David J. Arthur

Attorney-at-law

Patents & Intellectual Property

 
 

David Arthur is an experienced patent attorney with strategic insights to develop and use intellectual property to achieve business goals. He has the operational experience to implement IP strategies efficiently and cost effectively.

Mr. Arthur is particularly skilled at developing and implementing effective patent strategies. He develops and manages patent portfolios to align with business goals and to improve business results. He identifies key legal issues in business transactions and develops strategies to reduce risk and to maximize success.

He manages operational tactics and processes for reliable and cost effective results. He manages groups of professional, paraprofessional, and technical people for superior solutions.

Areas of exceptional experience and skill:


•Global Patent Strategies

•Patent Portfolio Management

•Legal Risk Management

•Process Management

•Process Improvement

•Cost Management


Until 2018, Mr. Arthur directed his practice of intellectual property law exclusively to represent a single client, Xerox Corporation. Now, Mr. Arthur is available to apply his extensive knowledge and experience to other companies that are interested in developing and using intellectual property to succeed in achieving business goals. His experience in building robust operational systems ensures that strategies are implemented in robust and cost effective manners.

Mr. Arthur is licensed to practice before the United States Patent and Trademark Office (USPTO) in patent matters, and to practice law in California. Mr. Arthur can also work with appropriately licensed attorneys in other states.


PROFESSIONAL ACCOMPLISHMENTS


STRATEGIC THINKING

•Developed and implemented global patent strategies to improve business results for multinational corporations

•Developed global patent portfolios to support business goals

•Aligned large global patent portfolio (20,000 + in force patents) with business goals

•Directed patent application and maintenance to countries selected for maximum business impact

•Managed in-house patent practitioners and outside counsel for effective and cost-efficient implementation of corporate patent strategies

•Preserved multi-million-dollar product annuity business by building and enforcing a strategic patent portfolio

•Prepared and prosecuted patent applications consistent with patent and business strategies

•Advised business executives on developing and using intellectual property for business objectives

•Identified and managed key legal issues in business transactions to reduce legal risks and to improve transaction success

•Drafted business agreements for clarity in documenting expectations and obligations


OPERATIONAL EXCELLENCE

•Managed large-scale processes to identify and review inventions for protection decisions, to prepare and prosecute effective patent applications, and to identify patents for maintenance, for aligning patent portfolios with business goals

•Reduced US patent application costs by 10 – 50 % (in different areas) with in-house, outside, and offshore resources

•Developed metrics for prosecution counsel performance

•Reduced by $1MM per year costs of non-US patent prosecution by in-sourcing select activities

•Reduced by $500K + costs of non-US patent applications by centralizing translation and filing

•Reduced by $1MM or more per year patent maintenance costs by identifying large groups of patents not meeting company objectives

•Re-engineered processes to improve accuracy of information available about patent portfolio

•Streamlined processes of interacting with outside counsel to speed information availability and to reduce staff processing time

•Doubled annual patent grants with no increase to in-house staff

•Consistently met multi-million-dollar budget




PROFESSIONAL EXPERIENCE


XEROX Corporation, Rochester, NY

Associate General Patent Counsel 2006 – 2018

Senior Patent Counsel 2004 – 2006

Patent Counsel 2002 – 2004

Patent Attorney 2000 – 2002




ADDITIONAL RELEVANT EXPERIENCE


DAVID J. ARTHUR, Attorney-at-Law, Irvine, CA


ROCKWELL INTERNATIONAL CORP. Newport Beach and Anaheim, CA

Intellectual Property Counsel

Senior Patent Attorney

Patent Attorney


IBM CORPORATION, San Jose, CA


KNOBBE, MARTENS, OLSON & BEAR, Newport Beach, CA


PROFESSIONAL LICENSES

•State Bar of California, No. 100159

•U.S. Patent and Trademark Office, No. 30,707


PROFESSIONAL ASSOCIATIONS AND RECOGNITIONS

•IAM Strategy 300 – The World’s Leading IP Strategists, Intellectual Asset Management Media 2015, 2016

•American Intellectual Property Law Association (AIPLA)


EDUCATION


Juris Doctor

Willamette University College of Law, Salem, Oregon

Order of the Barristers; Outstanding Contribution to Moot Court Board

Bachelor of Science - Electrical Engineering

University of California, Irvine

Eta Kappa Nu Electrical Engineering Honor Society

 

Intellectual Property with a Business Focus

Licensed to Practice before the USPTO in patent matters

Licensed to Practice Law in California




Recent Experience: Associate General Patent Counsel, Xerox Corporation responsible for corporate-wide patent preparation, prosecution, and portfolio management


darthur@ArthurLaw.com