issues.

Besides pure legal skills, GU brings a wide knowledge of practical, business and industry realities to its representation of consortium clients and provides business consulting as well as legal services in order to help create and operate successful consortia. Consistent with our role as the most active law firm in the standards and consortium area, GU has created and maintains www.consortiuminfo.org, a site which is intended to provide the most comprehensive source of information on the Internet regarding the most important topics affecting standard setting and promotional consortia, including:

Founding companies we have advised include Adobe, American Express, Eastman Kodak, Hewlett-Packard, IBM, Intel, Microsoft, Mastercard, Motorola and Visa, among many other companies, both large and emerging.

At any given time, we are assisting in the formation of several new consortia, and representing dozens already formed.

Meeting with representatives of founding companies to advise them on structuring consortia from a global, as well as a national, basis
Advising on appropriate member classes, rights and membership fees
Setting budgets and making staffing decisions among contributed, hired and outsourced alternatives
Merging consortia and trade associations in order to consolidate resources and marketing messages
Structuring umbrella organizations, which then acquire or host other consortia and standard setting groups
Developing intellectual property policies and technical committee policies and procedures
Developing and implementing certification testing programs
Searching and filing trademarks and logos on a worldwide basis to support global branding programs
Developing and implementing intellectual property licensing programs to permit industry-wide implementation of specifications, while minimizing patent infringement risks
Restructuring consortia to maintain viability and value in rapidly changing technical environments
Structuring employment, compensation and competitive benefit programs for senior consortium staff
Providing antitrust analyses of proposed courses of action
Defending consortium clients and member groups in patent infringement actions
Structuring for-profit subsidiaries to carry on a variety of services and activities, while providing equity incentives to consortium management for recruitment and retention purposes
Structuring partnering arrangements to implement tradeshows on a worldwide basis

Each of these attorneys spends the balance of their time representing technology companies.

The team currently comprises nine attorneys (including five partners), most of whom have been working with our consortium clients for many years. Our consortium practice is headed by Andrew Updegrove, who has worked with all of our consortium clients since the inception of the firm, and has given invited testimony to the Department of Justice and the Federal Trade Commission on the topics of standard-setting and related intellectual property rights issues has also written and spoken extensively on consortium and standard setting topics. Selected articles written by Mr. Updegrove are available below by clicking here.

While we believe that we are the most experienced law firm in the country representing technology consortium clients, our hourly rates are significantly lower than those commonly charged by large law firms in major cities.

In addition, the efficiency of our delivery of services is substantially augmented by the many templates that we have evolved over the years to provide effective starting points to accelerate the formation of consortia and the later implementation of important programs. These templates also assist our clients in focusing their goals and achieving consensus among multiple founding companies.

As an example, we have created a detailed formation proposal template, which addresses goals, structure, budget, staffing and roll out schedule. We have also developed a complete intellectual property rights program, including overview, policy, contribution, voting, disclosure licensing and related forms. Other examples include formation checklists, charters, by-laws, antitrust memos, technology licenses and formation quotes. Recruitment is facilitated when a consortium is formed based on this model, due to the fact that almost all prospective members of a new consortium are already members of another group represented by GU and formed using the same model. The consortium model created by GU has in fact become a standard in its own right.

Current and past consortium clients of the firm include the following (an asterisk indicates that the firm has represented the client as general counsel, in most cases since inception):