A renowned engineer once said: “Science is about knowing, engineering is about doing.” Sterne Kessler's associates know what they're doing.
“WE'RE dedicated to science and that's how we differentiate ourselves,” one junior associate asserted when we asked which elements make up the compound that is IP boutique Sterne Kessler. “We're working on legal matters very closely associated with engineering or science.” Launched in 1978 by name partner Robert Sterne, the firm set out to offer IP advice from attorneys steeped in technical knowledge: advanced degrees, PhDs and previous careers in labs or industry are a dime a dozen here.
The firm's so proud of its attorneys' technical heritage that lawyers' profiles on Sterne Kessler's website can be located by clicking on different 'elements' in the firm's own take on the periodic table. In fact the whole website put us in mind of a college textbook, complete with annotated cross-sectioned diagrams and terms like phylogeny, which had us whipping out the dictionary.
Patent prosecution may have been the firm's foundation stone when it was established almost 40 years ago but nowadays Sterne Kessler is propped up by “the three pillars of patent prosecution, patent litigation and patent office matters.” The single-site Washington, DC firm earns top-tier Chambers USA rankings for patent prosecution work in the District of Columbia. And its formidable reputation means that despite only housing around 130 attorneys, it attracts megabrands like Google, adidas and multinational toy manufacturing company Hasbro.
Sterne Kessler's emphasis on specialized know-how means that newbies are affiliated with a specific group from the beginning of the summer program. Litigation-designated associates solely handle contentious IP matters in a variety of areas, while those in the electrical, mechanical and biotech groups can experience both patent litigation and patent prosecution (applying for patent status). Both summer and junior associates undertake the bulk of their work from within their assigned team: “A chemist isn't going to be working on something related to electrical engineering.” But rookies can reach out to other areas for tasks: “If you're just researching, you don't have to be an expert in whatever the tech is used for.”
Biotech, electrical or mechanical newbies are allocated a point person who's “intended to assign you tasks” or “connect you with people who can give you work.” Many of our sources had also sought out matters themselves. A single coordinator oversees all workflow in the litigation department but juniors are also free to reach out for assignments, provided they clear it with the coordinator first.
“I'm put in a position where I feel my opinion is relevant to what we're working on.”
Litigators can work on patent infringement cases within a “mish-mash” of industries like pharmaceuticals, chemicals, energy, engineering, software and consumer products. “If you express an interest in an area they'll try to give you work. Your skill set can be applied to litigation research so even if you don't have the technical know-how you can contribute to that team.” Juniors here primarily undertake “first drafts of motions or pleadings, conduct discovery and document review, and respond to discovery requests. I'm pretty much taking the first crack at most things and have second-chaired depositions and oral arguments,” one interviewee professed.
Although juniors in the biotech, electronic and mechanical groups predominantly handle assignments within their specialized field of expertise, tasks are similar across teams. Matters tend to fall into three categories: patent prosecution, opinion writing and patent litigation. Go online to read more about what each area involves. There's also a small "but significant" trademarks group. Sources in these groups were pleased with the responsibility afforded to them: “I'm put in a position where I feel my opinion is relevant to what we're working on. I'm not just doing something for the sake of it.”
On the patent side, “the majority of the attorneys here have science backgrounds, either in the lab or in industry.” Working for engineering or pharmaceutical companies and research institutions were just a few of the previous experiences we heard of. Certain practices require attorneys to hold specific degrees. "We find that in chemistry and biotech, advanced degrees are mandatory. There are very few lawyers in that group that don't at least have a master's," recruitment committee chair Don Featherstone tells us.
“Explain it like a scientist.”
Sterne Kessler's “picky attitude toward people with strong technical experience” is reflected in interviews. One source recalled: “I was asked a lot about my research and expected to explain it like a scientist, not like a layman.”
Juniors believed the abundance of similar backgrounds led to an identifiable type at the firm: “I went through grad school in a lab and people there were laid back. When I went to law school I felt there was a difference between science and legal track students. At Sterne Kessler we have good blend of the easygoing science attitude, and the more serious legal attitude.” This results in “a comfortable atmosphere. It's not that stressful here." Others pointed out the environment isn't “stuffy. The dress code is more on the casual side of business casual. If someone's in a suit you know they came from court.”
“It's geeky but I think it's nice.”
Interviewees further felt there was a “good camaraderie” between attorneys. “My point person is genuinely concerned about the career progression of the people he's helping.” But even senior lawyers who aren't designated to watch over juniors are cordial. “No partner is unapproachable and no one is too important to talk to associates. I've not encountered many people with big egos who are difficult to deal with.” Or, another source added, “gunners. Everyone is much more interested in working together.” Especially when they get to gossip: “A lot of us really enjoy what we do. It's not uncommon to have conversations about the patents we're working on or the technology we've been seeing lately. It's geeky but I think it's nice.”
The firm's also keen to encourage employees to take their minds off work every once in a while. The winter retreat offers attorneys the chance to try anything from falconry to fishing, cooking classes to visiting a distillery, or bowling and paint-balling. “It was a blast.” Back at the office associates can join Sterne Kessler's band, flag football, softball or basketball teams. And they hold “periodically random events like a ping pong tournament” in the firm's games area.
All of Sterne Kessler's attorneys are located at the firm's New York Avenue base in downtown DC. The office itself is built within the shell of “an old refurbished bus station,” which still retains its art deco façade. “It's pretty neat. I bring my friends by to look.”
“An old refurbished bus station.”
Back in the 1990s comedy action flick True Lies was filmed in Sterne Kessler's filing department and kitchen. The firm even got a mention, although its name was changed to 'Sterne, Kessler, Goldstein and Kripnik'. Thanks to a recent office remodel you'd now be hard pressed to recognize the areas where Arnold Schwarzenegger interrogated Jamie Lee Curtis. A glass-partitioned interior has created more of a “modern industrial” vibe but a film poster in the cafeteria reminds everyone of the firm's Hollywood moment. The cafe also has its own fully-staffed barista bar – complete with free coffee – and the games area which houses ping pong, table football and shuffleboard.
Training & Development
Upon arrival rookies are given an associate buddy. Buddies reside in the same practice group and are usually in the year above to “answer all your stupid questions.” The firm's keen for associates to make the most of this relationship: “They get annoyed if we don't use the lunch budget.” Sterne Kessler also launched in 2014 a career coach program to connect juniors with partners outside of their practice group. These external mentors “can give us an objective take on any concerns.”
“An objective take on any concerns.”
Newbies kick associate life off with two weeks of training on firm systems and the basics of patent prosecution and litigation. Thereafter, monthly practice group meetings outline strategy, case law and legal updates. Biotech associates also benefit from a weekly case law course taught by name partner and top life sciences patent litigator and prosecutor Jorge Goldstein. The firm's also “very focused on writing training and hired a consultant writing specialist to come in.”
Hours & Compensation
Associates can choose their billable target to become bonus-eligible: 1,900 or 2,000 hours. As well as the hours component, a merit-based bonus comes into play for second-years and above. While most sources considered the targets reasonable, we heard of several who struggled to reach them. Although juniors admitted this was “a source of concern, the firm's understanding. They tell you to write articles or undertake pro bono” to bring hours up.
“There's no pressure to be here a certain number of hours.”
Interviewees tended to put in around ten hours a day at the office. “You don't expect to be working fewer hours than other professions but as law firms go I think it's fine.” Others pointed out: “There's no pressure to be here a certain number of hours each day and be seen by everybody.” Once associates have left the office, evenings and weekends are “normally unencumbered.” Vacations are also respected “as long as you hit your hourly goal and don't take a break right in the middle of a big project you knew was coming.”
Juniors believed they are allowed to count 50 pro bono hours toward the billable requirement. But we were hard pushed to find any interviewees who'd actually done any pro bono. “It's available if you seek it out, but it's not brought up very often,” one source acknowledged.
“Take advantage of our IP skills.”
The firm does have an IP and human rights pro bono practice. The partner who founded it “was thinking about how we could take advantage of our IP skills,” one source explained. “That can be limiting though as you're not going to have homeless people inventing things; it's typically corporations.” So the firm lends its hand to writing opinions for groups like Doctors Without Borders or advising “Native American tribes who may need patent support.”
Pro bono hours
“I would imagine that law, science and engineering are more male heavy than other professions,” one interviewee thought. Does that mean Sterne Kessler finds it harder to hire diverse attorneys? “I think based on the numbers we're doing okay,” another junior mused. Although the gender divide among associates here is skewed heavily toward men, a quarter of the firm's partners are women (coming in above the BigLaw average of 17%). Interviewees commended “several female partners who are working to drive additional diversity and provide more support to mothers and fathers.” We heard women partners also make themselves “available to chat with female juniors and make an effort to get to know them.”
“Available to chat with female juniors.”
In terms of race, “there's not a large African American presence at the firm, although there are a few people of Asian descent.” The firm's diversity committee puts on several events to encourage attorneys to “get to know one another. We held a session where we wrote down something others might not know about us and posted them in our common room.” Another event saw associates asking a panel of diverse attorneys and staff about their backgrounds.
Strategy & Future
“We're reasonably good at evolving with the legal landscape,” one source considered. “We started out as a patent prosecution firm. When patent litigation became profitable we launched our own group. Now patent office litigation is hot, we've become experts in that practice.”
“A big push to become involved in IPR work."
Patent office – or Patent Trial and Appeal Board (PTAB) litigation – has been on the up across the legal profession since 2012 saw the introduction of inter partes review (IPR) proceedings to challenge established patents. “There's been a big push to become involved in IPR work,” sources emphasized. “Our PTAB offering has been really growing. We're gearing up to be at the forefront of this area.”
Interview with managing director Mike Ray
Chambers Associate: Sterne Kessler started out as predominantly a patent prosecution firm. What are the firm's core practice areas now?
Mike Ray: When I joined the firm back in 1989 we were known for patent prosecution although we did have a small litigation practice comprising just a few people. Over the past 26 years we've had tremendous growth in patent litigation. We have a nice balance between three areas: patent prosecution, patent litigation and patent office litigation at the Patent Trial And Board [PTAB]. Our patent preparation and prosecution group also handles opinions and client counselling and is the foundation upon which the firm is built. The practices which have grown significantly, include district court, International Trade Commission [ITC] litigation and the PTAB litigation. Our patent office team handles Inter Partes Review [IPR] matters at the patent office to challenge the validity of a patent. As a full-service IP firm, we handle trademark, copyrighting and anti-counterfeiting.
CA: Associates thought the firm's IPR offering had been really growing. Is that the case?
MR: Absolutely, we are the number one firm in the US in terms of the number of proceedings we're handling. Sterne Kessler is recognized both in the US and internationally as a, if not the, go-to firm for handling IPRs at the PTAB.
The America Invents Act [AIA] radically changed US patent law, and we were really well positioned to take advantage of those changes. The firm was already handling inter partes reexaminations, exparte reexaminations, and interferences, which were the processes at the USPTO prior to IPRs being introduced with the passage of the AIA., so when the new law passed, we took our expertise to bear on the new proceeding. While this area has absolutely grown, it's important to us to maintain our position in the patent prosecution market. Many of our attorneys are experienced in patent prosecution and district court litigation and bringing those two areas of expertise together makes us perfect to handle the IPR matters at the patent office.
CA: Are any other areas at the firm doing particularly well?
MR: Among the three main areas, our district court and IP litigation department has undergone fantastic growth. We formally created a litigation practice group about ten years ago which underwent steady expansion until the last couple of years, when that growth really accelerated.
CA: We've been reading recently in the press that the amount of IP litigation work around is decreasing. Is that something you're concerned about?
MR: Our IP litigation department is growing. It's a very complex subject; some of the firms which rely on it to stay busy have seen drop offs. One reason for that is the validity of the suits now being dealt with at the PTAB. If the patent owner asserts against the defendant, the defendant may, and typically does, file an IPR petition, asking the patent office to invalidate it. District courts have been prone to stay the litigation so firms depending on district court litigation are finding cases are being stayed in favour of invalidating proceedings. We've been fortunate as we handle both of those areas; having patent office experience allows us to handle the challenge on the opposing side.
In terms of other areas for growth, proceedings at the patent office take 18 months from start to finish. They move quicker than typical district court actions and at the end of the proceedings they issue a final, written decision, which can be appealed to the Court of Appeals for the Federal Circuit. This appellate court also handles the appeals from district court and ITC litigation. As we're handling so many of these at the patent office, our appellate practice also is growing very quickly.
CA: The firm currently operate as a single site office, is that a model you will continue with?
MR: We see a lot of advantages to having one location as it helps us maintain a visible culture and identity. It also has the advantages of being near the courts and agencies we deal with, although our clients come from across the US and the world. We don't currently have plans to open an office outside of Washington, DC, but it's something we explore from time to time as talented lawyers from different areas of the country are interested in joining the firm, or clients would like a local presence of their IP team.
CA: What’s the firm's general strategy going forwards over the next few years?
MR: We distinguish ourselves through niche expertise rather than trying to be everything to everyone. We're going to stay focused on IP, and within IP, we will continue to encourage all of our attorneys to develop a niche and become experts in that area. Our clients want specialists, not generalists. Some of our lawyers focus on appellate practice before the Federal Circuit, others focus on being an IPR expert or are involved in patent prosecution. We might have a lawyer with a Ph.D. in chemistry who works in the pharmaceutical group primarily on patent prosecution for example. Our clients want cost effective representation from creative lawyers who can deal with significant technical and legal challenges.
Our firm is stable because we have a diversity of practices areas within IP, as well as diversity in technology areas. In patent prosecution, we have different technical groups: mechanical, electronics and biotech, and chemistry. That gives us a lot of stability; if one industry is slow, the others will be strong- the electronics market tends to be cyclical. If market forces or legislative changes affect a particular industry or legal area, the way we’re organized makes us very stable. At a time when other firms are shrinking, we're continuing to grow.
CA: The firm doesn't appear to hire in many lateral partners...
MR: We've primarily grown organically over the years by hiring summer or first-year associates. We also have a technical specialist program; we hire Ph.D students and post docs out of industry or graduate school, and we train them in patent law and will send them to law school. Many of these technical specialists and patent agents apply to law school within a year or two and complete law school at night while working full-time for us. It generates some very talented technical professionals who can have four to six years’ experience working for us in patent law. We do, from time to time, bring in laterals, especially when we're jump starting a new practice area, but we've not brought in any senior laterals in the past few years.
CA: What kind of person thrives at Sterne Kessler?
MR: The important part of our culture is working together in teams. One of our primary excellence goals is to have a rewarding and accountable culture; we want to recognize people for their strengths and help them thrive in those areas. People that like to work in teams and who get excited by technology do well here.
CA: Do you have any advice or words of wisdom for law student as they try to enter the legal profession?
MR: My number one piece of advice is to take a long term view. One of the challenges I had was trying to plan my whole future, and that's difficult. You don't need to work out all the details, but when you're evaluating a firm, look at the whole firm and take a 360 degree view of what itoffers. Some people can be very focused on compensation, for example, but as you spend so much of your life working, look at the firm’s culture. Ask whether you want to do this kind of work and take a holistic and long-term view of where you want to begin and sustain your career.
One of the things Sterne Kessler offers, which is getting more and more difficult for young lawyers, is that it's a firm that they'll be able to call home for a very long time and have a real chance of becoming partner. We provide really good hands on advice, training and mentoring; one aspect of our firm that distinguishes us is the amount of immediate contact with inventors and clients we give to our young associates from the moment they join us.
We chat with recruitment committee director and chair Don Featherstone
Chambers Associate: What's the scope of your recruiting drive?
Don Featherstone: We conduct OCIs and tend to have a fair amount of write ins too. We' also attend the Loyola Patent Law Interview Program [PLI] in Chicago, which helps us with both summer and 1L recruiting. It’s been very successful for us over the years; in fact we've actually shifted away from OCIs a bit and are putting a little more effort into the PLI program given our IP focus.
CA: Who conducts your interviews and what kind of questions are they likely to ask?
DF: We send partners and typically one senior associate to the Patent Law Interview Program in Chicago. When we're interviewing at the firm, our interviewers are a combination of partners and senior and mid-level associates.
The different individuals that conduct interviews focus on different things. Someone may focus on a candidate's technical background and competency. Someone else may ask about legal experience. In general, everyone is looking for whether the candidate has any industry experience or previous law or clerking experience and whether their long-term focus is going to be in IP. Our goal is finding candidates that are an overall fit for the law firm and the personality of Sterne Kessler.
CA: How can someone stand out during these interviews?
DF: Prepare. Candidates should demonstrate they know something about the firm and show they have taken the time to study the individuals they're going to meet with. If they are somewhat up on current legal events in the patent world, familiar with the most recent precedent case or the ones in the news, that helps. They can show their geekiness a bit; perhaps when they were growing up in high school or college they had a bent toward technology. We like to hear about that.
As patent attorneys we have to be able to understand the technology inventors want to patent and then act as interpreters to write the patent application. It requires a certain skill set. We need the technical knowledge and skills to translate the patents and the training on the legal side to protect patents.
CA: Certain practice areas require certain degrees, how does it differ between groups?
DF: We find that in chemistry and biotech, advanced degrees are mandatory. There are very few lawyers in that group that don't at least have a Master’s; there are maybe less than 10% who only have a Bachelor’s. In the electronic and mechanical groups, it's the flip side; most people have a Bachelor’s or Master’s, and we don't find many PhDs. If folks don't have advanced degrees, we put a lot of weight on industry experience, whether that's working for corporate or research institutions or having patent office experience.
CA: Is there anything distinctive about your summer program?
DF: Our goal for the summer is to throw everyone into the deep end. We want to give them the experience they'd have as a first-year. We give them hands on work; they can sit in on interviews with inventors, go to the patent office, and do the actual work associates do. They might undertake patent applications, research, and maybe undertake some writing too. We want to give them a summer experience which is like being on the job as an associate.
CA: How can someone really stand out as a summer associate?
DF: By rolling up their sleeves, getting engaged in and taking ownership over projects, being responsive and asking good questions. We want people to show they have the capacity and willingness to learn and don't shy away from a challenge.
They need to stay engaged as good firm citizens and embrace the staff and other practices in their group. We want them to try us out as much as we want to try them out.
CA: What does the firm do to encourage diversity in recruiting?
DF: It is a real challenge for us actually as there tends to be a less diverse population of folks with technical degrees and law degrees. It's hard for us but we do seek out special recruiting events which are diversity-based, and we look to historically black institutions like Howard University for example.
CA: Is there anything else it is important for students to know about the firm's recruitment process?
DF: We don't focus on GPAs; we don't really have a cut off on that as we're looking at the whole portfolio of a candidate. If someone approaches us with a technical degree and a law degree, but a GPA below 3.0, we'll take a close look at which areas they did and didn't do well in, look at the story behind that and give them an opportunity to talk about what else they bring to the table that is of value to the firm and clients. It's the whole package we're interested in.
More on Sterne Kessler's biotech, electrical and mechanical groups
Patent prosecution, opinion writing and litigation constitute most of the work undertaken by the biotech, mechanical and electrical groups. Variations between the three teams center more around which industries they work with, so juniors in any will find themselves handling similar tasks.
Patent prosecution involves “acquiring a patent in a certain field. It entails a back and forth with the United States Patent and Trade Office [USPTO]. We assert what the patent is and what our clients deserve. The USPTO may reply 'no, that's too broad' or maybe someone has already invented something similar. We'll then go through negotiation and sometimes advocacy” to try and successfully file an application. “It can last years,” one source stressed. Research, preparing communications with the USPTO and drafting and filing patent applications were typical fare for the sources who'd handled this area.
Opinion writing encompasses “research, analysis and drafting opinions with a senior attorney.” Most opinions take the form of 'freedom to operate' or 'non-infringement' opinions: “Essentially a company comes to us and says they want to release a product on a certain date. We research what current patents are out there and what the pending publications are. We then analyze if the client released the patent and someone sued them for infringement, would the plaintiff be able to bring a successful case?”
Patent litigation is “a lot more like a typical court case,” complete with research, prepping depositions and expert declarations, and doc review. Sources had also worked on Inter Partes Reviews to challenge the validity of US patents before the USPTO.
Those in the electrical team could see clients in fields like software, data storage, cryptography, communications, 3D printing and photonics (generating and manipulating photons for use in things like fiber optics or lasers). There's naturally some industry overlap between the electronic and mechanical groups. Like electronics, the latter handles patent issues concerning consumer electronics and communications systems. Matters concerning products such as medical devices, industrial or exercise equipment and vehicle systems also materialize in the mechanical group. The biotech team encompasses attorneys with interests in biotech, biology and chemicals. Biofuel, agrochemicals, genetics, pharmaceutics, chemicals and drug formulation are all typical fields to encounter.
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue NW,
- Head Office: Washington, D.C.
- Number of domestic offices: 1
- Number of international offices: 0
- Worldwide revenue: WND
- Partners (US): 48
- Associates (US): 87
- Summer Salary 2016
- 1Ls: $2,900
- 2Ls: $3,100
- Post 3Ls: N/A
- 1Ls hired? Yes
- Split summers offered? CBC
- Can summers spend time in overseas office? N/A
- Summers 2016: 8
- Offers/acceptances 2015: 6 offers, 5 acceptances
Main areas of work
Sterne, Kessler, Goldstein & Fox is dedicated to the protection, transfer, and enforcement of intellectual property rights. The firm’s lawyers have the interdisciplinary background needed to develop, protect, and enforce valuable property rights for its clients. Most of Sterne Kessler’s legal professionals hold an advanced level degree, including approximately 55 with a master’s degree and over 55 with a doctorate in science or engineering. The firm’s team of attorneys, registered patent agents, students, and technical specialists include some of the country’s most respected practitioners of intellectual property law. The firm was founded in 1978, is based in Washington, D.C., and has grown to be one of the largest and highly regarded IP specialty firms in the United States and abroad.
• Number of 1st year associates: 10
• Number of 2nd year associates: 8
• Associate salaries: 1st year: $180,000
• 2nd year: $190,000
• Clerking policy: Yes
Law Schools attending for OCIs in 2016:
American University College of Law, George Mason University Law School, George Washington University Law School, Loyola University Chicago School of Law (Patent Law Interview “PLI” Program)
Summer associate profile:
Sterne Kessler seeks students with bachelor’s degrees in science and/or engineering. All applicants must have at least a 3.0 cumulative GPA in undergraduate, graduate, and law school studies. United States Patent and Trademark Office and/or other industry work experience is a plus. Teamwork, motivation, collaboration, work ethic, and universal respect are core values of the firm.
Summer program components:
Each summer associate is assigned a senior-level and junior associate to help acclimate them to the firm and to answer any questions he/she may have during his/her tenure. Summer associates receive a full week of training in IP prosecution and litigation by experienced practitioners before ever taking an assignment. While hiring decisions lay at the practice group level, summer associates often have the opportunity to work on assignments from attorneys in other practice groups. Summer associates attend weekly practice group lunches where substantive topics are discussed and they participate in other professional development and technical training. Over the past several years, the firm has been consistently rated as a “best place to work” based on attorney and staff surveys conducted by The Washington Post and the Washington Business Journal.