Brooks Kushman has carved out a name for acting as a trusted partner to businesses when it comes to IP strategy – what has been the secret of your success?

At Brooks Kushman, we operate under the philosophy that we are an extension of our clients’ teams. We set out to accomplish this by immersing ourselves in our clients’ businesses – working to know their growth goals, corporate strategy, known competitors and pressure points. We use this knowledge to create targeted teams to solve our clients’ most complex IP matters in a manner that is well aligned with their business interests.

Alongside this, we strive to be unique and to add value at every stage of the engagement. Brooks Kushman employs an entrepreneurial culture and encourages all attorneys to be innovative and consider new solutions to maximise our clients’ IP assets. Also, we are constantly seeking to invest in technology solutions that help us to streamline our processes and use data to make more informed decisions.

How have client demands changed over the last 10 years and what steps has the firm taken to meet these?

Over the last decade, clients have made a concerted effort to consolidate firms. In a crowded market, it is imperative that firms find creative ways to deliver value and become more efficient. More recently, we have shifted away from the traditional approach to focusing on delivering IP services, as firms are starting to use software and AI-based tools to add value. Brooks Kushman has remained at the forefront of this trend and regularly invests in solutions that allow us to best protect our clients’ IP assets, reduce costs/redundancies and forge better relationships with our clients. This also enables us to use Big Data to better predict outcomes and enhance our clients’ certainty in the strategies they pursue.

What part does diversity and inclusion play at the firm, both when it comes to recruitment and also to developing existing people?

Diversity and inclusiveness are fundamental tenets of our firm. Brooks Kushman recognises the essential role that diverse perspectives and experiences bring to our workplace and our ability to best serve our clients. Our diversity efforts are overseen by a diversity committee and chaired by our chief diversity officer, Chanille Carswell.

With respect to recruitment and the related issue of pipeline, we believe that it is our responsibility to use our platform and resources to be a vehicle for change in our local and legal community by supporting various organisations that further the objectives of diversity, equity and inclusion, and by undertaking our own initiatives. By way of example, we participate in programmes that expose young people in underrepresented communities to professionals and professional work environments. Brooks Kushman conducts workshops for underprivileged high school and undergraduate students interested in legal and/or STEM careers, organises career readiness training sessions and supports literacy initiatives focused on expanding the pipeline at its root. Additionally, we commit each summer to hire at least one diverse summer associate via local and national organisations that aim to increase diversity in the legal profession.

As part of our ongoing Mansfield plus certification for mid-size firms, we are committed to considering and hiring at least 30% underrepresented professionals. In parallel with our recruitment efforts, we have revamped our mentorship programme to make it more robust in terms of training, feedback, access to work and access to key growth opportunities. We have undertaken an Ally for Action Pledge, where partners agree to advocate and champion at least one diverse associate or junior partner. Further, we have partnered with various local and national organisations to enhance our training programme so that our associates are better positioned to provide quality service to meet our clients’ needs. And we consider at least 30% of underrepresented professionals for leadership growth opportunities within the firm.

What changes in working practices has the firm introduced in response to covid-19 lockdowns and will any of these remain permanent?

Of course, covid-19 sent all of us home in March 2020. Fortunately, we had been implementing a hybrid work environment for the previous year and had just upgraded our IT infrastructure before the onset of the pandemic. Working from home, we transitioned to virtual client meetings, depositions and court hearings, and expect those to continue going forwards. We have also become even more intentional about interfacing with clients to ensure that we maintain our attention on their needs.

Regarding work location, we have continued a voluntary, hybrid work structure where people have the choice to work at home or in the office. We expect to continue with a hybrid structure going forwards and are developing ways to best implement this while maintaining our strong firm culture and personal focus on our people.

The firm is noted for its excellent patent prosecution service – what sets it apart from other organisations offering prosecution services?

We have always sought ways to differentiate. At Brooks Kushman, we operate under the philosophy that we generate value for our clients by delivering cutting-edge IP representation, AI-driven technology and engagements staffed with diverse, cross-disciplinary teams. We also work tirelessly to understand our clients’ business goals, industry and competitors. Subsequently, we put that knowledge to good use, uncovering ways to make portfolios work harder – pointing them in new directions, exploring new ways to monetise them and see that they are better protected.

We also have a distinguished litigation department that works closely with our patent professionals and clients to ensure that their needs are met. Having cross-functional strength provides an enforcement perspective to our prosecution team and protects our clients, not just from infringement, but from the vagaries of the global marketplace.

Brooks Kushman boasts a range of clients, from well-known multinationals to smaller entities at the start of their innovation journey – how do you tailor your service to fit the specific needs of each client?

We recognise that there is no one-size-fits-all strategy for clients - particularly those with larger portfolios. When clients hire Brooks Kushman to manage their IP assets, we create a tailored team to execute our deliverables. These professionals are all familiar with the client’s technology, industry and markets served.

One way in which we tailor our service to fit the specific needs of clients is in our recruitment of professionals. We are always seeking talented professionals to join our firm. Further, we provide a collegial work environment for professionals to work with a diverse mix of clients and give them the tools they need to succeed.

In terms of our overarching firm philosophy with respect to clients, we recognise that we are an extension of their team and need to have a collaborative working relationship. We encourage attorneys to think outside the box and seek ways to add value to our deliverables. This has led to the adoption of new systems and technology advancements that streamline our efforts and offer clients added value for their IP assets.

How do you expect the IP litigation scene to evolve over the next five years?

On the IP litigation front, we expect that over the next five years legislation will bring greater clarity and predictability in the application of patent-eligibility decisions and copyright reform. We further expect that the pendulum will continue to shift towards, first, a stricter reading of the level of disclosure required to satisfy enablement and, second, levelling the impact of the inter partes review process in the patent litigation landscape. Given the tech shift from Silicon Valley to Texas, the Texas district courts will continue to increase their patent caseload. And, as an outgrowth of the past two years, we also expect greater usage of video depositions and video hearings, especially for minor witnesses and/or matters, though in-person depositions should continue for key witnesses and live hearings for Markman and summary judgment hearings.

Given that business leaders are not always familiar with the legal details of intellectual property, what are your tactics for engaging – and ensuring buy-in from clients?

Regular engagement is key. We believe that the relationships we forge with our clients are unmatched. Thus, we immerse ourselves in their business objectives so that we are prepared to focus our advice/deliverable on the issue at hand. We are also frequently invited to provide in-person training to business and legal teams, and present at quarterly/annual reviews and annual budgets/strategy meetings.

When clients face a team shortage, they frequently turn to Brooks Kushman for secondments, recognising that we are well steeped in their business decisions, corporate structure and IP strategy. We embrace this opportunity and use it to further advance our relationship with clients.

What steps would you like to see the next USPTO director take when it comes to inter partes review proceedings at the PTAB – and how likely do you think they are to happen?

We would like to see steps taken to increase discretionary denials of institution in inter partes review and post-grant review proceedings, especially with respect to parallel proceedings. Alongside this, we would like to expand the role of precedential decisions to minimise variability across panels. Finally, Brooks Kushman would favour continued improvement on issues involving petitioner estoppel. Given the credentials and patent litigation experience that Kathi Vidal, the new USPTO director, brings to the position, these desired changes are likely to happen.

How do you manage due diligence with regard to case and patent selection so as to have the strongest possible start to litigation?

We have always approached litigation with a deep but focused approach. Deep analysis is important, of course, but we find that focus is even more critical. Unfocused analysis can cause unnecessary expense or, even worse, distract from the key issues. Most matters turn on very specific points, so we identify and focus on those from the very start.

Applying that approach to due diligence, we identify strengths and weaknesses up front, so that we can provide the best advice possible to our clients, before and during a litigation. By maintaining our focus during due diligence, we can develop case strengths and address case weaknesses before the case starts. Once the case begins, our continued focus on these key issues helps avoid getting bogged down with other matters.