How does your trial experience being an assistant district attorney in New York City inform your practice today?
As an assistant district attorney, I received extensive training and experience in trial work. After nine years of public service as a criminal prosecutor, I left the job as an executive assistant district attorney. With my physics degree and trial experience, I joined one of the top IP law firms, where I learned intellectual property and developed a deep and well-rounded expertise.
In addition to trial experience, my time as an assistant district attorney gave me other skills that have proved useful in working with companies and effectively handling civil litigation. Large corporations face many of the same issues that we dealt with in the district attorney’s office, such as the need to deal with more work than the legal staff can comfortably handle. There is pressure to split resources between ordinary matters and high-visibility and business-critical matters, the need to imbue staff with the right culture to maximise effectiveness, as well as the need to have institutional processes while still giving staff agency, so that they feel enthusiastic and empowered.
Having done trial work in the district attorney’s environment of scarce resources, having too many cases meant that it was critical to develop a trial strategy early and focus on making sure that you had the necessary proofs, the legal support and the trial themes to win. When I switched over to IP litigation, those skills were directly applicable. In IP litigation, discovery is a major part of the case, but I emphasise that it is not just a phase of litigation, but part of a focus on obtaining the evidence to strengthen the client’s case so that we can be ready to succeed at trial.
Finally, my trial experience gave me an advantage in negotiations, licensing, patent analysis and patent valuation, each of which arose from my expertise in the courtroom.
What do you find are the new challenges facing companies?
Having worked with companies that had to navigate previous cycles of technological disruption, particularly the internet technologies of the late 1990s and early 2000s, there are many similarities – but some significant differences – in comparison to today’s technological changes.
The recent widespread availability of generative AI has disrupted companies in unprecedented ways, particularly due to its incredibly rapid speed of adoption by businesses of all kinds. This dramatic change has required companies to develop new policies that cut across many departments, whether business, engineering, intellectual property, legal or HR. This fast-moving technological change has required businesses to marshal the right combination of skills and expertise to get ahead of the legal challenges that come with the adoption of generative AI. The competitive nature of businesses wanting to get ahead of competitors in the technology race puts pressure on legal and business teams to assemble and manage policies in a short period of time, to ensure that the company does not fall into any legal traps.
Change and the accompanying uncertainty presents both opportunities and risks. This is not a new concept for businesses, but the speed and breadth of the current change is a different kind of challenge and companies must ensure that they continue to maximise their odds for success. While businesses need to be proactive and move quickly, it is also important to not be overly reactive to the changing environment and to come up with well-thought-out policies.
What common mistakes do international companies make when it comes to patent strategy in the United States – and how can they avoid them?
While I hesitate to characterise certain hindsight shortcomings as mistakes, I believe that many companies are not getting the level of patent quality that their inventions deserve.
All companies believe that they have good patent prosecution policies in place and that they do a good job of supervising the prosecution and training their staff. I completely understand that feeling, but I still believe that more can be done.
I base my belief on what I have seen, having reviewed thousands of patents in litigation, licensing and portfolio reviews. Even though these patents tend to be of top tier quality, I have found that a significant majority have flaws that likely could have been avoided in preparing an application or during prosecution. Even bearing in mind that hindsight is 20/20, I strongly believe that internal policies, supervision and training could have resulted in better issued patents. If that is the case for issued patents over the past few decades, I see no reason why it would not be true for patents in prosecution today.
I know and respect that the quality of patents is limited by the reality of budget constraints and the resulting amount of time and attention devoted to the prosecution. However, I believe that even without increasing the budget, many companies could improve their patent quality by taking a rigorous look at their internal policies, training and procedures.
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?
I suspect that everyone who has been successful in the IP, legal or technology fields has their own way of keeping on top of developments and I do not think that I have any special insider tips on this.
All of us have constraints as to how much time we can devote to learning, but I have found that taking a portion of that time to read articles, listen to podcasts or enroll in online courses about subjects that relate to your practice area, especially ones that relate to business organisation or the people that you deal with. Examples of this would include organisational theory and human behavior, data analytics, decision making, leadership and social psychology. In doing so, I have gained a deeper understanding of those subjects, making me more effective in my work and in my interactions with others, which in turn has helped me to enjoy my work more.
You have worked with a variety of clients of different sizes and at different stages of their lifecycle. How do you tailor your approach to the type of company that you are dealing with?
In providing a service to business, I expect that all of your readers would tailor their approach to this. While the size and stage of a company can affect several important issues, I think that the level of sophistication and experience that a company has in the area in which I am providing services for is one of the most important issues. For example, some clients are very experienced in my area, which allows us to quickly dive into detailed analysis and the depths of strategy. This can include large and small companies and individuals, whether recently formed or decades old.
I would say that size and stage matter when implementing new strategies or policies in a company that has an existing framework. It can be beneficial if a company already has a level of experience with a policy, but it can be a challenge to get people to change existing habits and to train a significant number of employees in a large company. Overcoming inertia is something that needs to be accounted for in the plan to implement a new policy.
Over my career, I’ve worked with businesses of all sizes and types – global Fortune 100 companies, start- ups, small businesses, and individuals – which has given me an appreciation of the similarities and differences between companies.
What advice do you have for anyone looking to provide more and better services with a constrained budget?
I can answer this on two levels – for companies and for my own practice.
Companies are already looking for ways to improve their services and reassess this on a periodic basis. I know that if staff are motivated to step up and believe that improvements can be made, this is a useful first step - starting with a negative view is less likely to yield a positive outcome. Even if a company comes up with an outline for how to proceed on better service with a constrained budget, it is crucial that the implementation takes into account how to motivate the people who will put the plan into practice. A course I took on leadership in times of crisis reinforced my belief in this idea through examples where a theoretically good plan failed due to difficulties that the staff had in implementing it.
In my practice, I want to make sure that the client and I have a common understanding of the desired outcomes. I can then make sure that my efforts are focused on things that will directly advance us towards reaching these goals and deferring the ‘might be nice to have’ things until it is clear that the budgeted hours will support them. That being said, ensuring that the client receives all that they need to accomplish their business objectives is a high priority, so I’ll do what advances that, even if it means that my effective hourly rate decreases due to the agreed budget amount. Using a client-first approach to budgets is an important part of being a partner to the client.
What aspects of your work do you enjoy the most, and why?
Well, that’s an interesting life philosophy question. I am very fortunate in being able to marry what I enjoy in my private life – doing things that are meaningful, associating with people I like, helping others and learning – with my work. I’ve been able to apply this to most of my matters, whether in litigation, patent analysis or valuation, negotiations, developing policy, dealing with discrete issues and a myriad of other possibilities.
Throughout my career, for the most part, I have been fortunate enough to work with people I like. Life is easier when I respect the team members I am working with and, with a good dynamic, we can do a better job in achieving the client’s business goals or legal objectives. If I can help the in-house team to reach the company’s business goals, I can take a level of satisfaction in that.
One of the beautiful things about IP work is that there are always new things to learn - not just in technology, although that is glorious and interesting on its own, but also in dealing with the adaptations that businesses make to grapple with new technologies and the laws that arise in response to them. Further, I get to work with interesting, smart and accomplished people and learn from their wisdom, experience and perspective, which I find inspiring and motivating.
With the rapid changes occurring in technology and business, now is one of the most interesting times to be able to work with clients on these legal and IP issues.
John Flock is a recognised patent trial attorney, former criminal prosecutor and trusted business and IP adviser. He has worked with global Fortune 100 companies and navigated previous cycles of technological disruption. With Mr Flock’s experience in trials, negotiations, licensing, patent valuation and developing successful IP policies, he focuses on collaborating with in-house counsel and business teams to achieve meaningful results that help companies to reach their business and legal objectives.