United States Patent and Trademark Office

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European Patent Office

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COURSES

WIPO distance learning courses
One way is to confirm you have been keeping up-to-date with legislation and are well versed in Intellectual Property. Taking online courses that provide certifications are always a plus to show during performance reviews. Did you know WIPO provides learning courses with certifications? and some are free! Here's the link: https://welc.wipo.int/index_en.php.

 

Online training is also available at the EPO!

The European Patent Office also has online training on their website. You need to register first at http://www.epo.org/learning-events.html. Once you register, you will be able to search and select from a variety of topics. Keep in mind, there are mandatory courses you need to complete before registering for other course. I'm in the process of completing the Introduction to the European patent. These types of courses are great because they are free, and by completing them you are verifying your knowledge for your evaluation this year! No time like now to get started!

 

TOOLS & SUBSCRIPTIONS 

Learning tools & links at the USPTO: https://www.uspto.gov/learning-resources

 

 

Subscriptions
EPO Media Alerts: http://www.epo.org/news-issues/press/contact/alerts.html
 

 

The latest news and updates from the USPTO: https://public.govdelivery.com/accounts/USPTO/subscriber/new

 

 

 

EVENTS

Docketing Excellence seminar  September 7, 2017 in Chicago: https://www.eventbrite.com/e/docketing-excellence-seminar-chicago-tickets-33779656863

 

 

National Docketing Conference Association 

September 17-19 in Orlando
https://www.nationaldocketing.org/Annual_Conference

 

 

WIPO distance learning courses - Performance reviews are coming up, and it's always challenging for docket professionals, primarily because they are critiqued by so many people in the organization. In the next few weeks, I am going to post recommendations for ensuring you get a good review. One way is to confirm you have been keeping up-to-date with legislation and are well versed in Intellectual Property. Taking online courses that provide certifications are always a plus to show during performance reviews.

 

Did you know WIPO provides learning courses with certifications? and some are free! Here's the link: https://welc.wipo.int/index_en.php. If anyone is looking for a study-buddy, ping me!
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How to Participate in the Selection and Integration of new IP Software

 

I have worked with many companies and law firms integrating new IP software in their environment, and the reasons vary why an organization makes the decision to transition from one IP software vendor to another. Typically, it is a result of dissatisfaction with a vendor, the change in business needs to be more visible in the organization, the desire to automate tasks and redirect resources adding more value to the organization, or manage the activities around IP in the organization based on KPIs and metrics.

Once the decision has been made to select an new IP Software vendor, a team is typically formed within the organization. I have noticed rarely does the team involve the docket personal from the start, and if the organization does involve them, they are not exactly sure how their participation will be of value during the selection and implementation process. In the next few days, I will be providing some ideas to ensure our docket members are recognized as key stakeholders in this process. Make sure you stay tuned with our group for some valuable information! And as always feel free to post any of your own recommendations!

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How to Direct your own Performance Review

 

Many docket professionals may work in a law firm where they may need to request an evaluation in order to be considered for an annual raise, or may need to direct the performance review because supervisors are not exactly sure what responsibilities are fulfilled with a docket position. Typically the docket responsibilities are unique, and don't fit the general form or template of questions passed to employees. A good way to start preparing, is to create documentation that reflects your performance. Any documentation that is produced, should explain how your work responsibilities benefits the lawyers and clients you work with at the firm. Your documentation should also identify Key Performance Indicators (KPIs). One way to evaluate the relevance of a KPI is to use the SMART criteria. The letters are typically taken to stand for specific, measurable, attainable, relevant, time-bound. In other words:

  • Is your objective Specific?
  • Can you Measure progress towards that goal?
  • Is the goal realistically Attainable?
  • How Relevant is the goal to your organization?
  • What is the Time-frame for achieving this goal?

This information can actually be produced from your docket software. For example, you can run a report of how many deadlines where completed on-time and closed in the software. You can also run a report of how many docket entries are entered, and then filter that information by day and times. Also, have you created any custom rules or automation that re-allocates your time for the docket personal to work on other substantial things?

 

These are a few of my ideas that I used when I worked in a Law Firm, and I use the same today. If you have any ideas, please share! Most of us are in the review period, and if it has passed, it's a good time to set goals for next year!

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Ways to Enhance the Patent Attorney/IP Paralegal (Docketing) Relationship

 

I'm always looking for ways to enhance our software's interface by researching how to enhance the relationship between the Attorney and Paralegal. In fact, have facilitated 'Best Practice' sessions with Attorneys and the Docket team to identify how they can work better together. 

My first step was to interview the Attorneys and Docket team and identify the expectations of each roles. Surprisingly, the remaining time was spend bridging the gap between the roles so that the expectations were inline with each other. This analysis would then give me the information to provide best-practice solutions for the team. 

For all of you, I am listing a few things I learned that can improve the Paralegal (Docketing) Relationship:

(1) Accurate Docketing: IP Paralegals (Docketing) must remain current on changes with the PTO for Fees, filing procedures, updated forms, and rules as they affect communication with PTO. 

(2) Communication: Current and accurate dockets are a necessity, and everyone has the responsibility for having an understanding of the complete docket. Schedule weekly docket review meetings or email summaries to identify what is due and what should be done on the docket.

(3) Unknown Matters: List what activities and data which is associated with entering new client cases that are not on the docket. Share the list with the Attorney so they can ensure they provide proper details to enter the new case information.

(4) Informal reviews: Schedule periodic reviews with Attorneys to discuss opportunities for improvements, how to remedy errors and implement those changes to correct and /or prevent any further mistakes or misunderstandings.

It's so important for both Attorney and IP Paralegal (Docketing) to keep other informed about non-docketed items and develop interim procedures. Remember, food relationships are built on trust and understanding!

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How to Establish Guidelines when In-house Counsel collaborates with Outside Counsel using IP Software

 

In my last 2 positions I have worked with numerous clients to establish a connection to collaborate within IP their software. Basically, the software allows Outside Counsel to upload correspondence and docket in their client's database. The automation in the software replaces those notification and instruction letters that are sent by mail or email, and it is available in one resource. 

One thing I have noticed is there is also a need to establish guidelines to ensure uniform procedures are followed to docketing information in a database. 

Does anyone have any success stories for establishing or following these types of guidelines? I also welcome sharing your pain-points. I am putting together the information to write an article for other legal groups that are considering this type of collaboration.

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What is Change Control and how does it apply to configurable IP Software?

 

Change control is an approach to managing changes made to a software system to ensure that no unnecessary changes are made, and that all changes are documented so that the changes do not disrupt the other functions of the software. In my experience working with software configuration projects, it’s the one process that is frequently overlooked – which is why I decided to open a discussion on our group. 

Docketing professionals are typically the most knowledgeable about the use of the software, so it’s critical that you participate in managing changes that are usually involved in a change control project, or you establish one. Following this process will provide consistency and manage expectations of the changes. It will also log the existing changes to reference when you are looking to add additional configurations in the software. 

Creating a change control process can be very simple. Start by defining the actual change based on the actual request, the reason for the request, the expected result, and the value it will bring to the business. Next, provide your own recommendation to help the make the change decision, along with a time-frame to complete the proposed solution and any cost and/or time impacts to your department. Whatever decision results from the process, it should be approved by the key stakeholders.

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How to Participate in the Selection and Integration of new IP Software
 
I have worked with many companies and law firms integrating new IP software in their environment, and the reasons vary why an organization makes the decision to transition from one IP software vendor to another. Typically, it is a result of dissatisfaction with a vendor, the change in business needs to be more visible in the organization, the desire to automate tasks and redirect resources adding more value to the organization, or manage the activities around IP in the organization based on KPIs and metrics. 

Once the decision has been made to select an new IP Software vendor, a team is typically formed within the organization. I have noticed rarely does the team involve the docket personal from the start, and if the organization does involve them, they are not exactly sure how their participation will be of value during the selection and implementation process. In the next few days, I will be providing some ideas to ensure our docket members are recognized as key stakeholders in this process. Make sure you stay tuned with our group for some valuable information! And as always feel free to post any of your own recommendations!

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Selection and Integration of new IP Software - Business Process Mapping
 

A great way to start with your involvement in the selection and integration of new IP Software is to define your current business process. The process may begin with the intake of PTO correspondence, ending with review or PTO correspondence, or ending with the completion of the action in response to the PTO correspondence. Whatever the process is, you will want to include all of the details and illustrate them using a mapping diagram, or an excel table, including each step, role and action in the process. Once you have completed your business process, you can begin to access whether or not improvements can be made to the current process, and determine how the software can contribute to the success of your business process.

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Selection and Integration of new IP Software - What is a Request for Proposal (RFP)?


If you have been following my last few posts of how to be a key stakeholder in the participation of the selection and integration of new software, the next step after completing the business process mapping would be to create a Request for Proposal, otherwise known as a 'RFP' document. A RFP is a document that an organization posts to elicit bids from potential vendors for a desired IT solution. It includes a checklist all of the necessary software components that are needed to contribute to the success of your business process. It also assists in completing the proper due diligence of the software product, which can be one of the most overlooked processes when selecting and integrating new IP Software! Not completing this exercise typically results in the dissatisfaction of the software. Start by creating a simple checklist even if you are unfamiliar with technology. Use the checklist to identify any areas of concern or may that be incomplete, or if there are any areas that require deeper dive that you need to bring in an expert.

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Selection and Integration of new IP Software - Requesting a Demo from an IP Software Vendor

 

Once you have completed all of previous steps I have posted for the Selection and Integration of New IP Software: (1) Position yourself as a key stakeholder to participate in the process; (2) define current and improved business process; and (3) preparing a Request for Proposal (RFP), you can start to request demo from IP Software Vendors. Initially, you may want to start to schedule these sessions for an hour or lest so you can narrow the selection process and focus on 2-3 vendors. Next, schedule private demonstrations to review the requirements in more detail. Once you have done this, you can being to tie in the software features to your RFP list.

If you are interested about Lecorpio, you can request a demo at Lecorpio.com.


Quick Background on Lecorpio: Lecorpio is an IP management software company based in Silicon Valley. We have some of the most innovative companies using our software such as: Google, Apple, Bank of America, Box, Adobe, Disney, and MasterCard, and were recently named #1 IP management system by Hyperion Research Group. I can send you a copy of the Lecorpio Hyperion Vendor Report. 

Good luck and please feel free to reach out to me for anymore information!

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P&T Daily Question: What is considered the Filing Date for a Divisional Application?

 

A divisional patent application sometimes will retain its parent's filing date, and typically claims the same priority as the immediate parent application. Which jurisdictions issue the divisional application a new filing date?

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P&T Daily Question: Korean Patent Annuities

 

Hi Everyone! Today I am starting my posting chain for PT&T Daily Question. Typically, when one person has a question, someone else does too - so it's a good avenue to test your knowledge and share information. The daily questions will only be related to P&T Docketing subject matter. The day the question is posted, P&T Docket Pros can post a reply with answers and/or for feedback; the next day the final answer will be posted, and we will start again! 

Today's question is about Korean Patent Annuities: Are annuities due in Korea after the first payment of grant fees on (1) the anniversary of the receipt date of the decision to grant a patent right; or (2) from issue date of the Korea patent? 

 

 

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