IP Innovators
🎙️ Real Stories. Evolving Practice. The Future of IP Law
IP Innovators features in-depth conversations with leading patent practitioners about their career journeys and how technological advances—from automation to AI—are reshaping the way they practice law every day.
Hosted by IP journalist Steve Brachmann, each episode offers candid insights from attorneys on the front lines of innovation, sharing how they adapt, grow, and lead in a rapidly changing IP landscape.
📌 IP Innovators is proudly sponsored by DeepIP – your trusted AI patent assistant.
IP Innovators
From Patent Office to Managing Partner: Chris Agrawal's Journey
In this episode of IP Innovators, host Steve Brachmann talks with Chris Agrawal, Managing Partner at Bookoff McAndrews, about his journey from sifting through stacks of physical patents at the USPTO to building a cloud-first, tech-forward IP practice. 📂➡️🤖
Hear how Chris navigated law school while working full-time, helped launch a lean, prosecution-focused firm, and is now piloting generative AI to make patent drafting more efficient. Discover what’s changed — and what hasn’t — in patent law over two decades.
👨💼 About the Guest:
Chris Agrawal is Managing Partner at Bookoff McAndrews, a boutique IP firm focused exclusively on prosecution and counseling. With a background in mechanical engineering and a deep appreciation for automation, Chris brings broad tech experience and a passion for client-focused innovation.
🔧 Sponsored by DeepIP – your trusted AI patent assistant: deepip.ai
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Hello, my name is Steve Brockman and welcome to IP Innovators, where we profile the careers of patent attorneys and explore how technology and legal practice has advanced with time. This podcast is brought to you by Deep IP, the first trusted AI-powered patent assistant integrated into Microsoft Word. Deep IP helps patent professionals draft better patents faster and analyze office actions to craft responses that win. By handling tedious tasks, deep IP frees you to focus on delivering higher quality work and greater value to your clients. Fully customizable, it adapts to your style, so it sounds like you only quicker and sharper. Trusted by top law firms and in-house teams across the US and Europe. Today I am joined by Chris Agrawal, managing Partner at Book Off McAndrews. Chris, thank you for joining us today.
Speaker 2:Steve, thank you so much for having me, absolutely.
Speaker 1:So can you give me a let's start with a sense of how you got into patent law? I believe you actually came at it from a patent office side first.
Speaker 2:If you want to explain that, actually came at it from a patent office side first, if you want to explain that, sure, actually, the way I got into patent law is I got into a program at George Washington University that combined engineering and law school. It was specifically tailored for future patent attorneys. So during undergrad I started working for a small patent firm based in Crystal City next to the patent office, and started doing patent searching and worked for companies doing searching for a few years before I went to the patent office.
Speaker 1:What were the kind of technologies you were working on prosecuting?
Speaker 2:It was actually a pretty wide variety of technology and I was studying mechanical engineering, so I did a lot of mechanical engineering. I also did a pretty heavy amount of chemical engineering believe it or not, chemistry and the patent attorney that I worked for was convinced that chemistry was the most important technology, and he actually urged me to take organic chemistry during undergrad, which was interesting, so I actually took took organic chemistry during undergrad to help with my searching, so I was doing lots of chemical work. Also a fair amount of computer science software work.
Speaker 1:Yeah, or organic chemistry is real light, you know, just an easy read. Yeah, exactly, yeah, exactly. Can you talk a little bit about the differences in the technology you were using in your daily work, your daily practice, between the time you were at the patent office working as an examiner and then between your early firm?
Speaker 2:Sure. So I started working as a public searcher in 2002. And at that time the patent office had a public search room filled with computers for searching, but it also had physical stacks of patents. So there were just shelves and shelves and floors of patents all over the patent office and every patent was printed multiple times and saved on multiple shelves associated with the classes and subclasses that the patents were classified in. So it was kind of legacy infrastructure to support patent examiners and searchers to do physical searching. So people would walk around the patent office going up to the shelves associated with the classes and subclasses that they thought patents would be in, and you would kind of flip through these shoes of physical patents just looking for prior art that was related to your invention. And so I started as a public searcher in the early 2000s, at a time where there was kind of a hybrid of technology. There were numerous computers set up for keyword searching and computerized searching, but also this infrastructure of physical searching through paper copies of patents.
Speaker 1:Can you give a sense these physical files, the shoes, the rooms that these are in? What is the storage space necessary to keep these paper files on hand?
Speaker 2:The patent office and at least the public search room. It looked essentially like a library. So it was a humongous room with tall ceilings and large shelves of just stacks of patents, and the search room was spread over numerous floors of the patent office. There were shelves of patents all over the patent office in Crystal City. It was also common at that time for practitioners to have file histories and also the patent office had file histories in paper.
Speaker 2:So there was also a records room and you would go. And if you needed a patent file history, you couldn't just log on and get every patent history on online, right, like with public pair now, right, right. So you would go to a file room and order the file history. So you would order the file history and, believe it or not, it would take hours to sometimes days for the patent office to find the paper file copy and deliver it to this front office so that you could then inspect the file. You could make photocopies of it. But it was an interesting time because both the patent office and practitioners were maintaining physical files. So we would keep these trifold files, punching the paper into the file, keeping track of all the correspondence back and forth between practitioners and the patent office.
Speaker 1:How much of your day do you think you were spent just handling paper files?
Speaker 2:It was probably a couple hours, probably a couple hours of inefficiency associated with finding the file that you were working on, you know, finding other files, related files, printing out copies of documents sent back and forth at the patent office. You would print out the filing, you would print out a postcard listing out what you were filing in the patent office and we actually had paralegals and patent secretaries take those physical papers to the patent office every day. So you would hand deliver most of your filings to a window at the patent office, get the postcard of what you were filing stamped and then they would bring that back to the office and you would save it in the file as proof of what you hand delivered to the patent office. So when you kind of factor all of that together the searching for files that you were working on, searching for related files, printing out copies of everything you were sending back and forth to the patent office it was quite a bit of inefficiency sounds very dewey decimal system like if you're writing it out on a card.
Speaker 2:Right and go to the library it was, and speaking of that I mean even the. The patent office's classification system was designed for a pre-search world. It was designed so that you could you know you would classify patents into multiple subclasses, mainly to ease searching in a pre-keyword indexed world.
Speaker 1:Are we still kind of dealing with the classification system there? Because sometimes I feel like I look at art units and I go, I don't know why everything's been shoehorned in here. I can't think of any specifics, but do you sort of see what I'm saying?
Speaker 2:We are, I still think it has some value. So it was designed for a pre-indexed, pre-keyword searching world. But I still find a lot of value in at least some attempts to classify all of the world's technologies into kind of some taxonomy that's searchable, so that you know there are still technologies where there's weaknesses to keyword searching and it's nice to have another layer of classification. But it is interesting there. You know, there is the classification system for classifying art, technology and patents and then there's also you alluded to the kind of arrangement of the patent office and that is kind of a separate classification system in itself. So there's an arrangement of how patent examiners are divided across the patent office through tech centers and art units and that's separate from the classification system.
Speaker 2:And interestingly I think we'll get into this when I started at the patent office as an examiner I was in an art unit 3726. It was in the mechanical arts, but I was in what was called class 29, which was methods classification, which was methods classification and it was a general area of the patent office dealing with basically all sorts of methods associated with mechanical, electrical, software work. And so I, interestingly, was working in an area of the patent office that was very interdisciplinary, so a lot of times as an examiner you end up in a very specific art unit where you just see a specific type of thing like buttons or shoes or whatever. I was fortunate to be in an area of the patent office that saw lots of different types of technology. The downside was you couldn't get familiar with art and technology and just kind of have your go-to art to cite. But in my short time at the patent office I was thankful for the opportunity to work on lots of different types of technology and get a lot of really good experience.
Speaker 1:Yeah, so let's talk about that transition. Then you transitioned out of the patent office and joined Finnegan, correct?
Speaker 2:That's right. So as soon as I graduated from undergrad, I started working as a patent examiner. Because of that full-time job, I transferred into the evening program for law school, so I was going to law school at night while examining during the day. And then, about a year later yes, I transitioned over to private practice and became a student associate, essentially a patent agent working full time during the day, doing a lot of the kind of similar work on the other side of the table, so working with tech companies, drafting patent applications, prosecuting patent applications, and then going to law school at night.
Speaker 1:Which really grind.
Speaker 2:It was a interesting, having had the background of doing searching, working at the patent office, to then work for applicants for tech companies and helping them on the other side of the table. It was really fascinating. It was a steep learning curve but it was an incredible experience to get during law school. So yeah, as you said, it was a grind working full time and going to law school at night.
Speaker 1:So, yeah, you're working where, while going to law school, you're at the patent office while in law school.
Speaker 2:I was at the patent office during my first year of law school and the second through fourth years I was at Finnegan, Packed a lot into five years there. Yeah, I did that's right I was very busy, steep learning curve, but I was thankful for the opportunities I was given. I got just incredible experience, but I was fully into patents, reading patents and working in patents all day long and then going to GW Law School at night taking a lot of patent classes and other classes that were relevant to my work.
Speaker 1:What were your survival tips, or if you could give a survival tip on going to law school at night.
Speaker 2:I don't even know if I have specific tips. It was just a lot of hard work.
Speaker 2:I mean, I guess one is that you know, at any given moment, if you kind of focus too hard on how much you have ahead of you, it can be overwhelming. And so I guess what I did is I just took it one day at a time. You know, I was kind of focused on the year I was in, the week I was in and just doing the best I could, kind of day after day doing the best I could kind of day after day. But it was a marathon and it required just kind of diligence for four years and kind of staying on top of everything.
Speaker 1:My legal research and writing professor my 1L year after our first semester, was like "'Law School is a marathon". It is, and it made so much sense because, yeah, you're right, it's one day at a time and you can't look ahead and get overwhelmed with what you have ahead of you. Right, great. So we're past the mountain of law school, we're getting into early associate over at Finnegan. What are those technologies You're prosecuting? Correct still?
Speaker 2:Yes, so while I was in law school I was a patent agent student associate, so I was doing mostly patent prosecution and counseling. I was also doing a fair amount of writing opinions, working on freedom to operate projects. But yes, during law school it was mostly prosecution and counseling. And then I was fortunate to stay on as an associate after I graduated law school and started to do more litigation, agreements, licensing work. But it was a pretty good mix of both prosecution, counseling and litigation during my associate tenure.
Speaker 1:Do you feel that during your time at Finnegan and then moving over to Bookoff McAndrews was your career focus mainly prosecution? Did you start to enjoy and get more into the litigation side of things?
Speaker 2:I did. I very much enjoyed it but because of my background I was more of a prosecution attorney. I had more experience. I also, while I liked litigation and found it really interesting, I liked the process of working with tech companies and inventors and CTOs and the like more. There was more direct contact with clients and inventors on the prosecution side of things and I I enjoyed being able to move between technologies more frequently. You know, on a litigation the benefit is you're really in it with a client with a specific technology, but you know you have to like that technology. You may be working on that technology for that's your focus.
Speaker 2:Yes, yeah, for a few years. So I was drawn, both because of my background and kind of the features of prosecution that I really enjoyed. I was drawn to prosecution more than litigation.
Speaker 1:Are there any technologies that you've been able to see and we can even go back early career, prior to patent office? Is there a sector of technology that you've seen develop over time that you think is just really interesting or cool?
Speaker 2:Absolutely. I mean, I think, two main areas that I can think of. I mean one obviously just software has moved so quickly since I've been practicing. So you know I was working during essentially the dawn of the internet, working on some of the earliest internet patents in the early 2000s to what we have today of machine learning and AI, and so watching that develop has been fascinating. The second area is in the field of healthcare technology, imaging, ai related to healthcare. I mean watching that move. I mean I worked on early medical devices and seeing how medical devices and imaging has all gotten connected, and so my background was in mechanical engineering but I did lots of chemistry and software technology early on. But now even what you would think of as a pure mechanical device or medical device, they're all connected. They're all connected. There's almost always some kind of software AI layer to most inventions these days.
Speaker 1:Internet of things. That's right. Yeah, still living in that era, still waiting for my toothbrush to get connected to the internet, you? Can do that they exist. Yeah, I think I'm fine without it. Let's talk a bit about.
Speaker 2:Book Off McAndrews so it's a spinoff from Finnegan announced that they were starting their own firm and I think, because of my background, kind of starting my career in a small firm, I had always wanted to open my own firm someday, and so when Les Bookoff and Roland McAndrews started their own firm, it was kind of a no-brainer for me. I asked them if I could join them and the rest is history Nice.
Speaker 1:Now, bookoff's been operating for how long now? About 13 years, about 13 years. And what's BookOff's typical work? What are the clients?
Speaker 2:If you can speak generally to it, work for some of the most innovative companies, but to do it in a way that's really focused on prosecution and counseling, to offer an economic model that works for clients.
Speaker 2:That's unique to prosecution and counseling. And so we have billing rates that are about half of that of big law and the idea is that essentially lets us spend the time that's required on drafting a patent application or responding to a patent office action, but to do it in a way that works with the business model, the economic model of most companies. So whether a company is big or small, most companies have a budget, there's kind of a market rate for patent drafting and prosecution, and so the whole idea of our firm is to have both an economic model that works for that but also the infrastructure. So our whole firm, everything from docketing to accounting to our patent specialist paralegal team it's all focused on this practice of high quality patent prosecution and counseling. So everyone in the firm kind of shares that mission, that vision of focusing on prosecution and counseling, and it really helps us support our clients in that work.
Speaker 1:Are there tech tools that BookOff McAndrews has been implementing that you find really help improve the productivity and allow you to cut your billing rates?
Speaker 2:Absolutely.
Speaker 2:I mean, as we discussed earlier, we've kind of gone through this evolution in the firm over the last 10 plus years that we've moved from a model of you know, these legacy file wrappers, trifold papers we were fortunate that early on we transitioned to a paperless office environment and so you know, every all of our work is is done paperless.
Speaker 2:So we we you know we work entirely in the cloud and we have, since the firm opened in 2012,. It's been a cloud-based software supported firm and we've tried to implement software and automations as quickly as we can. So we have tools that interface with our docket accounting. Our paralegal team uses these software tools to automate things like prepping documents for the patent office, pulling data out of our docketing system to help with drafting patent applications and preparing filings for the patent office, and so there are kind of two layers of tools that we use. One I would say is kind of just general automations of prepping documents and pulling data from the places we need it, and then the second is more of AI, gen AI for drafting documents. But it's all been incredibly helpful for making us more efficient.
Speaker 1:So you've got generative AI helping with patent drafting. Do you have AI baked into any other parts of the practice over at BookOfficantries?
Speaker 2:Not generative AI, but we do use kind of automated software tools just to ease all sorts of processes in the firm from docketing to accounting. And I should say we do use. We're kind of in the early days of using generative AI in actual drafting. So a few of our clients have expressed interest in it and we're piloting a number of different gen AI tools, but always with these guardrails of ensuring that the software is not saving confidential data, not training on confidential data. We're doing it mainly just for clients that express interest in piloting these software tools.
Speaker 1:So the clients come to you first and say, hey, we'd like to try and see where we can get savings out of these tools. That's right. So, having worked with a couple of AI tools, can you speak generally about some pros, some cons, what has helped and maybe some drawbacks of some products that you've worked with? Speaking generally, Sure.
Speaker 2:So in general we've seen kind of different philosophies of the tools.
Speaker 2:So they're kind of the category of these tools that are, you know, you input a bunch of information and then it produces some written work product.
Speaker 2:And then there are tools that are a little bit more iterative, that are integrated into Word or, you know, integrated into a web browser or software, where you're kind of going piece by piece and going back and forth between the tool and your document and putting pieces together. In general we've found the latter to be more helpful. Often, when you just input a bunch of information and take what's output, it's like all things AI, it's not perfect and so it takes some massaging, and so I think one of the lessons we've learned so far is that tools that are more iterative, that allow you to kind of play with the software and move back and forth between your document and kind of massage the input, it has been more helpful. We've also noticed a difference in the results depending on type of technology. So some of the tools seem like they're better with computer science inventions, algorithms, flow charts, and some of the tools are a bit better with mechanical, medical device, chemistry inventions.
Speaker 1:I wonder I'm just kind of speaking out, thinking out loud here I wonder if that has to do with how the models are trained. We hear a lot about you know the importance of training the model and what the content and data that they're trained on you know?
Speaker 2:Yeah, I think that's very possible. We've also noticed, kind of along those lines, differences in how they handle drawings. So some of them happen to be better at, like I said, computer science algorithms, so flowchart type inventions, and some of them are really able to handle mechanical inventions which tend to be a bit more drawing heavy. And so, to your point, I think it does depend on how much training goes into machine vision analyzing drawings versus focusing on flowchart algorithm type inventions.
Speaker 1:Other than AI? What have you found really helpful in the current state of technology for Bookoff McAndrew's practice?
Speaker 2:One of the other really big transitions that we've seen over the last entirely into the virtual world in terms of meeting with clients and colleagues. And so Zoom and Teams and all the other big video conferencing systems have totally transformed the way we meet with clients and colleagues. So that has really made us incredibly more efficient. We used to fly around the country around the world to meet with inventors on a single invention sometimes, which was incredibly valuable. So we really enjoyed the in-person connection and communication we got in that process, but there was inefficiency associated with it. You know you would try to kind of put together multiple invention meetings, multiple meetings with clients to get some efficiency from that travel.
Speaker 2:Now with Zoom, teams and other tools you can spend all day, essentially, you know, traveling around the country virtually meeting with clients really efficiently, and it's made us much more efficient. I still think there's a lot of value to meeting in person and so we still do fly around the country around the world to meet with our clients, but it's just done in a more kind of focused way and it's honestly a bit more focused on the social aspect and meeting with larger groups of people rather than just one-off inventions. But Zoom and other conferencing tools have totally transformed the way we work with clients and ourselves. Right transform the way we work with clients and ourselves.
Speaker 1:Right and I think we spoke about this in our first conversation the value added nature of just being able to be pickier about where you're going and, I think, conferences being as important as they are today, and possibly more so, because now firms can focus on let's be at, you know, this innovators conference, this patent law conference, instead of having to work in all the travel with clients all over the country.
Speaker 2:That's exactly right. So it is easier for us to get to conferences. I mean, a lot of our work is through video conferencing and we're able to really focus on the key conferences that we want to go to. And the other thing is conferences don't have to prevent us from meeting with clients, so you could be at a conference in California and still meet with a client in New York or Florida or wherever they may be. So it really is enabling us to continue working and going to conferences, and it's incredibly important.
Speaker 2:And we do still maintain an office in DC, so we have kind of our home base in DC, where a lot of conferences do take place, especially in the IP community, and so, while a lot of our work is virtual, I really enjoy having a DC office, a DC presence, and having kind of that as our home base, and it's a great place to work and a lot of times people will come into DC for conferences and meetings and it's nice to have that presence and to be able to meet in person, right right, we are geographically disparate, but there are still certain centers of the patent law world.
Speaker 1:That's right. Yeah, well, talk about DC. And I guess, if we can go into a couple of personal details here, because I always like peeling back the layers and looking at the life behind the law that we all have I believe you're a bit of an avid jogger brother behind the law that we all have.
Speaker 2:I believe you're a bit of an avid jogger brother, that's right, that's right. So it kind of started out of necessity. So I was actually kind of pre-pandemic going into the office every day. I found out that running. I live within a couple miles of our office but that running into the office was one of the most efficient ways to get there and so I would run to the office and actually to our kids' daycare before and after work and it was kind of the fastest way to get around DC. So that's funny. Yeah, I believe in all this Through public transportation and traffic was not going to work for the daycare drop-off, so I started running to the office and using the gym at the office.
Speaker 2:But it's now even through the pandemic. It's remained kind of a habit of mine. So to this day I don't go into the office every day. I go in a few days a week. But when I do, I run, commute into the office and I absolutely love it. So it's a way to knock out, you know, a little bit of exercise. I'll listen to podcasts or books and things on the way in and knock out my commute at the same time. So it's become a habit but also kind of a passion of mine.
Speaker 1:Amazing. Yeah, no, I actually I started running a little bit right at the beginning of COVID and, yeah, it was a really great like lifestyle change, because I don't want to just be sitting on a couch. I run two miles every other day, so is it just a commuting thing, or have you ever done a 5K?
Speaker 2:Oh yeah, I've done 5Ks and 10Ks and 10 milers and marathons.
Speaker 1:Ooh, okay, yeah, way beyond what I'm willing to do right now. All right, I love it, I love it. Great. Well, Chris, thank you so much for taking the time to talk today. This was a really great conversation.
Speaker 2:My pleasure, steve. Thank you so much for having me, absolutely.
Speaker 1:Once again, I'm Steve Brockman for IP Innovators, signing off and saying happy patenting.
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