The intellectual property (IP) industry is growing, as is the need to manage the huge volume of deadlines associated with protecting IP. Newer IP docketing providers have entered the market, providing those responsible for evaluating IP docketing systems with exciting new options.
Interestingly, IP practice tends to encompass areas of practice that substantially differ from each other. The same is true as you look at IP docketing systems. Patent and trademark professionals have traditionally been required to use the same docketing software, leading to compromises that result in neither getting the tools they need: one-size-fits-all tends to actually fit none.
Notwithstanding (and perhaps as a result of) the impacts of the pandemic, the demand for IP legal services has continued to grow in the past year, and the number of new IP filings in most jurisdictions has increased, bringing the total number of active global IP filings to over 60 million. Given the number of active IP filings, it’s mission critical to have the right IP docketing system in place for each part of the practice.
Earlier this month, this article by Stacy Zinken, Alt Legal’s VP of Marketing, broadly outlined what to consider when deciding between all-in-one and best-in-class legal technology tools: cost, business goals, customer support, and the software’s functionality and ease of use. This analysis is particularly relevant for intellectual property professionals who have to choose between using an all-in-one IP docketing system for both patents and trademarks as opposed to a specialized system for each.
First-generation IP docketing systems were developed with an emphasis on patents. Computer Packages Inc. claims to have developed the very first patent management system in 1968. As competing IP management systems entered the market, they continued to adopt a patents-first approach. Whether it’s a function of aggregate legal spend or of maintaining a historical trend, the majority of IP docketing systems today are still patent-centric: systems’ functionality, automation, and data fields are exclusively or at least primarily tailored to the needs of patent professionals.
As more trademark-focused docketing systems have emerged in recent years, so has the opportunity for law firms to reevaluate which system is best for their IP docketing needs. Do the added benefits of a best-in-class solution outweigh the costs of not having an all-in-one system? Ultimately, the answer is different for each firm and each situation. Below are some factors to consider when making the decision.
It’s natural to assume that having two different software solutions would be more expensive, but that’s not always the case. From a pure dollar perspective, it may actually be less expensive to have two distinct systems. Generally, patent-focused docketing systems can be costlier as a result of the intricacies of patent prosecution and the potentially higher aggregate legal spend.
Many IP docketing systems are priced (either partially or entirely) based on the number of docketed matters. Using this pricing model, if a firm has 2,000 patents docketed and 8,000 trademarks docketed, the cost would be based on 10,000 total docketed matters. In this scenario, a firm would pay for the same number of matters regardless of whether it has an all-in-one system or two best-in-class platforms, and the firm may save with a lower priced trademark docketing system.
Ultimately, the question is: what is the composition of your IP portfolio? Mostly patents? Mostly trademarks? If both patents and trademarks are equal in volume, best-in-class technology will likely provide the best ROI due to the added efficiency of having specialized systems that provide greater functionality and automation for each of the two distinct practice areas. If the vast majority of the practice is trademarks, then best-of-class trademark docketing will likely be the best option and vice versa.
Ease-of-Use and Training
Successful adoption of and engagement with technology relies heavily on users being able and wanting to use the software. How steep is the learning curve? Will the platform be easy to navigate? These factors relate directly to how much time, effort, and money will be needed both to onboard new users and to ensure the firm has someone who is able to cover for a primary user. It’s not uncommon for firms to consolidate the number of platforms simply to reduce training to fewer systems.
In many IP practices, there is one person responsible for managing both the patent and the trademark dockets, and having two different docketing systems has historically been a barrier to implementing best-in-class systems. In the earlier days of legal technology, or even until the last few years, this was a likely scenario, as docketing systems have traditionally been complicated and have required a dedicated individual to manage the system and train colleagues to use it. Considering two systems in that scenario would have doubled the firm’s spend, making it a non-starter.
Legal technology has gone through a similar consumerization process to that of other business technology: it has become more modern, more intuitive, and easier to use. Technology providers have become more specialized, with a primary focus on either trademarks or patents. Lawyers wanting to understand their dockets and serve their clients with updates and reports have started to log in and directly interact with docketing systems. Vendors recognize this trend and have started to make systems more intuitive for the average user. Many forward-thinking vendors provide unlimited training to make it as easy as possible for firms to buy, adopt, and engage with the software.
In evaluating the ease-of-use of a particular system and the training needed to utilize it, it’s worth considering the extent to which all stakeholders are able to interact with the current docketing system and whether they are able to be as efficient as possible. Would there be cost savings or other benefits if senior stakeholders could directly engage with the system to retrieve information? Would this reduce some of the burden of the docketing manager or paralegal who could use the time savings on other practice needs or billable time?
Support and Implementation
Successful adoption of and engagement with technology also relies heavily on the support the vendor provides, both initially and on an ongoing basis. The need to migrate into two different docketing systems can seem daunting, and many organizations are justifiably reluctant to undertake a data migration. The data migration process can be burdensome, and with some vendors, it can take months to complete.
It doesn’t need to be so difficult. Technology-driven solutions, overseen by humans, make it possible for migrations to be successfully completed in as little as a week, with minimal effort by the firm itself. The process can be simplified even further if the platform is sufficiently automated for a specific area and draws on reliable data from IP offices themselves. When evaluating docketing systems, it’s important to consider the level of support, how and if migration is handled by the vendor, and whether there is a cost to these services.
Workflows and Automation
Although they are grouped together under the broad umbrella of intellectual property law, patent and trademark prosecution are two completely distinct practices (as any IP professional will tell you). One patent attorney even explicitly cautioned against “the pitfalls in trademark prosecution.”
On a basic level, trademark-focused docketing software provides trademark-specific nomenclature, rather than asking these professionals to settle for the adoption of patent-specific terms (e.g., some docketing systems refer to a trademark registration number as a patent number). More importantly, trademark- and patent-specific systems each have their own feature sets that provide automation that many all-in-one systems lack. For example, some patent-specific systems automatically generate invention disclosure statements, and some trademark-specific solutions automatically fill TEAS applications. Perhaps most beneficial is the superior automation that each specific system can provide by connecting to IP offices to retrieve data and calculate deadlines based on system-programmed rules.
At first glance, splitting your firm’s trademark and patent dockets into two systems may seem like a non-traditional solution, and it is. But with the availability of specialized tools and the competitiveness of the legal industry, firms that think outside the box to find the best solutions that create efficiencies and cost savings will differentiate themselves with clients. And these benefits will only get better as each specialized, best-in-class platform continues to evolve and build functionality specific to the practice area it was originally built to support.
About the Author
Nehal Madhani is the founder and CEO of Alt Legal, a company whose cloud-based IP docketing software helps thousands of legal professionals prepare and manage IP filings and deadlines daily. Before starting Alt Legal, Nehal was a practicing attorney at Kirkland & Ellis, LLP. He left his practice to teach himself programming and to start Alt Legal.