When Steven Lundberg, Michael Schwegman and Warren Woessner left a prominent Minneapolis IP law firm to establish their own firm in 1993, they had a clear vision. They recognised that conventional IP firms tended to concentrate significantly more resources on litigation than on patent prosecution. As a result, they felt many firms were hindering the ability of skilled patent prosecutors to do their best work, and therefore short-changing clients. They decided to do something about it.
SLW developed a new IP law firm model in which obtaining strong patents became the sole focus. SLW now provides patent preparation and prosecution services for emerging and established corporations and research institutions; currently, the firm represents a spectrum of Fortune 500 companies and major universities that are leaders in high technology. Core to SLW's success and the growth of its business is its use of FoundationIP.
The right system for change
In its early days, SLW used an internal docketing system to manage its files. All information was stored electronically, but the software was not as web-enabled as SLW needed it to be; it had a viewonly tool for online access, which meant that the firm could not update files on the move.
As a small business they were able to work around these shortfalls; however, by 1999, the firm needed a web-enabled software service that would allow them to streamline the workflow between offices and share core information between teams.
'Designed from its inception as a web-based system, FoundationIP directly addresses the growing need faced by IP attorney firms and corporations to reduce the overhead and inefficiencies inherent in the paper-based IP management processes,' says Steven. 'The software also provides sophisticated tools to automate the creation of standard and custom forms and letters, generate reports, track and propagate references, view patent families and create and track docket dates.'
FoundationIP has provided SLW with the flexibility to work at home and on the road, and it has also opened up their relationships with the clients. Thanks to FoundationIP, most of SLW's offices are now largely paperless, with all official records stored electronically online.
'FoundationIP directly addresses the growing need faced by IP attorney firms and corporations to reduce the overhead and inefficiencies inherent in the paper-based IP management processes.'-Steven Lundberg
The software also allows SLW to manage risk, particularly in the field of docketing: 'Because CPA manages all our docketing, we don't have to worry about being responsible for the staffing to make sure docketing is appropriate,' explains Steven. 'As a practical manner, we had a very reliable docketing team but a lot of law firms don't. They hire the wrong people or they find that an employee who's been reliable has gone off the track. Usually, there's no quality control, no doublecheck.'
Outsourcing on demand
FoundationIP has enabled the law firm to expand geographically. But putting in place a web-enabled system has not only been a strong foundation on which to build its business, it has also allowed SLW to outsource key tasks to third-party specialists.
'The main reason we outsource is because we can with the web-enabled software,' says Steven. 'In order to outsource, you need access to the latest files and you can’t do that if you're still dealing with paper files. We're all used to e-files now, but it wasn't that long ago that the idea of accessing a file anytime from anywhere was not even a possibility for law firms. The file could only be at one person's desk at a time. E filing changes everything. Outsourcing would not exist without e-access, so FoundationIP is the enabler to the outsourcing business.'
Large law firms such as SLW need to be able to down- and up-scale office space, in light of changing client and business needs – and they need to be able to do so, rapidly and with minimum expenditure. For example, they need to be able to call upon experts for specialised tasks, such as docketing, patent illustration and patent searching. How many companies have the volume of work needed to retain full-time staff to manage these tasks?
Outsourcing enables Schwegman to control the scale of the work. Instead of full-time staff, it has access to flexible staffing, which can be upscaled at peak times or during large or one-off projects. 'CPA provides good quality searches at reasonable prices with a quick turnaround,' says Steven of CPA Lacasse's searching services.
Similarly for patent illustration: 'Often it's left to the last minute, so drawing is the last thing that gets finished. In an environment where being first-tofile is imperative [such as the US], it's important to have a provider that can turn these things around pretty quickly.' Thanks to the time difference, CPA in India can finalise the work overnight and supply the finished product to the US the next morning.
Steven Lundberg is a registered patent attorney and a founding partner of Schwegman, Lundberg & Woessner
For more information on FoundationIP or CPA’s outsourcing services, visit www.cpaglobal.com
This article first appeared in IP Review, issue 23
