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

William B. Lacy, Ph.D. joined L&A as Senior Counsel earlier this year. Bill’s twenty years of in-house experience, including his most recent role as Head of Global IP at SharkNinja, 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 sat down with Citybiz to discuss his distinguished career, transition to private practice, and the unique perspective he brings to his clients at L&A.

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. 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.

Read the entire Q&A on Citybiz to learn more about Bill’s experience and what he brings to the firm and his clients.