Anaqua IAM Perspectives

Collaboration in Intellectual Property Management

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Tue, 09 Feb 2010 17:22:00 +0000

This month we will be presenting a webinar on the collaboration capabilities of ANAQUA. Collaboration was a core design principle of the Anaqua solution from the very beginning, and today our clients collectively use ANAQUA as their platform to work among their hundreds and thousands of coworkers, outside law firms, agents and other professional service providers. Enhancements to Anaqua’s collaboration tools are a part of every new release. Collaboration, however, is about more than slick new technology.

In the business world, collaboration has emerged as a critical principle in management best practices. The practice of law, and in particularly work between in-house and outside counsel, is ripe for improved collaboration. Collaboration is also highly valuable for multi-office and geographically diverse law departments where legal professionals across the world must work together. Today, these new collaboration-centric work paradigms are well supported by both improved management approaches and new information technology tools that allow for better sharing of information and work product.

Collaboration, however, can present challenges in its reduction to practice. While exchanging documents - perhaps through email - is a form of basic collaboration, today's complex business environments require more sophisticated approaches. We find with our clients that defining, building and nurturing a collaborative organization involves a number of important, interrelated components.

First, and often most importantly, the foundation of collaboration starts with culture. Both social culture and a company's work culture are factors that must be given close consideration. While culture is not easily engineered, organizations benefit from understanding and embracing their unique cultural dynamics, and identifying how collaboration can fit their organization’s personality.

Another critical component of successful collaboration is a good understanding of the organization's business processes, and where collaboration can add value. The process should define the structure and workflows, and identify specific points where collaboration can positively impact the work. Documenting processes and opportunities for collaboration, along with the related policies, procedures and other written materials, allows stakeholders to understand the new collaborative environment. The principles of more open collaboration can often test historical mindsets that view work processes as more closed or insulated. Changes to these views must be handled with care and openly negotiated and accommodated in adopting collaboration-oriented ways of doing business. Importantly, training and other "how to" resources help establish, maintain and lock in the value of collaboration.

Finally, technology is often considered a cornerstone in bringing collaboration capabilities to the business. Technology provides the practical tools used by collaborators to improve the efficiency and effectiveness of their work. The receptivity to new collaboration tools has vastly improved as users are increasingly comfortable and confident in Web 2.0 and social networking technologies which are now moving to the workplace. Technology, however, in itself is not a solution. Organizations should be careful to ensure that tools match both their culture and business processes. Capabilities such as web-based access, paperless records, electronic sharing of workfiles and projects, and task and workflow automation, are important collaboration tools. Also important is the ability to setup security with the flexibility to control users' access to information and functions. This control manages the potential risk, and overcomes objections, that can be associated with more open, collaborative work environments. A technology solution should be considered a platform to support improved collaboration.

Have you moved to a more collaborative work environment recently? I’d love to hear your experiences and advice.

Intellectual Property In China

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Wed, 18 Nov 2009 16:45:00 +0000

Intellectual property in China always seems to be a hot topic, and frequently pops up in my RSS news feed. This week the topic of China is particularly newsworthy for Anaqua in that we announce our first Chinese client in Huawei Technologies (click here to see press release). This is a fantastic client, and in our own modest way, we appreciate the opportunity to contribute to the success of one of China’s preeminent intellectual property based companies. I was fortunate to spend some time with Huawei’s IP Team in Shenzen, and they are well on their way to building a world class IP organization.

You may have also seen Joff Wild’s recent IAM Magazine Blog on the topic of China and IP finance. This is just another example of the Chinese government and China’s finance sector promoting intellectual property as a cornerstone of business development. This week the China Intellectual Property Business Summit is also being presented, with interesting topics and speakers. And, finally, in President Obama’s current visit to China, the topic of IP enforcement and trade policy was identified as a topic of discussion.

These are just a few recent examples of intellectual property news and events in China. And this is not an unusual week. What these events really represent is the continued momentum behind changes in China’s intellectual property environment. While areas for improvement remain, China’s commitment to and growing maturity in IPR bodes well for the future of competitive markets that share a consistent, reliable IPR system. However, as with other business areas in which China has ascended, we are well advised to appreciate and understand the cultural, business and legal principles that underlie their concept of an IPR system – and how they may differ from Western mindsets and standards.

This is an exciting time to be working in emerging IP markets, and we look forward to many new Chinese and Asia Pacific based clients joining the Anaqua community in the future. Our product will be better and the IP world will be better too.

Reflections on the IPO 2009 Annual Meeting

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Thu, 17 Sep 2009 16:23:00 +0000

At the recently concluded Intellectual Property Owners (IPO) annual meeting in Chicago (Aug 13-15), attendees were provided an excellent conference agenda full of leading topics and speakers. IPO does a great job and I highly recommend the conference. There were a number of presentations and topics that particularly caught my attention, and I’ll be writing about these in the coming days. One interesting – albeit not entirely new – topic that came up in a number of sessions was the focus companies are placing on the efficiency and effectiveness of their patent filing process.

What was interesting is that while this scrutiny may have been initiated because of tighter budgets, the analysis is really much more about quality. Many companies said that they are being more careful with budgets, but they were not basing decisions on either individual filings or total IP spend entirely on cost considerations. Recent and pending changes in the scope of patent protection and enforcement (e.g. Bilski), continued uncertainty in global IPR systems, shorter innovation turnover cycles, and reevaluation of know-how and trade secret value versus public disclosure through patenting, are all considerations being more closely balanced. It will be very interesting to see trends in patent filing rates over the coming years – particularly as companies come out of the economic downturn – to see whether the early-2000 rates represented a bubble or if the 2008/09 decreases are merely an economy-driven blip. There were certainly strong opinions on both sides.

Our upcoming webinar October 1, 2009, is relevant to this topic. I was happy to hear that almost every IPO presentation made mention of the integral role of technology in the IP management process. And in our webinar entitled, Driving Quality and Cost Effectiveness in the Invention Disclosure Process, we’ll discuss how technology works hand in hand with IP strategy and process to meet the company’s objectives of better intellectual assets. We’ll review ideas of best practices in the disclosure process, as well as the latest Anaqua tools used by leading companies to automate their invention management. I encourage you to join us!

Register for the webinar by going to http://www.anaqua.com/community/invention-disclosure-webinar.html

Strategic Docketing

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Wed, 10 Jun 2009 14:18:00 +0000

While “Strategic IAM” grabs the headlines, the tried-and-true docketing function remains the cornerstone of a quality IP practice. In working with our clients we’ve begun using the term “Strategic Docketing” to refer to the new approach many companies are taking to how they manage their docketing functions. While docketing has always been a rule-intensive, detail-oriented process, today’s increased complexities with domestic and international filings, as well as changes in examining procedures, are requiring the docket team to take a more sophisticated approach to their work. In addition, the docketing team is being asked to play a more integrated role in the overall asset lifecycle, working collaboratively with both in-house attorneys and outside counsel. We hear many companies now referring to their docketing team as IP Operations.

Technology has long been a key enabler of the docketing team, providing case tracking, due dates, work assignments, documents and other information related to the core prosecution process. Although notoriously low-tech, docketing systems have provided relatively straight forward tools for data entry, auto-generated tasks, and general report writing. As Strategic Docketing has emerged, however, the demands of the docketing team are driving the need for more advanced and capable tools that go well beyond the capability of existing docketing systems. However, while new “web based” systems promise improvements, for many docketing professionals these new technologies have proven a double-edged sword—while providing more features, the new tools have often sacrificed the ease-of-use advantages of existing docketing applications.

In tackling the critical needs of docketing, Anaqua has been working closely with our clients to build the next generation docketing system that provides Strategic Docketing functionality, while preserving the ease-of-use expected by docketing professionals. To this end, our latest release has introduced a number of features that go well beyond what many companies have seen in the docketing software market – and you’ll continue to see Anaqua introduce docketing-focused enhancements in other upcoming releases.

First, and foremost, we are excited about addressing what are often the two biggest issues – too many screens (or “too many clicks”), and having to use the mouse. Anaqua now provides One Page Docketing which puts the most important docketing-related fields on a single screen, and with type-ahead on data entry fields. In addition, each user is able to personalize their page layout, allowing the docketing related fields to be positioned with drag and drop so that the most important fields are easily available. In our design testing and user training we’ve received great feedback on the newfound efficiency in completing docket related tasks.

In addition to One Page Docketing, we’ve introduced many other features designed to improve the quality, usability and capabilities of Anaqua’s docketing module. These include:

Country law updates
Law engine enhancements
My Searches with saved parameters and user-selectable fields
My Screen Layout with drag and drop selection of record fields
Ad Hoc Reporting
Batch updating of records
PAIR interface with data validation

We will continue to work with our clients to enhance the all-important docketing user experience.

The 2009 Anaqua User Conference

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Wed, 06 May 2009 15:31:00 +0000

The Anaqua user community continues to be an important value for Anaqua’s clients. They include world leaders in technology, industry and consumer goods with a willingness to share and contribute for the good of the community. The opportunity to learn how others have solved problems and introduced new methods for their IAM practices is invaluable.

This year’s annual Anaqua User Conference continued and expanded this community activity. Previous years’ events in Toronto, Boston and Delray Beach, Florida took place over 3 days with both business and social sessions and ample time for networking and informal discussions. In planning for this year’s event in the last few months of 2008, we quickly realized that the declining economic environment made it very difficult for our clients to commit to budget expenses for May of 2009. As a result of this feedback, and with the overwhelming support of the Anaqua User Council, we made this year’s conference a virtual, on-line event.

Conference sessions covered business topics including: IP Leadership in a Troubled Economy; Successful Change Management in a Legal Organization; IP Valuation, as well as technical topics such as the Anaqua Roadmap and How to do a Successful Software Upgrade. There were a number of client case studies and panels as well as Anaqua training sessions on areas of the product such as budgeting and reporting.

Over 100 attendees participated in a very successful conference over five days from April 27 to May 1 and the feedback is in - how does a virtual event compare to a traditional physical conference?

Advantages:

Significant cost savings with no travel or accommodation expenses
Broader attendance – more of the client team can participate without concern for cost
Easier to invite guest speakers when they do not have to travel

Disadvantages:

Lack of face-to-face networking. Many said that this was an important aspect to preserve in future events. Open mikes and social networking software can help but does not substitute for direct interaction with people.
Time zone challenges – it is (just) possible to accommodate US Pacific to Central Europe business hours but in practice impossible to include live participation from Asian attendees as well.

Anaqua will review options with the User Council for the 2010 conference, but the early indications are that we will return to a physical event supplemented by virtual services for important sessions.

Do you have experience with virtual events? I’d love to hear your comments! Please comment here or email me at ireid@anaqua.com - Ian Reid, vp marketing, Anaqua.

Innovation Strategies in a Challenging Economy

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Wed, 25 Feb 2009 21:54:00 +0000

As companies work to navigate today’s challenging business environment – and managers look to make the best out of their situations—innovation must remain a critical priority. New ideas harvested today will become the products and services sold to more discriminating customers, and will ultimately drive strong growth as market health returns. Innovation is also critical for internal operations as companies are forced to maintain (and even improve) their businesses with fewer staff, support services and other infrastructure. The key is defining an innovation strategy and approach that drives quicker, more cost effective, and lower risk opportunities for new products, services and operational efficiencies.

In working with our customers, we see a well-defined, two-pronged approach of both internal innovation and external partnering. While certainly not new concepts, the key to both dimensions is efficiency in identifying and quickly vetting opportunities, and getting them to commercialization and marketing; or for internal operations improvements, rapidly transitioning to new processes so that benefits can be quickly realized. While the discipline of a rigorous review and decision process remains a fundamental best practice, accelerating gate reviews and reducing cycle times is also critical to success.

The challenge is often a matter of workplace culture and human nature. As poor financial results lead to staff reductions, budget cuts and other day-to-day changes, the compounding effect is to slow down operations and reduce productivity. This is the exact opposite of what is necessary to navigate through, and out of, difficult times.

While technology is never in and of itself a cure, many organizations are turning to their IT systems as the key means for implementing and enforcing more rigorous innovation processes. Investment in improving or replacing less efficient systems which impact the innovation process is considered a high return investment because they are the enablers of efficiency and accountability. For Anaqua, this means that companies are looking at such processes

Invention disclosure and review – how to improve the efficiency of R&D and inventors in identifying, submitting and prioritizing new ideas

Portfolio management and IP reviews – using tools to improve automation, sharing and reporting on IP data and competitive intelligence

Collaboration with law firms and outsourced (LPO) services – enable legal departments to load balance work between internal and external service providers to maximize cost efficiencies

Agreements management – improving negotiation and administration of agreements, and improving controls around IP ownership, partner relationships and financials

How is your company managing internal innovation and external partnering in a tough economy?

Looking at IAM Software? Think beyond IAM!

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Thu, 15 Jan 2009 19:19:00 +0000

As you look to implement new software for intellectual asset management, it makes a lot of sense to see if other areas in legal could use new infrastructure. It may be an opportunity to combine forces and budgets to get the project approved.

Corporate law departments have historically been technology laggards versus other functional areas such as finance, sales , marketing and HR. While there have been a myriad of reasons, at least one contributing reason has been the very nature of the practice of law itself – highly variable work processes based on the practice area, case type, individual attorney or jurisdiction. For many companies no individual practice group provided the critical mass that warranted the investment necessary to implement leading technology; not to mention that corporate solution vendors lacked the expertise in corporate law department management.

Fortunately for corporate law departments, the technology is quickly improving. The risk and volume of cases have garnered the attention of senior management, freeing up both financial and staff resources, as well as driving more discipline in case management. The Office of the General Counsel is now more visible as a key stakeholder in overall corporate management and strategy. New hot button areas such as electronic data discovery (“EDD”), document management and e-billing are becoming critical areas for “best practice” law departments.

Interestingly, at Anaqua we have found that the intellectual property practice area can be highly instructive to the broader, general law department in providing new technology leadership. As we know, intellectual property – more so than many other practice areas – is a highly structured, procedure-driven practice that lends itself well to automation, web-based collaboration, better content management and other technology-based efficiencies. As engineers and technology majors, patent attorneys are comfortable with technology, and have generally embraced software tools – when they’ve been able to get them!

Although Anaqua was initially developed for intellectual property management, some of our earliest clients are standalone IP holding companies who use ANAQUA for all legal functions. As a result, we are increasingly being brought in to other practice areas as the technology of choice. For example, our expertise in agreements and royalties lends itself very well to general contract management, including partner agreements, confidentiality / NDAs, lease agreements, etc. Similarly for Conflicts – supporting general, non-IP litigation matters has been an easy and natural extension. The core Anaqua components – if you simply strip away their IP-specific context – allow companies to have an integrated “ERP” for the entire Law Department. This is certainly an exciting opportunity for our clients and Anaqua, and we look forward to continuing to expand our value!

Please feel free to contact us if this is an area of interest for you.

Reacting to the Recession

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Tue, 02 Dec 2008 19:41:00 +0000

For most companies, the official recognition of the U.S. recession by the National Bureau of Economic Research on December 1st was merely validation for what all understood was a definite, significant downturn in the economy. While certain industries bore the brunt of the initial slow down and have been impacted to a greater extent, by now all companies are taking measures to help them navigate this cycle. For those of us focused on Intellectual Property, we have seen active discussion about how companies might leverage their IP and adjust their IP practices. Challenging times always provide corollary opportunity, and we see many IP professionals emphasizing patents, brands and other intellectual assets as untapped sources of value. We can expect that IP-rich companies will increasingly turn to their intellectual assets as both sources of capital (sale, securitization, in kind contribution), and income (sale, licensing, damage awards.) With the increased recognition of intellectual assets in the last decade, we can expect that failing or failed companies (their creditors and shareholders), will have a newfound appreciation for the value that can be recaptured from the IP portfolio. Also, as we have seen in past slowdowns, the volume of legal disputes increases during difficult economic times and it can be expected that IP litigation will be one important value channel pursued by IP owners.

Another area where we have seen increased attention is in IP operations and administration. With the IP area often considered a cost center – or even if it is net income generating—expenses are particularly scrutinized for potential areas of savings. With already lean operations, many IP practices are challenged to further tighten their belts, while maintaining their level of service and protecting their companies “most valuable assets.” One area ripe for cost review is the use of outside counsel. Over the years we have seen the pendulum swing between the use of outside counsel and in-house legal work. In the last few months we have received increased interest in how technology – such as ANAQUA – can be used to actively manage work load between outside counsel and in-house staff. Assignment workflow, task automation and detailed workload reports are examples of the capabilities needed to precisely manage the outside counsel / in-house balance. Also with significant innovation in IP services over the last few years – such as “global” IP law firms and offshore outsourced services—companies are looking to more finely disaggregate the prep and prosecution process to optimize service costs.

Portfolio administration – patent maintenance fees and trademark renewals – are also key opportunities for savings. While most companies are using outside services, the high service fees and currency rates are causing many companies to consider bringing some or all of this work back in-house, or to actively evaluate and negotiate better rates from their service providers.

With increasingly “computerized” operations, systems are clearly seen as a required enabler of these efficiency improvements and cost savings. Unfortunately many IP groups are living with older systems and tools which are not well equipped to support needed process changes. In working with our clients, we have been fortunate to help companies achieve a positive ROI, generally within the first year of implementation. And whether good times or bad, these improvements will provide welcomed value for the long term.

If you are interested in this subject feel free to view the Anaqua webinar on "Managing IP in an Economic Downturn" featuring Bruce Story.

Report from the 2008 LES Annual Meeting

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Sat, 25 Oct 2008 18:23:00 +0000

In this edition of IAM Perspectives we cover the 2008 Annual Meeting of the Licensing Executives Society, held on October 19 – 23, in Orlando FL. Hosted at the lovely Gaylord Palms Resort, the LES once again provided an excellent learning and networking experience for all attendees. While unofficial reports indicated lower attendance than previous years, the energy level was as high as ever.

A number of notable themes – official and unofficial – dominated this year’s meeting. As could be expected, there was significant discussion about the last few week’s global financial turmoil and the impact on – well – everything. Many expressed the perspective that radical shifts in financial markets would drive changes in intellectual property and licensing, with the effect being an increased focus in how IP owners could derive greater sell-side or buy-side value. On the one hand, technology sellers will increasingly focus on identifying and scrutinizing under-leveraged assets to generate near term revenue (and cost savings from reduced portfolio volumes); on the other hand, technology buyers will look for bargains to build and strengthen their portfolios. Under financial stress, the IP opportunity will gain greater senior visibility as a great source of corporate value. In addition to buy/sell opportunities, some identified opportunities for investors to enter the IP assets market in a large way; this being evidenced by a number of new IP investment funds and private equity activities. Interestingly, the “troll” issue—or the newly coined term Non Practicing Entities (NPE)—seemed to be somewhat less at the forefront of discussions, though certainly relevant to this discussion of asset value extraction and IP investment funds.

Open Innovation was clearly a predominant theme. Technology licensing is a foundational element of Open Innovation, and LES members and licensing professional have clearly joined the Open Innovation movement. There were a number of excellent presentations focused on all aspects of Open Innovation. John Cronin, Managing Director of ipCapital Group, along with Bruce Story (ipCapital Group), Ben DuPont (yet2.com), Phyl Speser (Foresight Science) and Chris Arena (Woodcock), gave an excellent talk on approaches, issues and challenges of Open Innovation, and collaborative, global R&D. Sue Jacobson (General Mills) and Ed Levine (Cargill), provided insight to how corporations look to partnerships as rich sources of new products and technologies.

There were a number of presentations related to tools, and the use of databases to aid the license management process. With perspectives from both the “new school” and “old school” camps, all agreed that the use of tools and databases are an important resource but not a replacement for the skills of a well trained and experienced licensing professional. A number of royalty databases and valuation tools were presented and discussed. The team of Andy Gibbs (Patent Café), Michael Lasinski (Ocean Tomo), Robert Lopes (Thinkfire), Hoo-Min Toong (IPVision), Matthew Troyer (Taeus), and Stephen Weeks (First Principles), presented a very interesting, two-part course on Patent Rating Systems.

A highlight of every LES annual meeting –especially for Anaqua—is the Tech Fair. Always an excellent venue for discovering the latest in IP and licensing related products and services, this year’s Tech Fair had over 50 exhibitors. As you would expect, the exhibitors’ offerings were well aligned with current industry trends. A number of vendors were offering software tools and professional services related to Open Innovation, partnering and technology sourcing—particularly in the biopharmaceutical space.

We also noted a seeming re-emergence of e-business or web-based licensing exchanges. At their peak in 1999-2000, various studies identified some 60+ “IP exchanges”. By 2002-03, there were less than a handful of survivors (with yet2.com a notable pioneer and survivor.) As represented at the TechFair, we saw a number of new license exchange offerings—but with various twists on the business model. While all are intriguing (either in their innovation or back-to-the 90’s approaches), a few we found particularly interesting included Taeus International’s “Global Patent Syndicate” (a simple, Google AdWord-like service that shares revenue with listing companies – www.taeus.com) and SparkIP (which uses an advanced analytical frontend to help identify and categorize listings, and match to needs – www.sparkip.com). Building on its Patent Auction franchise, Ocean Tomo has continued to innovate in the area of structured license markets, with enhancements to its Dean’s List exchange and Bid/Ask system. Highlighting many of these emerging new models, Matthew Troyer (Taeus), Stephen Chow (Burns & Levinson), and Laura Paglione (iBridge), presented an interesting session entitled Towards IP Liquidity: Progress on E-Markets.

As always, there were a number of interesting analytical tools. Of particular note was the offering from Innography (http://www.innography.com/), a comprehensive tool for managing and analyzing patents for strategic advantage. The suite of visualization tools provide a number of unique presentation approaches that increases the efficiency of analysis projects.Finally, we would be remiss if we didn’t mention Anaqua’s new License Management Solution, which was announced in conjunction with the LES annual meeting. Built on the industry leading Anaqua platform, the License Management Solution provides tools for managing all aspects of licensing, from asset review, opportunity pursuit, negotiation and agreement management. We were very encouraged by the many conversations we had with both corporate licensing and university tech transfer professionals, who are very interested in more robust, capable software systems (see our License Management press release at http://www.anaqua.com/)

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For additional information, please contact Ralph Schroeder at rschroeder@anaqua.com or (617) 375-5808.

Building an IAM Capability for Small and Medium Enterprises

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Thu, 11 Sep 2008 18:58:00 +0000

Effectively managing intellectual assets is a critical imperative for companies of all sizes. While leading “large portfolio” IP companies often garner the bulk of best practice discussions around how they create, manage and exploit their assets, Small and Medium Enterprises (SME) share the same IAM imperative, albeit driven from different business needs and realities. For SMEs, implementing an IAM program requires a thorough understanding of a company’s business drivers, operational processes and organizational culture.

In this issue of IAM Perspectives, we discuss some of the key IAM considerations for SMEs and how the recently announced ANAQUA Express solution addresses these needs. With the introduction of ANAQUA Express, we are excited to bring a highly differentiated solution to the SME market that delivers true end-to-end IAM.

Docketing and Beyond: Providing a Complete IAM Solution
Patent and trademark docketing are critical aspects of the IAM process—particularly from the perspective of the IP legal team. In our conversations with SME clients, however, we often find that they are frustrated with traditional docketing systems because of their limited ability to provide needed functionality beyond docketing. SMEs are increasingly looking to go beyond docketing by expanding their IAM capabilities to include a more multi-disciplinary, cross-functional capability.

In designing ANAQUA Express, we started with a broader view of the needs of SMEs. While providing leading docketing capabilities, ANAQUA Express provides additional functionality to manage all aspects of the process—from invention disclosure through portfolio management.

Make Participating in the Patent Process Easy—and Rewarding

A successful patent program is focused on creating high quality, valuable patents that support the business. This process starts with identifying important ideas and submitting invention disclosures. However, for many companies – particularly fast moving, entrepreneurial organizations – we find that would-be inventors sometimes lack the incentive to participate in the patent process. In fact, inventors can be discouraged from submitting inventions because of the time burden imposed by the company’s patent process.

ANAQUA Express overcomes these barriers, by providing an online electronic disclosure submission system. Starting with a simple web form, ANAQUA Express provides an easy way for inventors to submit new ideas, helped by instructions, minimal required fields, and the ability to easily collaborate with co-inventors. The invention workflow includes automated email notifications to managers and the legal team, as well as a structured patent review board process. Importantly, the feed-back loop is complete by allowing inventors to check the status of their inventions through the online system.

In addition, patent awards can also be a key part of a successful invention program. ANAQUA Express enables companies to create and manage patent award plans that can include both financial and non-financial awards.

Align Trademark Processes to Marketing and Product Management

Well structured trademark management is a critical need for brand intensive SMEs. While this is generally considered from a trademark registration perspective, we find that SMEs can derive significant benefit from having a more formalized link to new product development or marketing which includes managing searches, brand / mark families and portfolio management.

To meet the needs of SMEs, ANAQUA Express provides a suite of brand and trademark tools (including national registrations, common law marks, convention / treaty filings and internet domains.) Starting with an optional online trademark request process, ANAQUA Express can automate and archive searches, with search decisions flowing directly in to the application drafting, filing and registration process. ANAQUA Express also provides an automated global renewal process that allows the coordination of foreign agents via both fax and email correspondence in a batch mode.

Collaboration: Working with Outside Counsel

Outside counsel (and foreign associates and agents) are a critical member of the IP team. As the relationship between the company and their outside counsel become more closely integrated, we find the opportunity – indeed, the need—for the IAM system to allow outside counsel to more directly work within the system.

ANAQUA Express has been designed to allow SME clients to easily setup access to their system using a highly structured security model that provides outside counsel restricted access only to their assigned cases. With ANAQUA Express, clients provide a collaborative environment that allows direct sharing of prosecution tasks and other prosecution related information. Document collaboration—through electronic documents—is fully enabled in ANAQUA, allowing outside counsel to access documents, upload documents and manage work product directly with the client.

IP Portfolio Management: Understanding the Value of Your Assets

We consistently find that the best IAM practitioners institute a well-structured portfolio management process that organizes their assets according to products, technologies and other key business indicators. For SMEs, we similarly find the need for tools that can help the IP legal team deliver insight and counsel to R&D and business managers about their intellectual assets.

ANAQUA Express provides a suite of portfolio management tools that allow SMEs to efficiently categorize, report and analyze their assets. The use of classifications, searching and analysis tools cover a range of purposes including freedom-to-operate (including both patent and trademark availability), competitive landscape / intelligence and operational performance metrics. These resources can be directly accessed by all IAM stakeholders.

Best of Both Worlds: Off the Shelf + Business Configuration

Large scale IAM deployments – tens of thousands of records and hundreds of users—require a complex implementation process, including work on business configuration, system interfaces and data conversion. For SME clients, we have found that they are looking for a more balanced approach, with more highly-defined, standard “off the shelf” setup templates, but with the ability to configure certain areas of the system.

The Express StartUp program provides a more streamlined setup and rollout. Starting with the ANAQUA Express core modules, clients start with standard settings including navigation, user interface, docketing rules, workflows and security roles. Clients can then identify particular areas where their business processes or procedures necessitate configuration changes. For data conversion, simplified upload tools and templates are available to provide for more efficient data transfer from legacy systems, spreadsheets or other sources.

The goal for ANAQUA Express is to provide the power of ANAQUA in a simpler, more streamlined version for the SME user. We look forward to your feedback as we work with you and others with similar needs.

Building a World Class Patent Prosecution Capability

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Thu, 12 Jun 2008 13:58:00 +0000

Effective patent management operations require a proactive, holistic approach that coordinates all stages of the patent life cycle. While docketing applications are often considered the primary tool for managing prosecution activities, we find that many companies are frustrated by the limited capabilities of their existing systems; they require a more sophisticated set of tools that can increase the efficiency and quality of their prosecution work processes. Unfortunately for these companies the solution has been the heavy customization of off the shelf docketing products and custom built tools—solving some issues, while creating a whole new set of issues caused by a disjointed and difficult to manage IT environment.

In this edition of IAM Perspectives we review the core components of a more advanced system for managing all aspects of patent operations, in an integrated, unified IT environment that is both more efficient and easier to manage.

Docketing – Managing the Three Dimensions of Effective Docketing

The center point of the patent prosecution process is generally considered docketing. Docketing involves the capture of critical dates, managing the deadlines and assignments of tasks, and coordinating other activities related to the prosecution process. The key to a successful docketing function is the ability to efficiently and accurately capture the breadth of information that is received from the patent offices, outside counsel and foreign agents—and track the status and completion of all tasks in a manner that minimizes the risk of missed assignments.

In working with our clients, we have found that the biggest challenge facing an effective docketing system is the inability to address what we call the three dimension of docketing – the country laws, client-specific procedures and ad hoc task management. Docketing products have generally addressed one or two of these dimensions; however the lack of all three dimensions results in docketing inefficiency, and significant risk.

Anaqua has been purposefully designed to enable clients to address all three dimensions by providing a comprehensive docketing toolset. At the core is the proprietary Anaqua Law Engine. The Anaqua Law Engine provides the workflow, rules and notifications components. Clients are provided country law and industry best practice docketing procedures, as well as having the flexibility to easily define their own policies and procedures. Based on a powerful, yet easy to use “condition / action” model, Anaqua continuously monitors every aspect of the case, reacting to changes in status, upcoming due dates and other critical aspects of the docket.

In addition to the core Anaqua Law Engine, Anaqua provides docket entry quality control and data integrity controls, as well as the ability to compare internal docket data with patent office file wrapper data (e.g., USPTO private PAIR).

Diary Management – Calendaring and Tasks …And the Docket Report!

Closely associated with the core docketing functions, diary management is the process by which attorneys (both in-house counsel and outside counsel), paralegals and other professional staff, manage their day-to-day work. Generally the most important aspect of diary management is the flexibility to provide information in an easy to use format. The challenge is providing individualized diary information that meets the way each person works—either as an online calendar or a printable report.

Anaqua provides integrated calendaring capability that provides each user a personalized calendar of all assigned tasks, with a set of tools to manage status, completion, assignments and other aspects of their docket. Importantly, the calendaring features include the ability to manage multiple calendars simultaneously. For due dates, Anaqua provides notifications and alerting—directly tied to the docket workflow and rules engine—that can delivery automated messages via email, including to both in-house and outside counsel.

Another critical aspect of Anaqua’s diary management capabilities is reporting. Users are able to access standard “one click” diary reports directly from their home page, as well as access a complete library of reports including personal ad hoc and custom reports. Also popular is the use of automated “batch delivery” of reports which can be setup to provide reports on a defined schedule, directly to users, via email.

Record Creation – Managing Complex Patent Families

Managing the complete family of all related applications and patents is critical to effective portfolio management. As the complexity of both international filing strategy and patent procedures increases, the docketing function requires greater capabilities in how records are created. While other docketing systems allow simple family relationships to be entered or created, these generally lack the ability to build more complex associations between related patents which reflect the filing strategy and prosecution process.

Anaqua has addressed this increased complexity by building a number of features that provide greater capabilities in managing the record creation and family tracking process. Anaqua’s filing strategy tool allows clients to define standard filing plans (e.g., “filing tiers”), as well as construct specific filing plans based on a given invention’s requirements. Records can then be easily created with a “one click” create process that automatically copies data and structures the family relationships. Importantly, underlying convention or country specific filing rules are built in to the process.

For convention based filings (e.g., EP or PCT), Anaqua also provides an internationals creation and record management process. All related national stage cases can be easily viewed and tracked, and managed in a unified manner.

Other important capabilities include the ability to set multiple priority records, create links to associated applications, and to view the family tree diagram and navigate across the complete family through a single interface.

Electronic Document Management – Automating Prosecution and Going Paperless

Historically a paper-intensive process, the era of paperless patent prosecution is quickly becoming a core requirement of leading IP groups. The trend towards a fully electronic process is being driven by both organization structure—increasingly global—and changes within the patent offices—moving toward electronic filing and online case management.

While company policy may differ in regard to the need for certain hard copy records, most companies have embraced the paperless movement. Unfortunately, companies find their existing docketing systems were not designed for the paperless world, and they are forced to rely on simple shared file directories or separate document management systems that are disconnected from docketing.

Anaqua provides a full set of electronic document management features designed specifically to provide IP groups with a fully paperless work environment. Documents can be easily uploaded to records, as well as shared amongst related records (“one to many”), with the ability to both restrict access and lock records when checked-out. Teams are able to use Anaqua as a central repository to collaborate on documents throughout the prosecution process, including applications, office actions and other correspondences. Anaqua also provides automated templates to improve the efficiency of correspondences, as well as electronic filing packets which can be used with patent office e-business / e-filing programs.

In addition to documents, Anaqua also captures emails—both outgoing and incoming emails. These can include standard template emails created for specialized purposes, as well as attachments, URL record links and other automated merged data.

Prosecution Collaboration – Teaming with Outside Counsel

Outside counsel (and foreign associates or agents) are a critical member of the IP team. Historically the docketing process—and particularly the docketing systems—have been separate both in terms of organization and systems. This disconnection has largely been borne from process and technology limitations, rather than the lack of a value proposition. Accordingly, we see a high level of interest in having a more collaborative environment that allows direct sharing of prosecution tasks, documents and other prosecution related information.

Anaqua provides a platform that has been designed to enable outside counsel collaboration across all aspects of the prosecution process, providing a unified environment for companies and their outside counsel to work more efficiently and effectively. Starting with defined security, Anaqua allows access control at the record and functional level so that outside counsel can only view and work on their assigned cases. This allows outside counsel to use Anaqua’s docketing and prosecution function directly—entering dates, documents and other information right in to Anaqua.

For docketing tasks, Anaqua provides the unique capability to setup distinct outside counsel rule sets, which will assign and monitor the docket based on what has been defined for the law firm—distinct from in-house related tasks. The Anaqua Law Engine can assign tasks directly to outside counsel, including notifications and escalation rules to manage due dates and assignments.

Document collaboration—through electronic documents—is fully enabled in Anaqua. Outside counsel is able to access documents, upload documents and manage work product directly with the client, including the ability to lock records. Automated email messages can be sent to assigned resources when documents are added to the case.

For additional information, please contact Ralph Schroeder at rschroeder@anaqua.com or (617) 375-5808

The Anaqua Client Community and ACE

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Fri, 04 Apr 2008 14:01:00 +0000

From the beginning, Anaqua and its clients have placed great emphasis on building an active, collaborative community of IAM leaders to share ideas and experiences and provide direction for Anaqua’s IAM solution. Last week we held the third annual gathering of this community at the Anaqua User Conference in Delray Beach, Florida. Every client sent multiple delegates including Heads of IP, patent and trademark attorneys, portfolio managers, IT and operations staff and paralegals. The program included client presentations on best practices in IAM strategy and operations and a series of workshops and tutorials.

At last year’s conference, there was a strong desire for a collaborative, open forum for sharing best practices in all aspects of IAM— both related to their use of the Anaqua system, as well as more broadly to share information about strategy, organization and process . This year we were able to unveil Anaqua’s new IAM best practices resource, the Anaqua Community Exchange (ACE).

The Anaqua Community Exchange is a “private” collaboration environment provided to Anaqua clients. The ACE system was initially conceived by our Executive Council, a special group of senior IAM executives who provide both industry insight and guidance to Anaqua’s business. The objective of ACE was to provide a robust, active resource that would enable clients to both contribute and receive IAM best practices amongst and between their fellow Anaqua users. While other IAM related sites were available through the web, the Executive Council felt that a dedicated, client directed system would provide a much higher value resource. Importantly, the Council felt that the ACE environment must provide a flexible structure, and support for both peer-to-peer collaboration, as well as providing a conduit for Anaqua training and support materials.

Over the last few years we’ve seen a plethora of new technologies and resources emerge that are aimed at helping companies share “best practices” information – online forums, discussion boards, blogs, wikis, to name a few. In designing the ACE system, Anaqua worked closely with its clients to understand their expectations and requirements. Having past experience with various online forums, the team was committed to providing a resource that would be truly valuable—and therefore would flourish with evergreen content driven by active use and participation. In implementing ACE, the following are some of the key components have been provided:

A robust wiki infrastructure that allows shared content to evolve through community exchange of revisions. This is particularly useful for user guides and training materials, which can be collaboratively revised and updated by the Anaqua user community, and shared by all;

A document sharing function where presentations, white papers, best practice guides and other materials can be posted and shared;
Discussion rooms where users can contribute ideas, documents and other information;
A Resources area where ANAQUA document and email templates and user-written reports can be posted and shared;
Postings of upcoming events including user conferences, webinars and industry meetings;
Notifications and RSS subscriptions to allow users to automatically receive updates from their topics of interest—pushed directly to their email or browser

Content has included new versions of the Anaqua training materials (for the new ANAQUA6 release), case studies (including the recent IAM article by Amy Achter (Kimberly Clark) and Paul DiGiammarino (Anaqua), and the presentation materials from our recent Anaqua User Conference.

So what are the implications for Anaqua’s current and future clients? We are excited about the added value that ACE delivers by providing a unique environment and eco-system for our leading client companies. Anaqua sees the opportunity to go far beyond providing the industry’s best IAM system “features and functions”. ACE is a critical component in Anaqua’s overall customer experience, providing an incredible resource to derive substantial benefit from the collaboration and sharing of ideas across the full set of clients – the Anaqua Community Exchange!

Harvesting Ideas: Enterprise Invention Management

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Tue, 12 Feb 2008 15:19:00 +0000

Invention Management is a critical component of enterprise Intellectual Asset Management. Invention management is a multi-step process that requires active coordination across various functional areas, including R&D, product management and the legal department. Increasingly, companies are finding that their past-practices of ad hoc invention management are failing to provide the quality or quantity of ideas necessary to build a world-class, strategically aligned patent portfolio. And with the expanding globalization of businesses, the ability to reach inventors is a logistical and information management challenge. The solution for many organizations is the implementation of enterprise Invention Management systems that enable an electronic, paperless process that fits within the end-to-end IAM process.

While the specific steps may differ from company to company, we find that leading IP companies generally use a common approach that coordinates the people, process and information needed for efficient and effective invention management. In this edition of Anaqua IAM Perspectives, we discuss the essential components of an enterprise Invention Management solution.

Paperless, Electronic Invention Disclosure Form

The use of standard electronic invention disclosure forms (IDF) is a common feature of an automated invention process. Replacing paper-based or emailed forms, the process begins with submission of an IDF through a full featured web form, which helps guide inventors through the process of describing the subject matter and merits of their idea. In addition to the electronic IDF form, these systems often also provide the following additional features:

Easily select co-inventors including contact and employee information pulled from the company directory;
Upload documents that provide supporting information to the IDF;
Identify and list related inventions or patents which may be useful references;
Ability for inventors to “self rate” the technical and business value of the idea;
Identify critical dates which may affect the time period or urgency of application filing;
Support active collaboration between co-inventors;
Indicate the invention’s technology, R&D project, product, market position and any other related classifications;
“Lock” the disclosure to preserve the invention date of the idea;
Provide electronic signatures for the IDF;
Validate submission with an auto generated email to the inventors providing the disclosure number, date and other explanation of the process;

Invention Evaluation and Patent Review Boards

Increasingly, most organizations are using some form of a structured review process to evaluate their invention disclosures. A common approach is to organize incoming inventions by business units and technology, and route a new IDF to a list of designated reviewers. Often a Patent Review Board (PRB) will be periodically scheduled which brings together both inventors and subject matter experts as well as business and legal representatives . The PRB will provide a forum for inventors to present the merits of their ideas and an evaluation process that rates the technical, business and legal value of the idea. In supporting these processes, the system should provide the following capabilities:

Ability to automatically organize new disclosures by business unit, technology or other classification based on information provided in the IDF;
Enable a centralized department to manage and report on all incoming IDFs across the entire company;
A way to easily schedule the PRB meeting, including the agenda of new disclosures to be reviewed and supporting documents;
Provide a defined rating system that scores ideas in a consistent manner, and which can vary by technology or business unit;
A system that captures the technical, business and legal merits of the invention;
A way to facilitate the “file” / “no file” decision from the PRB meeting, and to automatically notify the inventors;

Foreign Filing Plan and Budgeting

The need for global patent coverage and the high cost of foreign filing requires a structured filing plan and budgeting process. Based on an approved disclosure’s rating, as well as the related product’s market profile, a company will identify the countries in which patent applications will likely be filed. Often the filing plan will be based on a set of pre-defined “tiers” which correspond to a group of countries. The filing plan should also provide a budget estimate calculated from both the official fees and the company’s typical professional fees. To support this process, the system should provide the following capabilities:

Ability to set up and name geographic areas containing multiple countries/jurisdictions;
Ability to set up and apply pre-defined filing plans showing priority and secondary filings;
Ability to apply filing plans automatically based on product/technology or other classification and the evaluation ranking of the invention;
Ability to project budget costs of a proposed filing plan

Inventor Recognition and Awards

Creating a corporate culture that values participation in the invention process is an important responsibility of the IP organization. Inventor recognition programs and inventor awards are common ways for companies to incent their would-be inventors to participate, and to compensate them for the time spent on creating high value IP. In addition, some countries—such as Germany and Japan—have inventor remuneration laws which require structured payments to inventors. To help manage these processes, the system should provide the following features:

An invention award scheme that allows awards to be paid at defined milestones, such as disclosure, application filing or grant;
An automated process to calculate the award based on such factors as historical number of disclosures, number of inventors and quality rating;
An interface to financial systems to automate the payment and receipt tracking of awards;
A way for inventors to easily check on the status of their inventions through an Inventor Portal;

Conclusion

Effective, high quality invention management is the critical first step in a world-class patent process. Providing a structured, automated system to coordinate the myriad of functional and information aspects is an increasingly common solution for companies that are leaders in IP management. In working with some of the world’s most highly regarded IP owners, Anaqua has developed a full suite of tools that enable companies to implement complete end-to-end invention management—integrated within the broader IAM process.

Preparing for the USPTO Rule Changes

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Mon, 10 Dec 2007 17:34:00 +0000

The new U.S. Patent and Trademark Office (USPTO) rules for Continuations and Claims (published on August 21, 2007, and currently enjoined pending legal challenge), has caused perhaps the greatest level of consternation in recent memory of rules changes implemented by the USPTO. In addition to the Continuations and Claims rules, the USPTO has also proposed new requirements related to Information Disclosure Statements (IDS), which will cause material changes to the patent practices of applicants and their representatives.

With the admirable goal of reduced work volume and pendency backlogs, and increased examination quality, the barrage of new rules have the practical effect of shifting many tasks traditionally conducted by the USPTO to the applicant (or their representative) and to dramatically increase the management complexity of pending application dockets.

While the final implementation of these rules remains uncertain, many IP owners have taken the opportunity to understand the underlying principles of the rules, and assess how management of their patent prosecution operations can be improved. The new rules are particularly intensive in their demands to cross-reference application-related information. Not surprisingly the IP department’s IAM systems are being challenged to provide the capabilities needed for data and workflow support implicated by the new rules.

At Anaqua we have worked closely with our clients to develop a comprehensive approach to providing the systems support needed to meet the various components of the new USPTO rules—and more importantly to improve the efficiency and effectiveness of patent operations in a new paradigm of application disclosure requirements. In this edition of IAM Perspectives, I provide an overview of some of the ways our clients are using Anaqua’s Integrated IAM Solution to meet and exceed their increased prosecution management demands.

Continuing Applications and RCE Limit

Under the new rules, applicants will be limited to two (2) continuing applications (continuations and continuation-in-part applications), and to a single (1) request for continued examination (RCE), in any application family (unless an exception argument for justification is presented.) In determining which families will be subject to the limitations, an application family includes: original application, continuations, CIPs and RCEs; divisional applications are not subject to the limitation, as they would not contain patentably indistinct claims.

To manage the limit on pending applications, our clients are increasingly relying on Anaqua’s ability to manage the application family through the Create Application and Family Tree view tools. Anaqua’s application creation process automates the process for creating a patent family, including the requirement to define the related application type, all action dates and related correspondences.

Anaqua’s Family Tree view provides a graphical representation of the entire patent family, including the ability to easily navigate between related applications. The Family Tree includes important application information including application number, file date, priority date, and status. In addition, users can also easily run Anaqua’s standard patent family tree report or create a custom report that meets the desired requirements.

The “5/25” Claims Limit

The new rules also impose a limit on the number of claims in a patent application. An application may include up to five (5) independent claims and up to twenty five (25) dependent claims (the “5/25 rule”). If an application does not comply with the 5/25 rule, the applicant must submit an Examination Support Document (ESD), a considerably burdensome disclosure process which will likely motivate applicants to work within the rule except in the most necessary situations.

Anaqua provides a number of features which help automate and proactively manage the 5/25 rule. First, claim count fields for both independent and dependent claims are available, which allow case managers to enter the number of application claims (as well as capture actual claim language, if desired).

To provide automated compliance with the 5/25 rule, the Anaqua Law Engine has been enhanced to automatically monitor the claim number fields, and flag those applications in which the 5/25 rule has been violated. The notifications of these violations can be sent via email or the Anaqua calendaring feature to the appropriate case manager. Also, where an ESD is required, the Law Engine automatically dockets the tasks and associated reminders, including appropriate task manager assignments.

From a reporting perspective, our clients are using Anaqua’s standard and ad hoc reporting toolset to review their application portfolios. Anaqua’s standard claims report provides a listing of all applications and their independent and dependent claim counts. These reports can be reviewed and shared amongst the IP team to ensure rule compliance.

Co-Pending Applications

A critical aspect of the 5/25 rule is its applicability to co-pending applications. The rule is triggered if multiple applications exist which contain at least one patentably indistinct claim between them. In this case, the 5/25 rule will be counted across the related application family. Thus, if at least one claim in a first application and at least one claim in a second application are patentably indistinct, all the claims in both applications are summed to determine if the combined applications exceed the 5/25 rule.

In aiding the examiner’s 5/25 claim count, applicants must identify all commonly owned applications and patents that, (1) have at least one common inventor, and (2) were filed (or claim a priority date) within two months of a filing (or claimed priority date). With regard to the claimed filing or priority date, applicants must be cognizant of the actual filing date and the priority date of both the application being prosecuted, and the commonly owned applications and patents. The identification must be made in a separate filing paper.

In working with our clients, we are finding that the biggest challenge of the co-pending application requirement is the ability to survey applications being handled by different outside counsel. For many of our clients, assignment of drafting and prosecution work is determined by the combination of subject matter and work load. It is common for separate but similar subject matter to be assigned across a group of qualified firms, and therefore causing challenges to identify cases to which the rule would apply.

Within Anaqua, our clients are first relying on the identification of applications with common inventors. Through the standard and ad hoc reporting tools, our clients are able to generate inventor reports which identify applications falling within the purview of the rule. In addition, filed and priority date filters can be applied to focus on only those application which would fit the reporting requirements. In some instances, our clients are using the review process for not only USPTO compliance, but also to reconsider more cost effective assignment of cases to outside counsel.

Also providing substantial benefit, are Anaqua’s Classification tools, such as the IP Review Module. Using technology and UPC classification schemes, Anaqua users are able to easily group and organize related applications, thereby more readily reviewing the portfolio for the possibility of meeting the co-pending rule.

Finally, our clients are relying on Anaqua’s collaboration capabilities to enlist their outside counsel to be more closely involved in reviewing the portfolio for co-pendency issues. Through Anaqua’s security model and access controls, clients are able to allow outside counsel to access and review their assigned application cases.

Retroactive Applicability of New Rules

One important aspect of the new USPTO rules is its retroactive applicability date. Under the rule, applications which have not received a First Action on the Merits on or before the November 1, 2007, effective date will be required to comply with the rules, or file an Examination Support Document (ESD).

To help clients better review their portfolios, Anaqua has leveraged its ability to provide filters to both its Find screens, and standard and ad hoc reports. The reports allow all pending US applications to be reviewed which are not yet “allowed”, and compare whether the rule(s) apply. The report will run with a +/- 2 month window, to compare the filing and priority dates between applications. In addition, many of our clients have also developed their own custom reports which meet the specific requirements of their operations.

Information Disclosure Statements (IDS)

While still pending final publication, the USPTO is expected to promulgate an extensive set of new rules related to the submission of Information Disclosure Statements (IDS). The objective of the rules changes are to improve the efficiency and timeliness of examination by requiring applicants to take a more proactive role in both limiting the amount of disclosure materials and advising examiners as to the relevancy of such disclosures. While the USPTO’s research found that upward of 85% of applications would likely not be materially affected by the changes, the consensus amongst most patent practitioners is that the new IDS requirements will cause substantial adjustment to how the IDS requirements are met.

The new IDS filing rules, as proposed, will include (among other requirements) that an IDS be filed before a First Office Action on the merits, and that the IDS be limited to twenty (20) material, non-duplicative references, with each reference no more than twenty-five (25) pages. For IDS filings after the First Office Action, or which exceed the number or page limits, applicants will be required to provide detailed explanation as to the relevance.

The practical effect is that applicants and their representatives will be more formally accountable for the content and materiality of the references provided in an IDS.

Anaqua provides a number of features to aid with the management of IDS filings, documentation and related references. Each application record in the system allows for the listing of Related Art including applications, patents and non-patent materials. These Related Art references include descriptive information concerning their materiality to the application and other supporting explanation. Importantly, the references will be archived for future reference. Analysis documents, such as a patentability or technology review can also be archived as part of the reference as an electronic Document within the application record.

Another important feature is the Anaqua Law Engine. The Law Engine provides automated docketing of IDS related tasks and reminders, including assignment to appropriate case managers and/or outside counsel. The IDS ensures that the IDS is filed timely (prior to the First Office Action).

For IDS forms and supporting materials, Anaqua provides an electronic Documents repository which allows both PTO filing templates and related Office documents to be stored within the record. The documents can be locked and shared amongst the responsible team.

Conclusion

While the status of the new USPTO rules remain uncertainty, IP Owners and their outside counsel are well advised to proactively assess how their patent operations—and particularly their patent information systems—will support compliance with the rule changes. Anaqua has worked closely with both its clients and leading practitioners to develop a comprehensive approach meeting the USPTO requirements.

Planning and Budgeting for an IAM System Implementation

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Wed, 19 Sep 2007 12:36:00 +0000

As companies plan for next year’s IAM software deployments, many are challenged with preparing an accurate and adequate budget to ensure project success. While software license fees and other IT costs are obvious budget line items, we have found that organizations often fail to comprehensively address all aspects of a project. It is all too easy to underestimate the financial and human resources required for success. For many IAM teams, the selection and implementation of an IAM solution will be the most complex and expensive IT project they have been directly involved with in their careers to date. And unfortunately IP software vendors have typically done a poor job of working with their clients to create project plans, work estimates and budgets that are accurate and reliable. The result is that in the later stages of a project clients find themselves severely dissatisfied with depleted budgets and incomplete work.

Based on our discussions with leading IP-owning companies, we have identified a set of common considerations that can help guide planning and budgeting for a successful IAM system deployment. In this edition of Anaqua IAM Perspectives, I discuss the key areas that should be included when creating an accurate and reliable IAM solution budget.

Planning, Planning, Planning—and then More Planning

We have found that often the most commonly overlooked area of the IAM project is the planning phase. While most clients understand the need to document basic requirements, project plans and timelines, we find that stakeholder buy-in and change management factors are often underestimated or ignored. A comprehensive planning phase should focus on ensuring that all stakeholders—those who will be heavy users of the system and have strong ideas about how the system is setup—feel that they are directly involved from the very beginning of the project. Failure to secure the input and buy-in from all stakeholders can be a death knell for any large software project and particularly for IAM systems where stakeholders will often be required to make substantial changes to their current processes.

In working with our clients, we find that 20-30% of the budget should be allocated to planning. To address stakeholder concerns, the planning activities will include intensive work sessions with all key stakeholder groups to collect information and input about their IAM processes and expected functionality. Working from these requirements, a “gap” analysis identifies the focus areas for business configuration and any development work required. A collaborative prioritization process helps to set expectations as to what will and will not be delivered, with a detailed description of the final solution.

Fitting Your Operations—Business Configuration

In evaluating alternatives for their IAM solution, companies are becoming wise to the need for a system that has the flexibility to fit their particular IP business operations. The “docketing system” implementations of the late-90’s or early-2000 lacked workflow, data reporting tools and other needed system features. While many of the old docketing system vendors are touting their new “web based” technology upgrades, these new systems do not necessarily mean that the flexibility issues have been addressed—companies are well served to understand the true business configuration capabilities of the different offerings.

The 80/20 rule should guide the budgeting for business configuration of the IAM system. That is, although a significant part of the system needs are common among all organizations, it should be expected that 80% of the value in the new IAM system will be gained from the 20% of the system specifically configured to the client’s operations. This will include areas such as configuring workflow, prosecution rules, notifications, contacts, etc.

Garbage In / Garbage Out – Data Conversion

The old adage “garbage in / garbage out” is highly applicable to an IAM project. Low quality of the data – including bibliographic data, family data and docket tasks—can be the source of very significant risk because ultimately the new system will only be as good as the underlying data. It is common for companies to have accumulated data issues through business acquisitions, differences in staff practices and old systems which were initially installed with poor data. Often we find that migrating to a new system involves not a single data source, but the combination of multiple data sources and data types. For many companies the risk of low quality data in their current systems is a key factor motivating the new IAM system deployment.

We have found that most companies underestimate the effort required to convert data from their legacy systems. A key consideration is whether data will be migrated through an automated program, or if it is more cost-effective to setup the new IAM system using manual data entry. Companies also should consider if more in-depth data integrity checking is required by checking legal status databases.

Build It and They Will Come – Or Will They? – Training and Education

New system projects are ultimately only successful if they are embraced and used. The significant financial and resource investment in implementing the best IAM system possible will not provide the desired Return on Investment if users are unable to easily use the new tools in their work. While being “user friendly” is an important design consideration, with business applications it is important to understand that it is unlikely that the advanced system capabilities will be properly used unless extensive training and education opportunities are provided. In addition, proper training is critical to ensure that data entry and data output are consistent and high quality.

For organizations implementing IAM systems, we find that their training and education budget should allow for a multi-tier approach which supports all stakeholder groups in their adoption of the new system. For core users, we often work with clients to develop train-the-trainer programs which enable a continuing capability for the client to teach users how to use the system. While vendors may provides baseline documentation, sufficient work should be allocated to creating comprehensive documentation that is customized to the client’s specific work policies and procedures.

Experience Matters – Having a Proven Implementation Approach

While a system’s features and functions drive the product selection, the capabilities of the vendor to successfully implement the solution should not be a secondary consideration. For most companies, their new IAM system will be replacing an existing IP docketing application—or a set of multiple IP applications—that over the years has become complicated, confusing and temperamental. The integration of these systems to create a single, unified IP environment is often a driving force behind the new IAM system, as well as the ability for the new IAM system to interface to other legal, financial and business management systems. While the license fee cost is a key budget factor, the initial implementation costs and ongoing vendor support costs are generally several factors greater in total cost during the lifetime of the system.

Unfortunately, many companies have found that their “vendor of choice” lacks the skills and experience necessary to convert from the old IP system to the new IAM solution. The result is not only budget overruns, but often more costly, the project suffers from the lost productivity caused by delayed new system rollout, system errors and additional staff time. Companies should actively scrutinize the vendors to fully understand their implementation approach, and the experience of their clients in working with the vendor. Finding similarly situated references and talking to them about their experience with the vendor is critical, including open and frank discussion about challenged projects. Vendors should be able to offer their experiences in managing implementations through the various risk points and advising the client on how to avoid project pitfalls.

Conclusion

The planning and budget process for new IAM systems requires that project champions be as realistic as possible when requesting the required funding. An IAM system presents a new strategic opportunity to substantially impact the business, going well beyond the old “docketing system” solutions. While each company’s situation presents a different and unique set of issues, companies can benefit by thinking through and considering all aspects of the project.

Fortunately, we’re here to help. Based on our experience, Anaqua can provide assistance in developing business plans for IAM implementations and ensure your planning and budget process are accurate and complete.

CIP Forum 2007

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Sun, 17 Jun 2007 20:20:00 +0000

The Center for Intellectual Property at Chalmers University of Technology held its biannual CIP Forum on May 20-23 in Gothenburg, Sweden. CIP’s Intellectual Capital Management program is building a strong reputation as a center for IAM thought leadership, and the conference certainly reinforced this. The Forum attracted more than 500 delegates, including many of the world’s leading voices in IAM, with strong representation from practicing business and R&D professionals.

The buzz at CIP was around Open Innovation and how IAM can drive value directly to the business—particularly from European organizations, which clearly embrace the principal that IAM is much more then a legal function. This sentiment, however, was not limited to the European delegates. Marshall Phelps, SVP of Intellectual Property at Microsoft, and Ruud Peters, CEO, Philips Intellectual Property & Standards, each presented forward looking views of IAM and its impact on business value. They acknowledged it is necessary to ensure Intangible Assets are legally protected, but this is not sufficient to drive innovation and achieve strategic goals. They went on to state that the real value opportunity is derived by integrating IAM into the innovation process and core business strategy. This sentiment was reinforced by many other presenters who offered a valuable selection of topics on how companies can use IAM to drive business impact.

As a European based conference, it was interesting to find that European companies and thought leaders seem very active and bought-in to the ideals of strategic, business-focused IAM, in many regards more so than US companies. This was reinforced in several ways:

First, in Europe, the opportunity is business-driven IAM – not legal-driven IP. This is a very critical difference, perhaps attributable to the fact that in Europe responsibility for IP decisions traditionally spans multiple business functions, rather than being predominately under the purview of attorneys.
Secondly, we heard less about “patents”, “litigation”, or “damages”, and much more about proactively managing intellectual assets to drive business value. Several speakers announced the end of the era of looking for underutilized IP to license as this was a distraction from developing an IAM core competency in driving innovation and new product development.
Thirdly, the concept of Open Innovation was very widespread – almost every presentation had some angle on the importance of collaborating with partners, suppliers, customers and competitors to increase innovation.

Many Anaqua clients are trying to elevate IAM to a much more strategic, business driven discipline, often involving Open Innovation. The premise is that Intellectual Asset Managment delivers value in two ways:

increases revenue through higher prices for “premium”, IP-protected features, from the ability to sell more units due to a unique feature, or because you can identify and develop entirely new products
improves manufacturing processes with unique innovations and know-how, resulting in higher quality products at reduced cost.

The result of either (1) or (2) is higher margins. If deployment of IAM best practices enables you to increase profitability and growth, it is possible to achieve hundreds of millions or even billions in financial impact.

If IAM is really business aligned, the goal must be to create competitive advantage from innovative products and features and IAM resources should be aligned with this objective.

Portfolio Management

noreply@blogger.com (Anaqua - Intellectual Asset Management Software) — Fri, 02 Feb 2007 15:44:00 +0000

A central tenet of IAM is the ability to create, manage and leverage intellectual assets, and thereby drive tangible corporate value— “tangible value from intangible assets”. As an IAM tool, Portfolio Management (PM) provides a structured approach to understanding a collection of intellectual assets — whether one’s own or a third party’s — and provides the informational basis for the range of asset management activities pursued by companies.

In this edition of Anaqua Perspectives, we discuss IP Portfolio Management (PM) as one of the cornerstones of an IAM program. Most importantly, PM is not limited to certain assets types — such as patents — but applies equally to all intellectual assets including trademarks, domain names, copyrights and trade secrets. We encourage organizations to think of PM as a critical tool to be used across all intellectual asset types.

In working with our clients, we find that while no two organizations define PM in exactly the same terms, for the most successful companies, a set of common approaches and tools drive effective, value-added PM.

First, we consistently find that the best PM practitioners institute a well-structured categorization scheme that enables assets to be classified according to key business characteristics. By assigning each asset to categories, the value context is instantiated in the portfolio, thereby creating the basis for IAM business intelligence (BI). With a categorized portfolio, IAM decisions can be made with a more complete understanding of their business impact. To efficiently categorize the portfolio, the process should be integrated into key steps in the broader IAM process and workflow. For example, categories can be assigned or updated during invention disclosure, the patent review board meeting, foreign filing deadline and annual maintenance review. Automation of these workflows substantially improves the effectiveness of the categorization process.

The categorization scheme should reflect the multiple dimensions of IAM, and allow both hierarchical and unlimited many-to-many assignment to assets. We find that the following types of categories are common among best practice organizations:

business organizations / business units
budget / cost center codes
products / brands
projects (e.g., R&D project, marketing project, business development project)
technologies
keywords
SIC codes / industry segments
standards
licensing status
UPC / IPC codes
Trademark classes

A second key PM practice amongst IAM leaders is the use of online, collaborative IP projects. In the patent area, these include such activities as offensive reviews, freedom to operate projects and competitive intelligence analyses. Similarly, in the trademark area, these projects include brand reviews, broader mark availability and anti-counterfeiting projects. As a distributed process, PM involves multiple functional areas, business units, geographies, and increasingly, multiple outside parties such as partners and professional service providers. With technical advances in web based tools, a company is able to centrally manage IP projects in a virtual environment, and establish a resource for institutional knowledge of PM activities. We find that best practice companies are able to leverage their IP Project capabilities to better share information and reduce work effort or redundancies often experienced in highly distributed organizations.

To best support PM, the IP project management approach should provide a comprehensive, yet flexible process that can be configured to meet an organization’s PM objectives. In developing their IP Projects, best practice companies consider the following critical features:

Linkage between projects and assets
Abundant data fields
Electronic document management
Document retention policy
Workflow management
Task and activity assignment
Contact management (internal / external resources)
Asset level analysis / review
Categorization
Robust project level security

A third best practice for PM is the use of searching and analysis tools to extract IAM business intelligence. In our discussions with leading companies, we find that reporting is often cited as the most critical factor in achieving PM objectives. This includes both internal asset analysis, as well as third party intellectual property rights (IPRs). The use of searching and analysis tools cover a range of purposes including freedom-to-operate (including both patent and trademark availability), competitive landscape / intelligence and operational performance metrics. Of particular note, we are increasingly finding that PM initiatives are driven in part by regulatory compliance related to Sarbanes-Oxley, FASB rules and other assurance related considerations.

In establishing their capabilities for PM searching and analysis, forward looking companies are implementing tools that meet the following requirements:

Internal and third party asset data
Derived operational workflow metrics
Comprehensive text searching
Availability of pre-formatted reports
Ad Hoc reporting building
Export to EXCEL
Interoperability with “best of breed” BI tools
Access to public and vendor data services

IP Portfolio Management (PM) is a key component in enterprise Intellectual Asset Management. As we work with our clients, we find that implementing successful PM requires consideration of key strategy, process and technology factors.