Wednesday, September 14, 2011

Going Cloud

Anaqua recently launched a new cloud-based IP management solution for small trademark and/or patent portfolios – ANAQUA Element. What are the benefits of going cloud? What are the issues to consider? Here is a quick overview of the topics to think about before going cloud.
  1. Reduced Costs. Cloud solutions have predictable, visible time-based subscription prices. There are no other internal costs or dependencies. No new systems to buy, configure and manage; no IT admin costs for backups and updates; no network and security infrastructure to manage. Of course, your IT organization might not be set up to have these costs hit your budget directly, but the costs are real and will impact the decision and the timing of getting a new IP system up and running. Going cloud avoids all these internal cost and resource issues.
  2. Secure Access Anywhere Anytime. Most IP systems provide web access these days, but if your system is behind your corporate firewall, you may still face complicated VPN and other secure access requirements to access the system. If you are trying to implement collaboration with external parties such as outside counsel, this can be even more challenging for your IT organization. Larger companies are often comfortable with extranet setups but smaller companies may lack the confidence in their security management. A cloud-based provider handles all these security considerations and gives you much more flexibility for collaboration with all stakeholders.

    What about a law firm’s obligations on client confidentiality for electronic records? A number of US state bar associations have studied this question. Their recommendation is that a law firm should perform appropriate due diligence into the cloud provider’s security infrastructure and that this fulfills their obligations. They recognize that the cloud will have better security that all but the most sophisticated firms.
  3. Better Support Options. The usual support option for a business user of an application installed in-house is to call IT. For most organizations, IP is a small component of the legal department which is itself a small fraction of IT’s responsibilities. This makes it hard for IT to maintain sufficient knowledge of the application and the IP team’s usage to be a useful support resource. This causes frustrations all round. Cloud providers know their application and understand what the users are trying to accomplish. They can respond much more effectively. In addition, cloud providers often offer more choice of unbundled support options that can be more cost-effective for the user. Pay-per-incident or per-support-hour options give the flexibility to tailor support costs as the users move up the experience curve with the system.

Going cloud is an attractive option for a growing range of business operations, including IAM. We’re interested in your experiences and happy to answer your questions. Please contact me at

Thursday, July 28, 2011

Rating inventions and patents

We constantly rate things. A motion picture rating system is designated to classify films with regard to suitability for audiences in terms of issues such as sex, violence, substance abuse, profanity, impudence or other types of mature content. A credit rating estimates the credit worthiness of an individual, corporation, or even a country. It is an evaluation made by credit bureaus of a borrower’s overall credit history. A rating is the evaluation or assessment of something, in terms of quality (as with a critic rating a novel), quantity (as with an athlete being rated by his or her statistics), or some combination of both.

Rating inventions, patent applications and granted patents

This concept of rating also can be applied in the world of intellectual property, and specifically to inventions, patent applications and granted patents. Intellectual property rights are valuable assets for any business, possibly among the most important that it possesses. It is therefore imperative that the relative importance of each and every case is known. This should not be a surprise to anyone involved with intellectual property, but still there are many organisations who have not embraced this concept and who do not rate their cases, thus in essence treating all their cases as being of equal importance.

The very nature of innovation means that inventions can vary from incremental through to radical, can relate to products, services, process or business models, and can refer not just to that ‘what’, but also to the ‘who’, ‘how’ and ‘where’. The innovation process involves ambiguity, controversy and non-linearity, and this is also reflected in inventiveness, a subset of innovation. What is the importance of each invention is a crucial question to answer.

The sheer volume of patents alone means that a rating scheme should add considerable value. According to the WIPO Indicators Report published in 2010, but based on 2008 data, approximately 1.91 million patent applications were filed across the world in 2008. There was an estimated 6..7 million patents in force across the world at that time, while the the total number of potentially pending applications across the world stood at 5.94 million. Although these are global numbers, it is not uncommon for many large corporations to have tens of thousands of patents in their own patent portfolios.

The diversity of such IP, both in terms of its maturity, its geographical coverage as well as the applicable technology again means that a rating scheme should bring benefits. That WIPO reports highlights the diversity of the patent applications across such fields as computer technology, electrical machinery, telecommunications, life sciences including analysis of biological materials and biotechnology, medical technology and pharmaceuticals, optics and semiconductors plus environment-related technologies. Patenting can be expensive, therefore, costs must be weighed carefully and managed well. Cost management involves the planning, coordination, control and reporting of all cost-related aspects. One should identify all costs and make informed choices about options that will deliver best value for money, but knowing the importance of each case can help greatly when prioritising.

Patents adds value in multiple ways from providing freedom of action, protecting product differentiation, generating revenue, granting business influence, enabling a technology, bringing cost competitiveness, supporting technology out-licensing through to providing positive image. Just how much value each case brings can be reflected in its rating.

Examples of schemes in use by companies

Based on benchmark data, there is no ‘one size fits all’ when it comes to rating schemes in use across organisations and corporations. Some opt for a very simple two level scheme marking cases as either strategic or tactical or even as ‘in use’ or ‘not in use’. Others have designed and implemented more complex schemes for example using a scale from 1 to 5, with one being the least important and five the most important.

Is the invention to be implemented in ‘our own’ products or services? Does the case offer licensing opportunities? Is the invention likely to be implemented by 3rd parties? Does the case offer some control point over some technology of interest to the industry? Does the invention relate to some unique selling feature or function of ‘our’ product(s) or service(s)? Has the invention been submitted and adopted by some Standards Setting Organisation, and thus qualify as ‘essential IP’? Does the case align well with ‘our’ key products and/or key 3rd party agreements or contracts? What is the possible use of the invention in the future, particularly if it is links to some fundamental research? These are just some of the questions which may be asked in order to rate a case and assign it its score or level within the rating scheme.

Rating a case over time

When should a case be first rated, and when should this rating be reviewed again, and possibly be updated? Benchmark data suggests that it is best to first rate a case when it is first reviewed at a formal patent board or patent committee meeting when the decision is taken to file a patent application.

This rating should however be reviewed and updated as necessary at all key milestones in the patent processes, for example when any ‘office actions’ are received from the Patent Examiner, when the case is filed in foreign jurisdictions, when the patent application is published at eighteen months, when the case is granted, if and when any objections are raised and when any annuity / renewal payments are due. By creating and implementing a process by which the rating of a case is reviewed and updated if necessary at all key milestones, this compels the question “how importance is this case now” to be answered.

The fact that technology changes, companies change, and industries change over time is one key argument to justify why the rating of cases should be reviewed and updated if necessary at key dates along the patenting process.

How it impacts the key patent processes

Having a rating scheme in place impacts all of the key processes …
  • invention handling
  • the patent board or committee stage where inventions are reviewed and decisions taken as to whether to file a patent application or not
  • the patent application process from first filing through to grant
  • foreign filing
  • patent maintenance
  • patent portfolio management
Different technology areas may have different priorities based on the technology and business strategy of the company. The maturity of the invention may prompt some delay in the process. Certain type cases may provide options for extra divisional filings.

Portfolio management it may be seen as that process to bring alignment of IP with the business, to help gain a deep understanding of what IP you have, and do not have, and to provide guidance on what actions to take. It is basically a means to link and synchronise all of your IP activities together. The rating of cases is critical to this process. The rating of cases can actually be utilised to help run this particular process in a much more efficient and effective manner.

Best practices

The rating scheme should be formally documented and made available to the key stakeholders in the invention handling and patent process. It is important that whatever rating scheme is designed and implemented, that it is maintained in a consistent manner over some period of time. Constant changes to the actual rating scheme should be avoided.

The rating of cases should be recorded into the IP data management system, and the associated data field(s) should be handled with the same level of professionalism as any of the other key data fields supporting the key patenting processes.

Transparency is crucial in terms of qualification of the rating inputs, assumptions, risks, sensitivity analysis, and disclosure. If a rating is repeated within a very short period of time, it should reliably give a comparable and reconcilable result. The individual giving the rating should conduct the valuation free from any form of biased judgment. Any changes to the rating of a particular case should be recorded, indicating the new rating as well as information on who made the change as well as their rationale for making the change together with any supporting material.

Patent classifications systems

Patent classification is a system for organising all patent documents and many other technical documents into relatively small collections based on common subject matter. Each subject matter division includes a major component called a class and a minor component called a subclass. A class generally delineates one technology from another. Subclasses delineate processes, structural features, and functional features of the subject matter encompassed within the scope of a class. Every class has a unique alphanumeric identifier, as do most subclasses. A Patent Classification is a code which provides a method for categorizing the invention.

These classification systems should not be confused with rating schemes. Rating schemes provide a means to rate the importance or value of the case, whereas classification schemes provide a means to identify the technology of the case.

Final thoughts

The importance of intangible assets is growing, often equaling or surpassing the value of physical assets for a company. The state of the intellectual property of a company determines their share and corresponding influence on the market. The size and quality of a company’s intellectual property portfolio will have a direct impact on several factors, such as the reputation of the company, the level of returns on investments and their access to the market, amongst others. The way a company is valued has also changed considerably. It is therefore imperative that the associated rating of cases is also treated with the respect that it deserves.

This post was written by Donal O'Connell, former VP of R&D and Director of IP at Nokia. He is currently Managing Director at Chawton Innovation Services.  

Thursday, June 9, 2011

Trademark Docketing Software – a reflection on INTA 2011

San Francisco weather was mostly cool and rainy for this year’s annual INTA conference, but this did not dampen the usual business and social activities. As an exhibitor, we had more booth visitors than ever before and many more pre-scheduled meetings than in previous years.

What was noticeable was the increased appetite for change – more companies and law firms are looking to replace their traditional trademark docketing systems. INTA is an opportunity to explore the IP systems that are on display and talk to peers about their experiences with new systems. In past years, exploratory conversations were often shadowed by the fear of change and organizational inertia. This year seemed different.

For companies, they know what is possible, they have seen their competitors move forward and they are beyond frustrated with their existing systems. They want paperless, electronic processes, collaboration with their internal clients and outside firms and easy browser access for their team. Most of all, they want to be able to get information out of their system when they need it - an apparently simple request that remains the number one daily pain point for almost every IP professional.

Law firms see continued pressure on costs and risk reduction but also new competitive demands for online client communication and services. Clients are pressing firms to provide online access to information and online requests for legal services to match the expectations set by their corporate and social web interactions. As a new generation of partners rises to the top, there is new thinking about the infrastructure needed for IP practice management. Their old trademark docketing software is not going to cut it.

We had many such discussions at the conference and look forward to continuing the dialog. To join the conversation, please contact me at or join our LinkedIn group by clicking here.

Wednesday, May 11, 2011

Cloud-based IP management for smaller portfolios - ANAQUA Element

INTA is happening next week. (The International Trademark Association’s annual conference, May 15-18 in San Francisco). It is one of the largest IP conferences and certainly the most global with law firm and corporate IP professionals from most of the world’s countries representing small and large organizations. It’s a great way for vendors to meet existing clients and make contact with new companies and firms. In essence, Anaqua’s strategy has been to consistently expand the number of INTA attendees we can say ‘Yes’ to when asked if we have an IAM solution to meet their needs and budget.
In our early years the focus was on large enterprise clients like Microsoft and Coca Cola and the challenges of portfolio management, web-based global collaboration and paperless, electronic operations. We had no solution for smaller companies or law firms so we had to say ‘No’ to a lot of INTA attendees.

For INTA 2009, we had introduced ANAQUA Express in 2008 to provide out of the box IAM best practices for smaller corporate IP teams. Instead of the 4-6 month ANAQUA Enterprise implementations needed for larger companies, we developed a 6-week Express StartUp package that minimized the impact on the client’s IP staff as well as costing a lot less. That meant a lot more yesses in our INTA conversations with small and mid-sized companies as well as large companies with small portfolios.

For years we have had dozens of law firms come up to us at INTA and tell us they were using ANAQUA daily in their work for clients with ANAQUA, sometimes 3 or 4 different ANAQUA clients. They liked it a lot – could they get ANAQUA for their own internal use? In 2010 we were finally able to say ‘Yes’ when we launched ANAQUA Essential – a version of ANAQUA configured for law firm IP practice management. Maschoff, Gilmore & Israelsen in Utah became our first ANAQUA Essential client.

This year we are announcing ANAQUA Element, a cloud-based, quick start IP management solution for companies with smaller portfolios. ANAQUA Element for Trademarks is available immediately and a solution for Inventions and Patents will be available later this year. It is priced per person per month and with pre-configured roles and workflows and powerful upload tools, users can be up and running in a few days. That will mean a lot more ‘Yes’ answers at this year’s INTA.
So now we have expanded the core ANAQUA IAM product to four separate solutions, all using the same underlying technology, delivering the power of ANAQUA configured for specific categories of clients. Is there anyone we will still be saying ‘No’ to at INTA? Well, we do not yet have a solution for small law firms and solo practitioners, but stay tuned…

For more information on ANAQUA Element or any of the ANAQUA IAM solutions, contact us at or email me at

Tuesday, April 5, 2011

IP Maintenance Services from Anaqua

Anaqua and SGA² joined together last year because Anaqua’s corporate clients told us their current IP maintenance services were one of the biggest opportunities for improvement in their IP operations. SGA² has been providing highly-rated, cost effective IP maintenance services to clients for more than 15 years and we are now also providing these maintenance services as ANAQUA Services.

Why were our software clients dissatisfied with their existing annuity providers? Different clients working with a variety of providers had different complaints, but there were three main issues:
  1. Poor responsiveness in client support: frustrations in getting questions answered and issues resolved.
  2. Pricing concerns: primarily a lack of transparency over agent fees, exchange rates and ‘special’ charges – what they were paying seemed higher than anticipated and getting clear answers was harder than it should have been.
  3. Inflexibility: documents, invoices and reports were hard to understand and this added real internal costs to their maintenance process. Providers were unwilling to change or adjust to meet their needs, say, for invoices showing costs by business unit.
With solutions to these problems at the top of our list, we looked at different approaches for Anaqua to provide better maintenance services. SGA² had built its business with industrial-strength business processes, advanced technology that made it possible to accommodate individual client requirements and a commitment to client support. It was a great match and the deal was done.

If you’re experiencing similar problems and would like to learn more about ANAQUA Services, let me know at or go to

Thursday, January 27, 2011

Law Firm Docketing Software – then and now

Law Firms have traditionally referred to their IP management software as “docketing software”, reflecting the way they have used their IP system. Typically, their traditional client-server system is used only by the paralegals and administrators. It provides a database for IP matters with data entry and reminders for deadlines. The users maintain tight control over access to the system to avoid data quality problems and the risk of missing deadlines.

Today’s web-based IP software solutions can do a lot more. They can provide electronic, paperless operations with built-in document and email management, sophisticated online query and advanced reporting. Corporate IAM systems have evolved to support key user groups outside the docketing team such as R&D managers, internal business clients and external service providers, using role-based security to define appropriate access rights. Modern workflow goes beyond country rules and date reminders to support configurable internal IP business processes.

Increasingly, law firms are looking at how they can take advantage of these developments to upgrade their IP systems infrastructure to reduce risk, improve internal productivity and provide a new generation of online client services. Workflow can be configured to implement firm policies and procedures. Online collaboration not only improves internal communication within and between offices but can also be used with foreign associates and other external players.

Some of the more visionary firms have exciting ideas for online client services. Going beyond online client access to status and portfolio reports, these firms want to provide clients with new online opportunities to initiate cases with a Client Portal. New requests for trademark searches, patent drafting or license agreements can be made using configurable web forms. Case records can be generated automatically and tasks assigned to initiate the work with an acknowledgement of the request via email or a status update on the client portal. What if clients could also report suspected infringements they’ve seen in the marketplace? More and more of your firm’s clients expect to be able to do business with their law firm using online channels.

ANAQUA Essential, our new version of ANAQUA for law firms is designed to deliver these new options. To learn more contact me –