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Many lawyers might argue that an IP prosecution practice does not lend itself to the matter-management technologies that have revolutionized other practice areas. After all, IP prosecution is governed by complex rules-based docketing procedures, and the complexities increase exponentially with every international filing. Historically, there have been but a handful of automation options. But recently, new vendors and technologies have emerged, most significantly, open-source relational database management systems. Today, products recognize the benefits of SQL-based data storage and the powerful tools inherent to open-source SQL databases. If you are considering new technology, here are some tips to help you evaluate choices: 1. Database Design and Architecture Look for systems that incorporate advanced database design and architecture for sophisticated data management. Most vendors adopt Microsoft Corp. standards, and take advantage of object linking and embedding. Look for integration with Microsoft’s Office suite, to manipulate data and generate reports. Development paradigms are shifting away from code-heavy, highly-customized proprietary systems, and moving to thin-client (Web-based), standardized, component object and configurable systems that leverage workflow processes and other advanced logical functions. They incorporate “n-tier” architectures. The latest systems advance the notion that “out of the box” systems can address IP-specific workflows and processes. Built-in configuration tools help elevate the systems beyond traditional docketing. 2. Docketing and Calendaring Every IP management system must have as its cornerstone a strong docketing system. After all, IP practice is about the management of key dates and deadlines, and the management of documents and instructions relative to every date. Look for sophisticated and flexible rules engines, and customizable rule sets. For example, Aspen Grove’s ipWorkflow and FoundationIP’s namesake product both offer reminders linked to attorneys and/or roles. Billing attorneys receive only major milestones on their docket sheets, while working attorneys receive all reminders for each due date. Conscientious vendors provide accurate and timely updates for domestic and international country laws. Look for customizable country law sets that do not compromise the system upgrade path, or ability to receive law updates. 3. Configuration Configuration assumes that no system code or structural element will be altered or enhanced through programmatic means. Avoid vendors who want to sell a shell system and write custom code. They are high cost and high effort, mandating large upfront investments, long installation timetables, and high maintenance costs, due to a lack of a direct software upgrade path. Look for the ability to configure user-defined parameters such as nomenclature, interface “look and feel,” installation conventions, security and “ethical walls.” 4. Integration The bedrock of knowledge management is the ability to share information across systems, practices, and geographic locations. How wonderful it is to populate your IP system with personnel information (updated through your human resources system), or to pass your billables from your IP system to accounting (to process fees and manage their collection), or to monitor client activities and explore new business opportunities via your client relationship management system. The efficiencies of these integrations are astounding. 5. Documents What good is storing all that information in your system if you can’t do anything with it? The United States Patent and Trademark Office long has been a paper intensive organization, but its leadership, too, has recognized the need to automate and has recently introduced an electronic filing program. Consider your ability to meet U.S. PTO requirements (once they’re established). Your IP software should be able to output data to U.S. PTO forms, and other functions. The document assembly function can be as simple as Word-based mail-merge letters, to comprehensive, process-oriented rules engines that integrate multiple systems and manage the decision tree for you. 6. Workflow Workflow is where IP management gets interesting! You can manage a completely paperless, automated patent prosecution process in real time. You can collaborate with practitioners from throughout the practice, throughout the firm, or throughout the world, even if the end result is a paper filing. Imagine not only preparing a docket sheet electronically, but routing it to the proper attorneys for review. Leverage paralegals for filing preparation and document review, and route your documents for completion to the appropriate professionals and subject matter experts. Look for products that offer automation of all these background processes. Viva la Revolution!
RESOURCES FOR IP SOFTWARE Aspen Grove ipWorkflow aspengrove.net Computer Packages Inc. Patent and Trademark System computerpackages.com Computer Patent Annuities L.P. Maxim InProma and Memotech cpajersey.com Dennemeyer & Co. Intellectual Asset Management System dennemeyer.com Edital Intellectual Property Network WorldSuite edital.com FoundationIP FoundationIP foundationip.com IP Online Ltd. WebTMS ippo.com Master Data Center Inc. IP Master masdata.com MicroPatent USA Aurigin Intellectual Property Asset Management System aurigin.com OPSolutions Inc. Pattsy Integrated Patent and Trademark Tracking System pattsy.com Patrix Patricia patrix.com

Eyal Iffergan is senior consultant at Baker Robbins & Co., based in Houston. E-mail: [email protected]. Web: www.brco.com.

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