On defining new leadership roles, advancing best practices and technologies in IP operations, and transforming how law firms collaborate with clients.
Stephanie, we’ve been hearing a lot recently about your work in advancing standards for IP operations with CLOC. Before we get into that, could you talk about your firm and your role there?
I’m the Global Patent Operations Chief at Kilpatrick, Townsend & Stockton, based in our Washington DC office. We have 20 offices, 10 of which do patent prosecution. That’s the main focus of my role. The firm created this position in late 2017 and I am the first to serve in it.
I came to this position from the practitioner side. I have a degree in computer engineering, and started my career as a patent examiner working at the US Patent and Trademark Office. Following that, I was an associate at Fish & Richardson and Arent Fox, where I handled patent prosecution and dabbled in litigation. Then, taking on an operations role, I oversaw staff and associate training at Finnegan, where I managed a team of patent support staff across the firm’s offices and helped streamline IP process,
policy and operations.
I’m interested in the genesis of this new position the firm created for you, taking advantage of your broad experience as a lawyer, operations leader and trainer. I imagine that having firsthand view across these perspectives is a great asset. Can you share more about that?
Sure. First, let me take a step back and explain our structure. We’re a general practice firm with three departments: Intellectual Property, Litigation, and Corporate Finance and Real Estate. Each of those has a Department Operations Officer (DOO). In IP, our DOO oversees all of the non-lawyer staff supporting IP prosecution and litigation. We have excellent managers of functional areas in that group, who are responsible for areas like administration, docketing, transfers and more.
Managing the patent prosecution practice, a group of partners forms the Patent Operations Committee (POC). And the POC decided, given the responsibilities and day-to-day workload of the DOO, that there needed to be a space to take some time and think the big thoughts the Committee wanted to invest in. And that led to the creation of my role.
I think it’s a testament to the firm’s forward-looking nature that our leadership realizes that prosecution is not the same today as it was three, five, 10 years ago. And it’s not going to be the same in the years ahead. The firm is quite serious about investing and preparing for that future, and creating my role was a big step forward. I can say it undertook quite a comprehensive and lengthy interview process for the firm to be sure they hired the right person.
“…there needed to be a space to take some time and think the big thoughts… I think it’s a testament to the firm’s forward-looking nature that our leadership realizes that IP prosecution is not the same today as it was three, five, 10 years ago. And it’s not going to be the same in the years ahead.”
I’m quite interested in the dynamics that lead to firms creating new and non-traditional roles. Are there other examples of this kind of organizational innovation at your firm? And are there lessons and experiences you think are relevant to the industry generally?
Yes, we have a pretty long history of this. The DOO role I mentioned earlier is a good example. We created that in the early 2000s. The DOO for the IP practice, Kathy Mitchell, has a business and finance background, but is not a lawyer. And, at the time, putting a non-lawyer in a practice management role was pretty uncommon. In fact when we created that structure we actually received media inquiries about our approach here.
I’d say it still isn’t something you see everyday.
Fair enough. Back then, I understand that the firm saw this as a natural progression towards enabling attorneys to focus more on practicing law than managing legal operations. But someone had to be first, or at least part of the first wave of this type of change.
We also traveled a similar path years ago, when we invested in creating a more formal marketing team with dedicated leadership, shifting elements like PR out of the direct oversight of one of our partners, who was managing it as a side responsibility.
Back to your role, I’m curious if the way your firm has re-organized is visible to clients and how your role touches them
There are some instances where the requirements of specific clients around process issues lead to my direct involvement . But I’d say the key way I’ve
touched the client sphere is through my work with CLOC, the Corporate Legal Operations Consortium.
I’ve been fortunate to be one of just two law firm representatives on the CLOC IP Proficiencies Working Group. I can share more about what that team is developing — but on both a symbolic and practical level this is an area where our firm is putting our money where our mouth is when it comes to truly partnering with clients.
We’re investing in connecting with client operational leaders and want them to understand that our firm is listening, that we really care how change is affecting law firms and law departments alike.
Every forward-thinking organization knows change is a constant. But we think that the greatest benefits will accrue not to the firms or departments that change, but to the ones that change together, collaboratively, rather than in isolation.
Earlier you framed your mission as thinking big thoughts on prosecution.
Working collaboratively with clients on standards and practices definitely is a great example. Can you share more about the fruits of that collaboration?
At the 2018 CLOC Institute event, I connected with Melanie Carmosino, Director of IP Operations at Microsoft. Through those discussions I was invited to support an effort to define a proficiency model for IP operations. CLOC has a general reference model with 12 core competencies for legal departmental operations as a whole [See Figure 1], but IP definitely merits a deeper dive.
So a group of a dozen experts put their experience and minds to the task and built a practice-specific lens through which operational leaders can understand IP best practices. We address three key areas: patent prosecution, trademark prosecution and IP litigation, providing insight on standards, strategies and approaches organizations can use to shape their specific operational priorities and strategy.
I’d encourage anyone interested in learning more to visit IPcorecompetencies.com, where we’ve put up several resources, including a self-assessment and other supporting assets and collateral. And we’re continuing our efforts, building out new materials, exploring new areas of potential IP focus, like trade secrets. We also plan to host some webinars.
I confess, I was curious and took your test. It told me I was IP immature… not a surprise as I’m admittedly a bit outside your intended audience.
You joke, but we do appreciate help getting the word out. The IP community within CLOC is really still developing, because the organization started as a forum for generalists. So we’re very eager to get more IP specialists involved, and CLOC has been quite supportive of our efforts.
That’s not surprising. With innovation, you’d expect early interest from a small set of IP visionaries who see unique opportunity and want to capitalize on early advantage. The larger market will typically wait and see, watching the experience and results of their peers.
Yes, I agree with that. In fact, I think that’s happening on two levels. The first is the review and adoption of our IP proficiencies model by law departments. And the second is the evaluation and adoption of this very proficiency approach by CLOC itself.
What I mean is that CLOC is interested in expanding this type of support for specialized practice areas, like contract management or labor and employment disputes, but is also waiting for proof that these models are resonating and having real impact.
Oh, that’s a great observation. And now I’m wrapping my head around the next level down you’ve identified, inception-like. What this also nicely highlights is that innovation is not an all-or-nothing venture. It’s possible, and really often prudent, to carry out experiments in pockets, and scale those lessons as you prove the model in practice.
It’s also a great transition, as that was a big thought. Can you share more about the thinking you’re doing within your firm, particularly where it complements the collaborative work you’re leading outside of it?
“It didn’t feel like that great a leap to take a new approach that would enable lawyers to focus more on practicing law than managing legal operations. But someone had to be the first…”
Well, within any organization there are the trees and there’s the forest. I was brought on to think about the forest, but obviously there are also trees that I help manage on a day-to-day basis.
Within that big-picture forest, one area I’m looking at is partnering with our attorneys to engage more actively with clients to enhance their own internal IP prosecution processes. It’s clearly very much aligned with my work with CLOC.
There’s a Goldilocks, “right-sized” client profile in terms of scope of IP operations that best responds to this type of partnership. But where there’s a fit, this creates another great opportunity for our firm to apply its insights and the best of our skills as trusted counselors and advisors.
We see the opportunity to deliver not just service around executing IP prosecution, but really broader consultative input about IP operations, working closely with the organizations we serve. And that can really be a differentiator for us in the market and in the minds of our clients.
It’s also a nice capability to arm our lawyers with in a business development context, or when responding to client RFPs.
It’s a good illustration of how a firm can partner more closely with its clients to really understand them. You’re talking about helping clients take advantage of your firm’s expertise to improve their own efforts beyond any one matter.
Yes and our focus on operations pays dividends beyond client satisfaction. Our recruiting team can highlight this point with candidates. Whether it’s a seasoned partner looking at a lateral move, or a law student searching for the best environment to start their practice, we can point to investments we’re making in our IP prosecution capabilities, and in client collaboration, both directly and through CLOC, as key reasons why we’re an ideal firm to join.
And, as you know, the patent prosecution attorney talent pool is shrinking. So everything we do to differentiate our firm helps. That’s particularly true for laterals where we want to showcase how much administrative burden we remove so that lawyers can focus on the practice of law — which is such a critical driver for so many professionals.
Our IP practice innovation allows lawyers to focus on their work, while we manage operations. We have software, we have processes, we have excellent trained and skilled staff. And, importantly, we provide a better environment today while also investing in understanding how we need to evolve over the next three, five or 10 years.
We never want to become complacent and have attorneys thinking about greener pastures. So we are constantly looking at how to further improve. That includes efforts like our automation committee and continuing investments in software solutions.
Can you talk a bit more about your technology platform and strategy?
We’re always looking for ways to better streamline and automate the procedural aspects of IP prosecution so our attorneys can focus their time and attention on building valuable portfolios for clients. As part of that, we’re implementing PracticeLink from Aurora North. It’s really an amazing software suite.
Another innovation for us has been creating our client portal. Firms have offered extranets for some time, but we’re doing something more — and it really ties into those themes of client collaboration and support I spoke about earlier.
“Our PracticeLink implementation is going very well. The main thing about Aurora North that stood out to us is their experience with how IP really works at a law firm.”
Our extranet supports clients that don’t have extensive internal IP tools available. It offers a dashboard, including status, calendar, and docket information for each application, and a portfolio view at varying levels of granularity. As a bonus, it also frees clients from having to license expensive third-party tools.
My favorite part of the extranet is its capability to visualize patent family trees globally, in ways that we’ve never seen commercial tools able to deliver.
Integrating PracticeLink into this vision addresses the operational side of prosecution, really creating a true one-stop shop for managing our daily prosecution work. This is critical for us since, currently, our team has to consult multiple systems to perform a single task. It integrates critical streams of data, like docketing and bibliographic detail into one central view. PracticeLink also enables us to better carry out daily activity, managing the assignment of tasks and execution of workflows. And all through a user interface that’s far better aligned with how attorneys want to do their work — the value of which cannot be understated.
And how is the execution on that vision going from your perspective?
Our extranet is definitely a hit with clients. And it’s earned us some very positive coverage generally in the industry press, which is also helpful.
Our PracticeLink implementation is going very well.
The main thing about Aurora North that stood out to us is their experience with how IP really works at a law firm. Before bringing on PracticeLink, we tried using a general workflow tool to manage prosecution in this way and it was a mess. The vendor was great but we decided that the resources needed to get them to understand the basics of prosecution was just not a good investment for us.
For example, we want to move out of email as much as possible for notifications, docketing and other details. And with my perspective as a lawyer I’ve been able to have the system’s matter summary screens updated to support that more effectively.
I also really appreciate that Aurora North hosts the Innovative Practices Forum roundtable events. It really demonstrates a commitment to do right by customers and support the general IP community.
On the technology side, another great benefit is the system-agnostic philosophy they bring. So if our underlying systems for IP data or docketing change as our needs evolve, they can plug new tools and data right into the same interface, and our lawyers will have the same uninterrupted experience.
There is a lot of excitement internally about how this is all coming together, and what’s to come. It’s really a great time to be thinking big thoughts about IP.
Well, I appreciate you spending some time thinking along with me, Stephanie. And I know our readers will appreciate the insights into the origins of your role and the efforts you’re championing. Thank you again and best of luck as that journey continues.
You’re quite welcome, Dan. I very much enjoyed today’s discussion.
About
Meridius Matters is a publication of Meridius LLC.
Led by seasoned technology and legal industry veteran Dan Bressler, Meridius works with a diverse set of organizations, focusing on helping law firms respond to evolving market pressures to improve the success of their own clients.