The world of life sciences is ever-changing, and intellectual property lawyers like Harold Fox are vital to ensuring that technology progresses in a fair, innovative manner. As managing partner of law firm Honigman’s new Washington, D.C. office, Fox is devoted to providing IP protection strategies for tech companies in an impressive array of disciplines from biotechnology to nanotechnology, ensuring protected creation of new inventions and ideas.
The main focus of his work centers around providing clients with tactical intellectual property counsel and strategic patent advice, both in and out of the courtroom. In addition to his successful patent prosecution practice, Fox advises clients on critical aspects of patent portfolio development. In doing so, he works with his clients to develop strategies to manage post-grant proceedings, apply creative approaches to product life cycle management and develop insightful patent enforcement tactics.
Additionally, Fox offers clients patent validity and infringement opinions, conducts intellectual property diligence investigations, handles trademark and domain name issues and evaluates intellectual property issues arising from government contracts. That work involves knowledge of an astounding scope of disciplines where technology and the law converge. He advises clients in all areas of chemistry, biotechnology, pharmaceuticals, biologics, nanotechnology, physics, chemical engineering, mechanical engineering, medical devices, business methods and materials science.
As a significant portion of his practice, Fox has represented emerging and established companies, academic institutions and domestic and international corporations in post-grant proceedings at the U.S. Patent and Trademark Office, in Section 337 investigations at the U.S. International Trade Commission and at the U.S. Court of Appeals for the Federal Circuit.
With a combined background in science and the law, Fox is uniquely positioned for this career. After more than 20 successful years in the profession, he remains passionate about developing and bolstering new IP practices wherever he can.
Lawdragon: Your work as an IP lawyer involves such a wide range of disciplines. Can you describe the mix of work you do within your practice?
Harold Fox: My practice focuses on strategic intellectual property counseling in all areas of chemistry, biotechnology, pharmaceuticals, biologics, nanotechnology, physics, chemical engineering, mechanical engineering, medical devices and materials science. The core of my practice involves developing patent property estates, which protect key client innovations. I also address holistic intellectual property issues, working with clients to develop policies and procedures to capture and protect their innovations with patent assets or as trade secrets. With some clients, I also help manage intellectual property litigation risks or use litigation tools to achieve their business objectives.
LD: That’s such important work. Now, tell us about your current practice. You moved recently, correct?
HF: That’s correct. I joined Honigman in September 2020 to launch the firm’s new office in Washington, D.C. While making a move during the middle of the pandemic may sound daunting, my experience leading and expanding a firm’s intellectual property group has positioned me well to build out a new office under any circumstances. It has also invigorated me and my practice. Honigman’s welcoming and close-knit culture has made transition and integration smooth and painless. The firm's Intellectual Property department, which is comprised of various specialty practice groups, provides ideal support for the nature of the work I do. I've really enjoyed getting to know and collaborate with my colleagues in Michigan and Chicago and building the foundation of our growth in D.C.
LD: That’s wonderful. So, in terms of the matters you’re working on right now, are you noticing any trends emerging in the types of cases you’re seeing in intellectual property counseling?
HF: Well, I’d say that as life sciences and other technologies continue to advance, the IP law that I practice evolves in parallel. Many of the trends and changes I see precipitate from what happens here in D.C. Developments emerging from the new administration, legislative initiatives and the ever-changing case law at the Federal Circuit and Supreme Court dynamically alter the strategic advice we provide to clients.
For example, the continued refinement of the patent eligibility standards for all types of inventions has required clients to regularly adapt their patent protection strategies to maintain fresh, relevant and forward-looking policies to optimally protect their intellectual property assets. It’s essential to maintain focus on all of these moving parts in real time.
LD: Oh, that sounds both challenging and invigorating. What part of your work most excites you?
HF: Let’s see. Well, to start with the Covid-19 pandemic, I’m excited to see the development of at-home testing kits and other personal smart technologies becoming more accepted and hitting the shelves. As we’ve seen, accessibility to coronavirus testing has been critical to curbing the spread of the pandemic. We’ve also seen how quickly drugs, like the Covid-19 vaccines, can be developed, and society generally accepts this accelerated pace.
I’ve also been following the advancements in wearable technology and how related personal biodata is collected. Compared to a few years ago, improved access to reliable, nearly real-time data makes it possible to help people who might have serious health conditions with a higher degree of precision and safety.
All of these innovations have intellectual property that needs to be properly protected, which plays a critical role in ensuring they become available and benefit the general public.
LD: That does sound exciting. Looking back a bit, how would you say your practice has developed over your career?
HF: Well, we moved from Boston to D.C. more than 20 years ago, when my wife started a job on The Hill. I practiced at Fish & Richardson before I moved to my most recent firm, Steptoe & Johnson, where I was hired in 2004 to help aggressively expand its IP practice. I really enjoyed the challenges of establishing a new practice group, which is one reason why I’ve joined Honigman to head and build up its new D.C. location. The majority of Honigman’s IP and corporate work continues to be national in scope, and D.C. offers an opportunity to expand and better serve Honigman clients. As an IP attorney, I’ve seen first-hand why it is so important to have a Washington footprint.
LD: That’s interesting. Why would you say Washington D.C. is the place to grow an IP practice?
HF: Unlike other areas of law, IP is an expansive practice that benefits from geographic proximity to the decision-makers for IP law and policy. Decisions from the court system, either the Supreme Court or the Court of Appeals for the Federal Circuit, legislation from our governing body and policy changes at the USPTO significantly shape IP practice and how we counsel our clients. IP isn’t just a local gig, and that’s one feature of the practice that makes it unique. As a firm that offers high-level IP counsel to clients, you want to have a footprint here.
Additionally, for Honigman in particular, the mix of practice groups in our D.C. office, such as intellectual property litigation, U.S. Patent and Trademark Office (USPTO) practice, corporate and white collar, blend perfectly into the D.C. legal talent marketplace, which we will continue to capitalize on as we look to grow our office.
LD: That all makes sense. Well, it sounds like you’re very passionate about your work, but if I can ask you one more question: if you weren’t a lawyer, what do you think you’d be doing now?
HF: Oh, that’s interesting. If I were not a lawyer, I’d say I would spend more of my time addressing issues relating to improving human impact on our environment. I am a long-time vegan and am passionate about maintaining a lifestyle that supports sustainability.
My whole family are avid scuba divers, and we have gone diving in locations all over the world – Bonaire, Little Cayman, Utila, Saba, Moorea, Malaysia and Papua New Guinea, to name a few. These experiences amplify our passion for treating the world with care due to the alarming reach of human impact in some of the most remote parts of the ocean.
Our family also fosters animals in need of loving homes, many of which come from horrible living conditions in other parts of the country. I could also see myself spending more of my time lending support to these animals and fostering programs.