David A. Gay

Last year, a prime focus for Gay was helping his clients prepare for the historic transition from the country's time-honored first-to-invent system to the first-to-file.

In many cases, that meant filing patent applications under the old system before the March 16 deadline imposed under the America Invents Act.

This year, he's been busy working with some of those clients who want to add new data to convert their patent applications under the new system.

"We have to devise strategy that takes into account the now two-track system," Gay said. "It made me sit down and think about the considerations and present them to my clients, who have to weigh them in with their business plans."

Among his clients are Illumina Inc., Valeant Pharmaceuticals International Inc. and Genomatica Inc., whose patent portfolio includes more than 20 commercially valuable chemicals produced from renewable sources, Gay said.

Armed with a Ph.D. in biochemistry from John Hopkins University, Gay said that he combines his scientific know-how, along with his business savvy and knowledge of patent law.

"I got in this business because I like learning about everybody else's business," said Gay, whose clients range from startups to large pharmaceuticals.

"My smaller clients develop portfolios with an eye toward funding the next round," Gay said. "My larger clients' strategy is toward developing additional products or strengthening what they filed on."

With the big pharmaceuticals, it's about discovering how they can manage their patent life cycles, he added.

But regardless of a company's size, Gay said, it's critical to be proactive.

"Investors are trying to poke holes in their portfolios," he said. "As counsel, you hope that you're ahead of the curve and find any weaknesses before the investors come along."

- Pat Broderick