For decades, corporate and law firm intellectual property departments have outsourced some or all of their docketing function to third-party vendors. As the IP landscape and client needs evolve, so do the operational requirements of IP groups. Therefore, many IP departments are re-evaluating their current docketing provider and looking for a new one, or exploring outsourcing for the first time.

Trexo Global’s team has helped scores of IP groups transition their docketing work, either from one vendor to another or helped IP groups move some or all docketing from in-house to a third party.

Here are some best practices that outline both models that IP groups should consider when moving from one vendor to another and implementing outsourcing for the first time.

• • Who owns your docketing manual?
    Most IP groups have complex workflows, configurations, and attorney-specific requirements. Any capable docketing provider should have those requirements built into a docketing manual that contains explicit details. No reliable vendor should rely on Post-it notes on their desktop to help them remember when a specific attorney needs customized instructions outside the norm.When an organization moves its docketing from vendor ABC to vendor XYZ, will vendor ABC cooperate and give their customer full access to their docketing manual? Vendor ABC should not “hold hostage” their customer’s workflows and refuse to share the docketing manual that has likely been developed & refined over the years. IP groups should ask their current and potential docketing vendors who own the docketing manual and if the vendor will share it if the relationship should end.

• • What is the vendor’s staff turnover rate?
    Most outsourced IP docketing is done out of India, where attrition rates average around 20% annually. Staff turnover leads to customer frustration in terms of losing institutional knowledge and knowing each customer’s unique needs, quirks, and personalities. What steps does your existing or potential docketing vendor take to manage attrition, and what is their average annual turnover rate?

• • What quality control steps does your vendor take?
    Even if your organization has been using Vendor ABC for years and they’ve never made a critical error, is there an unexpected landmine on the horizon? Maybe docketing is fine…. until it isn’t. Does your current or potential vendor have a 100% quality control check on everything that is docketed? Do they apply additional layers of people or technology to minimize the chances of errors? The most capable IP docketing providers not only have one team member docketing and a second reviewing their work but also add a 3rd layer of quality control. Check with your current and potential docketing vendors for details about what steps they take to minimize the chance of errors and if they take a “belt & suspenders” approach to quality control.

• • What IP Management Systems (IPMS) can your vendor work with?
    Many docketing vendors are part of IPMS companies and their experience skews toward their own company’s IPMS. Some IPMS companies prohibit other IP docketing vendors from accessing their systems at all. Even if your docketing vendor works well within your current IPMS, what would happen if you decided to change software in the future? Will your current docketing vendor be familiar with the new technology? Will they even be permitted to access the new IPMS? IP groups should look for vendors who are IPMS-agnostic, are familiar with all commercial IPMS, and can work in any system without prohibition by the IPMS vendor. Ask current and potential vendors to prove they have experience across multiple platforms; don’t just take their word for it.

• • What is the vendor’s core focus?
    Some IP vendors have a comprehensive suite of software & services, of which IP docketing is only one. Some vendors who provide IP docketing have larger business units that are not related to IP at all. When looking for docketing vendors, IP groups should aim for providers who live & breathe IP operations all day, every day. If the IP docketing vendor is more focused on other business units – which may be more profitable than docketing – that means more time, resources, and effort are put into different areas outside of IP docketing. This can lead to quality control issues and a lack of innovation.

There are plentiful benefits in outsourcing your IP docketing function. IP groups can increase the bandwidth of their current team by having an outsourced provider working alongside their in-house team. Hiring a vendor eliminates the need to find, hire, train, and retain new staff members. High-quality docketing vendors should be able to provide best practice recommendations on how your IP group may tweak its processes to be more efficient. Additionally, significant cost savings can be achieved. However, if your current or future IP docketing provider will not share your docketing manual, has high turnover, cuts corners on quality control, lacks the ability to docket into multiple IPMS, or is distracted by business units or solutions unrelated to docketing, outsourcing can pose risks that may cause long-term damage to your intellectual property rights.

Trexo Global has worked with scores of IP groups—ranging from large general practice firms to big corporations to large and small IP boutiques—to help them streamline and automate IP docketing. Contact us at info@trexoglobal.com to learn how we may be able to help your IP department.

To help examine IP cost control strategies through an operational lens, Prokurio contacted Trexo Global, the experts in IP operations, for their perspectives.

Chris Burger suggested strategies and approaches that we think you’ll find helpful when confronted with the challenges of prioritization and balancing the competing challenges of cost versus quality.

Lastly, if you have questions or would like operational assistance, we encourage you to reach out to Trexo Global at info@trexoglobal.com

Happy Reading!

Phil: Chris, when we talk to corporate IP groups, a constant theme is “Our budgets are under severe pressure.” While this theme is the same across groups, we find that approaches to dealing with budget pressures are all over the map. What are you hearing from your clients about controlling costs?

Chris: Great question, Phil. Cost pressure is certainly a constant theme among IP groups. That said, I find many corporate IP departments struggle with identifying how to reduce costs without sacrificing the quality or quantity of their IP and then deciding if they want to make a “big splash” with radical changes or smaller, less disruptive incremental changes. Unless there is a defined mandate to save X% on their budget, and X is a very high number, most corporate IP groups look for easier wins. Once the size & scope of the cost reduction goal has been identified, the next challenge for IP managers is deciding which tasks, processes, or roles should be streamlined or automated.

Phil: That’s interesting, Chris. I hadn’t really considered the motivations behind the “big splash” and incremental approach, but it all makes sense. It also leads me to a couple more questions. First, how do you see organizations prioritizing what should be streamlined or automated? Is it by savings, ease of implementation, or some other factor?

Chris: While every organization is somewhat different, there are typically common threads across IP groups. Most look for incremental wins, which include solutions that are easy to implement. Change management is a huge obstacle in any organization, so trying to overhaul massive enterprise-wide systems or processes is usually too complex for most organizations to effectively adopt. I would suggest companies refer to their network of peers or IP vendors who are thought of as thought leaders to help them identify which tasks may be “low-hanging fruit.”

Phil: We all know that focusing solely on costs can lead to disaster in IP. How does a group balance cost and quality?

Chris: It goes without saying that companies can’t sacrifice quality, especially with something as valuable as their IP. Ultimately, it comes down to companies being very selective about choosing the vendors with whom they decide to partner. Companies should consider several factors when evaluating external help.

• Does the vendor have actual hands-on IP expertise in the area they serve? Companies should look at vendors with extensive IP experiencewho can provide best practice recommendations. These recommendations should come from the vendor having actual IP experience coming from being in the trenches. For example, a vendor whose team members have been IP paralegals for decades are likely better able to provide real-world advice to companies looking to streamline paralegal tasks than a vendor whose team’s experience has been serving as a consultant.
• Does the vendor focus exclusively on IP – and not just focus on IP, but the specific niche aspect of IP they’re looking to address? For example, if a company wants to optimize its cost forecasting better, an IP vendor focusing on patent research or IP docketing systems may not be the best fit. Instead, companies should evaluate vendors that focus on cost forecasting.
• Does the vendor customize its solutions for each project? No two IP organizations are identical, so a cookie-cutter approach is likely unsuitable for most IP departments.

Phil:As you’ve mentioned earlier, change is difficult, and different organizations have different priorities and challenges – plus, everyone has a day job. With that in mind, how does an organization get started? In other words, what’s the first step an organization should take once they’ve identified a challenge they want to take on?

Chris:In my experience, there are several ways to get started.

First, talk to your IP network that works outside of your own company. This could be people you know very well or someone in your LinkedIn network whom you barely know. See how other companies have solved similar issues and leverage their experience to help shape your own path. If you’re unsure who can provide advice, post something on LinkedIn asking for assistance!

Second, seek vendor input. This can be tricky, as vendors obviously have a vested interest in selling you their own product. Look for vendors who have a deep IP background, heritage, and reputation for under promising & over-delivering. Since the IP industry is small, you’ll learn that some vendors have a great reputation for actually trying to help their customers solve their problems. In contrast, other vendors have a reputation for pushy sales. Engage the former and avoid the latter. Vendors who serve specialized markets like IP should be able to provide references that not only speak to the value of their solutions but also who can attest to how knowledgeable and helpful the vendor is in solving their customers’ challenges.

Third, attend industry conferences. This is usually a great opportunity to network with other IP professionals, learn what’s new in the industry, and discover how other organizations are solving problems similar to yours. The only downside to this approach is a shortage of IP conferences focusing on IP operations. Conferences such as AIPLA, IPO, INTA, etc, are fantastic, but sessions tend to focus on the legal side of IP instead of the administrative/operational side of it.

Phil:We’ll wrap it there, Chris – you’ve given us plenty to consider! From my notes, I’ve captured three takeaways:

1. An incremental approach will likely be the most successful.
2. Companies must be selective with vendors and do their homework to ensure quality.
3. Networking is a crucial tool that can help identify where to start and what to prioritize.

Nearly every law firm with an IP prosecution practice worries about the quality of the data in their IP docket. Most firms want to take extra steps to ensure their data is accurate, yet prior solutions were ineffective, riddled with false-negatives, time-consuming, or cost-prohibitive.

That is, until now. In this case, study, learn how Trexo Global’s Data Risk Manager technology has given Lathrop GPM better & faster access to accurate IP information while automating the double docketing process.

Forget diets, being better about cleaning the house, or promising to go to the gym more often. As IP professionals embark upon 2024, now is an ideal time to revisit several aspects of your organization’s IP department to ensure it is well run in 2024 and beyond. Trexo Global and Prokurio are pleased to announce our suggested New Year’s resolutions.

1. Do a quick profitability analysis of IP paralegals.

Few IP groups have the time & resources to do an exhaustive financial analysis of their IP paralegals. Instead, we suggest doing a rudimentary review to identify the least profitable tasks; the firm can then dive into those duties in greater detail to understand the true profitability (or lack thereof) and how to make that task more profitable for the firm. For example, consider the following scenario for a law firm: your paralegals cost $50 per hour in salary, they are supposed to bill at $200 per hour, and they spend six hours on an IDS. Ideally, they bill $1,200 for this and cost the firm $300 in salary. However, what if your clients only allow you to bill $250 per IDS? Your costs (without including any attorney time) are $300, which is a direct loss of $50 per IDS and does not account for the possibility that your paralegal could spend those six hours billing elsewhere. If you find yourself in such a situation, look for an alternative for how you’re managing IDSs!

2. Review Fixed Fee Agreements to make sure they are up to date and have been communicated internally

Outside Counsel Guidelines are standard these days, yet it isn’t unusual for a firm to have no idea what’s in their client’s guidelines – or even where they are. Take this New Year opportunity to organize your Outside Counsel Guidelines and ensure your team knows what is expected and allowed. This can save you tens of thousands of dollars in rejected and disputed invoices. Better yet, implement a system to track and manage your guidelines – it will pay for itself quickly.

3. Consider modular technology that solves specific IP problems vs. swapping out large, wholesale, enterprise-wide system changes.

Most IP groups realize they could leverage new technology to operate more efficiently. The challenge is that switching enterprise systems such as an IPMS or DMS – that are heavily integrated with other tools and intertwined in current workflows – is daunting. Therefore, we suggest IP groups instead consider looking at specific tasks within IP and evaluate technology that can solve those problems instead of upsetting the entire apple cart. Examples include Office Action Shell response, PTO document generation, IP cost forecasting, IDS management, and double-docketing.

4. Review and automate IP maintenance vendor and international associate invoice controls.

The days of simply forwarding an annuity provider or international associate’s invoice to a client are coming to an end. IP owners are using invoice control solutions to monitor and manage third-party costs and they expect their Outside Counsel to do the same. Furthermore, fixed fee agreements are beginning to extend to international associates, which forces firms to take a more active role in policing associate charges. Take the new year to evaluate your invoice controls and implement any quick wins you identify.

5. Perform a Health Check of IP administrative processes – whether through hiring a consultancy or networking with IP peers to understand best practices that may be applied to your firm.

Most firms suspect or know parts of their practice are inefficient. Take the time to identify the most impactful tasks if they were streamlined. Firms often turn to their network of peers to understand best practices or attend conferences such as the ALA IP Conference. Others have relied on IP operations experts – such as Trexo Global – who have experience working with hundreds of IP groups for expert advice on improving the entire end-to-end prosecution process or focusing on specific tasks that can be streamlined.

While January could be spent in overcrowded gyms alongside others focusing on their (likely short-lived) 2024 New Year’s Resolutions, Prokurio & Trexo are confident that our list will lead to long-lasting financial & operational efficiencies in your IP department. Happy New Year! To learn more, please email us at info@trexoglobal.com or hello@prokurio.com.

Effective from 1st November 2023, the EPC Rule 126(2), commonly referred to as “the ten-day rule,” has been abolished.

What was the rule and why the change?

The ten-day rule, Rule 126(2), previously stipulated that documents dispatched by the EPO were considered delivered ten days after the date indicated on the document. This allowed for a grace period of ten days to accommodate delivery time, which was added to the response deadlines for EPO documents.

The rationale behind discontinuing the ten-day rule lies in EPO’s shift towards a fully digital document delivery system. With this transition, the EPO has determined that the ten-day rule is no longer necessary. Consequently, starting 1st November 2023, the date printed on the document will be deemed the date of delivery, eliminating the ten-day grace period.

For EPO communications dated on or after 1st November 2023, the date on the document will be considered the official date of delivery. This change effectively ends the ten-day grace period. As an illustration, a communication dated 13 November with a four-month response period would now have a deadline of 13th March (instead of the previous calculation of 23rd March).

Safeguards in case of delay in delivery of the notification ?

In the event of a delay in the delivery of a notification, Contesting Receipt of Communications from the EPO comes as safeguard to Rule 126(2). If an addressee contests the delivery of a communication from the EPO, the EPO is obligated to prove the communication’s date of delivery. Failure to provide such proof results in the reissuance of the communication with a new date. Any deadlines set by the new communication begin on this new date, while deadlines associated with the undelivered communication are considered not to have commenced.

Simultaneously, Rule 131(2), has been updated as safeguard to Rule 126(2), commonly known “the seven-day rule”. Under this updated rule, if a communication is delivered within seven days of the date marked on it, no adjustments are made, and the response period starts on the noted date. However, if the EPO establishes a delivery delay of more than seven days, the response deadline is extended by the difference between the actual delivery date and the date on the communication, minus seven days.

Impact on Stakeholders

The impact of these changes on applicants, agents, and representatives includes both benefits and disadvantages. The benefits encompass a reduction in complexity regarding response deadlines and the removal of disparities between deadlines set by communications and other actions. On the downside, there is effectively a 10-day reduction in the time available to respond to EPO communications sent via post, potentially impacting shorter response times.

To navigate these changes, stakeholders are advised to ensure timely reporting of communication(s) from European representatives, allowing sufficient time to develop responses within the adjusted deadline. Applicants, agents, and representatives who follow the practice of calendaring the response dates with 10-days grace period should also update their docketing systems to reflect the new calculation for EPO notifications issued from 1st November 2023, onwards.

“By 2030, the 6G market is expected to reach a valuation of more than $40 billion. From 2023 to 2030, the projected compound annual growth rate (CAGR) is projected to reach 34.2%, suggesting a meteoric rise.

In this report, we explore what 6G technology is, why it’s essential, and how it’s poised to disrupt the communications industry. Additionally we analyze patent filing trends, geographic distribution, and major players in the 6G race

Intellectual property (IP) rights, and particularly patents, are often thought of as being associated with the latest and most advanced technologies. It is thus ironic that the registration and management of IP is dependent on the most ancient of information technologies: the document. Whether physical paper or digital, documents and good document management practices are critical to managing IP.
Documents, however, come with certain inherent challenges: human error, lack of transparency, and intentional fraud. In this blog post, we take a look at how a truly transformational technology, blockchain, can revolutionize the IP industry.

Blockchain in Time

In their influential 1991 paper “How to Time-stamp a Digital Paper”, computer scientists Stuart Haber and Wakefiled Scott Harnetta sought to answer what now seems an obvious and logical issue: how to certify when a document was created or last changed. Winning the Discover Award for computer science the following year, the relatively simple model they made became the basis for one of the most revolutionary developments in the world of finance, namely Bitcoin.

The abstract of their paper noted that the world was witnessing an increasing digitization of all forms of data, such as documents, pictures, videos etc. The challenge was developing a way to time-stamp the data to render it tamper-proof. The method, which later became known as blockchain, focused on decentralization, rendering the process free of a central, overarching control and developing unique algorithms called hash, which act as proof of authenticity.

Is it Worth ?

Super Bowl advertisements and their ability to influence buying decisions have been a subject of research for premier institutions. A paper published by Stanford observed that advertising during the Super Bowl helped in fostering positive associations between a brand and viewers. Mc Granaghan et.al (2016) provided an even more valuable insight who documented that both the number of viewers in a room and their attention increased during the commercial breaks. This is not surprising as the ads surrounding the Super Bowl have become an industry in itself, with many reports indicating that over 40% of Super Bowl viewers tune in to the commercials instead of the game. Of course, the emotional bond an ad can create between a consumer and a company influences decision-making more than anything. The real benefit of placing advertisements in the Super Bowl is generating Brand awareness.

As noted in an article by Nielsen, “After airing, Super Bowl ads typically reap the benefit of social media chatter and people engaging with the advertised brand. Many consumers also seek out ads they missed during the game, further increasing viewership.”

Understanding Blockchain

Unlike a traditional database that organizes data in a table, blockchain technology collects data in blocks. Simply put, a block can be seen as the receptacle of information with a finite capacity. Every time new data is entered into a computer system, it is stored in a block. Once the block is complete, it is linked by a chain with the next block, which becomes the destination for the next piece of information until full. The system is unique because each block is given a unique time stamp allowing users to identify the exact time when a particular data set is added to the block.

Safety

Blockchain technology, also known as Distributed Ledger Network, utilizes multiple features to ensure the safety of data stored in the system. First and foremost is Distribution. Blockchain ditches reliance on any individual third party to check the veracity of the information and the transactions carried out on the network. The hierarchical system is done away with in favor of a peer-to-peer network which gives multiple users access to the entire network to verify the transactions. Furthermore, a blockchain permits storing the same data set within multiple network nodes at diverse locations. Thus, any hacker or virus attempting to alter the data stored in the blocks can, at best, hope to change it on one network while the other networks remain intact. Further, any attempt to manipulate the data can be thwarted in real-time. All the users on the network can witness the entire process of the data being stored in the blocks in real time; hence efforts to go back to the blocks and alter the content can be collectively challenged.

Another key feature is the conversion of data into a hash. A hash is a computational algorithm that converts any input, regardless of length, into an encrypted code of fixed length. What makes the hash safe is that a hacker can’t use a hash to decipher the original information where the hash was created, as the hash is one-way, making reverse engineering impossible.

One of the key benefits of blockchain technology is that it allows multiple parties to access and verify the same information without the need for a central authority. This feature makes blockchain an ideal solution for industries that rely on secure and transparent record-keeping, such as finance and supply chain management.

Uses of Blockchain

Since its introduction, blockchain has held out its advantages to various industries looking for an immutable and transparent method to document their work. Its security and transparency can be of particular use in the Intellectual Property (IP) field. It does, however, have its challenges.