These self-proclaimed 'nerds' have a knack for all things IP.
“THERE are a lot of different ways people describe our culture: collaborative, committed to science… but what I’d say is that we're a little nerdy!” says recruiting committee chair (2017) Paul Ainsworth. Yes, DC-based Sterne Kessler is full of science and engineering whizzes who are also legal masterminds (over 50 of its professionals have earned PhDs in these areas). Though dealing exclusively in IP matters, managing director Mike Ray tells us: “I tend not to use 'boutique' to describe us because that word infers 'small' – and we're not small at all.” One thing that certainly isn't small is Sterne Kessler's client list, which includes global mega brands like Apple, adidas and Volkswagen.
“We'll continue to be a well-balanced and market-leading IP firm.”
“This firm blew up by responding to activity in the IP field,” associates told us, before helpfully explaining: “It started outas a patent prosecution firm in the late 70s. Then when litigation became the hot topic in the industry, the firm branched out and brought in the relevant people.” On the patent prosecution side, Sterne Kessler receives top marks from Chambers USA, especially for its expertise in industry sectors like computer software, life sciences and engineering. Litigation work, meanwhile, is on the rise, as Ray points out. “We've had two litigators join us in DC recently, and they've been accelerating the growth of our litigation practice – biosimilars and electronics are two very hot areas right now in that regard.”
All of our associate interviewees had relevant previous experience connected to the firm's practice areas. That doesn't mean that all of them came in wielding hefty PhDs (although some of them did) – we heard of some that had worked at the Patent Office, while others had started at the firm as tech specialistsor took up internships on the Federal Circuit that exposed them to patent litigation.
Strategy & Future
“The International Trade Commission is increasingly becoming an important place to litigate patent cases,” says managing director Mike Ray. “We're involved in 10% of the cases that are heard there – for a single office with 130 lawyers we're making a great impact. In the district courts, we're seeing battles fought in the area of biologics, which presents enormous opportunity for our firm,” Ray notes. This influx of litigation matters “hasn't come at the expense of our prosecution work. We'll continue to be a well-balanced and market-leading IP firm.”
Juniors join a specific practice group from the beginning of their summer at the firm. Most work in Sterne Kessler's electrical, biotech and mechanical groups, which handle a mix of both patent prosecution (the process of applying for patent status) and patent litigation work. A handful work in the firm's dedicated IP litigation group. All groups expose juniors to the firm's inter partes review (IPR) work, which it calls patent office litigation. When it comes to assignment, “the directors of each group will meet and talk about workloads. It balances the work among associates and levels the playing field – there's no unhealthy competition or 'me vs. you' going on.”
Over in the mechanical group, “we do utility patents and a lot of design patents – I do half and half, which gives me some variety.” Some spent their first few months at the firm “drafting briefs for IPR matters – I was the primary drafter and it was a good challenge.” Sources had also conducted “freedom to operate and landscape searches” on the patent prosecution side: “You're evaluating how strong a patent is by taking all of the institutional knowledge we have to make sure it doesn't fall into the same trap that other patents did – it helps broaden your understanding of the law and sharpens your ability to spot relevant issues for the client.”
“I was the architect of the document.”
In electrical, the work (as the name implies) revolves around “electrical engineering technology – everything from consumer products to computer architecture and semiconductors. Most of my time has been spent on prosecution matters, where I interview inventors, draft the application, send it off to the partner for internal review and then file it for client review.” Life in biotech is even more technical: “We deal with pharma-related inventions, mostly compounds, formulations and chemical entities. I have clients ranging from a couple of guys making investments up to global pharma companies.”
Devoted litigators deal with clients from all of the above categories. They reported working on a mix of patent office litigation and district court cases, and highlighted the group's appellate work at the Federal Circuit, as well as a small but growing trademark subgroup with a mechanical focus. “Especially at the beginning you'll be doing a lot of legal research and spot assignments where you just see a small part of the puzzle.” Weightier assignments are in store though: “I've drafted motions to dismiss for Patent Office litigation cases. The partner was reviewing it but I was the architect of the document, which allowed me to see the bigger picture – it's much more meaningful and enjoyable.”
IP isn't an area traditionally associated with pro bono, and juniors did admit that pursuing such matters is “an option, but they don't push it – no one's going to be knocking on your door saying you've got to do pro bono work.” Our sources had attended trademark clinics for members of the public, and helped inventors with limited resources to pursue securing a patent. “The firm does send of a few emails about getting involved,” and has recently broadened its scope: “Over the past year we've been getting involved in immigration and legal aid refugee matters. I'm glad that the firm is finding a way to become involved in the issues in our community.” Pro bono hours can count toward the firm's billable targets, but the specific amount is dependent on the pro bono practice's budget each year.
Pro bono hours
- For all attorneys: 1,120 approx
- Average per attorney: 8.6
Training & Feedback
The initial two-week training period was described as “extensive: some of it involves getting familiar with the computer systems, but we also get an introduction to patent prosecution, a session on how to draft applications, and trips to the Patent Office and the Federal Circuit to witness oral arguments at court. It's great for hands-on observational training.”
After that, there are mandatory weekly sessions for all first and second-year associates: “They prioritize it to make sure we stay sharp. The focus of the sessions ranges from recent Federal Circuit decisions that will affect our work to refreshers on the basics of patent practice. They held a recent one on design patents, which was very informative.”
An associate's practice group can determine the extent to which they work with other colleagues. In groups like electrical and biotech “the work product is more individually generated – most people work by themselves or with just a director,” while in litigation “there's more collaboration.” Regardless of the group, associates agreed that “people are encouraging and have a lot of time for us – they're willing to stop what they're doing to help you understand what needs to be done and not make you feel stupid!” Sterne Kessler's practice group directors came in for particular praise: “They always welcome questions, suggestions and challenges – we have our opinion and we are encouraged to voice disagreement. There's an emphasis on positive engagement.”
“Most of us are introverts,” one associate in the electrical group told us, adding: “We're scientists, so there's not a lot of powwow going on in general!” Others told us that the firm is “very family-oriented,” with this junior summing up the approach in most groups: “Occasionally we'll go out for drinks, but most often I'll head home to be with the family.” While Sterne Kessler might not have a raft of social excursions planned every week, its practice groups still host happy hours and the summer period comes with a spike in events (we also heard that the firm's barista bar draws a steady crowd).
We heard mixed reports on gender diversity depending on the practice group juniors were in. Those in litigation, for example, said there were “a lot of women here; three of our latest hires were women and one of the partners who runs a lot of the everyday mechanics is also a woman.” The mechanical group, meanwhile, was described as being “predominantly male.” This associate explained: “Part of the issue is that we're an IP firm, and we reflect the number of women going into science and engineering and following those areas through to law school – these are areas where women have traditionally been under-represented, but I see potential and the possibility of improvement.”
“We reflect the number of women going into science and engineering.”
Many sources told us that Sterne Kessler “feels inclusive and very accepting,” and praised the events organized by the firm's diversity committee: “They put a lot of energy into it: we had a person of color from NASA come to speak to us a couple of months ago, and we had an HR representative from Google come to speak to us about inclusion.”
Hours & Compensation
Associates can choose between two billable target tracks: 1,900 or 2,000 hours. “The majority of people are on 1,900,” juniors revealed. “It's in most people's interest to be on that track – you don't want to oversell and under-deliver.” If those on 1,900 end up billing 2,000 in the end, “you're compensated for it as if you were on the 2,000 track, but you'd get that amount in a bonus at the end of the year.” There's also a reduced hours scheme that allows attorneys to go down to 1,800, 1,700 or 1,600 hours with a proportionate dock in pay. One told us that “trying to make 1,900 in the first year was quite stressful. Taking the dock in pay was worth it to alleviate the stress.”
“You don't want to oversell and under-deliver.”
Interviewees tended to put in around ten hours a day at the office, with the majority arriving between 8:30am and 9am, and leaving between 6pm and 7pm. “Patent prosecution is more consistent while the hours in litigation can fluctuate a bit more,” sources told us, with late nights potentially running to 10pm “a few times a week” depending on workload. In general, working weekends is “not a regular thing” and evening work is “kept to a minimum.”
We spoke with Sterne Kessler's recruiting committee chair (2017) Paul Ainsworth to get the lowdown on the firm's hiring process.
Chambers Associate:Where do you look each year to find the next class of junior associates?
Paul Ainsworth: Our primary channel for recruitment is the Loyola Patent Law Interview Program – which is where all law students interested in patent law interview in the summer. That's where we meet a good 80% of our candidates. We also do OCIs at eight or nine schools and we're increasing our scope in 2018.
Historically, we've been focused on regional schools in the Mid-Atlantic area – schools like Georgetown, George Washington, Howard, George Mason and Catholic University. In 2018 we're extending our reach to schools outside the DC area, into Maryland and Virginia.
CA:What's the reason for this expansion?
PA: To be candid, there's been a drop-off in the number of people going to law school – the numbers show a pretty significant decrease over the last five years. We want to make sure that our pipeline remains robust and that we continue to reach the top candidates.
In addition to the traditional law student hiring program, we have a longstanding tradition of hiring patent agents or 'tech specs' – technical specialists. They don’t have a formal law background, but we grow our own attorneys that way. A lot of people begin by being a tech spec at the firm; it gives us a pipeline of candidates before they even get to law school, and we introduce them into the practice of law. If someone comes in as a tech spec and then decides that they want to go to law school, we will pay for their law school. We actually have a number of directors (partners) who started with us as tech specs.
CA:What does the firm do to encourage diversity in recruiting?
PA: Several things. In addition to the regular OCI program, we also attend interview programs that are focused on diverse candidates, specifically: the Southeastern Minority Student Job Fair interview weekend and the Lavender Law LGBT Bar Association's interview program which is held at their annual conference. We're expanding our engagement with diversity-focused bar groups in 2018. In addition to that we've continued with our outreach initiatives to historically black colleges in the Southeast, to ensure that we're maintaining a pipeline of diverse candidates.
CA:Do you think that Sterne Kessler's work in STEM [science, technology, engineering and mathematics] fields affects the firm's diversity and gender balance in any way?
PA: Yes. In certain STEM categories we actually see a lot of diverse candidates, especially in life sciences and electrical engineering. More often than not you see an increased level of diversity because of the number of international students coming to the US that are focused in STEM areas.
Diversity is something that's always on my mind. With regards to gender, there are a lot of women in groups like litigation and life sciences. In electrical engineering, however, we're facing a pipeline that has traditionally produced pretty low gender diversity, which creates an additional challenges for us.
An important priority for us is to have women in prominent leadership positions in the firm. Dr. Eldora Ellison is a member of our managing committee and is an African American woman; the head of the mechanical group, Tracy-Gene Durkin, is a woman, as is the head of our trademark group, Monica Talley, and the cochair of the PTAB litigation practice, Lori Gordon. The new co-head of our biotech group is Dr. Deborah Sterling, and she actually started her career as a tech spec at the firm.
CA:What makes someone stand out at interview?
PA: The people that stand out to our interviewers are those who have done their homework and research on Sterne Kessler – they understand our practice and our firm. It shows they're both interested in our firm and have been diligent in their preparation for our interview. It shows they're taking the interview as seriously as we're taking it.
We don't just care about law school grades, but also undergraduate grades. Most of our interviewers here are focused on the candidates' transcripts, how well they did and the technical courses they took.
Personality-wise, cultural fit is very important at Sterne Kessler. There are a lot of different ways people describe it: collaborative, committed to science… but what I’d say is that we're a little nerdy! Of course, we're looking for a real commitment to both science and the law. You can tell when folks are interested in technology just by the way they talk about it – if they get excited when talking about a paper they wrote in school, for example. We look to create a continuous learning culture here, as the nature of our practice is related to the fact that technology is always changing. Our attorneys therefore have to be interested in what's going on in the industry and in the research and development that our clients are undertaking – that's the future of our practice.
CA:Tell us a bit about your summer program. What can candidates expect to get from it?
PA: It depends on the year, but usually we have between eight and 12 summer associates on the program. We don't have a set number, as we're just looking for the right people! Each practice group usually has one to three summer associates, though our summers do get opportunities to work with directors in different groups.
The best thing is that our summer associates get their hands on real work during the summer. When a candidate asks me what kind of work they will be doing, I say that it's the kind of work that we'd give to a first-year associate at the firm. We want to know how well they'll perform doing that work. The summer program is a trial run for both of us.
We also give our summers opportunities to engage directly with clients and senior directors of the firm. One summer associate this year prepared a really informative presentation on a developing area of biotech law of interest to a client of ours – so we went up to the client's headquarters and he presented on that topic to a room full of in-house attorneys. We look for chances to give our summers opportunities like that to develop their skill set and experience level. We're not shy about letting our clients see our summer associates!
Interview with managing director Mike Ray
Chambers Associate:The IP market is changing quite a lot right now. What direction is Sterne Kessler headed in?
Mike Ray: One of the really exciting things to happen is the growth in litigation. We have a longstanding and busy litigation department here, and it's been growing by leaps and bounds. We've had two litigators join us in DC recently, and they've been accelerating that growth – biosimilars and electronics are two very hot areas right now in that regard.
Another exciting growth area over the last five years has been our PTAB practice. It's world class and market-leading – because we do so much for the PTAB, our appellate practice is also booming. Because many Final Written Decisions from the PTAB are appealed, we're making regular appearances at the Federal Circuit.
Yet another hot area for the firm is the International Trade Commission, which is increasingly becoming an important place to litigate patent cases. We're involved in 10% of the cases that are heard there – as a single office with 130 lawyers we're making a great impact.
CA:Why is Sterne Kessler having such a strong presence at the PTAB?
MR: We were well positioned when the PTAB came into existence five years ago, because of the work we'd been doing in patent interference and patent reexamination. And we quickly established a dominant position there. This has helped us to grow our inter partes work, but this growth hasn't come at expense of our prosecution work. We'll continue to be a well-balanced and market-leading IP firm. In fact, the PTAB work has been a big asset for our prosecution practice. We apply the things we learn at the PTAB to our prosecution practice to write and prosecute stronger patents.
CA:What type of patents are hot in the market right now?
MR: The work that we traditionally did for the pharmaceutical industry – which focused on small molecules – is being devalued. There is increasing price pressure and competition. The next hot and growing area is that of biologic products, which presents an enormous opportunity for our firm. Given our background as a leader in the biotech field for many years, we're handling a lot of PTAB and district court litigation in that area. The biosimilars area is going to be very hot; some of the blockbusters out there today are biologic drugs, and we have a depth of expertise on those.
CA:Can you tell us more about pro bono at Sterne Kessler?
MR: If we go back in time, there weren't many pro bono opportunities here, since we were primarily focused on IP in our pro bono practice as well – but now there are opportunities for anyone who wants to take them on because we have significantly expanded our pro bono portfolio.
We're in partnerships with legal justice organizations that are very well entrenched in DC, which is very exciting – and that's a direct response to associates asking for new pro bono opportunities. We've got involved with organizations that do immigration and refugee work, so we're expanding well beyond IP. The work counts toward their billable targets.
CA:What has pro bono work consisted of up until this point?
MR: We've always looked for ways to give back to the community. One of our directors, Jorge Goldstein, had a passion for pro bono work and launched our Intellectual Property and Human Rights Pro Bono Practice. It’s based on the premise that IP is a human right. We've worked with indigenous people in Colombia, for example, to get intellectual property protection for a blue-colored rainforest fruit that is used as a source of edible colorants for the food industry. Two years ago the Financial Times gave us an award for innovation in our pro bono practice.
Sterne Kessler's DC office
Sterne Kessler's office “is in a great spot in DC right by Metro Center station, so it's really convenient to get to multiple subway lines.” Recent renovations mean that “there's lots of glass now, as well as a new break room and a barista bar.” The latter was very well received: “It's free and you can get any coffee you want, any time of day – it's pretty fancy!” Every junior gets their own external office from day one, and while “they're not very big offices, they give you all you need!”
“...any coffee you want, any time of day.”
The influx of glass is concentrated along thehallway wall: “It's a glass panel. There's some frosting on it so you still have privacy but also get natural light coming through,” associates observed. The break room comes complete with a ping-pong table, a ski ball machine, a foosball table and “a few arcade games.” Though not everyone has time to use it, “you can go down at lunch and relax for a bit and take your mind off work. It's a good idea!”
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue NW,
- Head Office: Washington, D.C.
- Number of domestic offices: 1
- Partners (US): 54
- Associates (US): 63
- Main recruitment contact: Kerrie O’Brien (firstname.lastname@example.org)
- Hiring partner: Paul Ainsworth
- Diversity officer: Gaby Longsworth, Chair, Diversity Committee
- Recruitment details
- Entry-level associates starting in 2018: 4
- Clerking policy: Yes
- Summers joining/anticipated 2018:
- 1Ls: 0, 2Ls: 6
- Summer salary 2018:
- 1Ls: $3,500/week
- 2Ls: $3,500/week
- Split summers offered? Case by case
Main areas of work
American University College of Law, George Mason University Antonin Scalia Law School, George Washington University School of Law, Howard University School of Law, Catholic University of America Columbus School of Law, University of Baltimore School of Law, University of Maryland School of Law, Georgetown University Law Center. Recruitment outside OCIs: Loyola University Chicago, School of Law (Patent Law Interview ‘PLI’ Program), MBLSA Regional Job Fair, Southeastern Minority Job Fair (SEMJF), Lavender Law.
Summer associate profile:
Sterne Kessler seeks students in science and/or engineering. Advanced degrees are required for our biotechnology/chemical group. We strongly prefer advanced degrees for our mechanical and electronics groups. 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:
Our summer associate program begins with a full week of orientation training comprised of IP-focused informational sessions as well as introductions to our firm departments and practice groups. Additionally, the professional development department conducts firm-wide training throughout the summer including topics such as legal writing, presentation skills, ethics, time management, and more. Our summer associates also have the opportunity to attend practice group lunches where substantive topics are presented and discussed.
Each summer associate is also assigned a point person and buddy. A point person is typically a senior level associate responsible for regulating workload and providing guidance throughout the program. A buddy is a junior associate, usually a former summer associate, who helps acclimate you to the firm and answer any questions you may have.
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.
This Firm's Rankings in
USA Guide, 2019
District of Columbia
- Intellectual Property: Patent Prosecution (Band 1)