Patent and Trademark Prosecution: Optimizing for Clients and Practitioners

05
Jun
2018

Brian Aitchison

The friction-less IP prosecution process

Did you know that America’s IP is worth roughly $5.8 trillion dollars, more than the GDP of many countries? With that value comes a lot of risk associated with protecting these ideas and intellectual property. Dedicated IP firms and specialist IP practices within certain firms are increasingly looking to streamline processes and leverage technology to better manage and execute their clients patent and trademark applications, all of which involve working with the U.S. Patent and Trademark Office (USPTO). 

Here are some more statistics …

In 2017, the 100 highest volume utility patent firms prosecuted approximately 129,000 US patents.  The top 20 averaged approximately 2800 annually.  Add that number to the patent work underway – patents tend to take 3 years or more to complete – and firms have a volume problem.  Keeping track of each patent and its deadlines is literally mission-critical work, where a missed date could result in fines (growing with each infraction), reputational damage (why can’t these guys get back to the USPTO faster?), or, worst of all, loss of a patent entirely (and presumably the client, as well). 

IP prosecution is difficult, high-stakes work.  Yet there are two kinds of work that are best separated:  true legal work (ensuring that patent application is distinct and defensible, responding to patent agents’ inquiries) and the art of staying organized (meeting deadlines, adhering to client requirements, communicating updates to clients). How does a firm best allocate responsibilities so that patent practitioners can focus on the ‘artisanal’ work of crafting unique applications and the rest of the patent team can ensure that the ‘factory’ is working on-time and on-schedule?  It’s not an easy problem to solve.  

Many IP prosecution practices have grown dramatically in the past decade to keep up with demand, and they have held on to processes they could depend upon - namely paralegals and legal secretaries who simply knew what their patent lawyer’s clients needed (sometimes with the aid of colorful sticky note reminders).  This specialization provided positive short-term results and risk reduction.  

It also resulted in process changes based upon mistakes or near-misses (e.g. the janitor throws out the pile of sticky notes that fell to the floor on a humid day).  A missed deadline for a client would bring about more rigorous reviews where the entire team must be cc:ed on all emails or the supervising partner must review the application after every change.  The process morphed into something less efficient and arguably less risk controlled, as the overload of review requests resulted in no reviews at all. Equate it, if you like, to the explosion of data and how companies and firms are struggling to manage, let alone leverage it.

All in all, this lack of automation and breakdown in process and procedure positioned IP firms poorly for future success (i.e. more work from clients).  Specialized resources could only work so many hours per day and deliver quality work; there was no means to scale; and without adequate technology, the downward spiral of inefficient IP prosecution would continue.   

Smart clients are driving this change.  They want the right-skilled (-priced) people doing the right work – and they monitor it through task and activity codes.  They want access information as it becomes available to law firms.  They want to know what’s going on with their portfolio and whether it makes sense to move forward on certain patents that seem to be generating significant allowances.  They want to review responses to Office Actions a week before they’re due to the PTO.  They want to give work to patent experts they trust.  But they don’t want to over-pay.  And they have the data to compare your performance against the other firms they’re working with.   

The bottom-line to IP prosecution success? Create a reliable and repeatable process (where compliance is built in) and resources don’t need to remember deviations via sticky notes.   Smart firms serve smart clients with proper use of talent and technology that enables them to deliver superior work quickly and predictably.  Reducing friction within the IP prosecution process results in more effective practitioners and clients who want to shift more of their portfolios to your firm.