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Gaurav Asthana has always had a curiosity about how things work. As a child, he happily put together LEGO Erector sets and took apart broken household electronics.
“I just always had a fascination with the sciences because of that,” Asthana says. “I wasn’t familiar with patent law as a kid, or even in undergrad, but I fortunately had a gentleman in my senior design class during engineering school who was an attorney.”
This friend explained to Asthana that if he was interested in continually learning about the latest innovations and how to protect them, patent law would be a great career. Asthana was intrigued. He began his career in patent prosecution, after passing the patent bar exam offered by the US Patent and Trademark office.
“I did that for a number of years, but I really wanted to do a deep dive into other areas of patent law—such as patent litigation, licensing, etc., which required me to have a law degree,” he explains. “So I eventually went to law school at night while working as a patent agent during the day.”
Asthana trained in IP law for fifteen years, first at Sterne, Kessler, Goldstein & Fox in Washington, DC, and then at Latham & Watkins in San Francisco, perfecting his craft while exploring his interests in the patent world. In 2019 he decided to move in-house to software company Atlassian, where he currently serves as senior IP counsel.
“Here, I get to experience the intersection of technology, law, and business in an ever-expanding journey, and I have learned so much along the way,” Asthana says. “My training in patent prosecution and patent litigation gave me a background in understanding how to advise and guide the business in my current role.”
Among his chief responsibilities are strategic patent portfolio development, defense against patent litigation and licensing threats, M&A, IP, due diligence, open-source compliance, product and contract support, and DMCA and trademark enforcement.
“Here, I get to experience the intersection of technology, law, and business in an ever-expanding journey, and I have learned so much along the way.”
When dealing with open source, he’s responsible for making sure the software is in compliance with any open-source rules and there are no viral licenses implicated. And when purchasing a company in an M&A deal, he must make sure the target company has no IP entanglements or open-source issues.
It’s a lot of responsibility for an IP team of just two people: Asthana and his supervisor. As a result, he says, he is constantly learning and developing new skills. “It’s a small but mighty team, and that allows me to take on a variety of responsibilities compared to a position at other companies that have very specialized IP roles,” Asthana says.
One of the most important aspects of his job is helping to build Atlassian’s patent portfolio through strategic patent prosecution and defend against patent lawsuits—from both competitors and patent trolls. To build the patent portfolio he relies on a two-pronged approach. “I have a top-down and a bottom-up approach to source ideas from our engineering teams. In the top-down approach, I interview the engineering and product leadership on a regular cadence and drill down the organizational chart to find out where innovation has taken place. We also look at the product road map as a guide,” Asthana notes. “The bottom-up approach is a grassroots capture where we do periodic town hall presentations to engineering teams, along with blogs to educate and encourage our engineers to come forth with their ideas.”
Since Atlassian is a global company, with offices around the world, the pandemic affected them less than many other companies; many of their employees were used to collaborating remotely already. “The company recently offered employees the chance to work remote permanently, even after COVID is under control. Because we build collaboration software, we understand the tools needed to successfully collaborate even when working remotely,” Asthana says.
“I love interacting with the engineers, business folks, and the legal team to come up with solutions that are creative and protect the company at the same time.”
One of his proudest accomplishments has been building strong relationships with the engineering and product teams.
“I really love the people at Atlassian and the technology we are developing in the DevOps, ITSM, and work management areas. I am continuously learning about different in-house legal issues along with the latest technology coming down the pipe, which is exactly the kind of thing I had hoped for in an in-house career,” Asthana says. “At the same time, I am learning about the business needs. I love interacting with the engineers, business folks, and the legal team to come up with solutions that are creative and protect the company at the same time.”
He also leads quarterly innovation drives and recently introduced a ShipIT Patent Award, given to the most patentable idea each quarter. “We also police brand violations and piracy, i.e., if someone is using our brand inappropriately or selling our software without permission. Trademark protection and enforcement is yet another piece of the puzzle.”
His goal in the year ahead is to continue building the patent program and creating a strong defense against patent litigation and licensing concerns. Asthana hopes to get a compliance and piracy detection program in the works, fortify the open-source compliance program, and work on more strategic patent acquisitions. He has plenty of work ahead of him, but he’s more than ready.
