Organizations with large collections of intellectual property assets—patents, trademarks, licensed content, domain names, etc.—can face enormous and critical problems with managing all the details necessary to create, maintain, and use these assets. Thomson IP Manager, a major suite of IP portfolio management software from Thomson IP Management Services, provides and processes key information in as many problem areas as possible and improves organizational decision making in handling IP assets. Recently Thomson Reuters added several new features to the package, in particular data validation. The data validation feature taps into Thomson Reuter’s massive collection of patents, including the Derwent World Patent Index, to match internal corporate patent information against public filings and identify discrepancies for correction. IP Manager now also has support for Information Disclosure Statements (IDS), survey and delegation for work teams, and a new collaboration portal.
According to Adam Kenney, director of product management of Thomson IP Manager, most of the clients for the software service are large patent holders with patent portfolios in the thousands and with numbers of patent attorneys on staff and/or outside counsel law firms specializing in patents. Industries represented are “R&D driven like pharmaceuticals, electronics, telecom, and so forth.”
Thomson Reuters has been involved with patent docketing and portfolio management services for several decades now. Veteran patent searcher Edlyn Simmons of Simmons Patent Information Service LLC, pointed out how critical and complex the filing requirements, along with fee payment schedules and other details that differ for each country in which the patent is filed, were for companies and their patent attorneys. “Most of them are on timelines that go into docketing software which ties all of those related to the same invention. The data validation would deal with people creating the records, who sometimes make mistakes or miss dates (payments, prosecution, annual fees, responses to official inquiries, and even assigning matters to the right person or persons). IP Manager helps people in a company make sure all is done right at the right time by the right people.”
There are other IP management software providers, but Thomson Reuters has a unique advantage in the patent area when it comes to data validation. It owns the Thomson Reuters Global Patent Collection, a comprehensive database of patent documents with 76 million records from more than 70 issuing authorities. It also owns the Derwent World Patent Index with its sophisticated abstracts and indexing of patent information from national and international patent offices. Although at present, the data validation feature only applies to patents, it may expand to cover trademarks as well. Thomson Reuters, the parent company, also owns Serion and the CompuMark database covering trademarks and brand names for more than 200 jurisdictions around the world.
According to Kenney, IP Manager “is not a research app like our sister company Thomson Innovation, though sometimes our very large clients do prior art searches on their own patents.” But Simmons could recall times she had to do data validation checks as part of her patent searching duties for employers. Although it is hard to imagine a client for IP Manager not also subscribing to Thomson Innovation, Kenney did say that the data validation feature did not require such a subscription. Thomson Reuters companies have access to each other’s files.
Kenney also pointed out the advantages that integrating data validation into an organization’s patent workflow would have. “Instead of only checking when something bad happens, users can just set up validation on anything or everything for regular scheduled checks [through IP Manager’s Process Architect feature] and deal with a small set of cases each quarter, then fix them and get on with it. No spiking.” By the way, when he uses the word “cases,” Kenney refers to patents and patent applications, even those not involved in any litigation.
The way data validation works in IP Manager, according to Kenney, the system cross checks data “field-by-field and reports by criticality. It prioritizes items and presents the public filing to the user side-by-side with the internal data. This helps the user make up their own mind. The consolidated list lets the user scroll through cases one-by-one and push an approval button or not. The human element is still there. The Process Architect also allows users to design a process that suits the companies’ decision-making processes and target specific individuals for decisions regarding different items or issues. This is critical for the data validation process, where it builds into the collaboration portal, e.g., users can put the data validation at the start of a larger decision process.”
Both Simmons and Kenney commented on the vital importance of Information Disclosure Statements. Simmons said, “The IDS is important in the U.S. and some other countries. If you know why a patent application might not be allowable, you must supply that information to the patent office. It is called ‘the duty of candor.’ And if you hear about something while your patent application is pending, you have a time limit to meet for telling the patent office. For example, if you are prosecuting one patent in the U.S. and one in Europe and you get a letter from Europe that your patent claim is challenged by something, you must send a notice to the U.S. patent examiner.” Kenney confirmed the importance of handling an IDS carefully. Not doing so, “can get examiners mad or, if you got into a lawsuit on infringement later, it could even go to a charge of ‘inequitable conduct’ (like fraud) against the attorney. It could mean lost revenue. Attorneys lose sleep over this kind of thing.”
The new IDS Reference Management functionality helps IP professionals manage patent and technical literature references related to pending patent applications. Kenney admitted there were other solutions to IDS handling on the market that let you handle the citation of references involved in an IDS, but Thomson wanted to “connect it to the portfolio with lots of detail and individual reviews. We had to make sure we could support relationships.” The IP Manager will set a date for sending an IDS to the appropriate office based on appropriate instructions built into the IP Rules engine. This IP Rules content is updated quarterly, adding thousands of changes each year, according to Kenney, for the world’s patent authorities as well as statutory changes. In the case of IDS scheduling, Kenney said that the system would both attach a date and allow users to change it. “For example, typically we would calculate a date 3 months out for a U.S. application, but there is some leeway as long as the legal requirements are met. If the search report from the examiner citing prior research, we might need to know other U.S. cases, such as similar technology but not directly related to this case. It can be extremely complex. Our enhancements let the client define the complexities, search patterns, and relationships as templates. The system find cases with the same family or inventor or whatever and pushes the information out so all the other attorneys know of the case. We recommend filing as soon as we are aware of the need for an IDS, but sometimes not the minute it comes in the door. Dates can also change depending on where the patent application is in the examination process. We might sync and hold onto it to avoid a loss of patent term adjustment. It’s a bit of an art as well as a science.”
Enhancements to the Process Architect include an entirely redesigned Collaboration Portal with better workload visibility, simplified task navigation, and a clear graphical view of the structure of processes for all workflow participants. New Survey and Delegation capabilities support more complex collaborative processes, such as invention review, international filing, contract renewal, and maintenance decisions involving multiple stakeholders, allowing senior decision makers to more easily collect feedback from experts around the business and make well-informed decisions.
So how important are these new functionalities? As with any vendor selling into a deep pockets market, Simmons observes, “How much extra people will pay depends on the answer to the question, ‘Is this just a nice add-on or something essential that everyone wants?’ Thomson Reuters has to sell people on the position that they’re in trouble and need another product. There’s a lot of what companies are concerned about in this software.”
As to the pricing for IP Manager, Kenney describes it as modular. “We only have one software app, but pricing is for the different levels of utilization. Some modules clients turn on when they need it; for others, we send them the access, but it’s all there.” Bottom line, like any software that can replace staff, it ain’t cheap. No matter the price, it might be worth it for many companies. Rumor has it that some companies have initiated in-house programming efforts to perform the identical tasks. And, there’s always a hidden cost in relying only on your own experience in designing data services.