If paperwork relating to registration, renewal, litigation, surveillance, licensing and finance isn't properly managed, law firms and formalities departments risk damaging or losing their key corporate assets or those of their clients.

Creating a strategy for recording IP Rights and their associated deadlines is only the first part of the process; you also need to ensure that your chosen system is failsafe if you are to guarantee that rights won’t be affected even if your system goes down or your staff are suddenly unavailable.

According to Christine Uffindell, patent attorney at Canon Europe Ltd, this is actually more common than you might think. ‘Like many companies, we started by using Excel spreadsheets to record our IP Rights and associated tasks, but the company grew quickly which put a lot of pressure on that process,’ she explains. ‘It’s easy to think that you can work around such limitations, but, as we later found, it’s imperative to have systems in place to cope with the unexpected – those “what if ” scenarios that can often be overlooked. For example, what if your formalities department suddenly becomes depleted or unable to get to work?

‘That might sound ridiculous, but it happened to us quite recently. One of our team was on holiday, two were signed off work with swine flu and another one was called up for jury service for two-and-a-half weeks. Overnight, our formalities department dropped from five staff to one.

‘We coped,’ Uffindell adds, ‘but I wouldn’t want to do it again. And I know we wouldn’t have been able to cope had we still been using Excel spreadsheets to manage our rights. It was the ability to access our cases, case histories and deadlines in our software system that allowed us to weather the storm.’

Keeping it accurate

For Jonathan Spangler, vice president and chief patent counsel at medical technology company NuVasive Inc, there is another important challenge facing docketing departments: data accuracy. ‘When I joined NuVasive, I was its only in-house attorney,’ he says, ‘so I realised very early on that the biggest risk in the docketing process was me. I didn’t have the time to dedicate to data entry even if I wanted to, so the only viable solution was to find an IP software system and docketing service to take that responsibility on for me. Having a ready resource that’s always there to support me has taken a huge worry off my shoulders.’

Spangler acknowledges that the approach to docketing at NuVasive is a stark departure from how the process is generally organised in large law firms, but he argues that his ‘virtual office’ approach is a more cost-effective and secure system. For example, whereas law firms will employ a specialist formalities department to process correspondence from clients, attorneys and the patent and trademark offices, everything at NuVasive is managed online, via CPA Global’s FoundationIP.

‘All our IP data, docketing work and associated correspondence is stored in the system,’ he explains. ‘It’s available online, so not only can we access it from anywhere, but our external agents can also input updates on our behalf. That information is then used to auto-generate updates and reminders as we approach the actual due date, which provides a valuable safeguard for our rights.

‘It also means that our patent practitioners can focus on the substantive work needed to obtain the IP Rights in the first place, rather than expend their time ensuring that they are recorded correctly. And it helps with issues of attrition, as we don’t need to worry about hiring and retaining specialist staff, as that is provided as part of the docketing service.’

But what about control and trust, common fears that are voiced when it is suggested that third parties should be given absolute control over their docketing processes? ‘It’s never been an issue for us,’ says Spangler. ‘We’ve been working with CPA Global for eight years now, so we’ve overcome that “getting to know you” period and have confidence in its service delivery.

‘Of course, that didn’t happen overnight,’ he adds. ‘Initially, all IP-related correspondence would come through our office first. We’d receive the information, copy it and then forward it on to CPA Global for docketing. However, it quickly emerged that if there ever were breakdowns in the system, it was generally as a result of human error at our end. That’s why we decided to have all correspondence sent directly to FoundationIP.

‘Ultimately, it’s a question of business continuity,’ agrees Uffindell. ‘If you can manage it in-house, then you should continue to do so. But make sure you have a system that supports you should the worst occur.’

This article first appeared in IP Review, Issue 28

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