4. What IP matters do you assist clients with the most?
I prepare and prosecute patent applications in a variety of areas. My background is electrical engineering and I have worked on a lot of different technologies over my career. An example of some recent technologies I have worked with are chipsets, display electronics, encryption and hardware security, wireless technologies, networking, artificial intelligence, cloud and Internet-of-Things technologies, software as a service and server platform technologies.
I counsel clients in patent portfolio management, including strategic prosecution of patent applications to enhance the quality and value of their patent portfolios.
I perform patent analysis activities for clients, such as, clearing products and working with engineering groups to design around patents, providing opinions of non-infringement or invalidity, and counseling clients on potential offensive positions they may take.
5. What are the biggest challenges facing your client’s industry?
A challenge facing almost all our clients is balancing corporate budgets with the need to grow and maintain a large and effective patent portfolio. With some clients, the challenge is not necessarily with the budget, but with scaling the process of preparing and prosecuting patents such that the “gems” in a large portfolio can be identified earlier in the patent life cycle and used to increase the value of the overall portfolio.
Another challenge facing clients today is the rapid change in patent law jurisprudence and predicting the affects this will have on their patent portfolios in the future. For example, there remains uncertainty around means plus function claiming, which increases the difficulty of preparing and prosecuting patent applications. Another example is the uncertainty around the use of post grant challenges and their constitutionality as well as the perceived bias against patent owners in the post grant process.
6. What trends are you seeing in your client’s industry?
One trend I am seeing is more patent families are filed globally, but with fewer countries for each family. Another trend I see is clients are increasing interested in “future proofing” patents in that the patent application is drafted and prosecuted in a manner that the granted patents is somewhat immune to potential changes in patent law. One other trend I see is that clients are building portfolios with a business use of the portfolio in mind, for example, counter assertion against a competitor.
7. What excites you most about working with clients in this industry?
I really enjoy getting to stay involved with cutting edge technology as well as assisting clients with protecting and enhancing the value of their business through IP. It is exciting to assist smaller clients start and grow their patent portfolios and navigate the IP landscape. It is equality exciting to assist large client with maximizing the value and usable assets in their portfolios.
8. How has IP work changed since you first started practicing?
The biggest change is movement from paper based filing systems to online docketing and document retention. Another change is large clients use of technology to communicate, manage workflow, and make decisions regarding their patent portfolios.
9. What is your favorite aspect of your practice?
My favorite aspect of my practice is the variety of projects and technologies I get to work with. I also really enjoy working with in house counsel and the relationships that have developed.
10. What do you enjoy most about working at KDB?
I appreciate the no fuss attitude and culture of KDB. KDB provides a lot of freedom in allowing attorneys to choose the types of projects and clients they work for as well as the amount of work they want to accomplish. I have developed friendships with many of the attorneys and staff at KDB and enjoy getting to work with them. I also enjoy the flexibility that KDB provides by allowing for virtual working setups.
11. What activities do you enjoy when you’re not at work?
I enjoy spending time with my family, especially watching my kids play sports. I am an avid weightlifter and enjoy most everything outdoor and high adventure. My main pursuits are wake surfing in the summer and snow skiing in the winter. I have also climbed several mountains in the Pacific Northwest, such as Mt. Rainier and Mt. Hood. I also like to rock climb and mountain bike.