Your law career has spanned both in-house and private practice. Can you share a bit about your professional journey and what drew you to intellectual property law in the first place?

Initially, I was certain I wanted to go to medical school, so I attended University of Richmond with the intent of being a pre-med major. But an opportunity to do undergraduate research in chemistry and two summer internships at DuPont changed that path and I ultimately graduated with a B.S. in Chemistry, followed by a Ph.D. in Physical/Analytical Chemistry from the University of Utah. During those early years at DuPont, in grad school, and particularly during a postdoctoral fellowship at the Naval Research Laboratory, exposure to great scientists and varied technologies led me to develop an interest in patent law.

There was one particular moment that transformed patent law from an interest into a career for me. A friend and patent attorney at Pennie & Edmonds (P&E) invited me to lunch with a few of his colleagues. A few minutes in, it became clear that the “lunch meeting” was a job interview. The interview resulted in an offer for the firm to pay for law school and a position at P&E. My time at the firm was invaluable; the impeccable training I received and the variety of input from partners and associates helped me to build the fundamentals of my IP practice. After three years of law school and private practice, I was given the opportunity to start an in-house patent team at one of P&E’s clients, Acushnet Company—known for their premium golf brands Titleist and FootJoy. As an avid golfer, I jumped at this chance.

You spent several years at SharkNinja, a company known for innovative consumer product design. What were some of the ways you supported and protected innovation during your time there?

SharkNinja has a reputation as a market disrupter, and rightfully so. They create groundbreaking new products and bring to market better versions of existing products, but at price points that appeal to a wider range of consumers. With several established competitors in the consumer appliances space, however, this business model drove a heightened sensitivity to IP challenges, and the company prepared for these situations by investing in a top-notch IP team.

During my tenure at SharkNinja, the company grew exponentially—by more than 150%—and went through IPOs on both the Hong Kong and New York stock exchanges. The company’s rapid growth and the associated expansion into new markets worldwide added complexity and cost to the IP program, necessitating refined processes to support the forecasted continued trajectory. To address this, I implemented strategic initiatives across multiple fronts.

Priority one for me was putting the right internal IP team in place and positioning them for success. We created standardized IP playbooks that served as both corporate training materials and onboarding resources. Also of critical concern, was selecting and calibrating relationships with outside law firms to ensure appropriate technological expertise and value. The process was not easy, but the result was an impressive IP team and a slate of firms fully prepared to support the needs of the business.

As one might imagine, streamlined communication procedures were critical, and establishing this communication discipline, both internally and with outside counsel, required constant attention and refinement but paid dividends. In addition to our U.S. law firm partners, we also had numerous foreign counsel relationships across the globe that needed to be strategically condensed, so, leaning on the experience of U.S. counsel, I established efficient workflows for managing these engagements. These efforts ultimately resulted in a reduced slate of firms and reduced associated costs.

Another important element of our strategy was the company’s investment in the right IP tools, which proved crucial for efficient business decision-making. This included optimizing docketing procedures and software; implementing freedom-to-operate management systems; streamlining the invention disclosure intake processes; and enhancing patent and prior art search capabilities. I also developed a framework for identifying emerging products and assessing their strategic importance to the business, weighing potential IP risks and associated costs. These technological foundations and dependable vendor relationships enabled the team to scale effectively while maintaining the quality and efficiency required to support business objectives.

Are there any unique IP strategies that that you believe can enhance a company’s competitive advantage in a crowded market?

A great way for a company to protect their innovations is to ‘war-game’ their own IP, particularly for products fundamental to the business and those that are likely drivers of success, such as a novel product or entry into a new category. This might include trying to design around issued or filed claims, as a competitor might do, to assess the perceived strength of the portfolio; and attempting to expose any gaps to help identify the need for additional patent filings, or opportunities for additional features not originally considered for the product.

Another worthwhile exercise that contributes to an exciting and enterprising company culture is hosting “innovation days” where cross-functional product teams are encouraged to critique and question each other’s products and think outside the box. In my experience, these types of practices can be very beneficial and can even identify new products, new features for existing products, or fixes to consumer complaints.

What inspired your move from a dynamic in-house role to private practice at Lando & Anastasi?

After years at large companies, I was looking for something new and different that would help me in my professional development. I believe that continual education and growth are vitally important to being a good attorney, so I sought an opportunity where I could do that, and returning to my roots in private IP practice was an intriguing option. Being part of a fantastic firm with excellent attorneys—but one without the big firm/big city expense—was important to me, and Lando & Anastasi has proven to be just that type of firm.

How has the transition been from leading an IP team at a global brand to advising sophisticated clients in private practice? Any surprises or rewarding moments so far?

The transition has been eye-opening, and in a good way. I’ve spent years in a supervisory role, managing people and strategy, and communicating with C-suite business leaders and decision makers. Of course, I reviewed important applications and worked closely with outside counsel on opinions and litigation positions, but for a long time, I had not had direct involvement with the USPTO and patent examiners.

Much like dormant knowledge of a foreign language, the private practice “rust” was there, but it has quickly disappeared as I become more involved with the firm and our clients. Additionally, the obvious challenge for me, coming from years of being in-house, was the lack of portable business. While learning to market myself and L&A, making calls to contacts and former colleagues has been humbling. But I have also been genuinely surprised by the offers to help me find my way, many times from unexpected sources. I celebrate the “wins,” continue to adjust along the process, and am excited to continue moving forward full steam ahead.

Now at L&A, what kinds of clients or industries are you most excited to work with, and how do you hope to support them?

While I am, of course, open to working with clients in all industries, my technical background and experience best align with those operating in chemical, biotech, and analytical methodology technologies. My extensive expertise in consumer products—spanning the golf industry and consumer appliances—provides valuable cross-industry experience in materials, manufacturing, and electronics applications.

My in-house experience helps me to easily understand, relate to, and counsel our clients as they navigate through their own in-house guidelines, budgetary pressures, and overall business goals. And clients, especially new startups or those without in-house legal teams, can benefit from having outside counsel with specific experience implementing internal IP systems and putting effective teams in place.

Given my experience working for a company with global operations in highly competitive markets, I also understand the nuances of international filing and portfolio management, and have been directly involved in numerous litigations, including complex proceedings at the International Trade Commission. I have achieved significant success utilizing Inter Partes Review (IPR) as an effective defense mechanism. These types of high-pressure situations can benefit from the viewpoint of someone who has faced similar challenges, so I am thrilled to be able to bring that knowledge to my clients.

I offer a unique combination of “business” mindset, legal analysis and strategy that can help companies build efficient IP processes and strong IP portfolios.

What advice would you give to companies looking to build or strengthen their IP strategy, especially those scaling quickly?

I will share a few key points that could help a company grow or scale their IP program.

1. Put the right IP team in place. This includes both internal and outside counsel. Hire for attitude and team fit. Leaders can always train their team on the legal issues unique to the business, but a poor team fit will likely not work out in the long run.
2. Implement communication protocols. The specific format and frequency of business communication will vary significantly across organizations, but recognizing this fundamental need and tailoring approaches accordingly is essential for successful internal team management and firm-client relationships.
3. Coordinate with stakeholders from C-Suite, Finance, Marketing, and R&D to identify company needs, competitive intelligence, likely areas of growth, and financial forecast. Get upper management support for the IP program and a reasonable budget for growth. The IP budget should always include a safety net built in for the unforeseen hiccups that are certain to arise.
4. Be honest about your current IP abilities and ask those second and third level questions about areas of opportunity for improvement. Don’t overlook design patents in your strategy—they are relatively inexpensive, quick to obtain, and can have surprisingly strong value in your overall portfolio.
5. Be prepared for change. Things happen. Have your own replacement ready to step in and identify replacements for key IP team members. Create IP playbooks to memorialize team processes and procedures for ease in on-boarding and use them to help implement mandatory training across the business.
6. Lean on your outside counsel. If you have hired the right firms with the right technology alignment, they will make your life easier and your communication with business leaders more efficient.

Bill is an accomplished IP attorney with extensive experience in strategic global IP portfolio development and management for market leading companies across many industries. He brings both corporate leadership experience and deep technical expertise in chemistry, materials science, polymer technology, consumer products, and manufacturing processes to his legal practice.

Bill’s twenty years of in-house experience gives clients an invaluable perspective on effective IP management. He understands firsthand how businesses evaluate legal advice and make strategic decisions about intellectual property investments. Bill’s approach to client service combines strict budget discipline with practical business sensibility and technical acumen. His experience building and managing large global patent portfolios during periods of aggressive corporate growth enables him to anticipate client needs and deliver actionable guidance.

Bill has an exceptional track record securing successful IPR institution and patent invalidation outcomes that effectively neutralize competitive threats before and during high-stakes litigation, including critical ITC proceedings. His strategic approach to IP risk management has consistently preserved market access and protected revenue streams for industry leaders. This includes proactive implementation of comprehensive trade secret protocols and anti-counterfeiting initiatives that safeguard valuable business assets. His experience coordinating complex enforcement actions provide clients with battle-tested strategies for maintaining competitive advantage in contested markets.

I offer a unique combination of “business” mindset, legal analysis and strategy that can help companies build efficient IP processes and strong IP portfolios

Before joining L&A, Bill served as Vice President & Senior Associate General Counsel, Global IP at a large, publicly traded, consumer product company, where he led the company’s global IP strategy during a period of extraordinary growth. He grew and managed an IP team of six professionals while developing improved internal processes to support the company’s rapid expansion across diverse product categories, including vacuum and floor care, robotics, haircare, indoor/outdoor cooking products, and kitchen appliances.

Previously, Bill spent nearly nineteen years working at an industry-leading golf product manufacturer, where he progressed from Patent Agent to Chief/Managing Patent Counsel. There, he helped create and grow the company’s in-house patent department, managing worldwide patent clearance and strategy for market-leading golf ball technologies. Bill filed more than 250 patent applications in chemical, polymer, mechanical, and materials technologies, while actively monitoring competitors’ IP to identify and mitigate potential infringement issues. Bill began his career as a Technology Specialist/Patent Agent at Pennie & Edmonds LLP in Washington, DC, after conducting post-doctoral research at the Naval Research Laboratory’s Center for Biomolecular Science & Engineering.

Beyond his professional achievements, Bill is single-digit handicap golfer and a private pilot with more than 700 hours of flight time. He also has raised more than $85,000 for the Dana-Farber Cancer Institute as a nine-year participant in the Pan-Mass Challenge. He currently serves on the Board of Directors for S/A Maraia Charities and previously served on the Board for the Jordyn Cook Epilepsy Fund and Cook Family Charities.

Bill can be reached at wlacy@lalaw.com or 617-395-7037.

The post Q&A With William B. Lacy, Ph.D.: Former SharkNinja Head of Global IP Brings ‘Business Thinking’ to Private Practice at Boutique IP Firm appeared first on citybiz.

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