Firm in Focus: Marshall, Gerstein & Borun

On applying design thinking and partnership-aware change management strategies to implement meaningful innovation and automation in practice.

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Thanks for taking the time to speak with me today, Kim. Can you introduce yourself and tell me about your firm?

Sure. I’m the CIO of Marshall Gerstein. I’ve been with the firm for many years, in a number of roles. Our firm is focused completely on intellectual property law. We are a premier IP firm and work on a lot of “bet-the-company, litigation and protect the blockbuster invention” work that requires true understanding, experience and strong execution.

And we take IP very seriously. Not just in terms of protecting our clients, but also in terms of embracing innovation. Our lawyers are scientists, engineers, PhDs, former Patent Examiners and even former in-house counsel. They’re forward-thinking problem solvers.

Our clients include Fortune 100 companies, that include leading pharma, biotech, industrials, consumer brands, many IP- heavy small and mid-sized companies, and a large number of universities and research institutions.

I’ve been here for so long because the challenges keep me motivated. I’ve been able to work on really interesting projects connected to a high-level firm strategy — and those can be really fun to pull off.

Over the years, you and I have talked a lot about innovation, and you’ve spoken and written on the topic several times. Today, I’d like to ask you to talk about putting theory into practice within a law firm environment.

IP practices provide such interesting examples because there is such a focus on efficiency and automation. Deep-rooted processes and a constant stream of work can make investing in change challenging.

Can you share your story at Marshall Gerstein?

“I had already been talking to our firm technology committee about investing in migrating to electronic file management. We knew we were losing all kinds of productivity because people couldn’t get their hands on physical files when they needed them.”

So what we actually started with was — back when you were working with Intapp, actually — I was at an ILTA conference, watching the conference television channel in my hotel room. And someone was presenting on a data catalog they had built with your integration product. And I immediately saw value in centralizing matter information from all of our software systems and how that could be a platform for sophisticated IT innovation.

Our firm had just identified a strategic focus on expanding automation around some key areas like new business intake. And that’s how we originally connected with Chris Kave at Aurora North, as I knew he had a long history and track record working with IP firms.

I had already been talking to our firm technology committee about investing in migrating to electronic file management. We knew we were losing all kinds of productivity because people couldn’t get their hands on physical files when they needed them.

So we thought that we would build a data directory, move our paper-based business intake process online, and then focus on file management.

But then Chris created this beautiful diagram and vision for going paperless. One that took a more unified approach to create a general platform we could build on top of and extend over time. And so we decided to start on the file side.

You certainly took a bold approach, starting with the core of your business. How did that unfold?

Chris and his team put all of their experience from the IP world to work for our firm.

On our journey away from paper we started with the premise that there are really two things that trigger just about every workflow and activity in the firm: “What’s on the docket?” and “Where’s the file?” And from that comes a map for the flow of paper, because it moves around a lot.

So we started with a targeted focus on managing our intake of correspondence. And we quickly learned that even trying to automate that effectively would require a holistic approach.

We needed some really good strategies around metadata management, and classification, and for connecting systems. We wanted to know, for every piece of correspondence that comes into the firm, who it belongs to and where it needs to go by referencing the other systems.

We quickly realized that the right way to tackle this was to address every single one of our processes involved with paper coming into the firm — whether that paper was from the patent office, or from a client, agent, opposing counsel, or from the courts.

So we identified the elements an integrated system needed to have. That included a front-end portal interface accessible from a web browser, and integration with our docketing system for event-based triggers. And we identified several special elements we wanted to use to bridge the gap for us during a transition, so we weren’t just one day flipping a switch that turned this place upside down by yanking physical files away from everyone.

So you once again identified a pretty large and complex problem to solve. I’m very curious about what happened next, particularly these bridge elements.

We pay close attention to change management. As part of that, we had Aurora North build a few kind of “hold-over” applications for us. For example, one to automatically print email.

We were going to start electronically downloading all of our correspondence from the Patent and Trademark Office and put it in the electronic file. But our lawyers and staff were all not necessarily ready to receive it that way, and as we worked through the transition we had these sort of training wheels in place, like the printing process.

But to keep pushing us towards the change, we actually had parallel workflows set up — the old way, and the new way. That certainly created some overhead and drag in some respects, but I think it also ended up being the thing that made it all work.

Right, there isn’t always a single on/off moment when it comes to big change.

You often end up paying a price or having to make special investments somewhere — either in up front training, or hand holding, or rolling things back if you upset too many apples.

Yes. And because we eased people into the new approach, there was almost no training needed by the time we finally flipped the switch for good. For me it was an exercise in design thinking. We did not force our lawyers to completely change the way they worked.

“But to keep pushing us towards the change we actually had parallel workflows set up — the old way, and the new way. That certainly created some overhead and drag in some respects, but I think it also ended up being the thing that made it all work..”

Instead, we let them still do things the way they wanted to, in the order they wanted to do it. We just automated the processes of placing paper and files on their desk to placing correspondence and links to electronic files in a web page inbox. For example, we redesigned some processes to execute in parallel instead of serially, one after the other. And we optimized others, combining three steps into one and shifting some internal roles and responsibilities. In short, we built a good amount of flexibility into the change process and that really paid off.

And that experience has shaped the way we now approach any process or automation change.

I always tell people: You need to spend the time and sit down with your stakeholders and users and look at all the details of what they do and how, with any particular process you’re going to touch. The small things are particularly important — the things they do without really thinking about it and the things that they rely on that you would not notice as a non-practitioner. I was amazed at what a big difference the smallest of design changes made that were critical to success.

Another key factor is human nature. And when it comes to that it was critical to have a really strong sponsor. For us, that was our technology partner, who also sits on the executive committee. He’s able to assist with managing those tricky situations that come up in any major change that has the potential for a high-value return and a highly negative perceived impact on the partners and their ability to do their work the same way they have for many years.

I really like your point about building parallel processes as bridges. I immediately think of how in the musical 
“The Music Man,” the Professor taught the barbershop quartet to sing: “Well, let’s just talk slowly a bit,” and all of a sudden they’re singing and not even realizing it.

Can you share more details on how the transition played out in practice?

There was definitely strong inertia behind paper for patent and trademark prosecution — the patent office itself was still paper focused. And we were definitely ahead of the curve. To bridge that, Aurora North built some innovative technology to centralize and automate the download and receipt of USPTO correspondence and place it directly into our document management system – our new electronic patent application file.

Again, we were still printing and maintaining paper in parallel —all the while building a decent history in the electronic file. IT couldn’t force and drive the move to paperless in a vacuum. This was about the larger process and needs of our practitioners and desire to let things happen a little more organically. It came to be known that patent application file activity was now available “on-line” after a certain date and more people were going there before the physical file when necessary.

So we spent a lot of time on process. We involved every role touching those processes, not just our attorneys and knowledgeable subject matter personnel, but also paralegals and secretaries and docket department. We gave everyone an opportunity to explain in detail how they worked. We literally mapped it all out on a white-boards and marked up collaboratively.

The transition to paperless gave us a window to rethink why we did things a certain way for a fresh start, so we collectively attacked the problem of simplification. We’d ask people how they’d make things easier, if there were no constraints — how things would look if they could have it “their way.” And we designed with that in mind.

We had lots of sessions like that. People were really engaged. They’re happy to tell you what they do and why they do it that way. They’re especially interested in telling you what we better not change. And then they help you test it with a sense of ownership.

And then those tests became a pilot. And then the pilot just grew organically until every single person was in the pilot. And live, without really having officially flipped a switch. When the “official” day came where we said no more paper, no more physical files it was largely business as usual.

You really did sneak up, in a good way, and got them singing. Were there any interesting or instructive surprises along the way?

Tons. For one, there is a population of associates and partners that expect a certain amount of techno sophistication. We had expected having to train everyone and perform hand-holding for a certain contingent, and found the tables had turned somewhat. Instead of having to spend a lot of time explaining the details, they wanted and expected to be able to just figure it out themselves. And they did. And then they are the ones pushing us to innovate even more.

But on the opposite end of the spectrum, we saw slow-adopters — who were having difficulties and problems with the new system and processes — they were resisting and upset. But it wasn’t because they were wrong. They often had critically important insights and points to make. And that should not be ignored by chalking up negative feedback to just being “technically challenged.”

For example, in one instance we had a few lawyers struggling with finding the documents they were searching for in a patent file, which was being displayed in our portal front-end view to our document management system. We had organized our DMS to electronically replicate and group files in the same structure of a patent application tri-fold container. And because the displayed document or email descriptions weren’t always distinguishable enough from others in the list, they had to click every single document item to view and find what they needed. That was wasting time and causing frustration.

It took us sitting down with an actual physical file, and being shown how they flip through and find the right document in seconds. And that made all the difference and I connected a few dots. I understood what was happening and what was needed. They were not looking for words, they were looking for the visual layout of a specific document type!

I had to figure out a way to replicate the process of flipping through a bunch of pages in a few seconds for visual characteristics of a certain document type. Even more important was to know when it wasn’t there, because that triggers a very important task. We implemented an addition to the web portal view that would pull documents into the portal and convert them into an electronic binder view. So that the screen would look like a three-ring-binder that lawyers could flip through to catch the visual signature of a specific document format.

Like Apple training a whole generation moving to touch-screens from keyboards, they added skeuomorphism — making a new interface look and behave like its physical counterpart, to ease the transition for a less-digital consumer.

Exactly. And as part of that we really learned that you actually can move faster if you identify those users who are suffering in silence and get their input earlier. In designing for a law firm environment every partner and practitioner matters.

Earlier, you talked about working with Aurora North Software to design and implement your IP prosecution intake, routing and workflow system.

I know that you personally have played a big role in influencing their path of innovation over the years. Can you tell me more about that relationship?

“I pretty much say Aurora North is a no-brainer if you’re an IP firm. They’re easy to work with. They have the context and understanding to translate my requirements and needs into effective solutions.”

I pretty much say Aurora North is a no-brainer if you’re an IP firm. They’re easy to work with. They have the context and understanding to translate my requirements and needs into effective solutions. I can talk about a business situation and they get it, and quickly. We’ve worked very much in an agile, iterative mode to test and validate and deploy.

They’ve been very flexible and have worked with me in any way needed. And, importantly, they’re not shy about flagging when what we thought we wanted to do in theory would actually be a mistake in practice. I really appreciate that.

And now because they’re working with so many IP firms, we benefit from all of that experience. A good example of that is their Innovative Practice Forum. We can connect with peers from other firms facing the same challenges. It’s a great bit of added value.

Basically, I just think they’re one of the companies out there with the highest levels of integrity and I can really appreciate that, you don’t see that very often. They’re just really good people to work with.

I’d like to bring things full circle. We’ve talked about your vision for change, your experiences pursuing it, and your success with adoption.

I’d love to get a sense of how that translates in your mind to ROI. I know that can be hard to measure, but want to understand how you and your firm think about it when it comes to these automation and efficiency investments.

First I’d point to overall practice efficiency and talent management, which is an important area for any firm. A good way to highlight that is to look through the eyes of laterals who join from other firms.

When lateral partners join, I encourage some of our veteran partners, who don’t known anything other than our paperless system, to ask their new colleagues what they think about our systems.

Those are some of my favorite meetings — introducing our approach. There is almost always some level of: “Wow, we had just started to do this at my other firm.” Or: “We had something like this in place, but it doesn’t do all of the things yours does.”

It’s a nice reminder of the progress we’ve made. And it’s a great message for potential laterals, who are looking for an environment that allows them to focus on their clients and practice instead of burdensome and inefficient processes and technology.

So, you have a great message to wield in the proverbial “War for Talent.”

Definitely. And that extends to how we manage and retain resources as well, both lawyers and staff. We’ve been able to optimize hiring and headcount very strategically and have flexibility in the roles we do hire for.

And we’re able to support remote working — not being tied to a physical file means you can work from anywhere. But we still have central visibility into productivity and efficiency. That has opened up even more resourcing and workforce opportunities.

So, for example, we’ve hired associates that work in other states. And we can retain some of our good people, who might have otherwise left because they wanted to live somewhere else, to stay with us.

And, there’s a morale factor. People here generally recognize that they work at a pretty cool place.

It all adds up.

And how do you measure the benefits in terms of client service and general efficiency?

I’ll share one example that really highlights both. Back in the paper world, we had a response cycle for a particular type of client request that could take up to 24 days. Today, it takes us 24 hours. There’s just tremendous benefit to the client, and a real, positive cost savings.

We actually want to do more to highlight our automation and efficiency capabilities with clients in terms of marketing and business development. I think it’s a key differentiator when it comes time for pitches and responses to RFPs that demonstrates how we have continuously invested in innovation in a way that’s focused on benefiting clients.

In the end, it all comes back to clients and their success. And I think we’ve had a pretty successful discussion about your firm’s journey. Thanks for sharing it today, Kim.

It was my pleasure.


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.