Schwegman Lundberg & Woessner, PA
What led you to establish your own IP boutique?
Schwegman Lundberg & Woessner was founded in response to corporate demand for high-quality patent services, particularly in patent prosecution and post-grant procedures in the United States and worldwide. We saw an opportunity to build a large, highly specialised team that took these core services to the highest level of excellence and proficiency. We also saw an opportunity to bring innovative software and processes to bear in order to maximise the amount of time that our attorneys can spend on substantive thought, rather than the burdensome administrative tasks involved in our highly procedural practice.
How do you foster innovation and encourage new ideas at the firm?
Innovation has been baked into our culture for so long that it is freely embraced and expected. We invest heavily in innovation and have a large workforce that does nothing but develop new technology and configure existing technology to do new things. Anyone with an idea is encouraged to pursue it and we implement improvements and new ideas as quickly as we can.
You have led the development of Schwegman’s own patent analytics platform. How does this support the firm’s IP work and why is it so important?
It is hard to underestimate the profound impact that analytics, and the infrastructure that supports those analytics, are having on IP law practice. Beyond conventional analytics, there is much that we can do once we have gathered the data that we need from various sources. We are doing many new things that are not possible to do manually or cannot be done at a low enough cost manually to be made available to our attorneys and clients. Our analytics infrastructure means that we can detect and eliminate many flaws before it is too late and spot opportunities for clients that are routinely overlooked without sophisticated algorithms and AI. Our machine learning algorithms can do multiple things that no one thought possible just a few years ago.
What are the biggest challenges facing US electronic and software patent holders at present?
The biggest challenge facing all patent holders, but particularly US electronic and software patent holders, is the heavy biasing of the patent system against start-ups and emerging companies that take extreme risks to develop new technologies and industries. We need to address these issues in order to reinvigorate the formation of start-ups, which have propelled the United States forward for centuries.
Many would argue that the United States is less patent-friendly than it used to be. Is this fair, and what can be done to change this perception?
The sad state of affairs with Section 101 is one reason to blame for this, but that can be fixed legislatively if we can find the will to do it. The essentially unlimited challenges afforded by post-grant procedures in the United States also make the situation unfriendly at present. The good news is that this could change very quickly under the right political circumstances.
What advice would you have for any US tech start-up looking to secure its patent portfolio?
I always tell start-ups that they should file as many foundational patents as they can because you have to ‘use it or lose it’ when it comes to the right to file a patent. Despite all the limitations on patent use for a start-up, early patents in key technologies are often worth large multiples of what the patents cost to obtain should the company be sold or liquidated. I think now more than ever, with overseas competition becoming stronger and stronger, having a solid IP position is far superior to the perceived benefits of thumbing your nose at proprietary rights.
What technological advancements are having the biggest effect on your practice?
Right now, it is analytics, automated data assembly, assisted document assembly (eg, automated patent drafting tools or response shell generation) and the automation of most the routine tasks that for decades have been done with human intellect only, such as docketing, paralegal work and reporting.
What is the biggest career challenge that you have faced, and what can others learn from how you overcame it?
That is a difficult question, but I would say that the biggest challenge right now is to become not just a firm that is compliant with corporate requirements for diversity, but one that is doing all that we can to cultivate and embrace diversity. There are many things that we can improve on and we are determined to make those improvements. With regard to challenges already overcome, building a large and strong team of professionals is the one that I would point to. I would be foolish to try to identify any one thing that we did to get there. Some of it is just timing and dumb luck, but never giving up is definitely key!
You are a principal contributor to the Patents4Software blog. What is the benefit of this and how do you find the time?
My work on the blog ebbs and flows, and more recently the blog has been less active. When I see interesting cases I either jot something down myself or get help from one of the many attorneys at the firm who are experts in software patenting.
If you could change one thing about the US patent system, what would it be?
I would reform the post-grant review system so that it was an opposition system like the EPO’s. This would be a massive improvement to that component of the system. I would also amend Section 101 to modernise it and harmonise it with the rest of the world.
Principal and Chief Innovation Officer
Steven Lundberg is a registered patent attorney and a founding partner of Schwegman Lundberg & Woessner. His practice focuses on using his extensive experience to counsel clients on strategic IP concerns and the efficient and effective development of patent portfolios for start-ups, emerging growth companies and large enterprises. Mr Lundberg has published and spoken widely on software and electronic patent protection and is a co-editor of Electronic and Software Patents: Law and Practice, a leading IP treatise published by BNA Books.
Click here to see his IAM Patent 1000 2000 profile.