by Chris Sale*

The passage of the Leahy-Smith America Invents Act (AIA) this past September is the most significant change to the US patent system in decades. The long-awaited conversion of the U.S. patent system to award patents to those “first to file” a patent application rather than to those “first to invent,” provides additional impetus for IP professionals not only to improve the quality of patents but also to speed up the process of obtaining patents. Under the new system, the race will go to the swift, and the swift will unquestionably be those who successfully implement electronic management of the prosecution process.

Despite obtaining legal protection for advances at the cutting edge of technology, patent legal practices themselves largely remain mired in the inefficient, error-prone and paper-based means of managing patent documents and processes. These time-worn, traditional information handling methods have increasingly contributed to higher costs, lower productivity, and decreased patent quality.

As one who has administered the operations of a number of national and international IP law firms both in the U.S. and overseas, I have witnessed first-hand how the inefficiencies of paper-based patent management processes have negatively impacted workflow for administrators and attorneys. With the passage of AIA, and the incumbent pressures to not only speed up the prosecution process but also to file more patent cases with the USPTO, the need for IP firms improve workflow and productivity has become more acute.

Young & Thompson resolved in 2007 to move to a paperless environment. Throughout its more than 100-year history, Y&T has strived to provide the best representation for its clients’ IP interests in the most straightforward and cost effective way possible. In recent years, a number of factors had been making that goal increasingly difficult to achieve. These include, among other things, a geographically dispersed client-base with increasing demands for outside counsel to meet their specific case handling instructions, and greater levels of digital communication. Given the high volume of Y&T’s patent filings—over 1,700 patent applications per year—choosing the right solution to render this mission-critical service was of utmost importance to us.

As the firm’s administrator, I was tapped to lead a project review of the firm’s internal patent and trademarks workflow and file management systems with the goal of increasing productivity and profitability while maintaining Y&T’s commitment to quality. Early on, I realized that although the paper-based documents drove the internal workflow for both the patents and trademarks groups, Y&T had also developed duplicate parallel processes to handle electronic communications and the associated digital files. I realized that email was rapidly replacing paper as the primary mode of communication between the firm and its clients; however, unmanaged email provides neither a workflow structure nor a document storage framework and offers no management, visibility or control over information. Standing alone, it is a poor data management and collaboration tool, and potentially hazardous to a field of law where deadlines are critical.

In 2009, Y&T moved its patent groups to a digital, automated IP document management system, First To File’s Electronic File Room. The majority of the firm, about 90% of the firm’s attorneys, deal with patents, and so when we made the decision to implement a digital system, we started with our patents group.

EFR fully digitized our document system and integrated with our docketing system. Our documents are now simultaneously yet securely accessible 24/7 from anywhere in the world, which is a marked improvement over our paper-based system. The duplicative processes and inefficiencies brought on by parallel paper and electronic document storage have been eliminated.

Surprise benefits of the system include a significant increase in staff retention, as the web-based IP document management system has helped us be more adaptable and accommodating to the changes in the lives of key personnel. Because the system is web-based, people can simply log on from anywhere at any time with any browser: the virtual desktop is the same regardless of the user’s location. Partners and staff can now spend more time with their families by opting to work from home when necessary or define alternative work schedules to reduce commuting time. Key personnel can cope with family crises and still stay on top of things at work, whereas before it might have been necessary to take a leave of absence. Also, we have expanded our hiring practices to include regions outside of northern Virginia, which hugely expands the talent pool we can choose from. It’s a win-win all around for the quality of life at Young & Thompson.

On October 26th, 2011, Y&T moved forward with the implementation of the same web-based application for our trademarks group, installing the EFR Trademarks Module (EFR-TM). The migration of our paper documents into EFR-TM is now fully in effect.

This new technology has increased the speed of our patent prosecution process, which in turn has helped our clients to be “first to file” more often. With more patents being prosecuted and filed at a greater rate, we know that with our improved work flow and productivity, Y&T can meet the new challenges of today and is already prepared for the challenges yet to come. IP law doesn’t have to be stuck in a predominantly paper based system anymore – there is light at the end of the tunnel.

* Christopher Sale is Director of Administration for Young & Thompson, an IP law firm based in Alexandria, Virginia. Mr. Sale is also co-chairman of the Association of Legal Administrators, Virginia, Intellectual Property Law Firm Administrators Group and also provides management consulting services to other law firms.