Software and Outsourced IP Services as Foundation for Growth

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When Michael Schwegman, Steven Lundberg and Warren Woessner, left a prominent Minneapolis IP attorney firm to establish their own firm in 1993, 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.

The Firm

Schwegman, Lundberg, & Woessner (SLW) developed a new IP attorney firm model in which obtaining strong patents became the sole focus. Today the firm provides patent preparation and prosecution services for emerging and established corporations and research institutions; currently representing 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.

Business Challenge

In its early days, SLW used an internal docketing system to manage its files. Information was stored electronically but the software was not as web-enabled as SLW needed it to be; it had a view-only 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 grew substantially and needed a web-enabled software service that would allow them to streamline the workflow between offices and share core information between teams. Furthermore, they needed a system that would allow them to outsource key tasks and scale with their growth and changing needs on-demand.

Solution

Implementing a Scalable, Reliable, and Secure System
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. The software facilitates communication between departments and monitors workflow. All case information including history, documents, scanned copies of office actions and drafts, and invention disclosures are available from one secure, online and easy-to-use interface. The system also provides sophisticated tools to automate the creation of standard and custom forms and letters. In addition, users can generate reports; track and propagate references; view patent families; and create and track docket dates.

Designed by patent attorneys for patent attorneys, FoundationIP was first used by SLW. A key driver for their use of the software was that online access should be secure and reliable. That's why FoundationIP was built on an ASP model which allows organisations to outsource their IT needs to third party vendors, ensuring that the data is protected, upgrades are properly managed, and taking the pressure of IT management off the attorney firm.

FoundationIP has provided SLW with the flexibility to work remotely and it has also opened up relationships with their clients. The ethos of the firm is built around collaboration, but only with FoundationIP have they been able to provide clients with controlled access to up-to-date records online.

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FoundationIP directly addresses the growing need faced by IP attorney firms and orporations to reduce the overhead and inefficiencies inherent in the paper-based IP management processes.

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Outsourcing on Demand

FoundationIP has enabled SLW to grow geographically. But putting a big strong 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, such as patent proof reading, illustrations and docketing, to third-party specialists.

CPA's web-enabled software solution allows SLW to outsource their firm's day-to-day and case-by-case activities. '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,' says Steven. 'Electronic files have changed our industry significantly. It wasn't that long ago that the idea of accessing a file anytime from anywhere was not even a possibility for attorney firms. The file could only be at one person's desk at a time. Outsourcing would not exist withoutelectronic access, so FoundationIP is the enabler to the outsourcing business.' Thanks to FoundationIP, most of SLW's offices are now largely paperless, with all official records stored electronically online.

Large attorney firms such as SLW need to be able to downand 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.

Outsourcing these tasks enables SLW to control the scale of the work. Instead of full-time staff, it has access to flexible resources, which can be up-scaled at peak times or during large or one-off projects. 'CPA provides good quality searches at reasonable prices with a quick turnaround,' Steven says of CPA's searching services.

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FoundationIP has provided SLW with the flexibility to work remotely and it has also opened up relationships with their clients. The ethos of the firm is built around collaboration, but only with FoundationIP have they been able to provide clients with controlled access to up-to-date records online.

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Similarly for patent illustration: 'Often it's left to the last minute, so drawing is the last thing that gets finished. On top of that, there are often urgent deadlines to file so it's important to have a provider that can turn these things around pretty quickly.' Thanks to the time difference, CPA's team in India can finalise the work overnight and supply the finished product to US-based organisations the next morning.

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 managed properly,' explains Steven. 'We had a very reliable docketing team inhouse but lot of attorney firms don't which reinforces why using a dependable vendor-like CPA-to extend our team is extremely valuable. It's equivalent to having four people handling our docketing.'

Increasing Quality While Saving Money

Outsourcing can help attorney firms to minimise expenses and overheads, but the flexibility and scalability that the service provides also helps lower the cost of customer acquisition, as it allows attorney firms such as SLW to acquire new clients faster and more economically. And, from a competitive standpoint, the ability to offer lower pricing on some routine jobs that competitors can't is incredibly attractive to new clients. But it's not just about money.

One of the first outsourcing services that SLW used was CPA's patent proofreading service. Patent proofreading is a necessity, and for good reason: the claims need to be watertight, if they are to protect a company's market share. Before SLW outsourced this function, it used to ask its paralegals to proofread applications, but it wasn't an effective, reliable methodology, as there was no constant, dedicated employee to do it. Similarly, it was hard to find anyone who wanted to do it; it's a manual job that takes a lot of time and effort.

SLW found that the quality of the work improved as soon as it was outsourced to CPA. The staff in India are experts who are highly trained and committed to producing superior results. Outsourcing has truly allowed SLW to gain a competitive advantage by improving its service level whilst saving their organisation money.

Today, SLW has a dedicated team at CPA in India of 10 paralegals and five engineers. Moving forward, SLW will be equipped to meet their changing needs on demand with CPA's products and services.

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About CPA

With clients in over 100 countries, CPA is a leading provider of legal process outsourcing services and the world's top intellectual property (IP) management specialist. Founded in 1969, CPA provides lifecycle management services for intellectual property such as patent, design and trademark searching, watching, renewals, and portfolio strategy in over 181 jurisdictions. CPA is also a leader in the growing market for outsourced contract management and litigation support services, helping law firms and corporations to realize value by managing risk, cost and capacity. CPA employs over 1,000 people in 16 offices in 8 countries. www.cpaglobal.com

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