[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.

 A few weeks back, I posted a commentary on the nature of Ocean Tomo’s IP auction business, and how, like to so many other “Age of Consumption” business models, it was flawed by unsecure underpinnings.  Well, yesterday Ocean Tomo announced the sale of it’s struggling auction business to British brokerage ICAP.  Most notable in The Recorder article on the topic was Ron Laurie’s comments on the failure:

“There are two problems: One is that that market is gone because no one has money to speculate,” Laurie said. “The other problem is that the platform was inherently inefficient for high-value transactions because of the limited opportunity for diligence.”

I think I took a stronger stand on this, but essentially Laurie and I agree.  Of course, I think there’s still lots of room for imagination in solving the real IP issue of our day:  how do we get good ideas and innovation to market without having to own a bank to fund the process?  Are we suffocating innovation with ”business”??

Our friends at IP Law & Business recently posted about Ocean Tomo’s Spring Auction in San Francisco.  Ocean Tomo has created the market for IP auctions, and their past success raised both eyebrows and new questions about how we value ideas. More so for me, I’ve always felt that this new market challenged the notion of whether IP required a context to hold value, or if value could simply be intrinsic. Why else trade ideas like commodities?

But Ocean Tomo’s 2009 Spring Auction was not like those that preceded it.  According to reports, the auction took in less than 80% of the value of sold IP from last year’s auction.  And out of 80 available lots, only six sold.  I suppose everyone expected the results to be down in this economy. But I think the overwhelming failure of this auction leads me to make some interesting conclusions (these are just my thoughts):

1.       Much like the financial instruments that poisoned our economy, an auction of displaced ideas (or, good ideas looking for a good home) is really more about hype than it is about real value.

2.       IP value isn’t as intrinsic as we’ve been told.  It’s exciting to entice individual inventors to sell their ideas devoid of a business model, but it’s really not that practical.  When money was flowing, it seems companies bought IP at auction for the flare of it all. Now that we have to justify every penny, it seems that the risks aren’t worth it after all.