is a partner in the San Francisco office of Kilpatrick Townsend and counsels clients in all facets of intellectual property strategy, primarily in the patent area, with an emphasis on strategic counseling, patent opinions and Inter Partes Reviews under the America Invents Act. He has written nearly 100 patent opinions and has been deposed 6 times as an opinion witness. He has handled 10 inter partes reviews under the new America Invents Act. He also handles early phase litigation infringement and validity analysis for settlement evaluation, product clearances (right-to-use studies), and acquisition due diligence. He has guided clients in product design activities to avoid infringement problems.
For more information, or to reach out to Paul, please visit his Firm Profile Page.
For IP due diligence for investment in a start-up or young company, the most important conversation is with the key developer(s) of the product(s) or service(s) [the “Conversation”]. Ideally, the Conversation is led by an IP attorney who understands the technology. The goal is to determine the source of the product design. Was open source software used? Is this a variation of something an engineer was working on at a prior company? Was a published article used? Perhaps consultants were used? Was the design changed during development after some dead-ends? Where there isn’t budget for a full-fledged investigation, this Conversation and follow-up will likely get 80% of the risks identified for 20% of the cost.