Andre Marais


What is Schwegman Lundberg & Woessner doing in terms of succession planning to recruit, mentor and retain the next generation of talent?

We have exciting talent coming up through the ranks at the firm. In addition to our selective lateral recruiting, we focus heavily on recruiting top young talent from law schools nationwide. Our summer programme this year was probably the most successful in the firm’s history. We have initiatives under way to invest in training our mentors, with a focus on remote or hybrid work environment mentoring, given the new reality that a significant percentage of our attorneys will be in our cloud office and not working in one of our primary physical offices. The firm has a history of identifying emerging talent internally and providing that talent with client and leadership opportunities. We have also focused strongly on diversity, equality and inclusion, from both a recruiting and an opportunity perspective. While there is work to be done, we are making progress.

Kathi Vidal was appointed head of USPTO earlier this year – what difference, if any, have you observed so far?

I have met Kathi on many occasions over the years here in Silicon Valley. At one conference, I was recovering from Achilles tendon surgery, and she gave me and a colleague a ride home at the end of the day. I see her bringing this level of personal concern and caring to the staff at the USPTO. I am also encouraged to see the extent to which she is soliciting input externally and internally from within the USPTO before making any substantial changes. Kathi is very smart and an excellent leader. I am excited to see what comes next!

How have law firms’ use of analytics and AI changed over the past five years?

Being an IP boutique law firm enables us to invest significant resources in the internal development and the acquisition of tools to assist our clients in making better decisions, and our attorneys deliver top-shelf, bespoke services. We set up an internal patent analytics group several years ago, staffed by data specialists with access to innovative tools and data resources. This team supports our attorneys and clients with data requests with respect to their own patent portfolios and competitor portfolios, at a deep and insightful level. As for internal automation, we have automated the generation of prosecution history and freedom to operate reports, which provide our attorneys and clients with more thorough and accessible views of a patent asset or portfolio. We have also invested heavily in the automation of behind-the-scenes tasks such as docketing and report generation, as part of our ongoing efforts to manage the substantial overheads needed to support a top-quality patent prosecution practice.

You are a member of a number of associations, including the California State Bar Association, the Silicon Valley Intellectual Property Association, the American Intellectual Property Law Association and the Institute of Electrical and Electronic Engineers. How has membership of these organisations helped your professional development and why is engagement with such associations important?

One of our firm’s core values is leadership within the IP community. Participating in these organisations allows us to learn from others and to advocate positions that we believe are beneficial to the broader IP community.

What has been one of your biggest achievements over the past year?

Without a doubt, any contribution I may have had in recruiting top talent to the firm and the development of that talent internally to service our clients. We have an amazing team; I continue to be amazed by what they can do when I get out of the way and let them do their thing!

Andre Marais

Principal [email protected]

Andre Marais is a registered patent attorney and principal at Schwegman Lundberg & Woessner. The focus of his practice is strategic IP counselling and patent portfolio management, which he believes should be valuable, strategic assets that align with a solid business strategy. Mr Marais’s areas of expertise include patent prosecution (United States and foreign), patent validity, infringement and clearance analysis. His IP due diligence work comprises networking (including Internet), software, communications and electronic technologies.

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