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Sterne, Kessler, Goldstein & Fox P.L.L.C.

The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.

Rebekah Holtz is an associate in Sterne Kessler’s Mechanical & Design Practice Group. Her practice focuses on the preparation and prosecution of design and utility patents, both domestic and foreign. At Sterne Kessler, she secures IP protection for clients across a range of mechanical technologies and product designs, including designs for graphical user interfaces, consumer products, and product packaging. Rebekah received her J.D., cum laude, from Harvard Law School and graduated summa cum laude with a B.S. in physics and mathematics from Tufts University, where she received the N. Hobbs Knight Prize for outstanding ability in theoretical and experimental physics.

Louis P. Panzica, Jr. is an associate in Sterne Kessler’s Biotechnology & Chemical Practice Group. Louis’ technical areas of expertise include genetics, molecular and cellular biology, immunology, virology, and DNA/RNA technology. Louis earned his M.S. in the Cancer Sciences Program at the Roswell Park Comprehensive Cancer Center, offered through a collaboration with the University at Buffalo. Louis received his J.D. from the University at Buffalo School of Law, with a concentration in IP and privacy law. He earned his B.S. in molecular genetics from the State University of New York at Fredonia.

Describe your practice area and what it entails.

Rebekah: My practice focuses on the preparation and prosecution of design and utility patents. This involves drafting new applications, responding to rejections and other notices from the U.S. Patent and Trademark Office, and working with foreign counsel to secure IP rights outside the U.S. I also provide strategic advice to clients to help shape their patent portfolios, evaluate IP risks, and assess competitor products prior to enforcement actions. I work on a range of mechanical technologies and product designs, including designs for graphical user interfaces, consumer products, and product packaging.

Louis: My practice generally lies at the intersection between the firm’s biotech and litigation practice groups. I primarily focus on strategic work—including opinions, due diligence, and freedom to operate analyses—and litigation before federal district courts and the Patent and Trial and Appeal Board (PTAB). My role typically involves developing both technical and legal positions and drafting the relevant documents for each project, including complaints, briefs, motions, and client memos.

What types of clients do you represent?

Rebekah: I represent a wide range of clients, from large companies that are household names to startups to individual inventors. To name a few, some of my clients are Trove Brand and Thule.

Louis: I represent a variety of clients, ranging from small startup companies to large pharmaceutical companies. The technology at issue ranges from genetic sequencing technology to pharmaceutical therapeutics.

What types of cases/deals do you work on?

Rebekah: I work on utility and design patent applications from the pre-filing stages to grants. This involves working with inventors to fully describe their innovation in a new application, meeting with examiners at the U.S. Patent and Trademark Office to explain an invention and negotiate an allowance, and drafting written replies to rejections from the U.S. Patent and Trademark Office.

Louis: I also work often with foreign counsel to file and negotiate allowances outside the U.S. While foreign counsel provides expertise on their local law and practices, I make sure our approaches across the world are coordinated, consistent (where desirable), and make sense from a technical perspective.

For litigation, I represent clients in federal district court actions that involve allegations of patent infringement. For PTAB litigation, I generally work on inter partes review proceedings where the validity of a patent is challenged. For my strategic work, I have worked on projects assessing the strength of certain IP, especially before it is acquired from a separate entity.

How did you choose this practice area?

Rebekah: My undergraduate degree is in physics and math, and I wasn’t exactly sure what I wanted to do after graduation. I happened across a job posting for a patent paralegal and thought I’d try it out. That’s how I started as a patent paralegal at Sterne Kessler, and the rest is history! I loved the firm culture and the work and decided to become a patent agent and later returned to law school to become a patent attorney.

Louis: During my graduate program, I enjoyed designing scientific experiments, but did not necessarily love working in a lab. This made me realize that I wanted to pursue a career path that furthered my passion for science, but also included some sort of strategic aspect. At that time, I began learning about patent law and found the best of both worlds.

What is a typical day like and/or what are some common tasks you perform?

Rebekah: My days can vary a lot, and I typically work on several different matters a day. One day I might focus on reviewing a rejection from the Patent Office, including any prior art documents the examiner has relied upon in the rejection, and then formulate a strategy for replying to the rejection. Later in the day I might meet with another attorney about my proposed strategy for replying to a rejection in another case and then draft a reply and share the draft with the client for approval. On another day, I might work with our foreign filing team to coordinate filing applications outside the U.S. And later the same day, I might inspect a competitor’s product and prepare a summary of which of our client’s patents the product infringes and why.

Louis: I am not sure there is a “typical day” for a patent attorney. Every day is different, which is why I love my career. If I am working on a litigation project, I might be reviewing discovery documents, drafting an analysis on infringement or validity, or preparing for a deposition or hearing. Mostly, the common tasks I perform involve reading/studying certain documents, researching, writing, and communicating.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Louis: The most valuable skill in this field is effective communication, both written and verbal. This skill is used every day. Whether you are writing a brief or discussing a legal position with a colleague, having clear, persuasive, and effective communication is very important. I recommend taking legal writing courses and oral advocacy courses to help grow these skills.

What do you like best about your practice area?

Rebekah: There is a large variety of work within my practice area. Some tasks (like responding to certain notices from the U.S. Patent and Trademark Office) are relatively quick and more procedural in nature, while other tasks (like a search to clear a product prior to launch) are more technical in nature and take days or weeks to complete. The variety means there’s always something new, and that I can choose something to work on that’s a good match for what I prefer to work on at that time and the amount of time I have that day.

Louis: Besides learning about new ground-breaking technology, I love the strategic nature of my practice area. I like to say this practice area is similar to playing a game of chess while putting together a puzzle. Especially in litigation, each side is strategizing their moves to beat their opponent, like playing a game of chess. And because my practice involves patented technology, I am putting together the patent claims with the technology, like putting together a puzzle.

What misconceptions exist about your practice area?

Rebekah: People tend to think of lawyers as combative and proceedings involving lawyers as contentious, but patent prosecution is not this way (at least not in my mind). To me, the U.S. Patent and Trademark Office can be thought of not as an opposing party, but as more of a collaborator. So, when an examiner rejects an application, I think of our discussions with an examiner as an opportunity to bring a case to allowance together, and I don’t think of our written replies to the examiner as “arguments” but as “explanations.”

Louis: The biggest misconception is that an associate with a technical degree only works on drafting patent applications and prosecuting those applications at the U.S. Patent and Trademark Office. This is not true, especially at Sterne Kessler. Here, associates are encouraged to explore other areas of patent law and find the area they enjoy. Associates with technical degrees are not limited to only patent prosecution.

What is unique about your practice area at your firm?

Rebekah: At Sterne Kessler, junior lawyers are given a lot of opportunities and exposure that they might not get until later in their careers at other firms. For example, a junior lawyer might work together with a more senior lawyer to draft a new patent application, but the junior lawyer will have the opportunity to meet directly with the inventors during the invention disclosure meeting and correspond directly with the client throughout the patent process. At other firms, junior lawyers might feel a bit more “hidden” behind a more senior lawyer.

Our firm also actively participates in the U.S. Patent and Trademark Office’s Legal Experience and Advancement Program (LEAP), which encourages junior lawyers to argue a case before the Patent Trial and Appeal Board. If a junior attorney is working on a case that goes to appeal, there is a very good chance the junior attorney—and not a more senior attorney working on the case—will argue the case before the Patent Trial and Appeal Board.

Louis: My practice area is unique because of the crossover with other practice groups. I have worked with colleagues from not only the Biotech Group, but have worked with colleagues from the Trial and Appellate Group and the Electronics Group.

What are some typical tasks that a junior lawyer would perform in this practice area?

Rebekah: Junior lawyers work on all aspects of the patent prosecution process. They will often review rejections from the patent office, participate in calls with a patent examiner, formulate a strategy for addressing the rejection, and draft written replies to the rejections.

Louis: A junior lawyer works on various tasks depending on their interests. In patent prosecution, the junior lawyer might assist with drafting applications and office action responses. In litigation, a junior lawyer might be responsible for researching case law, preparing memos, and reviewing documents.