MIGRATE TO AN IPMS PROVIDER THAT MEETS THE MARK

Transcription

1 MIGRATE TO AN IPMS PROVIDER THAT MEETS THE MARK BY NOEL YOUNG PRODUCT MANAGER, CPA GLOBAL

2 CONTENTS Executive Summary 4 Choosing a Modern IP Management System 4 10 Important Guidelines to Understand when Choosing Your IPMS Provider 5 1. Vendor Reputation and Service Quality 5 2. For Most Organizations, SaaS is the Right Choice 6 3. Performance, Security and Operations: Investment and Expertise is Important 7 4. Strong Country Law and Forms Coverage 8 5. Task and Workflow Management is Vital Dashboards and Reporting: Use Your Data to Drive Value An IPMS Needs to be a Platform for Collaboration Centralize and Automate Prior Art (IDS) Management Stay Ahead of the IP Data Revolution Excellent Implementation, Training and Support: Successful Adoption of an IPMS 16 Bonus Step: Enterprise Integration, Data Loading, and APIs: Understand the Possibilities 17 Conclusion 18 About CPA Global 19 Migrate to an IPMS Provider that Meets the Mark 2

3 NOT ALL IPMS PROVIDERS ARE CREATED EQUAL Migrate to an IPMS Provider that Meets the Mark 3

4 EXECUTIVE SUMMARY Choosing the right Intellectual Property Management System (IPMS) can be a challenging and time-consuming endeavor for any organization. Originally limited to a few providers, the number of IPMS providers has increased significantly in the last decade. Over the same period of time, technology has evolved from antiquated, client-server systems to complex and configurable cloud Software-as-a-Service (SaaS), or managed service solutions. With law firms and corporate legal departments tracking highly sensitive IP data, many organizations have realized their decades-old IPMS no longer meets the baseline security requirements that their clients and/or IT departments expect. Additionally, organizations are becoming aware of the productivity improvements modern day solutions can provide. Features such as PTO integration, workflow and task management, prior art management, dashboards and others features are now widely available. These improvements can transform how IP departments function and deliver services to their organization or clients. CHOOSING A MODERN IP MANAGEMENT SYSTEM If your organization is prepared to migrate to a modern IPMS it is important that you assess a variety of factors. You need to understand potential pitfalls, but also where value can be added. It is also important to plan for the future by choosing a scalable solution that will grow with your organization s requirements. To that end, the following 10 guidelines are provided below to assist your organization in making and informed decision when choosing your next IPMS partner. Migrate to an IPMS Provider that Meets the Mark 4

5 10 IMPORTANT GUIDELINES TO UNDERSTAND WHEN CHOOSING YOUR IPMS PROVIDER 1 VENDOR REPUTATION AND SERVICE QUALITY Not all IPMS providers are created equal. With many new providers on the market it is important to assess the strength and health of the provider versus your needs. What is the size of the customer base and do they have a history of customer growth? New customer growth is an important factor to consider when evaluating an IPMS. If an IPMS shows stagnant growth or only has attracted a handful of customers every year what does that say about its overall health? How active is the customer base? Larger customer bases tend to, not surprisingly, have the most active and loyal users. These are often your best sources for honest assessments. Ask the provider for references and information on independent user groups or forums. Does the IPMS provider adequately invest in development and have a track record of success? Ask to see their product roadmap and determine whether their vision is aligned with your future growth. EXPERT TIP Does the provider offer additional IP services? Larger providers can often provide more value for your investment based on bundling services such as docketing support, patent and trademark renewals, and search services. Migrate to an IPMS Provider that Meets the Mark 5

6 2 FOR MOST ORGANIZATIONS, SAAS IS THE RIGHT CHOICE SaaS IPMS solutions offer a number of advantages to on-premise installations, particularly when compared to older client-server deployments. Unless your organization has very specific needs or preferences, SaaS is the obvious choice. In order to maintain many older client-server IPMS solutions a significant on-going IT investment is required. Choosing a SaaS IPMS provider can alleviate your organization of this cost as it is responsible for all application upgrades, software license costs, security, servers, etc. Software doesn t need to be installed and maintained on users computers; all users access the IPMS via a web browser. SaaS is scalable. On-premise deployment models may require a variety of infrastructure investments to keep up with your growing business or changing requirements. With a SaaS solution you can easily create additional records, add new users, or augment your workflows placing the burden of performance and infrastructure on the IPMS provider. SaaS IPMS solutions can usually be implemented quickly. For smaller customers, SaaS IPMS solutions can be activated in hours. For larger implementations with more complex requirements, the time to go-live for a SaaS IPMS solution is generally between two to three months. You are always on the current version. Application upgrades happen more frequently with no need for testing and acceptance periods. Therefore, there is no additional strain on your organization s resources. Migrate to an IPMS Provider that Meets the Mark 6

7 3 PERFORMANCE, SECURITY AND OPERATIONS: INVESTMENT AND EXPERTISE IS IMPORTANT Over a decade ago, hosting a SaaS software solution would be an extremely challenging and expensive endeavor for any IPMS provider. However, today s technology means almost anyone can take a system and make it available in the cloud, with little to no investment. This evolution has transformed systems and provided numerous benefits, but it does not replace organizational investment, resources and, above all, expertise. With an increase in cyber attacks, identity fraud and corporate espionage, it is more important than ever to carefully consider a provider s ability to keep your data safe. Make sure your next IPMS partner is taking the appropriate steps to ensure improved performance and security. Does the provider have a dedicated Dev-Ops team responsible for monitoring the application? Does the provider publish performance data and metrics? If so, where can you obtain the details? Is the data hosted by a respected thirdparty provider? Does the provider maintain industry certifications (e.g. ISO 2700)? Does the IPMS vendor have a dedicated security team? What is the reporting process and audit schedule (e.g. SOC 2, etc.)? Does the IPMS have mechanisms to enforce and audit ITAR compliance? Does the IPMS have a flexible and manageable security model? Do they support single sign-on options? DID YOU KNOW? With thousands of concurrent users and varying levels of system load, IPMS solutions require dedicated monitoring. Beware of providers that do not adequately invest in the resources needed to ensure optimal performance and security. Migrate to an IPMS Provider that Meets the Mark 7

8 4 STRONG COUNTRY LAW AND FORMS COVERAGE A fundamental value proposition of an IPMS is the ability to automate the tracking and maintenance of important global IP deadlines directly within the system. With global IP law constantly changing, organizations need an IPMS that contains accurate and up-to-date country law definitions. Similarly, without access to a managed PTO forms library, users will be left copying and pasting data from their IPMS and monitoring PTO sites for updates. In the absence of either of these services, an IPMS loses much of its value. How often does the provider update country law and forms? Ask for details about the breadth of coverage across jurisdictions and IP types. Who is responsible for implementing the country law updates? Look for IPMS providers that handle country law updates in a similar way to how SaaS providers handle application updates - i.e. updates should happen automatically, ensuring organizations always have the most recent law definitions. Beware of IPMS providers that place this burden on the customer. Country law updates can require a significant amount of internal resource commitment and cost to complete successfully. All too often this burden can cause an organization s law definitions to get needlessly out of date. If you are considering an additional tool to handle PTO Forms generations, beware of the added training and infrastructure cost associated with integration between third party solutions and your IPMS. Does the IPMS allow users to easily customize country law rules? If so, ensure the update process respects those changes. Ask to see how country law actually works in the system as a user dockets various pieces of correspondence. Do events automatically launch when appropriate triggers occur? Are events named in a logical fashion and easy for users to identify, locate, and docket? Migrate to an IPMS Provider that Meets the Mark 8

9 IP DEPARTMENTS ARE DRAMATICALLY TRANSFORMED BY THE ADDITION OF AN IPMS

10 5 TASK AND WORKFLOW MANAGEMENT IS VITAL Today s enterprise systems need to provide more value to organizations than simply acting as electronic versions of old, paperbased processes. Organizations demand solutions that can automate workflow and transform how IP departments operate. However, designing and maintaining workflow that is catered to your organization can be a time-consuming and challenging activity. Be sure to understand what your own users can realistically configure versus what items may require configuration assistance from the IPMS provider directly. Does the IPMS offer the following building blocks of workflow and task management? Ability to launch other tasks based on the creation, deletion or update of a task or attribute of a task. Alternatively, you should be able to easily launch a task based on another activity happening (e.g., entering a Filing Date). Ability to launch tasks in other related members of the family. Ability to automatically send s (with configurable templates) based on common factors such as the update or completion of a task. Ability to perform any of the above actions based on conditional logic (e.g., launch if Date A is later than Date B). Ability to update bibliographic fields as a result of tasks being completed. Ability to automatically file replies to s sent from the IPMS. Deploying a process where you can easily centralize all correspondence against appropriate activities in your IPMS, as well as having the infrastructure to automatically log replies without any manual intervention is a frequently overlooked area in the evaluation of IPMS providers. This technology can significantly increase efficiencies in IP legal departments. How does the IPMS communicate assigned tasks to users? Look for the following features: Ability to schedule the delivery of task reports to users based on a role (via ). Ability to set organizational wide reminder settings (e.g., always send reminder s two weeks before due date for anyone assigned a task as an attorney). A self-service task search in which users can use to see what they are assigned easily from within the IPMS. Are there any dashboard capabilities, where a user can quickly see upcoming tasks via a visual calendar or list? Migrate to an IPMS Provider that Meets the Mark 10

11 6 DASHBOARDS AND REPORTING: USE YOUR DATA TO DRIVE VALUE Reporting, or the ability to format and effectively organize the presentation of your data, is a fundamental value proposition of an IPMS. Many IP professionals rely on the reporting capability of an IPMS to effectively communicate tasks, KPI s, portfolio information, performance, and many other types of information across their organization. Many IPMS systems, as a standard, include a built-in report writer. Ensure that the report writer has the following fundamental features: Confirm that there is an ability to build a wide variety of reports (from easy to more complex) with a full range of data filters. Data formats should be flexible with an ability to export in a wide variety of formats (e.g.,.csv,.xml,.xls). Administrators should not need to create the same fundamental report repeatedly for different users. Ensure that you can use dynamic filters so that reports can be customized onthe-fly by the users running them. Check for the ability to easily manage docket reports across your entire organization. Does the IPMS have the ability to set up docket reports so that when new attorneys or staff are added as users they automatically receive standard reports? Reports also need to be configured to output data into a variety of other file formats and visualizations. Confirm that the IPMS can handle merge document creation (e.g.,.doc,.pdf,.xls). Additionally, ensure that you can create and share charts and graphs based on report results. Dashboards allow an IPMS to present pertinent information to a particular user or type of user in an on-demand fashion. Usually positioned in the IPMS as a landing page after a user logs on, dashboards expand the ability of an IPMS to present and understand data using interactive widgets. Can you administer the dashboard at an organizational level? Ensure that you can change the default display based on the user role (e.g., Attorney) logging on to the IPMS. Migrate to an IPMS Provider that Meets the Mark 11

12 Do users have the ability to personalize the dashboard on their own (i.e., move the location of widgets around, hide widgets, etc.)? How many widgets are available in the IPMS? Charts and Graph widgets are a very important part of making a dashboard relevant to your organization s user base. Ensure that you will have the ability to create and customize charts and graphs in a variety of different formats and publish those to a user s dashboard. 7 AN IPMS NEEDS TO BE A PLATFORM FOR COLLABORATION IPMS systems can provide more value to your organization than simply optimizing your internal IP operations, processes, and records. Today, many modern SaaS IPMS systems have the ability to act as a platform for your organization to engage external parties or clients directly from within the system. Corporate legal departments will commonly grant law firms or third-party service providers direct access into their IPMS to perform docketing or other tasks. Alternatively, law firms will use their IPMS as a client-facing portal allowing their clients direct access to their cases and the most up-to-date status. Are there any additional costs for external users? If the system is not SaaS (or hosted), how is external access managed? Is the system intuitive enough so that access can be rolled out to a variety of user types without a significant amount of training? Ensure that permissions and security controls can be managed easily to control what external parties can view and edit within the IPMS. Can the IPMS be customized with your organization s logo and branding? Dashboards provide a very good opportunity for personalizing the experience for external users, as well as sharing specific pieces of information. Check with the IPMS provider to ensure that dashboard functionality and configurability extends to external users. Does the IPMS have an audit capability that allows easy reporting and monitoring of external user activity? Migrate to an IPMS Provider that Meets the Mark 12

13 8 CENTRALIZE AND AUTOMATE PRIOR ART (IDS) MANAGEMENT Management of prior art is a common challenge amongst IP departments, particularly for those who do not have an IPMS or other tool that can effectively handle the requirements from start to finish. Unfortunately, organizations often end up dealing with the act of assembling an SB08 form (US) as a special project ordering search reports, collecting copies of patent or publication documents from various PTO sites, tracking citations in spreadsheets, and then filling out the PTO form. This can be a very time-intensive activity, particularly when it is common to have many references cited on a single application. Does the IPMS have a dedicated IDS management feature (e.g., a searchable library which allows patent, publication, and NPL documents to be stored in a centralized location and associated with many patent applications)? When references are added to a patent application, do they flow automatically to all related matters in the family? Does the IPMS have the capability to easily add Supplemental Information Disclosure Statements to related cases? Does the IPMS integrate with any global patent sources so that you can quickly retrieve documents and metadata for a patent publication document automatically? Can you easily generate the USPTO SB08 form in the EFS accepted format? Migrate to an IPMS Provider that Meets the Mark 13

14 9 STAY AHEAD OF THE IP DATA REVOLUTION The IPMS industry is on the edge of a data revolution. According to the World Intellectual Property Review dated July/August, 2016: New technologies enabling predictive analysis of big data provide IP professionals with a platform for better decision-making and vastly improved efficiencies. For decades, IP departments have dedicated an enormous amount of resources to manually maintain records with information from public IP sites. Imagine the possibilities if public and private data could be effectively intertwined in an IPMS. Today, organizations are increasingly leveraging big data techniques to obtain a competitive edge and discover insights in their markets. IPMS providers, on the other hand, are also partnering or acquiring modern IP data providers. Before investing in a long-term relationship with a new IPMS provider, understand its vision for the power of public and private data, and ensure it is in alignment with your future growth and needs. Does the provider have access to high quality IP data? If so, consider the breadth and quality of the IP data the IPMS provider has access to. Pay attention to the type of data they offer, how frequently it is updated and whether it assesses the quality of data to ensure it can be properly leveraged. Does the provider offer private PTO integration? Three features to look for: If the provider offers USPTO integration, does it allow you to use and manage multiple customer numbers? THE INTERSECTION OF PUBLIC AND PRIVATE DATA IS GOING TO TRANSFORM THE INDUSTRY. Legal departments spend a considerable amount of time, money, and resources on manually entering, verifying, and consolidating data from multiple public sources. With the availability of high quality patent data increasing daily, the potential now exists for many of these manually driven processes to be eliminated. Imagine the possibilities if your existing private data could be seamlessly augmented by public data in your IPMS, alerting users when there are changes or critical discrepancies, and automatically updating your IPMS records so they are always accurate and up-to-date. Noel Young Product Manager, CPA Global Can you retrieve and utilize the bibliographic data available against your IP cases? Does the IPMS offer integrated one-click docketing from private PTO events? Migrate to an IPMS Provider that Meets the Mark 14

15 IPMS INCREASES AN ORGANIZATION S ABILITY TO MAKE SUCCESSFUL BUSINESS DECISIONS

16 10 EXCELLENT IMPLEMENTATION, TRAINING AND SUPPORT: SUCCESSFUL ADOPTION OF AN IPMS Implementing a new system can be a challenging and time-consuming endeavor. However, it can also present a number of valuable opportunities to introduce improved processes and productivity savings. Consider the following best practice recommendations when discussing implementation methodology with potential IPMS providers: Does the IPMS provider have a clearly defined implementation methodology? The IPMS provider should be able to clearly describe how they gather requirements, design the implementation and perform quality assurance and testing. Does the IPMS provider offer the ability to perform data cleansing or validation as a part of the implementation? Alternatively, can they provide the means to load data into the IPMS from public sources (e.g., by Assignee)? What involvement does the IPMS provider expect of the customer in the implementation? Beware of implementation methodologies where responsibility of testing the entire implementation is placed on the customer. Customer involvement in the project is important, but it shouldn t entail many days of additional work. Understand the number and type of resources available to your organization and whether or not they will be available after the implementation is complete for go-live support. Ensure that you understand how the IPMS provider structures the cost of their implementation and what is included. Further to the implementation, it is also critical that the IPMS provider has numerous training and support options which can enable your organization to be supported not just during the implementation, but throughout the entire customer lifecycle. On-demand systems require on-demand and knowledgeable training and support. How large is the IPMS provider s customer support team? Inquire as to the number of tickets received per month versus the number of resources. What are operating hours for telephone support? Does the provider offer webinars or make any other type of free web-based training resources available? Does the provider offer global support coverage? Inquire as to the location and size of other regional support teams. Check with the IPMS provider on what support response and target resolution times to which they are prepared to commit. Who will be the point of contact for the duration of the implementation? Migrate to an IPMS Provider that Meets the Mark 16

17 BONUS STEP ENTERPRISE INTEGRATION, DATA LOADING, AND APIs: UNDERSTAND THE POSSIBILITIES Enterprise Integration and the availability of industry standard APIs are fundamental aspects of a modern IPMS. In today s interconnected world, many IP departments are reliant on a variety of solutions, such as HR systems and billing and document management systems, working in tandem with their IPMS to deliver services to their organization or clients. Additionally, many organizations want the ability to interact and manipulate their own IPMS data via APIs. Some organizations wish to load their own data to facilitate new business acquisitions or perform their own data clean up. Others may look to load data into other systems, leverage third-party reporting tools, or design bespoke views and applications within their own ecosystem using IPMS data. Above all, the modern day IPMS needs be open enough to give users the flexibility to deploy a wide variety of solutions, on their own, with their IPMS data. Does the provider offer Web Services, and which you can use to facilitate numerous integration scenarios (REST or SOAP) as a part of their base subscription? Does the provider have the ability to easily schedule or transmit data from the IPMS to other locations (e.g., FTP, SFTP)? Does the provider offer any tools which allow customers to perform their own data imports or mass updates? Does the IPMS provider integrate with their own services, such as Patent Renewals? Does the IPMS provider offer single signon integration so that you can utilize your organizations internal HR directory for user management? Does the IPMS provider offer consulting services to assist with integration services, if needed? Migrate to an IPMS Provider that Meets the Mark 17

18 CONCLUSION IP departments can be dramatically transformed with the addition of a modern IPMS. With features such as workflow and task management, prior art management, and dashboards, among others, a modern IPMS will not only save time and money, but will also dramatically increase an organization s ability to make successful business decisions and deliver premium services to their users or clients. Keeping these 10 guidelines in mind will help you determine which IPMS is right for you and your organization. EXPERT TIP Watch CPA Global s Product Manager Noel Young describe how big data will radically change the role of IPMS and the IP professional. Migrate to an IPMS Provider that Meets the Mark 18

19 ABOUT CPA GLOBAL CPA Global is the world s leading Intellectual Property management and technology company. Trusted by many of the world s respected corporations and law firms. Our integrated offering is underpinned by an outstanding global team of 2000 people. For further information please contact us at ipinfo@cpaglobal.com or visit us online at cpaglobal.com. Now we offer customers The IP Platform: delivering integrated Innovation and IP Portfolio software, services and insights across the entire Idea Lifecycle, supporting customers every step of the way to realize the value of their ideas. LET S GET STARTED Contact our team today to book a demo ipinfo@cpaglobal.com CPA GLOBAL