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Successful patent prosecution requires IP practitioners to produce a paper trail not unlike the trail of bread crumbs left by Hansel and Gretel on their journey through the forest. From the moment a client remits a disclosure document to the granting of a patent by the U.S. Patent and Trademark Office (typically one to three years later), IP firms will handle a huge volume of documents — and steer those documents through an extensive series of reviews, revisions, approvals and filings. Between e-mails, faxes, correspondence, documented telephone calls, invention disclosures, diagrams and assorted attachments, even relatively simple patent prosecution cases can result in the routing and storing of thousands of pages of documentation — and a great deal of wasted time. Here is how the paper shuffling usually works: Paralegals and secretaries make copies to create paper files; copied files are passed internally between docket groups, attorneys and secretaries; information must be reported out to inventors and corporate law departments through a combination of e-mail and paper; third-party services (proofing, paralegal) also receive paper copies and e-mail relating to various components of the matter. One result of all this activity: Valuable attorney time is consumed directing the flow of information instead of analyzing the information, which, after all, is where patent attorneys earn their fees. And one misstep — such as a misplaced document that results in a late filing — can cost clients tens of millions of dollars. In this paper-centric model, the “file” is the central repository and lynchpin for unifying all communications in one place, and for executing related processing activities for patent/trademark prosecution. Without access to the file, the attorneys, paralegals, secretaries, inventors and others involved in the case are unable to accomplish even rudimentary tasks. As IP practitioners know, patent/trademark practice is made up of handling a very large number of small tasks. The use of e-mail as a communications medium has only made these tasks smaller yet, making file management even more difficult. While case files bulge at the seams, their contents will often contain only a fraction of the total correspondence relating to the matter. The capture of billable time as the transactional overhead of flipping back and forth between task handling and time entry becomes more and more onerous. The result is lost revenue, as the time of attorneys and paralegals is chewed up by dozens and dozens of incrementally small tasks that are not getting billed properly. WORKING ACROSS BORDERS Compounding the problem is the fact that IP firms often work with clients across borders. “Nowadays it’s rare to work on a case where the inventor, the client and the IP firm handling the patent prosecution are all located in the same city,” says Steven Lundberg, founding partner of Schwegman, Lundberg, Woessner & Kluth, a leading patent law firm based in Minneapolis. “With 60 attorneys operating out of offices in 11 states and clients spanning the globe, the paper file paradigm no longer worked for us. We needed to find a more efficient way to do business.” There have been several attempts in the recent past to close the loop on patent-related communications and provide an easily accessible repository for documentation. A corporate Web site where information can be published and shared posed one solution. But in the real world, the lag between new information’s availability and its being published on the Web, and the challenge of maintaining the site, have made such an ad-hoc approach untenable. A document management system (DMS) represents a second possible solution. If all documents are dutifully scanned and secured access is provided to the outside world, a DMS can certainly be effective in disseminating documentary information. However, the problem is that these systems are by definition document-centric, and hence capture only the documents related to the overall prosecution process, rather than the process itself. For example, information pertaining to matters related by family and references cited for a specific matter cannot be represented in a document management system except through a contrived folder structure that can be unwieldy — and certainly not very intuitive. “We attempted for years to develop a case management program in-house to enable our attorneys to access matters, but it consistently fell short,” Lundberg said. “Instead of trying to patch together different systems to find a short-term solution, we decided to look outside of our organization for a new approach to managing our IP matters. This new approach would dispel the paper-based model and move toward a purely electronic flow of information, where documents/docket/task/billing/ invoicing/client management data could move seamlessly from the law firm to the client to the patent/trademark office, and back. Ideally, it would extend our internal processes to outside world, on an ‘as-needed’ basis.” IP-PROCESSES AUTOMATION SYSTEM Schwegman Lundberg’s approach combines the permission structure of an extranet with legal content (such as forms and other templates) and workflow-based processes tailored for the specific purpose of patent and trademark prosecution. Call it an IP-processes automation system. An extranet is basically a private Web site. It provides individuals inside and outside the law firm with controlled access to information via the Internet. Access is controlled by the site’s administrator through a roles-based security system. Extranets provide anytime/anywhere access to information, provided the user has Internet access and a browser. Most extranets are housed and maintained remotely by Application Service Providers (ASPs). Because data is stored on the ASPs servers and software also resides there, the firm’s hardware and software investments — and for that matter, the technology investments by any of the firm’s clients who might access the extranet — are very limited. Schwegman Lundberg’s processes automation system provides a platform for attorney-client collaboration, integrating matter management, IDS references management, time-and-billing, and client credit management in one place. All documents associated with a given patent prosecution can be securely stored on the platform, where they can be accessed by users with appropriate permissions. The system’s administrator can grant editing or read-only rights to other participating parties. This function eliminates the hassle of circulating documents via e-mail or fax, and makes new edits immediately available to all participants. Anytime a user views, modifies or adds to a document, associates and clients receive an e-mail notification, thus keeping all participants apprised of new developments. The platform also includes built-in contact management module for users to sort and manage e-mail correspondence by matter. Form letters, formal filing papers and other “boilerplate” documents can be automatically generated. Data from existing systems (such as a docket system) can be integrated with the extranet so docket date ticklers can be generated. To help keep patent prosecutions on track, users can implement customizable workflows to define, track, assign and otherwise manage work items related to the prosecution process. Standard templates are provided to create predefined sequences of work items that reflect processes instituted within your organization and have them automatically assigned to specific people or roles. Templates are easily customizable for a firm’s or client’s specific needs. “Using the Web, we can bring our clients and other interested parties into our processes as much as we need to,” Lundberg said. “It’s not just accessing documents. It’s increased participation in the process.” CONCLUSION By standardizing processes associated with routine transactions — and, in effect recycling successful models — the extranet/workflow system can increase the profitability of repetitive (and often low-margin) activities. The effectiveness and value of any new technology turn significantly on its full utilization by firm lawyers and client personnel. If the program intimidates everyone but the technologically proficient, then its value is greatly diminished. Since attorneys who are only marginally computer literate have some experience with the Web, the extranet interface is relatively familiar. Pradeep Sinha is president of Foundation IP, a provider of Web-based IP management systems.

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