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| Patent Lawyer O'Banion Leads IP Specialty Firm "The
life of a patent solicitor has always been a hard one."
John O'Banion, one of Sacramento's leading intellectual property practitioners, has made the "hard" life of a patent lawyer look easy. Within the 15 years since he passed the patent bar, O'Banion has authored more than 380 patents, made his mark as an intellectual property litigator, and built his firm of O'Banion & Ritchey into the region's largest intellectual property specialty firm. O'Banion is so highly regarded in his field that a number of Bay Area clients bypass the legion of technology lawyers in their own backyard and travel to Sacramento to be represented by O'Banion. But O'Banion did not start out as an intellectual property lawyer, or even a lawyer at all. He graduated with an electrical engineering degree from UC Davis, and was hired by SMUD, working as an engineer. Soon after he started at SMUD, O'Banion's interest in law was piqued by his friend David Hurd. O'Banion and Hurd had both spent their childhoods in Santa Barbara, then both coincidentally moved to Elk Grove during their high school years, and then both landed at UC Davis for college. With so much serendipity on their side, it is no surprise that Hurd and O'Banion remained friends. After college, Hurd attended McGeorge, and one night O'Banion asked him what law school was like. Hurd answered by sharing his practice exam for the first-year agency course. O'Banion was intrigued by the puzzle aspect of the question, and realized that lawyers use the same sort of analytical skills as engineers. O'Banion was hooked, and within a year he had matriculated at McGeorge. During law school and for a number of years afterward, O'Banion continued to work at SMUD, and eventually he assumed responsibility for negotiating power contracts. O'Banion later left SMUD for the life of a corporate lawyer, and became General Counsel at Resource Management International, Inc. But just as Hurd turned O'Banion to law, James Ritchey introduced O'Banion to intellectual property practice. At the time, Ritchey was one of the few Sacramento lawyers practicing in the field of intellectual property, and he suggested to O'Banion that, as an electrical engineer, O'Banion would have great opportunities in patent law. Ready for a new challenge, O'Banion took and passed the notoriously difficult patent bar in 1988 and, along with Joe Gerber and Ritchey, formed Gerber, Ritchey, and O'Banion the next year. Like most lawyers who start their own firm, O'Banion confesses, "We didn't know if the phone would ring." But ring it did, and at the beginning, the trio took turns taking the calls and fielding new clients. They divided up the work by technological expertise, with Ritchey handling the chemical matters, Gerber taking the biological applications, O'Banion handling the electrical cases, and all three working on mechanical inventions. And O'Banion's phone is still ringing. O'Banion and Ritchey now has six lawyers: O'Banion, Ritchey, Steven Smith, Richard Wiesner, James Peacock, and Duke Amaniampong, along with patent agent Roger Rast. This makes it the biggest IP-only firm in Sacramento, with a client list that rivals the national firms, including Sony, the University of California, Honeywell International, Inc., Delphi Automotive, Delco Remy America, California State University, Emory University, and the State of California. He is the managing partner of his firm, but O'Banion still carries more than a full caseload. Indeed, his colleagues marvel at his ability to accomplish so much in so little time, with no diminishment in quality. As James Peacock puts it, "John has the highest bandwidth of any lawyer I know." O'Banion practices in all areas of intellectual property practice - patents, copyrights, trade secrets, unfair competition, and trademarks. Although he spends most of his time on non- litigation matters these days, O'Banion has been an active litigator in the past, with significant trial experience in both the Eastern and Northern U.S. District Courts. O'Banion has even litigated the question of whether dog hats are copyrightable! (They're not, thank goodness.) In reflecting on how IP practice has evolved since he started out, O'Banion is worried that constant changes to the rules have turned it into a "crystal ball" practice, with today's patents being judged by tomorrow's rules. For instance, O'Banion notes that for many years patent lawyers freely amended their claims during prosecution, but the Federal Circuit and the Supreme Court ruled that such amendments could weaken the patent, and then applied that rule retroactively to patents drafted under the old system. Although O'Banion thinks that IP practice is getting more difficult, he has no regrets, and he recommends the field to new lawyers, as long as they have good writing and technical skills, and a willingness to sweat the details. John not only practices in the field of intellectual property - he also has some of his own. Early in the domain land-rush of the mid-1990s, before many major law firms even had web sites, O'Banion registered the highly valuable domain name "intellectual. com," which his firm continues to use today. He also has been quite active in the State Bar, and served as Chair of the Intellectual Property Section during 2000 - 2001 after having been appointed to the Executive Committee in 1996. Sharon Sandeen originally recruited O'Banion for State Bar leadership, and since then O'Banion has made a point of trying to get at least one Sacramento practitioner on the IP section Executive Committee every year. Currently, O'Banion is on the Board of Governors' task force on sections, and is co-Chair of the Council of State Bar Sections (the Council represents over 58,000 attorneys in California). O'Banion has been married for 29 years to Pamela O'Banion, and they live in Fair Oaks with their daughter, Katie, who is a senior at Sacramento Country Day School. O'Banion plans to be a frequent visitor to New England over the next few years, since his daughter is entering Wellesley next fall. O'Banion is known to be something of a bon vivant, and he defies the conventional wisdom that only those lacking the personality for tax work should enter patent law. Colleague Mavis Gallenson describes O'Banion as the patent law equivalent to the dapper Archie Goodwin of Nero Wolfe fame: "impeccably dressed, suave, with a smart-alecky streak." Gallenson recounts that O'Banion has been known to splurge on bottles of rare tequila - for the whole table. O'Banion's success may look easy, but I know from personal observation that no one works harder. We practiced in the same building for awhile, and I would often see him heading for his car well into the night with a briefcase (more like a suitcase) full of homework. So maybe patent lawyers do have a hard life after all, but at least they can enjoy some tequila at the end of the day! The author, Dan Maguire, practices law in Davis. |
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