[An IPM Treatise]

Those of us in IP circles have for a long time been keenly attuned to the commoditization IP prosecution.  In fact, as innovation springs in higher volumes and faster cycles, it is imperative for IP practices to be ever more efficient and vigilant about their work.  IP has always been a very manual and rules-intensive area of law, and in fact, the practice of IP prosecution has changed little over the past 30 years.  While technologies have existed to support IP practices for many years, they have primarily been focused on replicating paper and manual processes. 
 
Many new IP Management systems have come on the market in the last 3 to 5 years that offer, among other things, workflow-enabled process templates designed to help practitioners and practice support staff better leverage their information systems and do more with less.  These “Next Generation” IP Management systems are ostensibly designed to help practices codify and formalize policy and procedure. In reality, though, they rarely deliver on the benefits and efficiencies they advertise, because they frankly lack meaningful guidance during the implementation process.
 
I think that workflow is the cornerstone of any process improvement initiative.   Workflow should be an IP Practice’s foundational competency, designed to be leveraged for tactical, day-to-day operations that help build the foundation for strategic business improvements.   So how do IP practices practically and pragmatically implement real “game changing” workflows?  Following is my list of the Five Most Important IPM Automated Workflow Initiatives:
 
1.       New Mail Notification.  New mail represents the primary input of work for any IP practice.  In the progressive practice, all new mail should be scanned (if it does not originate electronically) and routed to the responsible practitioner or parties.   Automating the new mail workflow allows you to leverage and build the electronic file wrapper, automate routing and distribution, make policy-driven work assignments, and audit your processes.  Imagine the physical man-hours you can save with such a process!
 
2.       Docket Reporting.  Docket reports are the lifeblood of IP prosecution. They represent a practice’s body of work product, task management, accountability, and risk management policy.   Docket reporting workflow should include the automated generation and delivery of regular (often daily) docket reports to responsible parties.  New reporting technologies, most notably SQL Reporting Services, make the formatting of new, HTML-based reports simple and quick to develop and deploy.  The reports should be easy to read, be contained in the body of an email, hyperlink-enabled to open the matter in the IPM, and Blackberry/iPhone compatible.  There’s no reason every attorney shouldn’t be able to get exactly what they want to see, and that you can’t deliver it quickly and automated, so that you don’t even have to think about it.
 
3.       Docket Clearance.  There is probably no bigger “bang for your buck” in IP Prosecution than in implementing an automated docket clearance workflow.  This workflow involves the greatest leverage of your IP Management system as information portal, and really allows you to capture the practitioner’s desktop. The process should be built to allow lawyer’s to review their docket, or “My Matters”, online and in real time. Lawyer’s would then use controls in the IPM system to indicate docket clearance instruction for each due action, including notes and attached copy of the work product (filing, response, transmittal, etc.).  The responded action would roll off the practitioner’s docket, and onto the docket departments’ (or in some cases, to a Partner for review), who would then clear the dates based on the instructions and provided documentation.  In most IP practice’s today, there is no greater manual or time and resource consuming process than docket clearance.
 
4.       Docket Abandon.  The abandonment of a file is more complex than many realize.  For law firm IP Practices, abandonment not only represents a critical point of exposure, but also requires the coordination of several groups within and without the IP practice, per se.  For example, abandonment requires carefully detailed instructions (you don’t want to abandon a Germany  application when you meant Georgia), carefully documented verifications from the client, and coordination with your Records, Conflicts, and Accounting systems and departments.  Use automated docket abandon workflows to codify  and standardize firm policy and procedure, and leverage the workflow to route forms, data and decision points to the appropriate stakeholders (and systems) at the prescribed time.  This doesn’t leave corporate IP practices off the hook – abandonments can have serious repercussions on patent families and portfolios if done haphazardly.
 
5.       File Transfers.  IP file transfers are fraught with risk.  They present the “perfect storm” for exposure:  they’re typically high in volume, they must be completed urgently with little lead time, and they generally include current and imminent due dates.  What’s more, they present numerous moving targets:  coordination has to occur between receiving and sending firms, but also between and among a sometimes large network of foreign agents and associates, multiple incongruent client instructions, and physical and electronic data that have to be both inventoried and reconciled.  Is there a better scenario for formalized workflow?  Automated workflow can add some really neat competencies to the process.  Routing matters and related components and documents not only helps to manage the propagation of relevant systems, but creates a complete audit trail.  If a stone is left un-turned, or a party won’t respond, you’ll know in real time, and can respond to bottlenecks or obstacles pro-actively.  We all know how small omissions in file intake can affect an entire portfolio.
 
Workflow initiatives in IP practices should pursue two primary objectives:  codify and formalize policy and procedure, and make processes more efficient and effective.  There’s not really any magic in this pursuit either:  your implementation of IP Management technologies should be squarely focused on improving what you do today.  Implementing my list of Top Five Workflows will allow you to realize returns, in real dollars saved and risk mitigated, significantly beyond your technology investments.

Workflow is where IP Management really gets interesting! In our IPM Value Pyramid, workflow represents the foundational competency, designed to be leveraged for tactical, day-to-day operations that help build the foundation for strategic business improvements.  In a practice area that is becoming increasingly more commoditized, and in fact as innovation springs in higher volumes and faster cycles, it is imperative for IP practices to be ever more efficient and vigilant about their work.    While technologies have existed to support IP practices for many years, they have primarily been focused on replicating paper and manual processes. (more…)

Be more Efficient and Effective

Automation has been a buzz word in technology circles ever since computers were first introduced into the workplace.  In our IP prosecution world, technology has served to “automate” the calculations of dates in complex dockets and has enabled us to manage large simultaneous dockets.  But there continue to remain so many manual processes that we continue to reinvent with each and every application we prosecute.  Moreover, there are so many systems an IP practitioner must use today, that we inevitably end up typing the same information (names, addresses, dates, etc.) multiple times.  Of course, each time a piece of information must be manually managed, we inject an element of risk and error into the process.

Automation in IPM seeks to address the many and varied applications of information into tactical prosecution processes.  Pragmatically, when we speak of automating IP processes, we generally refer to three core competencies:

Document Assembly – the automated compilation of official filings, form letters and transmittals is a quickly achieved value-added competency.  The majority of next-generation IP Management systems today provide the capability to leverage all of the information you manage in their systems, and in integrated enterprise systems, to the automated generation of forms and letters.  The efficiency value of this capability cannot be underestimated in practice that is clearly focused on filing forms.

Matter Modeling – matter modeling is a form of boiler-plating matter management processes through predefined predictive templates.  Not only does the leverage of these templates automate the creation and workflow of matters, it builds risk management and logic processes into the normal course of work and data entry.

Electronic Data Exchange – No IP system can operate in a vacuum today, and today’s next-generation IP management systems provide robust capabilities for importing and extracting information in meaningful and contextual ways.  In this context, an organization can truly position their information stores to share and leverage related and complementary information from enterprise authority systems.  Furthermore, all regulatory agencies are moving towards electronic filing, and next-generation IP management systems must be poised to effectively deliver your applications and official correspondence as electronic data.
IP prosecution has long been the vestige of manual and paper-driven processes.  This breeds practice that is inherently inefficient, often at the cost of client service, practice effectiveness, and risk exposure.  Not only does automation provide a toolset for doing our work faster and cheaper, it provides a critical leverage:  the ability to create standards and enforce them with technology.

Intellectual asset management has materialized at the forefront of the legal profession.  New ideas have suffused to change how we manage, value and profit from intellectual capital.  This thought evolution has cultivated deep concerns about how best to protect IP portfolios, since the practice of intellectual property prosecution has gone largely unchanged for generations.  In a time when intellectual property management concepts and strategies are rapidly evolving, which technologies are IP practices focusing on today to drive best practices? (more…)