Sterne keSSler deliverS Strategic ip counSel

Robert Burger
Executive Director
Chief Operating Officer
Sterne kessler delivers
strategic ip counsel
Case Study: THOMSON ip manager, thomson INNOVATION,
file hIstories AND ip services
“In today’s economy, clients want to know where they are on a real-time
basis. Our relationship with Thomson Reuters allows everyone to be on
top of issues as they happen and to collaborate with clients in a realtime manner. I’m not aware of any other firm that is able to be on top of
litigation and prosecution for patents and trademarks in such a forward
thinking way.”
Robert Burger, Executive Director
Sterne, Kessler, Goldstein & Fox P.L.L.C.
sterne kessler delivers strategic ip counsel
Sterne, Kessler, Goldstein & Fox P.L.L.C. (Sterne
Kessler) is one of the world’s most successful
intellectual property (IP) specialty law firms.
Its success is rooted in the strong technical
experience and legal knowledge of its team –
its ‘mind + muscle’ – that is leveraged to meet
its clients’ diverse needs. High standards, and
even higher stakes, mean that this law firm
faces immense challenges in finding the right
resources and partners.
From patent prosecution research to intellectual
asset management and legal process outsourcing
(LPO), Thomson Reuters is Sterne Kessler’s go-to
partner in the face of these challenges. Robert
Burger, the firm’s Executive Director, states,
“Thomson Reuters is a company you can trust. With
the IP knowledge and expertise of our combined
teams, and the leading-edge products and services
Thomson Reuters provides, there really isn’t any
other choice.”
Headquartered in Washington, DC, and servicing
clients around the world, Sterne Kessler is one of
the largest intellectual property specialty firms
in the U.S. with more than 150 attorneys, agents
and technical specialists on staff. The firm’s
technical and scientific expertise can be compared
to a university lab or corporate research and
development department, as it employs more than
60 PhDs. Managing Intellectual Property named
Sterne Kessler the ‘2013 Firm of the Year’ for patent
prosecution in the northeast United States; this
is only one of the more recent awards and honors
bestowed on the firm.
Sterne Kessler prides itself on accuracy and
collaboration. Its technology partnership goals, said
Burger, are to “increase accuracy, efficiency and
speed of information, while minimizing risks.”
The firm began working with what is now Thomson
Reuters some two-plus decades ago. Thomson
Reuters provided Sterne Kessler with targeted
solutions for the vertical industries it served. Neither
organization had a holistic view into the full suite
of offerings being utilized or the potential for
integration.
It wasn’t until two years ago that the management
from both sides met to assess the scope of what
was being used and the potential for an enterprisewide solution. As part of this exercise they
uncovered opportunities to leverage and integrate
multiple solutions from across Thomson Reuters at
Sterne Kessler, providing a benchmark of excellence
for clients.
Previously, the firm had multiple, disparate
Thomson Reuters systems that didn’t communicate
with one another. By working with the senior
leadership of both Thomson Reuters and several
outside consultants, Sterne Kessler attorneys will
soon be able to enter information only one time
and the data will flow throughout the lifecycle of a
particular client matter. This is done through the
Thomson Reuters docketing system (Thomson IP
Manager), accounting system (Elite 3E) and project
management system (Thomson Engage), while
collaborating with Sterne Kessler’s clients on a
real-time basis. All of these enterprise systems
are being fed by Thomson Reuters proprietary
research tools including Thomson Innovation for
patent searching, Westlaw for online legal research,
SAEGIS on SERION for trademark searching, and
Thomson CompuMark for trademark watching.
“In today’s economy, clients want to know where
they are on a real-time basis,” said Burger. “Our
relationship with Thomson Reuters allows everyone
to be on top of issues as they happen and to
collaborate with clients in a real-time manner. I’m
not aware of any other firm that is able to be on
top of litigation and prosecution for patents and
trademarks in such a forward thinking way.”
As a result of the forward-looking solutions Sterne
Kessler is implementing, many clients will soon
be in control of issues at their fingertips. As an
example, many clients will no longer need to
maintain their own personal dockets to track their
upcoming deadlines. Through custom clientspecific workflows, clients will also be able to access
and track their project plans, project budgets, and
confidential documents on a quick, real-time basis.
When Sterne Kessler starts a relationship with a
new client, it utilizes the Data Validation Service
to validate the assets for Thomson IP Manager
through the Thomson Reuters Global Patent
Collection, to ensure each record’s information is
correct. The firm will soon be able to get client file
histories immediately transferred to the virtual
folder of choice via an API the companies built.
And administrative tasks and landscape searching
can now be handled by the IP Services group, as a
pseudo LPO. This will greatly assist Sterne Kessler
clients during unanticipated crunch-times.
sterne kessler delivers strategic ip counsel
“We use Thomson Innovation for its deep,
accurate and wide-ranging data, all in one
place, and the analysis and visualization tools
for their sophistication and rigor in meeting our
diverse client needs. These solutions are allencompassing,” said Burger. “It is absolutely
imperative that we have the best tools, staffing,
and workflow at our fingertips, while at the same
time being quick, nimble and cost sensitive. We
also need the ability to scale at a moment’s notice
to meet our clients’ highly specialized needs.
Thomson Reuters products and services allow us
to stay on top of things, in a highly competitive
manner. In the intellectual property arena, stakes
can be very high – sometimes in the multi-millions,
if not billions, of dollars range.”
LESSONS LEARNED
An enterprise assessment can lead to increased
efficiencies.
Robert Burger took the time to engage in a firmwide evaluation of the technologies and solutions
it was using. The result: a realization that there
were ample future opportunities to integrate
and leverage solutions for up-to-the-minute
insight into client data matters. Sterne Kessler
and Thomson Reuters are focused on workflow
and efficiencies in other areas as well. The firm
is partnering with Thomson Reuters to build the
first ever Knowledge Management (“KM”) system,
focused solely on the IP practitioner. KM will
help reduce research and training time as well as
increase accuracy. In addition, Sterne Kessler and
Thomson Reuters are taking the lead on behalf
of many leading IP firms across the country to
collect and monitor “peer” benchmark data
through Thomson Reuters Peer Monitor services.
Finally, the companies are working together
to improve the accounting system workflow to
make the intellectual property billing process run
smoother. Soon, Sterne Kessler clients will see
first-hand increased efficiencies and ease of use,
while minimizing errors and risks.
The whole is greater than the sum of its parts.
Sterne Kessler needs accurate and timely
information to deliver on the expectations of its
patent and trademark clients. Thomson IP Manager,
Thomson Elite, Thomson Engage, Thomson
Innovation, File Histories and IP Services collectively
provide a best-in-class solution that addresses the
needs across the Sterne Kessler enterprise.
The right technologies and systems reduce stress.
Most law firms don’t think like this, but
Sterne Kessler is ahead of the curve. Its goal
is to “embrace technologies that streamline
opportunities and reduce stress for people,” says
Burger. The firm has a genuine interest in making
the quality of life easier and better for clients,
lawyers and staff with cutting-edge and innovative
tools and processes. Sterne Kessler selected these
tools and solutions from Thomson Reuters.
“Thomson Reuters is a company you can
trust. With the IP knowledge and expertise
of our combined teams, and the leadingedge products and services Thomson
Reuters provides, there really isn’t any other
choice.”
- Robert Burger, Executive Director and Chief Operating Officer
Sterne, Kessler, Goldstein & Fox P.L.L.C.
To learn more, visit ip.thomsonreuters.com.
Thomson IP Management Services
From ideation to prosecution and commercialization, Thomson IP Management Services helps clients maximize the value of their IP portfolio, align it
with their business strategy and drive global competitiveness. Thomson IP
Management Services solutions integrate state-of-the-art portfolio management technology, comprehensive IP payment services, IP management consulting and a world-class IP Rules collection to provide unparalleled support
of clients’ patents, trademarks, licenses and other intellectual assets.
To learn more about the new generation of Thomson IP Manager, visit:
https://thomsonipmanagement.com/.
Thomson Reuters
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