Embracing the possibilities

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Adam Wylie explains how IP law firms and corporate users can get the most from their IP Management software.

IP Management (IPM) systems have been around for more than three decades, and in that time, as with the majority of software systems, they have evolved to become ever more sophisticated and powerful tools for the monitoring and management of IP rights by corporate users and IP law firms alike.

From paralegals in law firms running the docket, and attorneys working on cases, to the IP manager or in-house IP department of an IP rights-holding company, the IPM system will be an integral part of the successful running of the business. Today, there is no practical alternative to running an IPM system; the days of the quill and ledger are long gone. For a company, the decision to implement an IPM system typically arises when their patent portfolio grows and they resource an IP function in-house. Companies use their IPM software system to inform their IP strategy and align it with their business strategy.

For an IP law firm implementing an IPM system that enables their business and is future-proof will be one of the first decisions that will be made.

The trend today is markedly different from that of 10-15 years ago among law firms, who would often assess what systems were available on the market and, in response to inflexible, often feature-poor systems with a counter-intuitive user interface, develop their own IPM software. IPM software was less sophisticated and so firms could develop their own software to suit their working practices. As working practices evolved and technology advanced, the law firm required a strong, adaptive and reliable software solutions provider to develop a product that was also flexible in meeting their needs.

Patrafee’s IPM system Patrawin was one of the first on the market, developed in 1978. The functions in Patrawin have since been refined in close cooperation with several leading IP law firms, and corporate clients. There are two versions:  Patrawin Professional for IP law firms, and Patrawin Enterprise for in-house IP departments. Our client base is wide but mostly found in Europe. Clients are IP law firms and corporate clients.

This article will look at the typical users of IPM software, and includes practical advice on how companies and law firms can use their IPM system to manage an IP portfolio more effectively.

The IP law firm

What would they use the system for?

IPM software is the backbone of every IP law firm, and as such can be fairly described as ‘mission-critical’ software. It is typical for all departments of a large IP law firm to log in to the IPM system daily and use it throughout the working day. A comprehensive IPM system is used to keep track of their clients’ cases, and the deadlines associated with their clients’ IP rights. Because IP rights are deadline driven, the IPM maintains the workflows that handle IPR deadlines, and is central to that in creating reminders and diary lists for attorneys and paralegals to monitor. Additionally, IPM software should enable an IP law firm to track and monitor: staff billing figures, any work in progress (WIP),  the flow of work from associates overseas, and allow attorneys to keep track of their time spent on a particular client or case. A fully developed IPM system will also function as a CRM tool, interface with ebilling systems such as LEDES, allow attorneys to record their time against client or case work, and generate all correspondence, including invoices with external parties – clients, overseas associates, issuing offices, etc, by standard letter or email templates. It must also usually hold the firm’s service fees, individual attorneys’ hourly rates and any particular discount or special fee structure negotiated by a client or associate. As offices increasingly move to efiling and a paperless office, the IPM should also feature a document management system.

How might a law firm use their IPM software more effectively?

Making greater use of an IPM software system is about making full use of the technology and functions available, and adapting working practices to reflect the greater sophistication of the IPM. For example, historically, a paralegal may run a due date list for an attorney, print the list and place it on the attorney’s desk. Alternatively within the IPM, the due date list can be generated, moved along in the system, and sent electronically to the attorney. The attorney in turn can act upon, or delegate the required action to another member of the team, all from within the system.

Reporting for clients is also vastly improved using an IPM system. Reporting manually is a very time-consuming exercise, but an IPM has the flexibility to produce a client report of higher quality, and in less time. A full schedule of, for example, patent holding can be produced for a client quickly and easily and include such things as graphical representations on a world map of the IP rights holders’ coverage delineating which territories are covered by granted cases and those by application. Some IPM systems, including Patrawin, can incorporate cost forecasts in a report. Our powerful tool IP Forecaster is used by law firms to generate cost forecasts for their clients, and minimise attorney time in doing so.

There is a general trend to communicate with clients electronically. A sophisticated IPM will auto-generate correspondence with a client by email, or in popular programs such as MS Word that are editable, have version handling capabilities,  and that can be stored back to the case or client quickly and easily.

The corporate user

What would they use the system for?

Organisations of this type vary from the small company with a single patent family, to corporates with a large in-house IP department with dozens of users of an IPM. For many IP rights holders, their IP is the fundamental part of the business, and so the IPM system is just as important to the business as it is to a law firm, but for different reasons.

Corporate IPM software users may have to provide updates to the board or senior management, and so rely more heavily on the reporting function. The IPM system can track progress of cases against targets, categorise revenues by various business units, and monitor disputes whether oppositions or litigation. Corporate users also have particular requirements of an IPM system, which can capture the entire lifecycle of an innovation, tracking when and how IP, company know-how or trade secrets are created, and logging remuneration for inventors.

How might a company use their IPM software more effectively?

IP legislation such as the UK Patent Box scheme has provided IP rights holders with the opportunity to reduce their Corporation Tax bill on profits attributed to their patents. An IPM system has the functionality to determine which of those qualifying rights apply for tax relief under the Patent Box scheme, and therefore how much of a saving can be made.

The general trend for companies as well as law firms is to move away from paper to greater digitised communication. With the document handling capabilities of well-evolved IPM systems, moving away from paper-based correspondence and files is possible, and adds efficiency to an in-house IP department. For example, documents such as Inventor Disclosure Statements (IDS) can be created and stored in dedicated parts of the database and retrieved, worked on and routed through the organisation appropriately.

A fairly recent, but significant development, in IPM software is the client portal. Not all systems have a client portal, but those that do have brought an ever-increasing level of access for IPR holders, who can now log in to view and run reports on their cases, submit IDS directly from R&D to the IP function, and when necessary communicate directly with external counsel.

Conclusion

The move away from paper-based filing and manual workflows, reporting and document management towards electronic communication, has been the single biggest advancement in IPM software to the benefit of users. Similarly, fully-functional document handling capabilities has increased efficiency among companies and law firms enormously. This innovation has gathered pace during the last five years, yet it remains to be industry standard among IPM software providers.

At Patrafee we foresee software systems continuing to evolve to meet the needs of corporate and law firm users. The paperless office is now achievable, and through enhancements to client portals users will gain even greater access to and understanding of their portfolios, while improving communication within the system rather than outside it.

The law firms and IPR holders that maintain the most successful working practices will be those who recognise and embrace the changes in their IPM system and use its full breadth of functions, but also adapt the software itself to meet the demands of effective day-to-day IP management.

Résumé

Adam Wylie, CEO, Patrafee UK Ltd.

Adam has overseen the growth of the UK office of Patrafee, a provider of patent annuity services, IP management software, and the patent budgeting tool IP Forecaster. Adam was previously Managing Director of IP Pragmatics Ltd Services division, and prior to which he worked for two different UK based private patent attorney firms. Adam holds a BA from University College London.