1 Jan
2016

Trademark docketing in a brave new world

A growing number of organisations have begun developing innovative approaches – particularly with regard to trademark docketing. By taking an open-minded and holistic approach, trademark practices can improve how data is received, managed and used

The management of electronic trademark information has become a critical competency for trademark practices of all sizes. As trademark portfolios and operations become more global and complex, the volume, types and sources of data can overwhelm trademark departments, which are often ill equipped to deal with the resultant challenges. As a result, many trademark leaders find that data is one of their biggest obstacles. In a recent benchmarking poll, we found that 87% of trademark organisations see their data as a significant challenge to their day-to-day operations. These data challenges manifest themselves in a number of interrelated ways, implicating nearly every aspect, from staffing to systems.

So how do trademark operations solve these challenges? A growing number of organisations have begun developing innovative approaches that often challenge conventional notions of trademark management. By taking an open-minded, holistic approach, trademark practices can improve how data is received, managed and used.

Reduce manual data entry

Docketing is often the cornerstone of most trademark operations and has always been a manual process. Given this, it is unsurprising that “labour-intensive data entry” was cited as one of the most difficult challenges facing trademark operations (73%). Whether correspondence is received by email or paper, some type of human work is required to docket it. Add quality controls, agent management and other process controls, and the docketing function can become a significant staff commitment.

While docketing and other IP management work will always require specialised expertise, the availability of electronic trademark data and information is beginning to allow new docketing approaches that reduce – and in some instances eliminate – data entry. For example, users of the growing number of electronic data sources being offered by national trademark offices around the world are getting used to electronically downloading complete application histories, including all bibliographic data, prosecution transactions and documents. Leveraging this availability, some vendors are beginning to offer more sophisticated docketing tools, which can automatically download and docket electronic trademark office data. The number of trademark offices offering electronic data continues to grow and promises improved automation.

In addition to trademark office data, we have been working with clients and their outside counsel to design and develop centralised docketing hubs. By setting up a docketing hub, outside counsel can submit correspondences and docket reports directly to a centralised processing system. The hub can then automatically extract data and documents, and enter them directly into the client’s docketing system.

Improve data quality

For many (69% in our poll), poor data quality is a fundamental issue. Inaccuracies and omitted data raise questions of reliability. Users become cautious about using reports perceived as error prone. Years of accumulated bad data entry practices, acquired portfolios and prior system conversions are oft-quoted culprits. While data clean-up is the obvious answer, the project’s size and complexity deters most organisations from pursuing a solution.

However, with the increased availability of electronic trademark data and advanced data transformation tools, even the largest portfolios can be fixed. The US Patent and Trademark Office, the World Intellectual Property Organisation and other offices around the world have significantly improved access to prosecution data, including the ability to bulk download full trademark prosecution information in formats readily used for data validation. In addition, a growing number of third-party data services can provide high-quality, aggregated data. These services apply advanced data quality techniques, such as normalisation and error cleansing, as well as formats and tools to support a more efficient data project.

Figure 1: How businesses regard data

Advanced analytics and business intelligence tools

The docketing system remains the de facto platform for managing the full trademark process. While IP system vendors have made strides to improve their trademark capabilities, many clients continue to struggle with their use. When it comes to data, the inability to create reports remains a critical challenge (63%). The problem is that the docketing systems’ reporting modules lack the ability to present data and information in the way that users require. Compounding the issue, many vendors simply export data to Excel. While convenient, this lacks certain capabilities or requires a level of proficiency that most users lack.

As an alternative, we are working with clients to use advanced analytics and business intelligence tools. In the last two to three years, this market has grown rapidly. While the tools are not IP specific, they can take data from any source (including IP docketing systems) and provide more advanced, easier to use reporting. Clients can use data from multiple sources and in various formats, and can often directly integrate the tools in existing docketing systems.

Figure 2: The unified docketing method

Alternative staffing approaches

In today’s resource-constrained work environment, it is no surprise that the “lack of resources to manage” data and related processes was the most often cited challenge (81%). This is a function of staff availability, as well as the lack of skills and experience needed to manage IP data. For many, IP operations has become a distributed role, with no single person controlling the complete process. In some instances, responsibility for IP data is considered an IT activity and is supported by non-IP experienced resources. Given this lack of a cohesive approach, it is no wonder that IP groups face data challenges.

Some fortunate organisations can identify the issues and root causes, and institute a trademark operations structure that ensures proper data management. However, for many, alternative sourcing models are being used to in-source IP operations and docketing skills that can ensure quality and cost effectiveness. While docketing was once considered a core competency of the IP department, advances in electronic data, systems and collaboration now offer the possibility of using an external service provider for many IP functions. The use of managed services affords clients greater control over data and related processes, and frees up internal resources to work on higher-value activities. This is an increasing trend that points towards growth in alternative staffing approaches.

Ralph Schroeder is CEO of Helios Intellectual Property
Ralph.schroeder@helios-ip.com