Kirsten A Grüneberg

Could you share what Grüneberg and Myers is doing to future proof itself?

Grüneberg and Myers is a forward-looking law firm. Since its inception in 2017, the firm has remained nimble and efficient through prodigious growth. Our flat management structure and implementation of the latest technologies − including AI and machine learning − keep us adaptable. These aspects enable us to weather the shifting conditions that have become commonplace in the landscape of modern business.

In particular, our level of efficiency allows us to offer exceedingly reasonable and competitive prices for high-quality patent prosecution and counselling work. In-house counsel increasingly face budgetary pressures, exacerbated by market volatility, the strength of the dollar and tightening corporate expenditures. By offering a lower-cost option without sacrificing the level of analysis and advocacy provided for the clients, we have already begun to outlast less agile competitors in the patent prosecution and counselling space.

The current legal-services landscape is competitive and high-quality legal work is considered a minimum. How do you add value for clients in such an environment?

Our firm combines high-quality legal work from attorneys who have deep technical knowledge in their respective fields with a personalised approach that clients have come to appreciate. Many clients have commented that we treat their applications as if they covered our own inventions. Where other firms may simply perform tasks and send invoices, we look to support our clients concerns more broadly. Although our clients operate in different time zones in Europe, Asia and the Americas, we make time for phone and video calls at their convenience. As clients have come to us with an interest in communicating in different languages, we have expanded our team to facilitate these needs.

Competitive pricing also further distinguishes us from many competing firms. We have kept our ear to the ground in the patent-related legal-services market, and have listened attentively to client concerns on cost. Our ability to offer such pricing really arises from our personalised approach, as our attentiveness to client feedback has allowed us to adjust to new pricing realities earlier than many other firms.

What common mistakes do international companies make when it comes to patent strategy in the United States – and how can they avoid them?

Patent prosecution at the USPTO can proceed according to a traditional timeline, or it can accelerate under a

more proactive approach from an attentive US patent attorney. As one component of a proactive approach, attorneys and applicants can stay abreast of USPTO programmes, such as pilot programmes and prioritised patent examination. Some, like the After Final Consideration pilot programme, are well known and longstanding. However, international companies may not always consider the benefits of the Patent Prosecution Highway programme upon filing in the United States. Still other programmes, such as the now-defunct First Action Interview Pilot programme and the recently renewed Fast-Track Appeals Pilot programme, may be lesser known or infrequently used. Even if the USPTO only briefly tries a programme and ultimately does not adopt it on a permanent basis, applicants may benefit from some applications within that timeframe if their attorneys inform them of the advantages.

Other aspects of prosecution may bring about a shift into a higher gear. For example, while international applicants may still be wary of interviews with US patent examiners, we find that interviews very often avoid further office actions and lead to the more efficient disposition of applications. As another tactic, if applicants and attorneys work together in a concerted effort to respond to examiners well in advance of deadlines, we have found that they may better recall the particulars of the application under examination and may, in some instances, be more amenable to allowance.

Nearly halfway through the Biden administration – how has its outlook on patents developed compared to previous administrations?

The Biden administration has given the patent community a mixed bag, thus far. Director Vidal seems to have been a strong choice to lead the USPTO and I applaud the selection of a woman to this position. However, the administration’s waffling positions on various pharmaceutical issues − including vaccine waivers and provisions affecting drug prices − leave stakeholders on somewhat uncertain terrain. Going forward, I would like to see the administration work with Congress on comprehensive reform of patent subject-matter eligibility in the United States.