Patent and Trademark Prosecution: Optimizing for Clients and Practitioners: A Solutions Guide

09
Jul
2018

Brian Aitchison

In early June, I shared some thoughts about the challenges with the current IP prosecution process and how we need to move to the next level.  A number of readers reached out to me and pointed out that I had articulated the business problems well, but they were left wanting more solutions.  

That’s a fair criticism, and many of you who know me would expect me to say, ‘that depends.’  

Nonetheless, there are some solution categories to think about and utilize, regardless of your circumstances:

1. Assess your team: successful IP practices all started somewhere, and roles and responsibilities evolved based upon the resources on-hand.  As client work expanded – through successful business development or new lateral rainmakers – the process remained the same.  The sentiment was ‘if it’s not broke, don’t fix it.’ But it isn’t working, requiring heroic efforts by limited resources to consistently meet deadlines with quality patents and trademarks.  This is not a sustainable process.
• Focus on identifying the right people for the right tasks.  The criteria for ‘right people’ include:
• Skills: who is trained to complete these tasks efficiently and effectively to a proscribed quality standard?  Determine where there are skill gaps in the organization overall, and invest in training.  Define specific success criteria per role and use that protocol to objectively assess capacity and capability.
• Budget:  will the client pay for this work?  If not, find a nonbillable resource (or technology – see below) to take on the task.  Separate the processing work from the artisanal, only billing the client for the truly differentiating contribution.
• Availability:  if an expert resource doesn’t have capacity to take on specific tasks, it makes sense to assign the work to non-experts, who will quickly move to expert level. This also enables resource load balancing, ensuring that there aren’t major work load discrepancies between resources.
2. Automate tasks that machines do well: clients are driving firms to work more efficiently, and this provides an excellent opportunity to re-examine processes firms have completed with people.  With significant gains in technology, there are straightforward situations where simple logic can improve speed, efficiency, and accuracy. Before we question whether technology can be trusted, let me refer you to a recent article where an artificial intelligence algorithm was able to identify skin cancer as well as a human dermatologist. We’re taking on a less complex problem with lower stakes here.  What are some examples?  
• Document downloads from the USPTO’s Private PAIR and TSDR make good sense as a starting point.  A 2005 human error study found that complicated non-routine tasks resulted in 1 error in 10. Ten percent is an uncomfortably high and risky error rate.
• Document generation capabilities enable your firm to ‘build’ documents that include standard clauses and formatting, freeing up the patent team to focus on the language to create a globally defensible patent.
• Clients are requiring more real-time reporting, such as emailing them Office Actions immediately after they are received by the firm.  The chance of a resource missing this immediacy requirement is high so leverage technology.
3. Reduce the need to remember: There are firms that manage distinct client instructions (a/k/a Outside Counsel Guidelines) from more than 400 different clients.  That means that there are 400 different process variations to support, some more significant than others.  The traditional approach is to assign a specific team to support each distinct client or to significantly increase the size of the support staff.  
   But the 400-teams solution doesn’t make sense.  Instead, create workflows for each client that automatically rout work based upon their requirements.  For example, some would require immediate forwarding of correspondence from the USPTO (see above), along with review of Office Action responses a week before they were submitted to the USPTO.  We call these client-driven dates ‘soft dockets,’ as opposed to USPTO-driven ‘statutory dockets.’ Embedding this type of logic within your systems enables a firm to utilize resources more interchangeably locally and across geographies.  

Friction-less IP prosecution is intended to smooth out jagged inefficiencies and automate a process where lawyers can focus on their legal work and not worry about the administration. Pairing the right people on the right tasks with the right level of process automation leads to superior outcomes.