You have worked in senior positions in-house and in private practice, what do you see as the major differences between the two?
The differences are substantial. I began my career as in-house counsel for a fast-growing technology company. I had, in effect, one client. I learned a great deal about the company’s business, including its technology, strategy, operations and competitive landscape. I learned that advice must be practical and actionable. That experience has shaped my world view and how I approach every issue to this day. In private practice, I advise many clients. These clients are from diverse industries and they generally come to us for high-stakes transactions and IP counselling issues. This provides an endless array of varied, challenging and exciting work, which keeps me and others on my team engaged, learning and growing.
What led you to specialise in IP and technology transactions?
Early in my career, I became the general counsel of a technology company. As a result, I had to learn how to conduct technology transactions in real time by doing deals with our suppliers, technology licensors, technology licensees, partners, customers and, ultimately, our acquirer. I also had to live with those deals and see how the decisions we made affected our business – for better or for worse. That was an invaluable experience. After the dot-com bust in 2000, I joined Hale & Dorr (now WilmerHale) in Boston as a full-time member of their technology transactions group, and the practice just clicked for me. I have never looked back.
What are the key elements to successfully completing a deal?
It starts with the client. It is critical to have a clear understanding of the client’s business and its objectives why they are doing the deal, their constraints and risks and their alternatives to the deal. Then, to the extent possible, I try to develop the same understanding as to the counterparty. This leads to a more complete picture of motivations and leverage for both sides and is invaluable when engaging in deal structuring and negotiations. In negotiations, I try to be practical, direct and collegial. I also try to focus on interests, not positions. If we disagree, I want to understand why, which often reveals solutions. There is no room for ego or point scoring. It is about getting the deal done for the client.
What kinds of deal are most rewarding to work on and why?
I tend to thrive on challenge and finding creative ways to solve business issues to get deals done. Challenge can present itself in many ways. It can be a complicated or novel deal structure. It can be a difficult negotiation. It can be a conflict of key business interests between the parties which requires a creative solution. For me, the most rewarding deal is one where we navigate those challenges in close collaboration with our client to achieve not only a great result, but also a seminal and transformative result for the client. I have had the good fortune and honour of contributing to many of these types of deal over the past 20-plus years of my career and I hope to continue to have those opportunities over the next 20-plus years.
How would you characterise the current state of play in the IP transactions space and how do you expect things to evolve over the coming years?
Working on IP transactions remains, and I believe will continue to be, an extremely important and rewarding career. At a macro level, intellectual property and technology are becoming increasingly important to our economy, including to industries that were not traditionally viewed as technology driven. This is driving the need for sophisticated IP transaction expertise beyond the tech and life sciences industries into industries such as consumer, transport and finance. This is also driving a need for sophisticated IP transaction advice on mergers, acquisitions, joint ventures, spin-outs and other major corporate transactions. I believe that these macro trends will only continue to accelerate over time.
You advise on the transaction review process administered by the Committee on Foreign Investment in the United States (CFIUS), what does that entail?
CFIUS reflects another macro-economic trend that is extremely important, which is a drive towards economic nationalism in the face of an increasingly contentious and challenging international environment. I believe in the CFIUS regime and its importance in protecting US innovation in strategic technology areas that are important for our national security. I also believe that it remains a challenge to implement that regime in an efficient and even-handed manner, as it is a complex landscape and political and opaque decision making can be challenging in getting deals done. However, this is another example of where IP transactions experts can be pivotal. At times, the resolution to CFIUS considerations can involve allocating and structuring IP rights in a way that ensures that the US national security interests rooted in that intellectual property are met. I have found that work to be tremendously rewarding.
You teach a course on patent and technology licensing at Stanford Law School, why do you feel it is important to do this?
I will confess that the first time a student raised her hand in my class and said “professor”, I turned around to see whether a ‘professor’ had walked into the room, only to realise that she was addressing me. I have come a long way since then. This year is my fifth year teaching and it has become a popular course at Stanford Law School. Together with my co-lecturer, I designed the course to be intensely practical. It focuses on a hypothetical software licensing company and a patent licensing company, both of which are engaged in a negotiation with the same customer. Each week, the hypothetical negotiation evolves one step further, and the students engage in hands-on drafting, strategy, counselling and negotiation. The students are brilliant and engaged, and the discussions illuminating. I am honoured to be among the faculty that I so revered when I was a student at Stanford Law School and deeply gratified to hear the feedback from students who have found the course to be useful in their careers. I have been fortunate to have a front row seat for many of the most interesting and challenging deals done in the IP transactions area, and this class is one way of sharing the essential learnings from those deals with the next generation of leaders in this field.
If you could make one change to the current US patent regime, what would it be and why?
I would invest more heavily in the USPTO. It needs resources to both meet the demands of the world’s most active patent system and improve the quality of the patents that it issues.
How do you expect the US patent environment to evolve over the coming years?
USPTO Director Iancu has done an admirable job in seeking to bring greater clarity and balance to the US patent system. The United States has been the world leader in innovation for more than a generation and the incentives created by the US patent system, which were envisioned by the framers of our Constitution, should remain firmly in place. Iancu recognises this and his reforms have been constructive in protecting the incentives of the system while maintaining curbs on abuses contemplated by patent reform. Given the state of Congress, I doubt that we will see any major legislative reforms. However, the proverbial wild card in this system is the courts, especially the US Supreme Court. Judicial decisions have substantially affected the US patent system (from subject matter to damages) and I believe that they will continue to do so as our common law evolves to address new challenges.
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