15 marzo 2010 - Los Angeles

 

SUSAN McRAE / Daily Journal

When Alessandro Steinfl and Enrica Bruno started up their own patent prosecution boutique, they turned to their chess coach for advice.

All The Right Moves

By Susan McRae

Daily Journal Staff Writer

ASADENA — When patent attorney Enrica Bruno found herself out of a job as in-house counsel at a small biotech startup, she did what she often does when fac

ing new situations. She took the advice of her chess coach. Twice a week, Melik Khachiyan, a chess

grandmaster, instructs Bruno and her husband and law partner, Alessandro Steinfl , on strategies of the match.

Khachiyan’s lessons not only have improved the couple’s chess game, they also provide them with a blueprint for the game of life.

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“He always tells us, ‘You should think from the end,’” Bruno said. “What does that mean? In chess, you see the position as you would like it to be.”

Translating it to the situation at hand, Bruno, 40, took stock of her position and planned her next move. Since becoming a lawyer, she always wanted to start her own firm. Now was her chance.

“Think about the chess board,” Bruno said. “There are incredible comparisons. You are facing an opponent but you also are facing yourself.

“You have to look at your position, no matter how you got there. You may have lost an opportunity, but you also gained an opportunity that you didn’t have. If you are focused on the past, you don’t see the new opportunity in front of you.”

Bruno envisioned how she wanted her practice to look: a small, friendly patent prosecution boutique, with an emphasis on the client.

Then, she began working out how to get there. She began in 2007 as a sole practitioner in a one-office rental with a paralegal. The following year, Steinfl joined her, resigning from a lucrative position at Ladas & Parry, an international intellectual property fi rm, where he’d just made equity partner.

The new firm became known as Steinfl & Bruno.

hree years later, the eight-member fi rm includes the two partners, an outside counsel, a technology specialist, a paralegal and an office manager. And they are looking to hire two more specialists, one in technology and one in electronics.

Steinfl and Bruno also have marked another milestone.

Last month, the couple, both Italian immigrants, became U.S. citizens.

Theirs is not your average rags-to-riches story.

Both Steinfl and Bruno were accomplished in their respective fields before coming to this country. But it is, in a way, another take on the American Dream – and how one couple was able to achieve it and overcome the obstacles along the way.

To begin with, when Steinfl arrived in Los Angeles in 2000, he didn’t drive (he still doesn’t). He spoke only passable English and wasn’t a lawyer.

Steinfl was a licensed patent agent with a degree in electrical engineering. He was working at the intellectual property fi rm Societa Italiana Brevetti in Rome, when he saw an ad by Ladas & Parry. The firm was looking for a European patent agent for its Los Angeles offi ce.

He applied, then quickly hired a tutor to brush up on his English for his interview at the firm’s New York headquarters. It was his fi rst trip to the United States.

While working at Ladas & Parry, Steinfl decided, with the firm’s encouragement, to attend law school. He received two full scholarships – one from Loyola Law School, the other from Southwestern University School of Law.

He chose Southwestern because it was on a direct bus route from his offi ce.

Bruno joined Steinfl in Los Angeles in 2002. She had worked at the same firm as Steinfl in Rome, but she was a patent attorney. She also holds a degree in molecular biology.

While in Rome, Bruno and Steinfl dated. Their relationship grew closer after he took the job in Los Angeles. They would meet on long weekends – in Los Angeles, Rome and New York. Before long, they decided to marry.

Because Bruno already was an attorney, she didn’t have to go to law school again in California before taking the Bar Exam. But she took a year off to study for it. She passed and was admitted to practice in 2003, a year before Steinfl .

‘You have to look at your position, no matter how you got there.’

ENRICA BRUNO

STEINFL & BRUNO

Bruno landed a position at Greenberg Traurig doing patent prosecution work. She left to join Materia Inc., a Pasadena biotechnology company founded by a Nobel laureate in chemistry, which has an extensive intellectual property portfolio. She enjoyed the smaller environment and the creative energy. But when the company downsized its legal department and cut her position, it also provided the catalyst she needed to create her own fi rm.

As a former in-house counsel, Bruno didn’t have a book of business to bring with her. But she had made a lot of contacts in her fi eld of patent law and biotechnology, both in the U.S. and Europe. And, she had a plan.

“At the beginning for me it was defi nitely short-term,” Bruno said. “It was what I think I will be able to manage now. Once you see that, you go backwards. You don’t waste time looking at things that you know eventually, whether or not they look convenient now, are not going to suit you for what you want to do. Otherwise, you can be confused or end up selecting something you won’t use.”

By renting a small office from another attorney, Bruno minimized the administrative work she would have had to handle on her own, such as paying utilities and parking and setting up a phone system. That freed her for the other necessary components, like shopping for a docketing system, setting up a filing and billing system – and, most important, building her practice.

Before long, she had more work than she could handle. In fact, she was beginning to get work in Steinfl’s area of expertise: electronics.

She mentioned to Steinfl that she really needed to bring on someone with his background, not meaning him specifically. From a practical standpoint, they both agreed it would be better to maintain separate careers.

And things were going well for Steinfl at Ladas & Parry. He had passed the California Bar Exam and been voted an equity partner.

“But I really got sort of smitten in this kind of thing that I could work with her,” Steinfl said. “We spoke about it many times.

“Many people told me it was a good idea. Many people told me it was a bad idea. But, hey, we’re here. And for the moment, the facts are telling us we are doing the right thing.”

Once the firm began to grow, Bruno increased her end vision. She needed bigger space. Being conservative, she chose an executive suite that offered the fl exibility of adding on staff without the full-fl edged commitment of a long-term lease.

ow equal partners in the practice, Steinfl and Bruno decided to invest in new computer equipment. They knew they wanted something that looked stylish but was also practical. They chose sleek, white state-ofthe-art Mac desktops, but use a Windows operating system for all their work.

“Don’t let the product dictate your fi nal choice,” Steinfl said. “Select your fi nal choice and then chose the product.

Steinfl, 46, also ascribes to the “think from the end” approach. He’s played in chess tournaments since he was 15 and describes himself as a “strong amateur.” Bruno shakes her head, indicating he’s being modest.

Steinfl calls up his Facebook page and displays a photo of his chess team. Chess books line the bookshelf behind his desk. One famous book, “How Life Imitates Chess,” by former World Chess Champion Garry Kasparov, maps the mind through the game, from the board to the boardroom, it claims.

Reaching into a drawer, Steinfl brings out a green and white canvas chessboard and unfurls it on his desk.

“You look at your position from a 64-board dimension of life,” he said. “You just keep looking at your situation and evaluating and re-evaluating it.”

He pulls out a chess timer and places it beside the board.

“Chess games are timed,” Steinfl says. “You make your move, you push the clock.”

Whether playing chess or practicing law, the couple said, one’s time is limited and it’s important to use it wisely.

Having backgrounds in electronics and molecular biology, respectively, is a big help in their patent practice.

“Whether it’s a protein or a molecule or a catalyst, today’s technology is mostly geared toward electronics, chemistry and biology,” Steinfl said. “So you really need this double background. On one side, you need to be able to write a legal paper. But on the other side, most importantly, you need to understand what you are talking about.”

Another important aspect of their practice, they both agree, is the emphasis on client relationships. Sometimes that means going to their place of business or having the client come to them, without billing for every meeting or every phone call. It’s a way to gain trust and often pays off in more business.

In patent prosecution work, they note, it can take time to ferret out what the actual invention entails, what is patentable and how to translate it into legal terms. Their clients want an adviser who is part of the team. It’s hard to consider someone part of the team if they are billed by the second, the lawyers say. Though they sometimes do bill by the hour, it is on a case-by-case basis.

“I really wanted to do something different,” Bruno said. “This is America. I had been around for a while and thought I had a different vision, a little bit mixed European and U.S.

“It makes a lot of business sense, both for the client and the attorney, to invest more on the relationship than on the specifi c, single project.” she added. “That requires a little fl exibility.”

susan_mcrae@dailyjournal.com