Intellectual Property

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IP Law Technology Essentials

By Kimberly Giertz posted 06-24-2016 17:03


 Intellectual Property  (IP) Technology:  

Is it your experience that the intellectual property (IP) practice groups within larger firms tend to have special needs that require more or less attention from the technology group?  Is that group telling you that they need special software and that some of the standard procedures and applications just do not work for them?  Do they avoid you and do their own thing?  Are you a smaller IP practice firm and struggling to make standard applications and tools work?  Here are some of my observations after working for many years in the IP practice environment that may provide insight about their technology needs.

Many IP attorneys are engineers, scientists and doctors, each with their own language within their discipline.  They are technically inclined and have high expectations for the technology tools they use.  The rules and procedures involved in prosecuting IP patents and trademarks are intricate. U.S. and other countries’ patent office deadlines are firm and unforgiving.

IP legal and administrative processes differ from other practice areas especially for matter numbering, docketing, managing client records and managing and training support staff with the appropriate skill sets.  Often, there are no second chances when a due date is missed due to a procedural issue such as improper forms submissions.  And we all know how often things get filed at the last minute for many reasons.  In-depth knowledge of USPTO procedures and requirements are critical to informing about requirements for supporting technology.

In my experience, the some of the most valuable technology tools in IP are those that specifically support the IP processes and procedures.   But standard applications can be tweaked and customized to serve their needs as well.

One area that drives the complexity in many of the technology tools we use is the high volume of matters being managed.  Matter numbers are the primary classification means in most law firms.  In IP law there are often hundreds or thousands of active matters per client number.  In addition, for every matter there can be around 250 sub-matters representing the number of countries where applications can be pursued.  This requires that tech systems and databases have the ability to classify and report more granularly than many legal applications allow.  Managing this requirement without disruption to productivity for both the administrative staff and timekeepers requires a few critical systems that  provide flexibility in customization and built-in features. 

Efficient, accurate and  highly reliable databases in combination with thoughtful automation are powerful mechanisms that can really affect the bottom line and support core business initiatives.  Those software vendors that specialize and focus on database design for IP work can serve a critical resources and backbones that eliminate the need to spend countless hours and dollars to tweak and force general practice systems to meet the needs. 

You may find that some products on the market today cover a combination of these technical and functional requirements.  My experience has been those software vendors that focus primarily on their strength in its most critical component, such as effective and reliable management of statutory rules and deadlines, are the best bet.  Often the add-on components packaged with those products fall short.  Investment in the following key IT systems and personnel can well position an IP practice area to improve both internal and external client service:

  • Robust docket system with built in or carefully managed USPTO and foreign statutory docket rules:  Reliable and appropriate due date and activity tracking provides countless opportunities for setting up workflows (automated or not) and checklists triggered by due dates.

  • Robust document management system:  The key to successfully managing your client records and work product depends on a few things:

    • Compliance is critical!  If everyone does not maintain their documents in the centralized system in a consistent manner, it greatly diminishes the value and reliability of the system.

    • Timekeepers and staff need to be able to find their documents quickly.  Indexing and search engines need to be optimized and the user interface needs to be intuitive.

    • The classification process must fit into the users’ normal workflows.  You often have an  optimal opportunity within any given workflow to classify a document.   If you can identify that opportunity and make the process as painless and automated as possible, your chances of achieving high compliance improve.

  • The system must have some automated methods available for bulk management of content and documents at the client, matter and country levels.  Large portfolio intakes and departures are labor intensive processes.

  • Robust time management systems:  The financial system must be able to manage the granular and hierarchical matter numbering methods used in IP.  Time entry forms need to be streamlined.  Lookup and search tools need to be fast and easy to use.  Clients can be demanding and specific about the way bills are grouped and displayed, especially when e-billing is required by the client.  Billing systems need to be e-billing friendly and allow you to manage and map your hundreds of activity codes to the clients’ specifications and enforce e-billing requirements which allows them to pay your bills on time. 

  • Document assembly/portfolio data management:  There are packaged products on the market specifically designed to assemble USPTO and other formal papers and forms.  In order to populate these forms automatically, portfolio and bibliographic information must be stored in a database to pull from.  One day the US Patent Office may offer an API so that we can use our own data to populate online forms and save lots of time and resources.   The current document assembly applications typically have a database on the back end that must be well maintained.  Investment in time and resources to establish best practices for managing the data and keeping it up to date will pay off in real savings in dollars and labor.  Forms can be prepared in seconds and you will have some rich data that can be used for portfolio reporting.

  • Miscellaneous technology:   There are specific tools designed especially for engineers and scientists that are critical and specific to their specialty discipline (biotechnology, electrical, chemical, mechanical, etc.)  They can include chemical and genetic structure imaging, sophisticated analytical tools or applications like MS Visio.  For me, if someone can justify a new application purchase in terms of productivity gain or quality of client service it is pretty hard to say no.

  • At my firm, bridging functional and technical gaps through custom development has been a game changer to more fully leverage the investments in our primarily best-of-breed portfolio of applications. 

  • A key success factor for IP technology management internally is working with both technical and real users that have an expert understanding of the nuances of IP process and procedure.  Thinking outside the box and working with creative end users and attorneys can make IP practice technology management challenging while offering plenty of opportunities for innovation.