4. What IP matters do you assist clients with the most?
My primary focus is preparation and prosecution of patent applications. In addition, I spend significant amounts of time counseling clients on a variety of patent-related issues, including patentability and clearance searches, patent landscaping, due diligence, and invalidity and non-infringement opinions. My background is in civil engineering but I have spent a significant portion of my career working on medical devices, electrical devices and aerospace.
5. What are the biggest challenges facing your client’s industry?
The biggest challenge facing the IP space is balancing the mandate of companies trying to protect their assets while adhering to tight budget constraints. When I first started practicing in 2002, the focus was much more on protecting IP. Now, there are a lot more corporate constraints in place.
Another challenge that affects my practice is keeping up with laws that are constantly changing. Arguments are shifting at a rapid pace, so it’s imperative to stay on top of the changes.
6. What trends are you seeing in your client’s industry?
The biggest trend I’m seeing is a bigger focus on what to protect and where. A lot more time is being spent making decisions on what to pursue patent protection for and where to protect it. The days of filing on everything everywhere are gone. Now, foreign prosecution has become more limited. In addition, more work is being done by the in-house attorneys. Many in-house law departments have taken over responsibility for overseeing foreign prosecution.
7. What excites you most about working with clients in this industry?
I enjoy working with new technologies and inventions. It’s exciting to work closely with energetic engineers who are passionate about what they do.
8. How has IP work changed since you first started practicing?
Companies used to stay out of the in-house practice of IP law, and would rely on outside IP firms to handle all their IP needs. This was consistent with the philosophy that all company IP should be protected at all costs. After the recent financial crisis, companies have changed their focus to protecting IP in a much smarter, practical and cost-effective way. It’s become a collaborative effort between innovators, owners and firms.
9. What is your favorite aspect of your practice?
My favorite aspect of my practice is brainstorming new and creative ways to protect an invention or idea. I enjoy working closely with my clients in developing portfolio strategies to better protect their inventions.
10. What do you enjoy most about working at KDB?
I enjoy the flexibility that KDB allows me to have, by working remotely I am able to have a reasonable work life balance. In addition, the KDB model allows me to manage my own clients, while meeting my client’s budget constraints.
11. What activities do you enjoy when you’re not at work?
When I’m not working, I spend time with my wife and my two sons. Both of my sons play sports and I enjoy watching them play. When time permits, I enjoy getting out for a round of golf.