Executive Summary
According to a December 3, 2018 press release by WIPO (PR/2018/826), global filing volume for IP matters increased significantly in 2017. Filing was up 5.8% over 2016 and continued an upward trajectory spanning eight straight years. The rate of filing growth in this space surpassed that of overall economic growth. In 2017, worldwide patent filings were recorded at 3.2 million and trademark filings were recorded at 12.4 million. The top ten filing countries globally represented 91% of all filings. Of those ten, only three showed declines. Germany and South Korea posted negligible declines while the Russian Federation posted a decline of more than 11%. According to the WIPO article, these significant and sustained filing increases are driving demand for even more IP tools. By extension, these authors also suggest an even greater need for sharing and promoting best practices in the IP space.
Current State
Data housed within the docket system of IP practitioners is filled with opportunities to prove your worth and ensure the well being of the company. It’s intended to be a central record of each IP asset under your management, whether you’re a corporate group or outside counsel (“OC”). A typical law firm or corporate portfolio can easily contain 10,000 records. When you consider an average number of fields at 20 per record, the total number of fields which must be perfectly correct and in synch at all times can top 200k. They must match with those at the respective patent office, all day, every day, 365 days a year. Let’s pause for a moment and think about that again. 200,000 matches are required. It is a monumental task and one that law firms and corporations face every day. A single error in a numeral, letter, misstatement of a name (i.e. Acme, Inc. v Acme LLC) or improperly recorded date exposes you to risk . . . risk that you’ll miss a deadline, expose yourself or your client to charges of infringement or any number of other potential pitfalls that can cost you millions.
Why this is a bigger challenge than in the past
Portfolios change hands much more frequently.
Clients are looking for OC that show the greatest compliance with their own internal guidelines, provide the best pricing and of course, the most synergy with the relationships they develop with the attorneys at the firm who work on their matters. This applies to rain-maker partners all the way to first year associates who comprise the whole team servicing the client. For both parties, the act of changing OC is not a simple one and the passing of the baton from one firm to another can set the stage for problems. This is all borne out by the fact that most firms now have staff dedicated to the sole task of new client/portfolio intake and preparing files for transfer to another firm when they lose the work. Taking in new work is extremely expensive for the receiving firm and generally not a cost passed onto the client. It is also extremely risky for both parties because the dataset must be transferred perfectly.
A portfolio that lives in multiple docket platforms is also a risk factor.
Law firms select their docket platforms for their own carefully considered reasons. When you go from one firm to another, it’s not likely to be an apples to apples comparison between the fields in the program you are leaving against the program you are joining / moving to. If data coming from one firm contains 12 fields, for example, and the firm receiving the work has 13 fields, 12 of which match and a 13th which the sending firm doesn’t track, how is that data captured and recorded? This is compounded by the fact that some fields that contain the same information are labeled differently.
How the docket program is staffed and by whom is an important consideration that can impose further risk.
Is the docket team centralized or geographically diverse? Are they “full service” or do certain individuals on the team handle only segments of the overall docket function? The latter is a more common scenario in today’s environment. Is some of the work outsourced? If yes, do they rely on the vendor’s docket program or does the vendor act as an extension of the on-site team and access records directly in the firm or corporate database?
Compliance with status check protocol and ensuring compliance protocols are in place must be considered.
What workflows have been designed to ensure that there is middle/senior level oversight? Every triggering activity must get attention consistently and promptly. Staff are under an enormous amount of pressure to keep up with ever-increasing workloads and they probably have significantly fewer peers in their workgroup than in the past. These are important mitigating factors that need to be acknowledged, but ultimately, status checks are not optional. For a variety of legitimate and understandable reasons, some firms mistakenly and/or unintentionally give the impression they are.
How recently the organization has migrated to a new docket platform is impactful in assessing risk.
Alternatively, when have they last upgraded versions within the same platform? What is their process for keeping up with country law updates and technology patches?
Background
In the 1980's and 90's, portfolios were simpler, smaller and less likely to be the monetized assets they are today. Clients, whether small entities or large behemoth corporations, were less sophisticated and demanding. They likely accepted the work as it was delivered to them by OC and it was virtually unheard of to develop an OC guideline program, as we frequently see today. There was the “firm way” of doing things, and it generally wasn't complicated by exception handling because “client A wants it this way and client B wants it that way”.
As recently as the early-mid 2000's, corporations selected OC (or multiples, depending on the size of the portfolio) and stayed with them indefinitely or at least for extended periods of time.
These engagements were personal, and were intended to be long term relationships. Corporate counsel would actively partner with OC to help solve issues that cropped up. With the great recession of 2008, the economy weakened, and a considerable amount of new pressure was put on corporate and OC budgets to ensure the best deals were being struck and that assets were monetized. The hunt was on for better, faster, cheaper.
Most corporations didn't have their own docket platform and if they did, it would be almost unheard of for them to require OC to docket in that platform.
It's common today for corporate counsel today ask OC to docket in their own corporate sponsored program. If the firm requires they themselves also keep and maintain their own docket program (as they should), it is a dual docket ecosystem that brings with it more complications in terms of staffing, as we'll discuss below.
Historically there were fewer choices in docket programs and there were only 2-3 major docket players in the IP space.
Many firms had “home grown” programs written by a whiz in their own IT department. There were no sophisticated or systematic means by which country law or IT bugs or enhancements were identified and handled.
Clients took the work as it was presented and there were less stringent requirements around reporting.
This relates to two subsets of data:
If the firm tracked a half dozen or fewer fields per record, this was acceptable and within the parameters of what peer- firms did. Most records didn't carry with them 12-15 or upwards of 18 fields per record and therefore the exposure to risk was proportionately reduced.
In-house lawyers generally didn't insist that work be done “their way”. Again, they accepted work as it was delivered and there was no expectation that OC operate as an in-house corporate team.
Docketing teams were generally staffed in a single geographical location.
Once the material was docketed, they processed paper records and routed them to the satellite offices for further handling. Because the pressure on budgets did not exist to the extent it does today, outsourced support services were a rarity.
We lived in a because I said so culture.
Status checks on the docket generally were triaged to be nearly as important as the daily “hard deadlines” that needed attending to. A delay of a day or two might have occurred but in general, they were handled promptly and consistently. They were viewed as the safety net for the record, the client and the firm. A three-way win that was not to be short-cut, under any circumstances.
Best Practices for Data Validation
Systematic, program-wide data scrubbing and hygiene is a cornerstone to minimizing risk. Every field in every record, on a periodic basis that is demonstrable and transparent to outside- clients and everyone within the organization.
This is achieved by loading data from the platform into an excel sheet and using companion or mirrored cells where data is loaded from the source.
This is done by pulling data from the local patent office electronically, by a predetermined script.
In jurisdictions where data is not available electronically, assistance from a foreign agent will be required.
They will need to go to the local patent office and retrieve data manually, where it is then loaded into the document.
Ranking errors as critical or non-critical is the next step.
This can be subjective in nature and to combat that, the responsible working group must develop a well thought out and consistently applied approach to how to address errors. A thorough understanding of how “the firm” does things is essential. For example:
As an organization if you don't calculate and provide expiration dates, discrepancies in those fields would not be addressed. If a client requires this, the group can calculate and run on-demand reports for their use, as needed.
In non-US jurisdictions, a matter may be marked as “validated” while organization records (at least in the US) more likely mark them as “registered”. These are accepted distinctions in the labeling of (as opposed to the status of) the case, therefore discrepancies in those fields would not be addressed.
Assignment to and oversight of the team who implements the parameters for addressing discrepancies is crucial.
Who will perform the work in a consistent fashion? Who will support the team, protect their time, ensure quality control protocols are followed and incremental deadlines for production are being met? Once results are in, time is of the essence in addressing discrepancies because there is a constant flow of new matters and data flowing into the system.
Marking records that have not been included in the project allows a final sweep to ensure completeness.
As mentioned in the bullet above, new matters flow into and out of the system and appropriate and consistent marking is required to truly complete the project as a whole.
Reduce risk to the organization.
You are the gatekeeper for the assets you’ve been charged with overseeing. Making sure every critical data and deadline are readily available is the first step in ensuring no misses. You don’t want an irrevocably lost IP asset on your watch.
Safeguard your reputation and that of the organization.
What you do matters. It matters to your own career and by extension as a representative of your organization. Clients chose to join you or leave you for a reason. They join you as a result of the reputation you and your organization have earned and demonstrate every day. They leave you for reasons that are clear to them but more importantly, they take with them their impression of you and your organization. They will share it with others.
An IP asset that experiences a “near miss” will have an impact on your reputation and your profits, even if it can be revived.
It's more than “just” the impact on your reputation but also includes the expense in investigating and fixing the error. This usually comes with a hefty fee from the local patent office and foreign agents assisting in the process. You must also consider the opportunity cost for more productive and profitable work you could have been attending to.
Internal and external clients will feel a sense of ownership and service from your organization engaging in a data validation project.
It says, “we take this seriously”. Clients will feel an increased sense of confidence when they know this is important to you. If you're on the corporate side, you should expect this type of exercise to be performed periodically by your own OC or even better, initiated by your organization.
Retaining good clients is more profitable than chasing new prospects.
For both parties, the churn associated with the revolving door of coming and going is expensive. We mention above that firms now have dedicated staff to handle this workflow. You'll never eliminate it entirely and not every aspect of client level decisions to join you or leave you are under your control. But what you can control, you should, and manage it responsibly and consistently across the organization.
Your liability carrier will be very happy with you.
Some clients report discounted rates and it is entirely conceivable that you may be able to negotiate lower deductibles as a result of performing this type of project. Others say that they are generally looked at more favorably when an event giving rise to a claim or potential claim needs to be brought to their career's attention. There is an increased sense of partnership when it comes time to solve a sticky problem.
Money not going out is the same as money coming in.
Each of the items in this category come with a hard cost and an opportunity cost. Keeping a clean and regularly maintained dataset is one of the best ways to avoid bigger and more costly problems.
Take A Sample
So, what will you do this year to ensure a clean and complete dataset to drive optimal performance for your organization? Hopefully this white paper has inspired you to take some action, embrace the concept and kick off the project.
If you're still not convinced, take a sample of your data to gauge overall error rates.
Gather from both patent and trademark, US and non-US cases as well as portfolios that have lived in your docket program for long and short periods of time. A broad cross section of a variety of cases will provide the best measure of the overall health of your docket ecosystem. Take the error rate you discover and extrapolate that by the number of matters in your system.
This sampling will tell you how your system is functioning and if optimization steps are needed. You and your organization will benefit greatly from putting the health of your docket ecosystem at the top of your resolutions for 2019.
