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Docketing Systems vs. IP Management Systems — A Pivotal Decision

The modern intellectual property professional faces an increasingly complex array of decisions. As the marketplace becomes more global, the business of managing intellectual property becomes tremendously more challenging.

Today, IP professionals must consider a far wider range of filing possibilities, undertake a more complex cost/benefit analysis in deciding where to file, and collaborate with colleagues worldwide in a global technology-driven economy that moves at breakneck innovative speed. Decisions abound. But amidst all the choices that must be made, there is one decision that is not only easy to make, but also can simplify many other decisions: the choice to use an IP management system such as Ipendo Platform™ rather than a simple docketing system.

The following example illustrates the difference. A talented inventor has just come up with the big idea. Consider for a moment how things might proceed in the company using only a docketing system, “OldCo,” as compared to a company using a true IP management system, “Innovation Corp.”

While the OldCo inventor searches for a paper invention disclosure form to fill out, the Innovation Corp inventor logs on to a secure Invention Disclosure Interface, provides specific information requested by her IP department and submits her invention electronically. While the OldCo inventor’s paper disclosure form languishes in interoffice mail, members of a Patent Review Committee for Innovation Corp receive an e-mail notification the instant the inventor’s electronic disclosure form is submitted.

While the OldCo invention disclosure form waits in a stack to be manually entered into a docketing system, the Innovation Corp. invention already has a docket number and a case-responsible attorney electronically assigned based on the company’s internal routines.

The OldCo inventor waits for further information about his invention from the IP department, while the Innovation Corp inventor logs on to the Information Disclosure Interface and attaches prior art documents to support the Patent Committee Review. When the OldCo invention disclosure is just getting photocopied to be distributed to a review committee, Innovation Corp has already reached a filing decision, selected a roster of countries after analyzing the cost of alternative filing strategies using forecasts provided in Ipendo Platform’s™ Forecast Lab, and electronically dispatched a filing order to outside counsel. In an IP world where a “first-to-file” legal framework predominates, every day counts.

By using an IP management system, Innovation Corp is already one step ahead, but the advantages don’t end with the patent filing. During prosecution, OldCo works with their outside counsel through a series of paper letters, e-mails and phone calls, and must lose internal efficiency matching papers and e-mails to physical files, and perhaps, if they are using one of the less limited docketing systems, attaching documents to case records. It is slow, cumbersome and inefficient work that causes a heavy administrative burden on a department.

Meanwhile, collaboration tools in Ipendo Platform™ allow Innovation Corp’s outside attorneys to gain secure electronic access to the case to update case details, assign action deadlines, report copies of official patent office documents, and send reporting letters and invoices, increasing the efficiency and reducing the cost of outside legal services. In-house attorneys can utilize e-mail notifications to receive an instant alert when a change or addition is made on a case to which they are assigned.

When a sudden financial challenge hits, and decisions must be made regarding which cases are most important to preserve, OldCo faces a massive project to photocopy invoices from physical files or request reports from their accounting department, and then spends many hours to make budget projections. Innovation Corp extracts reports of cost for the relevant cases and returns to the Ipendo Platform™ Forecast Lab to produce quick budget projections. Thanks to fast and efficient IP management tools, Innovation Corp reaches a sound decision one week faster — just in time to save a substantial sum in annuity payments on cases that have been earmarked to be abandoned.

Information is the primary capital of the 21st century, and few understand this better than IP professionals. To effectively manage the intellectual property that drives success in the modern industrial world, the exchange of information between key personnel must be swift and efficient. Amidst the sea of decisions the modern IP department faces, there are two that have the power to make an enormous difference: first, choosing an IP management system such as Ipendo Platform™ over a mere docketing system, and second, making a commitment to fully utilize the wide array of tools that a true IP management system provides.

Twenty-five years ago, the computer was a relatively new tool, not yet found in every office. In many places, the typewriter still reigned. Within ten years, nearly every office had a computer, and today, it is unthinkable to imagine an IP department without a computer on every desk. In a decade, it will be unthinkable to imagine an IP department without a true IP management system.

Today’s smartest and most innovative IP departments will absorb the lesson: don’t be late to the future.

 

By Michael Boyd