4. What IP matters do you assist clients with the most?
My educational background is in electrical engineering and computer science and I worked as a software engineer for several years before becoming a lawyer. Most of the matters I work with clients on are software-related matters. I do a lot of machine learning, artificial intelligence and robotics-related patents. I also have extensive experience in magnetics, optics, machine vision, and MEMS. I do mostly patent prosecution, infringement analyses and right-to-use studies.
5. What are the biggest challenges facing your client’s industry?
Competition for talent. I do a lot of work in the academic sector and there is a definite “brain-drain” from academia to industry. Other challenges include competition from countries having less-developed patent systems and inconsistent application of patentability laws by the patent office.
6. What trends are you seeing in your client’s industry?
Clients are becoming more concerned about getting value for their IP-related dollars. Many are looking for flat-fee type arrangements as opposed to bill-by-hour arrangements. Clients are being much more careful about where they spend their money. For example, clients are increasingly thoughtful about filing patent applications in foreign countries.
7. What excites you most about working with clients in this industry?
Probably the intellectual challenge. My background in electrical and software engineering has prepared me well for work on cutting edge technology. It’s satisfying to see innovative technology being developed today that evolves into real-life products. For example, self-driving cars. I’ve done a lot of work on machine learning, machine vision and pattern recognition that will be used extensively in this field.
8. How has IP work changed since you first started practicing?
Patent laws are constantly evolving, especially those around patentable subject matter. As a younger attorney, I prosecuted a patent case that was refused by the patent office and eventually went to the Supreme Court. The Bikski case has become the basis for a whole line of cases addressing what is patentable and what is not. The law in this area is still unsettled and applied inconsistently by the patent office. It is necessary to constantly stay educated to be able to provide effective representation for the client.
9. What is your favorite aspect of your practice?
Interacting with patent examiners. It is interesting to see how their interpretation of a patent application that I have worked on is different from what I intended.
10. What do you enjoy most about working at KDB?
For me, KDB has offered an opportunity to work from my home office, which I find very convenient. Also, the attention to detail and quality of work product put out by the attorneys at KDB is very high, and I enjoy being a part of that. The people are all highly intelligent and accomplished in their fields. The support staff are excellent as well and the process is more organized than at other, larger firms that I have been with.
11. What activities do you enjoy when you’re not at work?
I love to travel with my wife and family. We have been to many amazing places around the world, although my favorite type of vacation is the beach. I have two sons and we spend time together skiing or fishing. We are also a big sports family, especially hockey, and like watching both hockey and baseball. I do a lot of reading, mostly fiction, and I am fascinated with new technology and gadgets. I have been known to enjoy a scotch and a cigar on the weekends.