Boundy, David

David Boundy is a Partner in our Intellectual Property and Administrative Law practices, advising clients in strategic development of intellectual property as an integrated asset of the business, and synergizing intellectual property with legal, R&D, finance, and marketing.  Mr. Boundy is listed as one of the 300 leading intellectual property strategists in the world. He has represented and counseled inventors, investors, startups, and established companies in intellectual property matters. The scope of representation includes patent prosecution, licensing, counseling to avoid litigation, opinions, financing and public offering transactions, due diligence, acquisitions, and spinoffs. His special expertise is in structuring startups’ IP portfolios to maximize financing.  Special technological expertise includes computer hardware, systems software, and mathematically intensive computation such as artificial intelligence, robotics, and medical imaging.

Mr. Boundy is also recognized as an authority in administrative law as it applies to the U.S. Patent and Trademark Office, and using administrative law as an alternative approach to obtain beneficial results from the PTO, particularly in Federal Circuit appeals from IPRs and PGRs.  Mr. Boundy’s expertise was recognized by the United States Court of Appeals for the Federal Circuit when the Court invited Mr. Boundy to chair a panel on Chevron and Auer deference at the 2018 Federal Circuit Judicial Conference. The National Law Journal recognized Mr. Boundy as one of 50 Intellectual Property Trailblazers for 2019 for his work in the area.  In executive branch rulemaking matters, Mr. Boundy led the teams that successfully quashed the Patent Office’s 2006-09 Continuations, 5/25 claims, IDS, Appeal, and IDS regulations, and the 2021 CLE and DOCX rules.  Mr. Boundy has consulted on comment letters and legal challenges to other rules. In Article III litigation and appeals, Mr. Boundy has provided specialty consultation to lead counsel on issues at the intersection of Patent Office procedure and administrative law.

Mr. Boundy has held positions as senior in-house intellectual property counsel for a billion-dollar company, partner in a leading Cambridge/Boston-area IP law firm and senior associate in two AmLaw 25 law firms practicing intellectual property and business law.

Mr. Boundy is a frequent author and lecturer on patent and administrative law and software engineering and is often quoted in local, trade and national media outlets. He lectured at M.I.T. Laboratory for Computer Science on compiler construction.