The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Daniel Brownstone, Partner—Intellectual Property Group
Daniel Brownstone concentrates his practice on patent strategic counseling and prosecution, intellectual property due diligence, and patent litigation. Dan received his undergraduate education at Duke University, graduating with an A.B. in computer science and economics. He received his J.D. from Washington University in St. Louis. Dan was a legal intern in the United States Senate, where he worked on the Judiciary Committee for Senator Russ Feingold.
Dan’s combined backgrounds in computer science and economics give him a unique perspective on patent strategy. His practice emphasizes patent portfolio development based on identifying innovations that are economically strategic to the enterprise, and managing the creation of patent assets to maximize the value of those assets. Dan is an Adjunct Professor of Law at The University of California, Hastings College of the Law.
Please provide an overview of what, substantively, your practice area entails.
I provide integrated advice about the protection and exploitation of intellectual property to emerging and established technology companies. Together with my clients, we develop invention and innovation programs by strategically evaluating technology and proactively identifying areas in which to focus patent protection. I work with our corporate and litigation lawyers when our clients are embarking on a financing or acquisition or face disputes to enforce the protection of their IP in the near and long-term. In other words, I help smart engineers and researchers protect the cool stuff they create!
What types of clients do you represent?
I represent companies that span the technology spectrum, but I have a focus on software, app, cloud, and some digi- tal entertainment companies, including Facebook, Caesars (the casino), Google, Uber, salesforce, Dropbox, BuzzFeed, and Ancestry.com.
What types of deals and/or cases do you work on?
By definition, patent applications are about things that have never been done before—so each case (patent application) is different! Generally, I work on cases about improvements in software for videos, transportation, genealogy, file sharing, and telecommunications. Every day is different.
How did you decide to practice in your area?
I have a natural curiosity for business and how technology is developed and implemented, and I found that being able to protect innovator’s creations is a fulfilling way to foster the future of technology.
What is a typical day or week like in your practice area?
We have a list of upcoming deadlines called a “docket,” which tells us which patent applications have to be filed and when; when we have to respond to rejections from the Patent Office; and when other actions are coming due. But our practice is much more than just writing—we meet with inventors, business people, and colleagues in other practice groups, and network with attorneys across the country and the world. This is what keeps every day interesting, because every day ends up being different, and not at all what you’d expect when you wake up.
What is the best thing about your practice area?
The buzz, the incredible energy, and the intellectual chal- lenge. I’m at the forefront of cutting-edge technology that dramatically changes how people interact and live. It’s impossible not to be inspired each day by the tiny window into the future I have with my job.
What is the most challenging aspect of your practice area?
Billing issues are tough. Young startups are strapped for cash, and though good legal counsel is one of the best investments an entrepreneur can make early on, as it always saves them money in the long run, it’s hard to see them struggle to pay their bills. Thankfully Fenwick has been ahead of the curve as the legal industry is shifting away from the blanket billable hour arrangement and now has a menu of ways in which our clients can set up their fee structures. We also have in-house budgeting experts with data from over ten years of matters, so it’s great that we can be so transparent and provide that as a service to every client.
What training, classes, experience, or skills development would you recommend to someone hoping to enter your practice area?
The Patent Office requires that people who want to prosecute patent applications have a science or engineering degree, or a minimum number of college courses in certain fields (check their web site for the latest requirements). Beyond that, invest in yourself. Realize it’s a marathon, not a sprint. Take advantage of the educational programs and trainings that your school, firm, company or bar association (e.g., AIPLA) provides. There is a tendency when you’re a young lawyer to focus on billable hours, but you must always be thinking about your network, and you never know who you might meet.
What misconceptions exist about your practice area? What do you wish you had known before joining your practice area?
There’s a misconception that patent attorneys do nothing but stay locked up in an office all day writing boring patents. To the contrary, being a good patent attorney means doing a lot of human interfacing—on the one hand, meeting with engineers and scientists and extracting from them all the details of the inventions; and on the other hand, working with examiners at the Patent Office to convince them to allow your applica- tion. The best patent attorneys are the ones that are the best communicators!
What is unique about your practice area at your firm?
I am very lucky to be at a firm like Fenwick. Every day I am amazed at the intellect, motivation, and innovation that everyone here exudes. We are at the top of our game when it comes to understanding the technology and science behind each client, as well as understanding and delivering what they want from their law firm. My clients now more than ever are seeking flawless execution on their matters as well as a sound business advisor who can see the possible roadblocks ahead before they can. I’ve been at Fenwick for the entirety of my career, and I feel like my firm has scaled in sync with our clients who have scaled in sync with the global technol- ogy industry. Fenwick is also unique in the value it places on culture and diversity. We have a very flat structure amongst the staff and attorneys, which contributes to our culture of genuine “niceness.” There is unlimited support and focus on recruit- ing and retaining diverse employees, and there are amazing educational programs and experiences available to everyone to celebrate diversity. Within the past two weeks, I received a gift for the Chinese New Year from our HR department, attended a lunch presentation about the current climate of the American Muslim community, and coordinated a group to attend the Bay Area Lawyers for Individual Freedom’s annual gala. Oh, and the free food is awesome!
What activities do you enjoy when you are not in the office, and how do you make time for them?
I make it a priority to never drink alone! Splitting my time between New York and San Francisco, I have some of the world’s best restaurants steps away from my front doors, so I love getting lost walking throughout the cities with friends and trying new places. My parents live in Florida, so when I need some real sun and a little beach, I have the perfect excuse to hit the panhandle!