UK Patent Attorney Firm of the Year: Kilburn & Strode LLP

Q: Can you tell us about your team (eg, size, practice focuses and key individuals)?

A: Kilburn & Strode is one of the largest specialist patent and trademark attorney firms in Europe. Focusing on patents and trademarks, we have 210 employees in total, with 105 attorneys at all levels of experience, from trainees to partners.

Our patent expertise is organised by technology sector into three practice groups:

• advanced engineering;
• life sciences and chemistry; and
• technology.

Our trademark team also covers a wide range of sectors and industries, including luxury goods, automotive and heritage brands. Each of these practice groups plays host to leading names in European intellectual property.

This year, we welcomed Albert Keyack, former EPO attaché to the United States, as vice president of our US liaison operation.

Another development was the opening of our new office in the Netherlands. Hilversum is located just outside Amsterdam and broadens our European reach, expanding our capabilities in the European Union.

Q: How are advances in technology affecting the practice of patent prosecution?

A: Advances in technology such as electronic filing and searching, machine translations and language recognition have fundamentally changed the work of IP practitioners across the board – from patent offices to innovative businesses and patent attorneys themselves.

We believe that this trend will continue, with more use of AI applications enabling practitioners to focus on value-added tasks (eg, drafting prosecution), while commoditising administrative tasks. A huge collaborative effort is taking place in streamlining the patent grant process and supporting systems. As part of that, we have embraced these new technologies. We are in the process of an end-to-end systems review change, which will affect every aspect of our employees’ day-to-day work and will integrate processes, making them more efficient.

Q: You recently opened an office in San Francisco. What impact has that had on your practice?

A: In 2018 we became the first European IP firm to receive foreign legal consultant status from the State Bar of California, enabling us to advise on European IP issues in the state. Within a short timeframe, we have been recognised locally as a gamechanger for client service and strategic support on European IP matters.

Silicon Valley is the heart of the tech industry and protecting European IP rights for the prospering global innovation that pulses from the area is essential.

We now have outstanding software, medical device, AI and telecoms capabilities on the ground in the Bay area, providing unparalleled support to our clients there.

When we arrived in the area, we already had some clients there and over the past 18 months we have been able to expand our roster of local businesses exponentially, increasing our presence significantly.

Left to right: Richard Howson, managing partner, and Gwilym Roberts, chair

Q: Which elements of the UK and wider European patent systems are your US clients most interested in?

A: They are most interested in differences in the systems. It has been a difficult time for software patents and certain biotech patents in the United States recently. However, Europe – in particular, the EPO – has issued a stable and understandable set of rules and guidance to analyse these types of patent applications, and we have been able to help US applicants to reconcile the systems. More generally, US clients are always interested in ways to obtain European patents and trademarks more quickly, with less back and forth within the IP offices. We are often asked to review patent applications at a preliminary stage to help avoid problems frequently encountered by US applicants (eg, added matter rejections).

Our US prosecution clients also look to us for advice on accelerated prosecution techniques such as Programme for Accelerated Prosecution of European Patent Examinations requests, telephone interviews and informal hearings.

Finally, there is Brexit. Clients want to know how their patents, trademarks and pending applications will fare post-Brexit. Thankfully, we have been able to reassure them that it is business as usual, since the patents systems are unaffected and a set of largely agreed on rules will allow firms like ours that have offices across the European Union to effectively retain trademarks in both the European Union and a post-Brexit United Kingdom.

Although the unitary patent and UPC have long been of interest, this has waned as the ratification has been held up in the German courts and affected by Brexit. However, the European Union has not ruled out UK engagement, which could trigger German interest. Therefore, the UPC is still on the table.

Q: You now have offices in the United Kingdom, on the continent and in the United States. Do you expect more overseas expansion and how has that international footprint changed your practice?

A: We expect significant expansion in the territories in which we have invested. The success of the US office has inspired us to grow our presence and identify a second location for another office there. In the Netherlands, we are committed to growing our excellent trademark practice and building a critical mass patents team covering all technologies and areas of expertise. We have a focused approach to additional territories in Europe but intend to target one additional territory and replicate our Netherlands success.

Apart from the immediate growth in our client base afforded by the US office and the plans for further business growth from all of our overseas operations, we have benefited from the new perspective brought to the business by our overseas colleagues and the transition to a single, agile firm with multiple physical presences.

Q: Are there any sectors or industries that are particularly hot for you at the moment?

A: AI is a hot topic for everyone. With strong specialisms, including two PhDs and a dedicated cross-disciplinary approach, we are embracing the implications of AI across all technologies. We have identified a specific niche in driverless cars and find ourselves at the sharp end of a significant filing programme.

As telecoms infrastructure continues to become more sophisticated, we are at the forefront of both hardware and software developments. The future of aerospace technology is also thriving. Across all of that, Kilburn & Strode works with both conventional and next-generation technologies.

Q: There continue to be big differences in patent eligibility standards between the world’s major jurisdictions. How do you help clients to make sense of those differences and ensure that they have the strongest possible grants worldwide?

A: We are constantly present for our clients globally, giving lectures, hosting seminars, creating thought leadership and providing outstanding holistic service. Our San Francisco office provides a valuable hub in addition to our presence at both national and smaller regional conferences, as well as client visits. Alongside our attorneys residing in the United States, we have attorneys on extended visits and secondments throughout the country in areas such as Atlanta, Boston, Chicago, New Jersey and New York. We also advise clients across Europe and Asia in relation to the commonalities and differences between systems, as well as in drafting and prosecuting patents with the best prospect of global success. We also participate in education programmes at enterprise and governmental level in order to build bridges between the different systems.

Q: How are client demands changing, and what impact has that had on your practice?

A: The number of filings at the EPO continues to increase year on year, with over 25% of these originating in the United States. Therefore, there is a larger focus among US clients on their US portfolios and various forces in the United States (eg, litigation, the PTAB and new USPTO rules) are forcing clients to manage their European IP rights more carefully. The impact of this on the practice has been a general levelling up – not in terms of more hours, but rather a greater focus and improved teamwork and collaboration to produce the best possible outcomes.

Clients expect support at every stage of the innovation process, from mining and capture through to portfolio management. They also expect strategic advice against an uncharacteristically unstable global environment. These days it is all about the value-add; the duty on private practice is to focus on intellectual contribution.

Q: What advice would you give to younger practitioners looking to pursue a career in patents?

A: First and foremost, you should love science or engineering. Second, remember that non-patent lawyers are geeks too; lawyers are word geeks, grammar geeks and rhetoric geeks. Therefore, patent lawyers should encompass all of this. If you understand this early on, and it seems a fit, then welcome!

It is also a relationship business. You may be good at the legal aspects, but we also prize interpersonal skills and client service. People love us for that and it is something that we have worked hard on to set ourselves apart.

The mythical millennial has driven forward-looking firms to adopt a step change in the work-life balance, which has benefited everyone. Young practitioners should be looking for the kind of firm that has accepted this challenge.

Q: Which big trends do you expect to affect patent law in the United Kingdom and the European Union over the next five years?

A: As of last year, the EPO has a new president who seems committed to improving quality without sacrificing too much in terms of speed. The EPO is equally determined to reduce the time that it takes to process patents, appeals and, most importantly, oppositions. The aforementioned trends in software and AI are also expected to accelerate.

Across the world, patent offices are focusing on increased examiner-attorney collaboration, which will lead to quicker and better patents. A few years ago, it looked as though international harmonisation was just around the corner, but now we see stasis or fragmentation. Therefore, the improved management of multinational portfolios will be a key differentiator.