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IP Practice Management

The pressure has never been greater on IP prosecution - deliver superior quality at a competitive price within increasingly aggressive timeframes. Clients have portable portfolios – as do the partners who manage them – and the challenge is to provide the most compelling offering and draw additional portfolio elements from other firms through superior IP advisory work. From our desk, there are three cornerstones of successful IP practice management:

Operational efficiency: separating legal practice from legal delivery ensures that the right people are doing the right work

Delivering superior client service: crafting strong defensible patents and trademarks for the world’s most successful corporations and keep them apprised of continued progress

Risk management: protecting patents and trademarks through docketing diligence to ensure the continued success of law firms and their clients

Operational Efficiency

Our Approach

IP practice management is composed of streamlined processes, talented people, and innovative technology. The trick is to ensure that the right people are completing the right work at the right time.

On-site Analysis

We have conducted on-site analyses to identify different areas where organizations can become more efficient, improve client service, and manage risk appropriately. Ultimately we provide a set of recommendations for improvement across the categories of process, people, and technology, based upon our extensive experience and expertise.

Right people, right task

Secretaries should not be writing patent applications, and lawyers should not be downloading Office Actions from the USPTO. We can help define optimal workflows, identifying tasks best suited for different resources (and billing rates) and automation.

USPTO download integration

Some tasks are safer when automated. A 2005 human error study found that complicated non-routine tasks resulted in 1 error in 10. Ten percent is an uncomfortably high error rate. Automating USPTO downloading is more accurate, timelier, and more reliable. Furthermore, we can process the documents automatically – notifying participating resources by email, inserting documents in document management system, and providing the docketing team with key information to begin their process.

Paperless (or ‘paper-lite’) world

We’ve aggregated the necessary information into a single dashboard, from documents to critical dates to financials. By moving to a paperless file, the benefits range from portability of work (across physical locations) to cost savings on less office/storage space. Paperless makes sense for the ever-more-virtual cost-conscious law firm of the twenty-first century.

Email intake

Email has become the new untamed beast of content. With every notification potentially containing time-sensitive information, automation proves to be the best partner of reliability and consistency. We provide tools for automated profiling to ensure that the right information is available at the right time to the right people.

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Delivering superior client service

Our Approach

Successfully inventive corporations submit hundreds of applications per year as a matter of competitive course. IP prosecution becomes a collaborative process, as corporations evaluate and manage a consistent flow of new submissions. Clients demand real-time information regarding prosecution progress, and keeping up with that expectation can be a constant distraction from the practice of law. Lawyers should focus on value-added conversations and let technology take care of the information updates.

Client extranets

With the increased sophistication of corporate legal departments, critical information has become essential for their portfolio management and monitoring. The volume and consistent need for information is best suited for an automatically updating extranet site, with the proper security controls in-place to ensure only authorized individuals can access it.

Client reporting

While most clients prefer to check on portfolio status through their extranets, others want to receive immediate notifications when updates are posted by the USPTO. We can automate this process, reducing the risk of forgetting to send, and ensuring reliability and predictability.

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Risk management

Our Approach

Protecting a client’s IP investment is the foundation for a mutually trusting relationship, whether it’s creating defensible patents to meeting non-recoverable dates that competitors are diligently monitoring. There is also the risk/reward analysis of continued investment on an application that is generating too many non-final actions.


Effective risk management requires assessment, identification, remediation, and ongoing review. The first step to proactive risk management is understanding data and trends. Where is the organization most susceptible to risk, whether it’s paying avoidable extension fees or potentially driving away a client? Are there non-intuitive trends where minor mis-steps – such as absorbed foreign agent invoices – where the problem is actually more significant than intuitively understood? Awareness – and active monitoring - is essential for successful risk management.

Separating client dates from statutory dates: soft docket

Comingling of statutory and non-statutory (i.e. client-dictated) deadlines can result in confusion or, worst case, missed non-recoverable deadlines. Docketing systems are designed to manage critical dates, and they can be lost in the growing volume of client commitment dates. Through management of the ‘soft docket’ in a separate system, firms can establish automated client-specific workflows to ensure compliance with client instructions (a/k/a Outside Counsel Guidelines). Processes dependent upon sticky notes or institutional memory are risky. Technology can reduce the risk of a costly mistake.

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