IP-driven companies of all sizes often rely upon outside IP counsel to manage the day-to-day processes of patent prosecution, as well as post-grant management and IP protection. That can leave those companies’ chief IP officers without a great deal of control over what may be among the company’s most valuable assets, even while they retain full responsibility for those assets.
Managing relationships and workflow between all of the people and firms involved in the intellectual property division can be challenging. Here are five signs to watch for that may indicate that your company’s IP asset management process needs some improvement:
- Being unable to answer real-time status questions. Because of delays inherent to the process, the data in the law firm’s docketing system is almost always out of date. When the head of the IP department asks for the status of a pending patent application, can you provide a real-time update, or are you relying upon estimates and guesswork?
- Receiving notices of filings for extra time. Companies noticing their law firms filing notices to request extra time to respond to USPTO office actions should treat that request as a red flag. Every patent prosecution is unique, but a persistent pattern of extension requests is a strong indicator that the IP project timelines are being improperly managed. If that turns out to be the case, the schedule slippage could signal more pervasive issues within a firm’s handling of the company’s IP work.
- Missing due dates. As one would imagine, failure to file the required documents at the required time has major consequences. Are you aware of upcoming due dates so you can inquire on the status before deadlines are missed?
- Paying reinstatement fees. It is sometimes possible to recover from missing USPTO deadlines, such as the filing of the required maintenance fees for a granted patent, but no one wants to have to pay the $1,640 surcharge for “unintentional” failure to pay, nor the $700 surcharge for “unavoidable” failure to pay. A properly functioning IP management process plans ahead for all required actions.
- Year over year declines. If your overall allowance rate three years ago was 80 percent and the following year it fell to 76 percent, and the year after that to 65 percent, unless you are strategically managing to this number something may be going awry in your process.
Successful management of an intellectual property portfolio usually is a formidable responsibility that demands the orchestration of many moving parts touched by numerous personnel, all of whom must have top-flight organizational skills. When outside counsel is part of that process, the complexity of IP process management increases substantially. Developing and retaining quality intellectual property is possible with the right patent workflow management tools that give you visibility into the entire process.