Thursday, June 12, 2008

Building a World Class Patent Prosecution Capability

Effective patent management operations require a proactive, holistic approach that coordinates all stages of the patent life cycle. While docketing applications are often considered the primary tool for managing prosecution activities, we find that many companies are frustrated by the limited capabilities of their existing systems; they require a more sophisticated set of tools that can increase the efficiency and quality of their prosecution work processes. Unfortunately for these companies the solution has been the heavy customization of off the shelf docketing products and custom built tools—solving some issues, while creating a whole new set of issues caused by a disjointed and difficult to manage IT environment.

In this edition of IAM Perspectives we review the core components of a more advanced system for managing all aspects of patent operations, in an integrated, unified IT environment that is both more efficient and easier to manage.

Docketing – Managing the Three Dimensions of Effective Docketing

The center point of the patent prosecution process is generally considered docketing. Docketing involves the capture of critical dates, managing the deadlines and assignments of tasks, and coordinating other activities related to the prosecution process. The key to a successful docketing function is the ability to efficiently and accurately capture the breadth of information that is received from the patent offices, outside counsel and foreign agents—and track the status and completion of all tasks in a manner that minimizes the risk of missed assignments.

In working with our clients, we have found that the biggest challenge facing an effective docketing system is the inability to address what we call the three dimension of docketing – the country laws, client-specific procedures and ad hoc task management. Docketing products have generally addressed one or two of these dimensions; however the lack of all three dimensions results in docketing inefficiency, and significant risk.

Anaqua has been purposefully designed to enable clients to address all three dimensions by providing a comprehensive docketing toolset. At the core is the proprietary Anaqua Law Engine. The Anaqua Law Engine provides the workflow, rules and notifications components. Clients are provided country law and industry best practice docketing procedures, as well as having the flexibility to easily define their own policies and procedures. Based on a powerful, yet easy to use “condition / action” model, Anaqua continuously monitors every aspect of the case, reacting to changes in status, upcoming due dates and other critical aspects of the docket.

In addition to the core Anaqua Law Engine, Anaqua provides docket entry quality control and data integrity controls, as well as the ability to compare internal docket data with patent office file wrapper data (e.g., USPTO private PAIR).

Diary Management – Calendaring and Tasks …And the Docket Report!

Closely associated with the core docketing functions, diary management is the process by which attorneys (both in-house counsel and outside counsel), paralegals and other professional staff, manage their day-to-day work. Generally the most important aspect of diary management is the flexibility to provide information in an easy to use format. The challenge is providing individualized diary information that meets the way each person works—either as an online calendar or a printable report.

Anaqua provides integrated calendaring capability that provides each user a personalized calendar of all assigned tasks, with a set of tools to manage status, completion, assignments and other aspects of their docket. Importantly, the calendaring features include the ability to manage multiple calendars simultaneously. For due dates, Anaqua provides notifications and alerting—directly tied to the docket workflow and rules engine—that can delivery automated messages via email, including to both in-house and outside counsel.

Another critical aspect of Anaqua’s diary management capabilities is reporting. Users are able to access standard “one click” diary reports directly from their home page, as well as access a complete library of reports including personal ad hoc and custom reports. Also popular is the use of automated “batch delivery” of reports which can be setup to provide reports on a defined schedule, directly to users, via email.

Record Creation – Managing Complex Patent Families

Managing the complete family of all related applications and patents is critical to effective portfolio management. As the complexity of both international filing strategy and patent procedures increases, the docketing function requires greater capabilities in how records are created. While other docketing systems allow simple family relationships to be entered or created, these generally lack the ability to build more complex associations between related patents which reflect the filing strategy and prosecution process.

Anaqua has addressed this increased complexity by building a number of features that provide greater capabilities in managing the record creation and family tracking process. Anaqua’s filing strategy tool allows clients to define standard filing plans (e.g., “filing tiers”), as well as construct specific filing plans based on a given invention’s requirements. Records can then be easily created with a “one click” create process that automatically copies data and structures the family relationships. Importantly, underlying convention or country specific filing rules are built in to the process.

For convention based filings (e.g., EP or PCT), Anaqua also provides an internationals creation and record management process. All related national stage cases can be easily viewed and tracked, and managed in a unified manner.

Other important capabilities include the ability to set multiple priority records, create links to associated applications, and to view the family tree diagram and navigate across the complete family through a single interface.

Electronic Document Management – Automating Prosecution and Going Paperless

Historically a paper-intensive process, the era of paperless patent prosecution is quickly becoming a core requirement of leading IP groups. The trend towards a fully electronic process is being driven by both organization structure—increasingly global—and changes within the patent offices—moving toward electronic filing and online case management.

While company policy may differ in regard to the need for certain hard copy records, most companies have embraced the paperless movement. Unfortunately, companies find their existing docketing systems were not designed for the paperless world, and they are forced to rely on simple shared file directories or separate document management systems that are disconnected from docketing.

Anaqua provides a full set of electronic document management features designed specifically to provide IP groups with a fully paperless work environment. Documents can be easily uploaded to records, as well as shared amongst related records (“one to many”), with the ability to both restrict access and lock records when checked-out. Teams are able to use Anaqua as a central repository to collaborate on documents throughout the prosecution process, including applications, office actions and other correspondences. Anaqua also provides automated templates to improve the efficiency of correspondences, as well as electronic filing packets which can be used with patent office e-business / e-filing programs.

In addition to documents, Anaqua also captures emails—both outgoing and incoming emails. These can include standard template emails created for specialized purposes, as well as attachments, URL record links and other automated merged data.

Prosecution Collaboration – Teaming with Outside Counsel

Outside counsel (and foreign associates or agents) are a critical member of the IP team. Historically the docketing process—and particularly the docketing systems—have been separate both in terms of organization and systems. This disconnection has largely been borne from process and technology limitations, rather than the lack of a value proposition. Accordingly, we see a high level of interest in having a more collaborative environment that allows direct sharing of prosecution tasks, documents and other prosecution related information.

Anaqua provides a platform that has been designed to enable outside counsel collaboration across all aspects of the prosecution process, providing a unified environment for companies and their outside counsel to work more efficiently and effectively. Starting with defined security, Anaqua allows access control at the record and functional level so that outside counsel can only view and work on their assigned cases. This allows outside counsel to use Anaqua’s docketing and prosecution function directly—entering dates, documents and other information right in to Anaqua.

For docketing tasks, Anaqua provides the unique capability to setup distinct outside counsel rule sets, which will assign and monitor the docket based on what has been defined for the law firm—distinct from in-house related tasks. The Anaqua Law Engine can assign tasks directly to outside counsel, including notifications and escalation rules to manage due dates and assignments.

Document collaboration—through electronic documents—is fully enabled in Anaqua. Outside counsel is able to access documents, upload documents and manage work product directly with the client, including the ability to lock records. Automated email messages can be sent to assigned resources when documents are added to the case.

For additional information, please contact Ralph Schroeder at or (617) 375-5808