Despite being home to many self-described “nerdy” associates, Marshall Gerstein is patently a sociable, vibrant place to work...
THE year 1955 was an important one for technology. Not only did it see the birth of both Microsoft cofounder Bill Gates, World Wide Web creator Tim Berners-Lee, and of course the flux capacitor, but it was also the year that IP whiz firm Marshall Gerstein came into being. Managing partner Jeff Sharp describes Marshall as “a diversified, full-service IP firm” that practices “across all areas of technology.” He goes on to add that while “traditionally the firm would have been described as a patent firm,” it has since diversified to include trademark, copyright and transactional work.
Regardless of its petite proportions of around 80 lawyers, this wunderkind of the IP world is not to be messed with. Lawyers here were once given samurai armor by a client to thank them for their fierce and loyal representation (a samurai sword wasn't permitted into the building, alas). With its high ranking in Chambers USA in Illinois for IP, associates echoed that MGB's “well-established practice” in Chicago and “sophisticated matters” were the biggest draws to the firm.
The Work & Get Hired
MP Jeff Sharp tells us that “over 90 percent of our attorneys have a technical degree or a technical background, and most of us did something else before we attended law school, so that’s one of the things we look for.” Unsurprisingly then, many of our interviewees had come from highly specialized scientific backgrounds; PhDs and work experience at the Patent & Trademark Office were oft-cited examples. This wasn't the case for everybody, however; as one junior pointed out, the firm has much smaller – yet significant – trademark and copyright practices “for which the science background isn't necessary at all.” Professional credentials aside, the firm is also looking for “the ability to interact with clients. We're put in front of clients right away, so we look for people who are personable and comfortable with that.” Go online to read what hiring partner Julianne Hartzell has to say on the matter.
"The ability to interact with clients."
On the patent side of things, the work is divided according to industry, and includes areas such as chemical sciences, mechanical engineering, medical devices and biotechnology. The main focus of the associates in these groups is patent prosecution. “I prepare applications, I do some freedom to operate opinion work, and I work with clients directly to discuss their strategies for filing applications,” one junior summarized. “I also work directly with inventors to figure out their research and what can be filed and when and where to file it.” In litigation, there is a separate group involved in patent litigation, copyright and trademarks, and while “there's not a great deal of overlap,” those in prosecution did mention doing “a bit of litigation.” One junior also pointed out that “there are some opportunities to do IPR [inter partes reviews], which is akin to doing litigation.” Read more online about IPR online. Associates reported clients ranging from big corporate companies to small startups, with consumer products, manufacturing, heavy-duty machinery and pharmaceuticals being some of the industries mentioned.
Those in the nonlitigious trademarks and copyrights group spoke of trademark prosecution and enforcement, the latter including “Trademark Trial & Appeal Board proceedings, sending and responding to cease and desist letters, that type of thing.” Another junior added: “I also do trademark availability, running clearance searches and writing search opinions.” On the copyright side, “we do copyright registration and analysis, and things like UDRP [Uniform Domain-Name Dispute-Resolution Policy] complaints.” In general for this group, “anything that's not patent-related I've probably handled!”
"At this point I'm pretty much handling projects by myself."
Generally speaking, “when a matter comes in that matches my technical background, it usually comes to me.” That said, there is certainly an element of door-knocking when it comes to getting work. One newcomer noted that “I can seek out work from any of the partners, and they can in turn get me work. It's a fairly free agent system here.” When it comes to responsibility levels, “as soon as the partners realize they can trust you, you get a lot of responsibility very quickly.” One junior told us that “I had client contact very early on, and at this point I'm pretty much handling projects by myself, with minimal partner oversight.”
Training & Development
Upon joining the firm, associates are taken through 'MGB Academy.' This involves a few days of training to cover the basics of the firm's legal areas, as well as more general training on topics such as “the expectations, professionalism, and how to use your administrative assistant efficiently.” After this, the firm offers a range of online CLEs, “and partners with particular expertise present on various topics, from patent prosecution – particularly current issues – to licensing and nondisclosure agreements.” That said, associates felt that most of the training was on the job, as “the partners and senior associates are excellent at providing the patience and time to develop your skills.”
"Time to develop your skills."
Associates are paired with partner mentors: "You can ask them anything you want,” gushed one source, while others mentioned that “they're a wonderful resource for career advice.” Feedback is offered in the form of a formal summer review, and a six-month winter review. “All the partners with whom you've worked answer a questionnaire, which are then anonymously compiled. Then a member of the executive committee talks you through them, and discusses the steps to make improvements.” On an informal basis, “feedback depends on the person; some people are very forthcoming and with some people you have to seek it out.”
"My office swayed in the wind...!”
The Willis Tower location of MGB's Chicago office is the second tallest building in the US, so we weren't surprised to hear that associates “have a lovely view of the city and the lake.” And juniors quite literally go through the motions when it comes to settling in: “We had terrible storms about a week ago and my office swayed in the wind, which was interesting!” Being on the 62nd and 63rd floors means “you definitely notice the movement” if the weather in the Windy City gets a little, er, blowy. Turbulence aside, the interior was described as “a really nice, comfortable space, and we have nice facilities like a kitchen.” The building also has onsite restaurants and a gym, and “if you have to stay late – that means beyond about 7pm – the firm buys dinner for you, and they'll pay for a taxi.”
The sentiment expressed by our interviewees about the overall atmosphere at MGB was that “things are relaxed. I can ask any partner any questions at any time and they're very receptive. And people are social, they joke around; it's not an intensive environment.” Another newbie added: “Everyone seems to be interested in engaging people beyond just the work that's being done – we know each other on a more personal level.”
"It's not an intensive environment.”
We kept hearing the phrase 'work/life balance', and when we delved further juniors informed us that “within reason you can set your own hours; as long as the work is getting done there's no issue if you have to leave early for some reason.” Others noted that the two-tier billable hour requirement was another way of promoting a more balanced lifestyle. “It's the most explicit way the firm says, 'If you don't think you can do this work at this level, then just do less.' There's really no negative stigma associated with doing the lower tier.”
The stereotype of science and technology whizzes being somewhat unsociable is not one that applies to Marshall Gerstein. As one mechanical engineering junior remarked, “engineers are known to be nerdy – and there's no exception to that! But the ones here are extremely social, which is a rarity...” A range of firm-organized events doubtlessly helps this attitude: “Lawyers who pass the bar host a party." Then there's "a casino night and a holiday party. There's also a bowling night that everyone gets really excited about – people make team T-shirts and talk a lot of smack to each other!” Others mentioned a firmwide picnic and kayaking day during the summer, while the different practice groups also put on their own “impromptu happy hours.”
"People make team T-shirts...”
Hours & Compensation
“For your first two years, you have to hit 1,950 hours, because the learning curve is huge. After that, associates can choose to drop down to 1,800 hours for a lesser salary; people do that if they need more time for things like families.” To be considered for a bonus, associates need to bill 50 hours above their billing target – although this does not guarantee that they will receive one. Bonuses are discretionary, taking into account work quality as well as hours, and while some interviewees felt it would be good to know more about how they're calculated, others didn't mind: “I don't view bonuses as a guarantee, so it doesn't bother me.”
“My schedule is really what I make it."
On a day-to-day basis, sources appreciated a more flexible approach to the hours. One newbie reported that “my schedule is really what I make it, keeping in mind my billable hour requirements.” Those who do a lot of prosecution added that “rarely will something come up that I didn't know about,” so as a result, “I usually come in at 8am and leave at 6pm.” That said, “if a client wants advice quickly I will work weekends and stay late.” For the ones who had been involved in litigation, the hours were understandably less predictable: “In the last few months I would come in at 9am and leave after 7pm. On a really long night I would stay until ten, and bring work home after that.”
Interviewees agreed that the firm strongly encourages pro bono. A distinctive feature at Marshall Gerstein (and a big incentive for associates) is that for the first 50 pro bono hours billed, the firm counts double that number toward billables. As a result, all of our interviewees had completed at least 25 hours of pro bono in the past year. One keen associate told us: “I've probably billed over 200 hours this year, and I've never been pressured to curtail my pro bono time. It really seems like the firm is dedicated to offering these types of services.”
"I've never been pressured to curtail my pro bono time."
Examples of matters that juniors had participated in include working with organizations such as the Wills For Heroes Foundation, Lawyers for the Creative Arts, and the Cabrini Green Legal Aid Clinic, which provides legal aid to low-income residents of Chicago. One newbie added that “the firm is really open to new pro bono clients; they recently brought in training so you can work with victims of domestic violence, for instance.”
Pro bono hours
The general feeling toward the firm's diversity efforts was positive across the board. MGB has a Committee on Diversity and Inclusion, and associates reported getting “emails all the time about the different diversity events that are happening. Last Friday, for instance, we had a lunch to celebrate Black History Month.” Others pointed to the firm's efforts in supporting outside organizations: “The firm contributes money to help Girls 4 Science, which provides programs for inner-city girls ages ten to 18 to help promote the scientific disciplines.”
As far as male-female ratio goes, associates told us that despite the world of IP being known as traditionally male-dominated, they felt it to be pretty even. “There's a women's group that gets together once every couple of months to discuss different topics,” one junior told us. “And there are also a few attorney women's groups in Chicago. There are members of the firm on those boards so they can give us information about the activities they're doing.” That said, certain groups such as mechanical engineering did report a fairly “male heavy” practice.
Strategy & Future
MP Jeff Sharp informs us that “despite headwinds in the overall economy in 2015, we had a strong year, and litigation looks like it will be taking off in 2016 – we're anticipating good things to come.” He adds that “electrical engineering and computer science have been the fastest growing areas since the recession,” while mechanical engineering has also seen “huge growth” in recent years. “It's now possible to construct and operate things that you could only imagine but not build ten years ago, so there's a huge amount of innovation going on.”
"Litigation looks like it will be taking off in 2016."
On the topic of geographical expansion, Jeff Sharp says “we're always thinking about the possibility of opening new offices, but I think it has to be under the right circumstances. As it is, it's easy to get on a plane in Chicago and be in California by the afternoon!”
Chambers interview with Jeff Sharp, managing partner
Chambers Associate: How has the past year been for Marshall Gerstein?
Jeff Sharp: We had another very solid year, and we're expecting an even better year in 2016. We have about 80 lawyers and another 15 technical specialists practicing exclusively in the IP space. We're a diversified, full-service IP firm; we practice across all areas of technology, both in litigation and on the prosecution/transactional side. Because of that, every year one area does very well and another is perhaps a little quieter, but overall it's worked very well for us for about 60 years now. Despite headwinds in the overall economy in 2015, we had a strong year, and litigation looks like it will be taking off in 2016 – we're anticipating good things to come.
CA: Where do you see the firm in say, five years' time?
JS: We don't construct a plan that says we want to be a particular size, instead we've always been reactive to our clients' needs. We've don't hire people on spec and say 'we're going to build X business'; the way we operate is that our clients ask us to do things and we respond. All of our businesses are growing, some faster than others.
For us, electrical engineering and computer science have been the fastest growing areas since the recession, and in spite of the recession they've been growing quite quickly. Areas like computer science and biotechnology sound very cutting edge – and they are! But I think what everybody forgets is there are also a lot of inventions that classify as mechanical engineering inventions, and we've had a huge growth in that area too. It's now possible to construct and operate things that you could only imagine but not build 10 years ago, so there's a huge amount of innovation going on.
CA: So could geographic expansion be on the cards soon?
JS: Our practice is a national one now, and most of our clients are outside of the Midwest; we're probably central and West Coast-centric, with perhaps a little less work on the East Coast than the West Coast.
Back in the day when I became a lawyer in the early 1980s, there were relatively few patent lawyers in California, and very early on we represented Amgen, which became a very successful biotechnology client there. Because of that, and because a lot of people came up through Amgen and left to start other companies, we have a very robust West Coast biotechnology practice. We also do a lot of computer science and engineering work there.
Being in Chicago, we have easy access to the West Coast, so that has worked very well for us. We're always thinking about the possibility of opening new offices, but I think it has to be under the right circumstances, and we'd want it primarily staffed with people who were native to the area. It's something we look at every year, but as it is, it's easy to get on a plane in Chicago and be in California by the afternoon!
CA: How have external events impacted Marshall Gerstein's work in recent years?
JS: In general since the recession, all of our clients – all of everybody's clients – are operating under stricter cost restraints, so that’s forced people like us to become more efficient in the way we provide services. For instance, our files now generally electronic, and we have some internal workflow processes that we developed over past few years that allow us to be even more efficient in doing our work. A lot of the new lawyers that we've hired and trained across the firm over the last five or six years are getting to be very skilled and very efficient. What we see is that even though patent litigation has slowed down across the market, particularly with the advent of IPRs [inter partes reviews before the Patent Trial and Appeal Board of the US Patent and Trademark Office], the IPR practice has grown. In addition, where the stakes are high, there is still litigation going on, and our clients are still hiring us to do that type of work. The fact that we do everything surrounding IP has worked out very well for us.
CA: What do you look for in a candidate?
JS: Well traditionally the firm would have been described as a patent firm, but we don't call it that any more in deference to my colleagues who do trademark, copyright and transactional work. Still, over 90% of our attorneys have a technical degree or a technical background, and most of us did something else before we attended law school so that’s one of the things we look for. We have a number of folks who worked in industry, for instance, and I think that's very helpful.
Many of our people on the chemistry and biotechnology side were in academia for a number of years prior to joining the firm, so we have a lot of folks with advanced degrees and industrial experience. That's great for us, because they can understand technically what's going on. Ultimately, our clients are not IP businesses, they're people who are inventing things and selling them and IP is a means to achieve other business goals. The fact that most of us have had that experience, either innovating or being in an industrial company, helps us to understand that. Patents are a tool that advance what our clients are trying to do, and I think that our perspective helps us better service our clients. That means usually when people join us they're not straight out of school, they have some life experience and are generally more mature.
CA: Do you have any words of advice for those who might be thinking of entering the legal profession?
JS: I think it's a wonderful profession! I was an engineer before I went to law school, and I really enjoyed school – I enjoyed learning new things every semester. And although I liked working as a practicing engineer, you tend to become very focused on one thing – which of course makes sense from an industrial perspective.
What's great about the practice of law, on the other hand, is that you get to know a lot about 10, 20, 30 different things, so in terms of intellectual fun, it's great! We get to work with a lot exciting new technologies. While we're lawyers, we're fundamentally interested in the technology, and we get to work with the top scientists in the world. It's collegial and it's fun; most of the people here are engineers or science majors, so it's a really bright, interesting group of people who all share a love of science and technology. If people are interested in that they should definitely consider patent law.
Chambers interview with hiring partner Julianne Hartzell
Chambers Associate: How do you pre-screen applicants? Is there anything that's particularly attractive on a resume?
Julianne Hartzell: We are very specific in our hiring, so it varies a little bit depending on our technical area. In our biotechnology area, generally we look for somebody who has an advanced degree; in the electrical area, we're more likely to look for somebody who has industry experience. In litigation, we look for someone who has some sort of speaking experience, maybe in a moot court in law school, or who has had the opportunity to do a clinic where they appear in court, to demonstrate an interest in litigation.
CA: What about the less tangible qualities? What do you look for in a person?
JH: We look for somebody who is very intellectually curious, who wants and is excited to learn new things. We look for individuals who are self-motivated and understands the importance of meeting client needs. I think the personality varies a little bit depending on whether they want to be in prosecution or litigation, too. In litigation, we want someone who is more comfortable speaking in public but also able to understand a broad range of technology. On the prosecution side, we look for somebody who is very interested in the specific technology. To give an example, we often see individuals in computer science doing coding on the side, just because they enjoy it.
CA: How can someone really impress as a summer associate?
JH: As a summer, we like to see someone who communicates well while they're working on their projects; they keep their supervisor updated as they're going and they explain what they have done. The ability to meet deadlines is also important. We also look a lot at the summers' writing style, and if they can explain things clearly.
CA: What is the firm doing to encourage diversity in recruiting?
JH: We do several things. We work with our diversity committee to help identify job fairs and organizations at law schools that are targeted to diverse students, and we work with those during the recruiting process. We also work with the students after hiring, to help make sure people are comfortable. We have a small group diversity program, where partners are paired up with associates they don't know, to help them get to know each other a little better and feel more comfortable. Additionally, our women’s affinity group, which works to foster relationships between female partners and associate and provide professional development programming, holds at least one meeting while our summer associates are in the office to introduce our women summers to the group.
CA: More generally, what do you think makes Marshall Gerstein unique?
JH: I think there are a few things. First, when it comes to training, our partners invest a lot of time in the associates. Our hiring is so specific to exactly match the needs we have, because our goal is to hire people that we hope will make partner. The model here is different than the typical BigLaw model, where lots of associates are taken on with the expectation that most will not make partner. We're hoping to keep people around, so the firm invests a lot of time and money in developing each individual as an attorney.
Another thing I think is the depth of our technical knowledge and the interesting work that we do for our clients. Because this is an IP firm, it is important to a our attorneys that they get to work with interesting clients that are on the cutting edge of their industries, and that our attorneys get to be involved in developing the strategy used by the client to help grow and protect their products. A third thing is that we are one office, which is a very specific choice; it means people get to know each other, develop relationships, and truly feel that they're a part of the firm.
IPRs – what are they and what do they mean for IP?
If you're interested in IP, chances are you will have heard of inter partes reviews, or IPRs. Indeed, they're a relatively new, and very much up and coming aspect of IP at this point in time. But what exactly is IPR, and how has this procedure impacted the IP practice more generally?
Firstly, a bit of background. IPRs replaced inter partes re-examination on September 16, 2012, under the America Invents Act. This procedure allows the validity of patents to be challenged in front of the United States Patent and Trademark Office in a similar process to litigation. However, IPR is cheaper, quicker, and makes patent validity easier to contest than traditional litigation. As one associate at Fitzpatrick explained, “typically for patent litigation, company A sues B for infringement and B tries to defend it. Now there are new procedures. Essentially everyone can now challenge the validity of a patent in front of the Patent Office.”
Unsurprisingly then, IPRs are proving an increasingly popular way for clients to challenge patents – particularly as many are operating under stricter cost restraints since the recession. “This area has absolutely grown,” reports Sterne Kessler's managing director Mike Ray. “The firm was already handling inter partes reexaminations, exparte reexaminations, and interferences, which were the processes at the USPTO [United States Patent and Trademark Office] prior to IPRs being introduced," he continues, "so when the new law passed, we took our expertise to bear on the new proceeding."
With growth in one area, however, there is inevitably going to be decline in another; in this case – as Marshall Gerstein's hiring partner Jeff Sharp points out – it's patent litigation. “Patent litigation has slowed down across the market, particularly with the advent of IPRs,” he tells us. Nonetheless, he goes on to add that “where the stakes are high, there is still litigation going on, and our clients are still hiring us to do that type of work.” For full service IP firms, this shift in practice is a usual part of the year-to-year changes: “We practice across all areas of technology, both in litigation and on the prosecution/transactional side. Because of that, every year one area does very well and another is perhaps a little quieter, but overall it's worked very well for us,” Sharp explains.
Marshall, Gerstein & Borun LLP
233 South Wacker Drive,
- Head Office: Chicago, IL
- Number of domestic offices: 1
- Number of international offices: 0
- Partners (US): 43
- Associates (US): 26
- Summer Salary 2016
- 1Ls: $3,000
- 2Ls: $3,000
- Post 3Ls: $3,000
- 1Ls hired? Yes
- Split summers offered? Yes
- Can summers spend time in overseas office? N/A
- Summers 2016: 2
- Offers/acceptances 2015: 5 offers, 4 acceptances
Main areas of work
Marshall, Gerstein & Borun LLP is a Chicago-based intellectual property law firm having over 90 attorneys, highly qualified patent agents, and technical specialists, all dedicated to providing superior intellectual property counseling. We specialize in prosecution and litigation in all areas of intellectual property law. We litigate nationwide, primarily within the federal court system, and obtain patents and trademark registrations for our clients in the United States and foreign patent and trademark offices.
Marshall, Gerstein & Borun is at the forefront of intellectual property law. The Firm’s professionals understand the hard science behind clients’ innovations and how to devise, evaluate and execute intellectual property strategies. Fortune 500 corporations, small to mid-sized companies, non-profits and start-ups turn to Marshall Gerstein for comprehensive intellectual property solutions tailored to their needs. With almost 80 attorneys supported by a full team of patent agents, technical specialists and paralegals, the Firm assists clients with protection, enforcement and transfer of IP rights throughout the world.
• Nearly 90% of the Firm’s attorneys and patent agents are admitted to practice before the US Patent and Trademark Office
• Nearly 90% of the Firm’s attorneys have science or engineering degrees
• Nearly 50% of the Firm’s patent agents and technical specialists have a PhD or other advanced technical degree
• Number of 1st year associates: 1
• Number of 2nd year associates: 1
• Associate salaries: 1st year: $160,000
• 2nd year:
• Clerking policy: yes
Law Schools attending for OCIs in 2016:
Northwestern University, Notre Dame, University of Illinois, University of Michigan, University of Minnesota
Summer associate profile:
We look for candidates with bright legal minds and demonstrated technical ability. The ideal candidate enjoys a thirst for learning, a dedicated work ethic, and an ability to work effectively in teams. Each candidate should have at least one technical/science degree, with an advanced degree preferred. Technical/science degrees are not requires for nonpatent positions. We also appreciate the value diversity builds in our practice of law and look for candidates from diverse backgrounds that can bring a breadth of experience to our team.
Summer program components:
During the summer, we expose our summer associates to realistic, substantive legal assignments tackling issues across intellectual property disciplines, including litigation, prosecution, and transactional. Our summer associates will have one partner mentor and one associate mentor to work with throughout the summer. We also have many social events throughout the summer that take advantage of the culture and richness of Chicago.