4. What IP matters do you assist clients with the most?
My practice is largely devoted to IP counseling and strategy. KDB acts as in-house IP counsel for several companies, and those companies need practical business-oriented legal advice on a range of IP-related issues, many of which have nothing to do with typical patent and trademark prosecution.
Our clients need IP protection strategies that fit their cost model. For many companies, gone are the days of patenting everything everywhere, so we work with them to identify their most valuable IP and set our focus on protecting it in a way that best suits their needs. Our clients also need practical strategies for minimizing risks associated with designing too close to a competitor’s patent. Increasingly these issues are global in nature due to outsourcing of manufacturing and widening customer bases. Few large companies today limit their patent portfolios to the US.
Whatever advice we give, it must be tied in to sound business practices. We can’t make the business decisions for them, but we can and do provide them with legal context and implications that enable them to make decisions that minimize risk, and that allow them to understand the risks they are taking.
5. What are the biggest challenges facing your client’s industry?
Ever tightening budgets vs. enhanced industry focus on the need to protect the IP they develop. It is increasingly a balancing act. As mentioned, many clients simply cannot afford to patent every new idea they develop.
6. What excites you most about working with clients in this industry?
Our clients all have unique, interesting and challenging IP issues. And their issues are global in nature. It is great to interact with counsel in other countries to understand how subtle differences in laws around the globe can have major impacts on the decisions our clients make, some on a daily basis.
And almost exclusively our clients are nice people and a pleasure to work with. They are also sophisticated so they understand the nature and impact of the advice we give them.
7. How has IP work changed since you first started practicing?
Aside from changes in the law, the work itself is largely unchanged. I began practicing when large IP boutiques dominated the field. It was a fantastic learning experience, and I got to work with some of the leading attorneys in the field.
In the early 2000’s general practice firms began to develop large IP practices by hiring attorneys away from the boutiques. More recently the shift has been to small and mid-sized IP boutiques like KDB. Clients of all sizes, industries, and sophistication levels like that we offer big firm experience without big firm billing rates.
8. What is your favorite aspect of your practice?
Working with an array of people that I genuinely like, from clients, to attorneys, to the staff at our firm.
9. What do you enjoy most about working at KDB?
Freedom, a variety of great clients, and great people to work with both inside and outside the firm.
10. What activities do you enjoy when you’re not at work?
Reading, running and family (not necessarily in that order).