What is the biggest career challenge that you have faced and what can others learn from how you overcame it?
Knowing when to listen rather than talk, and when to learn from someone else before executing something.
In the 2008-09 challenge to the USPTO’s continuations, claims, IDS, Markush and appeal rules, a non-lawyer (Rick Belzer, who had worked in the president’s office of management and budget) emailed me about the Paperwork Reduction Act and Executive Order 12866. At first I was sceptical – I had never heard of either – but I let him guide me and it worked; we killed all five rules, and killed them deader than they would have been using the techniques that I knew of at the time. Since then, I have used the Paperwork Act and executive order to quash nearly a dozen other onerous rules.
These laws require agencies to think things through a bit more deeply than they would otherwise, a useful invitation to extend to the PTAB during an inter partes or post-grant review or to the USPTO’s rule-making staff.
What are your predictions for how the evolving IoT will impact the US patent landscape over the next 12 months?
Alice, to the degree that there is any rational, comprehensible standard, has been internalised as best it can be by the patent prosecution bar. However, many patent prosecutors have never been really attuned to the traps of joint or divided infringement. The IoT requires an emphasis on single-infringer drafting – excess claim fees are more the norm than the exception.
You work with clients of all sizes (including start-ups, medium and large corporations) across a range of sectors and legal areas. How do you tailor your services to fit the specific needs of each client?
I assist other lawyers with administrative law challenges to the USPTO’s rule making and inter partes or post-grant review decision making and Federal Circuit appeals. The Administrative Procedure Act, the Regulatory Flexibility Act, the Paperwork Reduction Act, the Independent Offices Appropriations Act and the constitutional due process clause embody our intuitive notions of fairness. To guide the USPTO towards sounder decision making, it has to be reminded of its legal obligations and the basic principles of fair and rational decision making – these cannot be taken for granted. Appeals must point to specific laws (with favourable standards of review); basic fairness has to be part of the story, but it is not appealable by itself. Tailoring my approach to these cases is like any other craft, I start with a different set of tools than my teammates, my teammates know things that I don’t, and we work out how to combine expertise.
My second area of focus is helping young companies structure their IP portfolios as competitive assets. I think of it, by analogy, like real estate – a given square foot can either be just dirt or an active business asset. How can we leverage that asset to convert an adversary into a strategic partner? How can we apply IP acupuncture needles to resolve pain points? How do we structure a company’s patents to give maximum leverage with joint venture, financing or other strategic partners? How do we predict today what patents will be most valuable in 10 years? How do we build in options so that we can get the right patents when a value extraction opportunity comes into view? How do we push back when the USPTO wants to take away something to which my client is entitled?
What advice do you have for anyone looking to provide more and better legal work with a constrained budget?
Work that is poorly done creates immense costs. It is better to do fewer things and do them really well than to overextend but to use short-cuts. There are ways to preserve options while pushing costs out to the future, but those techniques require a foundation today that is absolutely correct and complete.
With your wealth of experience, what are your top tips for keeping abreast of all the latest developments in the IP world in the United States and beyond?
For my first 15 years of practice, I read the USPQ weekly pamphlet cover to cover. With that foundation, today the task of keeping up with developments is a lot easier than it would be otherwise. Today, I keep up with the Federal Circuit’s website and news emails from the American Bar Association and the AIPLA.
David Boundy is a partner in Potomac’s IP department. He consults on administrative law issues in inter partes and post-grant review proceedings and in Federal Circuit appeals. Mr Boundy’s areas of particular expertise include influencing adjudications and rule making and structuring IP portfolios for strategic advantage with business partners. He holds a JD with honours from Columbia Law School and an MSc in computer engineering from the University of Michigan.