Patent Docketing Software: If it’s Broken, Fix it!

Many users of last generation patent docketing software feel that there is no reason to upgrade. Everything is working fine. Why rock the boat? If the patent department has established metrics to evaluate the performance of the patent docketing system, and the system is consistently meeting or exceeding the benchmark, then pat yourself on the back, because you rank higher among your peers. If that is not the case, then this is a good time for a change.

This post will help patent departments create meaningful metrics to measure the performance of their patent docketing system and revisit them whenever needed. Each patent department is unique and the metrics that work for one department may not work for another. The objective is to help IP departments develop and measure their own metrics to determine whether their patent docketing software is meeting the goals. Developing and measuring these metrics can provide a basis for setting goals and establishes whether there is improvement or progress toward those goals over time.

The key metrics can be categorized into one of these five areas:

  1. Client Satisfaction
  2. Knowledge Management
  3. Outside Counsel Management
  4. Team Effectiveness
  5. Visibility

Client Satisfaction

For the IP department, the clients are inventors, patent committee, key subject matter experts and other stakeholders in technology and R&D groups. The metrics for client satisfaction include, but not limited to:

  1. How easy is it for your inventors to submit new invention disclosures?
  2. How easy is it for your inventors to track what is happening on their submitted disclosures or patent applications and patents?
  3. Do they have visibility into their awards?
  4. How easy is it for your patent committee members to provide their recommendations on invention disclosures?
  5. How easy it is for the subject matter experts to interact with inventors for more effective review and analysis?
  6. How easy is it for senior management in technology and R&D to view the overall patent portfolio and pipeline?

Knowledge Management

Without easy access to managed knowledge, every situation is addressed based on what the individual or group brings to the situation with them. With seamless access to managed knowledge, every situation is addressed with the sum total of everything anyone in the patent department has ever learned about a situation of a similar nature.

The metrics for knowledge management include, but not limited to:

  1. Do you have established metrics and rationale for evaluating invention disclosures for patent filings? If you do, can it be applied across all decisions made in the last 3-4 years?
  2. How easy is it for anyone to look at the foreign filing record and trace why the decision for this filing was taken?
  3. How easy is it for someone to review annuity decisions and know who made the decision to maintain a particular patent and why?
  4. How much time would it take for you to get a simple report, for example your entire patent portfolio grouped by jurisdiction and PTO status?
  5. How much time would it take for you to project your overall spend for the next 3 months?

Outside Counsel Management

A number of patent departments use outside counsels for drafting, filing and prosecuting patent applications. The services provided by firm can account for 70% of the overall patent department budget. It is important to know if your existing patent docketing system can provide you metrics to measure their performance.

  1. How easy is it for you to find out what each firm is handling and the latest status on filings for each firm?
  2. How much time would it take for you to get a report of overall spend per firm?
  3. How fast can you get the report of the turnaround time per firm?
  4. Each time the OC needs to collaborate with inventors (for example in patent application drafting), do they have to go through your team? How much time do you spend coordinating these activities?
  5. How much do you know about extensions filed by law firms on office action responses?

Team Effectiveness

Patent docketing software is expected to help your team get more effective. Here are some metrics to help you determine if it is meeting the expectations-

  1. How much time is your team spending on emails for sending information to inventors, patent committee members, outside counsels?
  2. How much time are they spending on duplicate entry of the same data in multiple systems?
  3. How much paper are they printing?
  4. How easy is it for them to delegate work to their colleagues?
  5. How much time are they spending on calculating patent award payments?

Visibility

If you have been using the patent docketing software to track invention disclosures, patents, trademarks, licenses and invoices, you should be able to get answers to the following questions-

  1. How much time would it take for you to view all invention disclosures, patents, trademarks and licenses by products, by technology areas and by business units?
  2. How fast can your team get to all of their assigned tasks?
  3. What visibility do you have into the workload of your team members and their average response time?
  4. How soon can you view the established budgetary goals for the fiscal year and the spend and accruals so far?
  5. How easy it for you to go to any record and find out the real time status?

Lecorpio IP management software is designed to provide answers to all of these questions. It automates all manual workflows, remove redundancies, and provide accurate reporting to help corporate IP departments better service their clients and better manage their service providers.

If it’s not broken, that’s a good thing – but not a good reason for staying on an old technology.