David Fonda

JURIS DOCTOR, USPTO

David’s mission is to help research, development and startup companies create and preserve their company’s value through IP protection and providing general counsel-type access and guidance so that companies can be more proactive and less reactive.

David has a unique combination of patent law firm experience and general patent counsel experience, especially with research and development companies that receive funding through government grants, commercial partnership agreements, and service agreements.  David is passionate about giving research, development and startup companies affordable “down-the-hall” general counsel-type access early in the process, which allows companies to be proactive and make better, value-preserving decisions.

Education:

  • BS Mathematics, Brigham Young University
  • Juris Doctorate, Gonzaga University, School of Law

Bar Admissions:

  • US Patent & Trademark Office
  • Utah

Practice Area:

  • Intellectual Property
  • Patents
  • Trademarks
  • General Counsel
  • Government Grants (compliance, managements and supporting contracts)
  • Commercialization Agreements

Community Service:

  • Chair, Intellectual Property Section, Utah State Bar
  • Chair, Franchise Law Section, Utah State Bar
  • High School Tennis Coach

Prior Experience:

  • Drafted, closed, and oversaw compliance of government contracts in support of Government Awards in excess of $129,500,000 as internal legal counsel
  • Responsible for filing over 800 US and foreign patent applications to increase monetizable assets as internal legal counsel
  • Increased number of company issued patents by 172%
  • Reduced patent costs by more than $212,000 over three year period
  • Drafted, negotiated, and closed over $63,500,000 in commercial development deals as internal legal counsel
  • Negotiated and closed international development and commercialization deal worth over $11,000,000 to company
  • Assisted in the submission process for obtaining an FDA 510K clearance
  • Successfully renegotiated the US Manufacturing clause and the US Competitive clause with the Department of Energy Patent Counsel to allow for an international commercialization deal to take company technology to market
  • Managed and tracked docket of more than 1,000 patent and trademark matters and more than 1,700 agreements
  • Drafted hundreds of Non-Disclosure Agreements to protect confidential information and allow discussions with potential commercial partners
  • Set up company systems, policies and procedures for several startup companies to help identify, vet, and protect their inventions, trade secrets, trademarks, and make sure that their contracts (internal and external) did the same
  • Efficiently managed large IP budgets
  • Managed and IP and Agreement portions of due diligence for multiple sales of a company

Something unique:

David enjoys playing the piano and guitar while singing to no one in particular.

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