Administrative Law, Rulemaking:
David has a record of success in challenging agency action, a record with no parallel among the patent bar.
Challenges to agency rulemaking. David led the teams that obtained a directive from the Office of Management and Budget, in the Executive Office of the President, directing the Patent Office in December 2007 and January 2008 to withdraw the Continuations, 5/25 Claims, IDS, and Appeal rules.
- On December 10, 2008, when the PTO announced that the Appeal regulations that were to go into effect that morning would not in fact do so, Prof. Wegner wrote to his email list “what is not generally known is that David Boundy is the hero. Against very, very long odds, he quarterbacked a group effort at the OMB that ended in the blockage of this very, very unfortunate rulemaking.” [[http://ip-updates.blogspot.com/2008/12/uspto-appeal-brief-rules-delayed.html]].
- The success of David’s teams was recognized as the #2 patent news story of 2008 by the PatentDocs blog. [[http://www.patentdocs.org/2009/01/top-stories-of-2008-5-to-1.html]].
David consulted to the Tafas team in Tafas v. Dudas at both the trial court level and at the Federal Circuit, to ensure that the trial court’s favorable decision remained intact without vacatur, and to obtain attorney fees under the Equal Access to Justice Act.
Judicial review of Patent Office adjudicatory decisions. David consults to law firms in cases before the Patent Trial and Appeal Board, and in Federal Circuit review of PTAB decisions—decisions of the PTAB often have procedural errors easily reversible under the Administrative Procedure Act, Paperwork Reduction Act, and similar administrative laws.
Judicial review of Patent Office procedures. David consults to trial counsel in judicial review of agency action under the Administrative Procedure Act (consulted to prevailing parties in Tafas v. Dudas and several other district court reviews of agency action)
Rulemaking. David’s letters during Notice-and-Comment periods under the Administrative Procedure Act, and during Information Collection Reviews under the Paperwork Reduction Act have resulted in quashing some regulations entirely, and in significantly changing others.
Policy Advocacy in Congress and the Executive Branch
Extensive public policy experience—during the America Invents Act debates in 2007-11, David met with a number of senators and representatives to advocate on behalf of startups and independent inventors.
David’s papers were quoted in AIA floor debate by Sen. Feinstein and Reps. Sensenbrenner and Manzullo:
- David Boundy and Matthew Marquardt, Patent Reform’s Weakened Grace Period: Its Effects On Startups, Small Companies, University Spin-Offs And Medical Innovators, Medical Innovation & Business (June 2010)
- David Boundy, Renee Kaswan, and Ron Katzelson, Patent Reform: Effects On Medical Innovation Businesses, Medical Innovation & Business (June 2010)–copies of this special issue of a journal were circulated to all 535 senators and representatives
Our team’s volunteer work with other members of the IP bar, with IEEE‑USA, and with PLI (the biggest CLE provider in the U.S.) has provided us with a unique vantage point into trends in the law, in the business of IP, and a network of colleagues to consult with.