the master ip plan - brinks gilson · the web. so now, instead of asking their lawyer to check the...
TRANSCRIPT
FROM THE PUBLISHER OF THE AMERICAN LAWYERwww.iplawandbusiness.com
OCTOBER 2003
The IPMaster
PlanHow Brinks Hofer updated its patent docketing system.
By Susan Hansen
ince Chicago’s Brinks
Hofer Gilson & Lione
overhauled its patent docket-
ing system six months ago,
the firm’s clients have become
more self-reliant. And that’s a
good thing. With the upgrade,
clients can access the docket-
ing system directly through
the Web. So now, instead of
asking their lawyer to check
the status of a specific patent
application, clients with a
Brinks Hofer password can log
on to the docketing system
and get status reports them-
selves—meaning they don’t
have to call their attorneys to
get the information, and they
save some extra legal fees.
The docketing system provides a
sophisticated way of filing, searching,
and organizing the 75,000 patent and
trademark prosecutions Brinks Hofer
handles for clients. Docketing soft-
ware is not new; patent lawyers have
been using programs for years
to track filings. What’s new about
Brinks Hofer’s system is its client-
friendly approach.
Since March, 44 clients have
received passwords for the system,
called IP Master, and those inter-
viewed say they appreciate the do-it-
Jerold Jacover (left)
and Mark Rolla
AN
DR
EW
CA
MP
BE
LL
S
yourself approach. “It really is a
user-friendly system,” says Marc
Filigenzi, an in-house IP attorney
with Brinks Hofer client Amway
Corporation. “It will pull up all my
cases, and I can get a basic overview
and info on the whole patent
portfolio.” Client George Seay says he
also likes not having to bug his
lawyers with questions. “I’m able to
do the research myself,” says Seay,
manager of intellectual property for
design firm Herman Miller (a compa-
ny used to innovation and best-known
for its Aeron chairs, which were
favored by dot -commers in the
late 1990s). “And I can do it at my
own pace.”
The do-it-yourself approach might
mean reduced billings for Brinks
Hofer, but firm chair Jerold Jacover
says the enthusiastic response to the
new system is worth any potential rev-
enue loss. “The feed-back I’m hearing
from clients,” says Jacover, “is ‘Why
didn’t anyone offer this before?’ ”
The system is a nice touch for
clients, but it is essential for the firm’s
lawyers. An automated tracking
component alerts attorneys to key
deadlines for filing applications and
patent renewal fees, and helps keeps
them on top of their caseloads.
Missing a renewal deadline can lead to
a losing trifecta: abandoned patent
rights, angry clients, and malpractice
suits. For any firm with a robust IP
practice, a docketing system is a
mission-critical application.
Brinks Hofer treated the conversion
as a top priority. From start to finish,
getting the new docketing system up
and running took nearly six months—
and cost the firm upwards of
$100,000, including software, new
equipment, and overtime for the
firm’s docketing staff. “It was a major
ordeal,” says Brinks Hofer partner
Kent Genin, a former member of the
firm’s docketing oversight committee.
Still, Genin and other partners say
that the firm needed a change. Brinks
Hofer has been growing, from about
90 lawyers in 1997 to roughly 150
today. And the firm’s caseload has
gotten bigger, too. By mid-2000, it was
obvious that the firm’s old Computer
Packages Inc. (CPI) docketing system,
which was originally
installed in 1993, was
straining to accommo-
date all the demand.
“People would try to get
in the system, and it
would make you wait
for minutes,” recalls Jeffery Duncan,
head of Brinks Hofer’s biotech and
pharmaceutical practice group.
In early 2001 Brinks Hofer was set to
make the switch. The firm’s first big
step was hiring Mark Rolla, the former
manager of docketing for Chicago’s
(now defunct) Altheimer & Gray, to
serve as point person for the conver-
sion. His first order of business was to
survey the market for software. The
choice ultimately came down to
docketing software vendors CPI and
Master Data Center. Both companies
were offering systems that could
accommodate up to 100 concurrent
users. But Rolla notes that Master
Data Center’s IP Master package
offered Web access for clients, and
generally seemed more user-friendly.
Also, Master Data Center was pledging
to install future upgrades of the soft-
ware for free. “We thought if we start-
ed with a whole new system, we’d be
better off in the long run,” says Rolla.
On Rolla’s recommendation, Brinks
Hofer signed a licensing deal with
Master Data Center in June 2002.
Chris Calogero, CPI’s director of
marketing, declined to comment for
this story.
In the short run that meant Rolla
had his work cut out for him. First, he
needed to give software developers at
Master Data Center specifications for
organizing the new database. Then
that data—including roughly 35,000
patent records and about just as many
trademark records—had to be
transferred to the new system.
Last September Rolla and a five-
person team from Brinks Hofer’s
docketing department entered the so-
called parallel testing
phase, during which they
ran the old and new
docket systems side by
side to test the integrity
of the converted data,
and make sure the new IP
Master software was generating accu-
rate docket reports. All through the
six-month testing period, the conver-
sion team held weekly assessment
meetings in conference calls with
Master Data Center staffers. “We
wanted to make sure we were doing
everything correctly,” says Rolla.
In February Rolla began holding
training sessions to prep Brinks Hofer
lawyers for the switch. And on March
10, the firm unplugged the old system
and took IP Master live. Partner Genin
says the new software is faster and
does not get bogged down. “Our main-
tenance time is way down,” he says.
Plus, say partners, IP Master’s
search function is much more dis-
criminating. The old system “would
spit out every detail about the case
instead of the specific information
you needed,” recalls partner Duncan.
Now lawyers and staffers can type
in targeted queries—asking, say,
which of a client’s cases have U.S.
Patent and Trademark Office actions
pending—and get only the informa-
tion they want. Partner Shannon
Mrksich says she likes that she
can now drag data off the docketing
system and put it into Word and Excel
files. “It really is a much easier
system,” she says.
For lawyers and clients alike. �
Now searchesare quicker and more discriminating.