What challenges do patent prosecutors face on a day-to-day basis?
Everybody who’s reading this is probably a patent attorney or a docketing clerk and has had the experience of waking up in the middle of the night and saying “Did I forget?” or “I promised something to a client two weeks ago – did I do it?” And that’s the type of thing that isn’t normally captured by docketing systems: It’s a promise to a client, or a budget that you promised and you forgot a month later, right? So that type of management is really helpful.
I hate to admit this, I have a whiteboard with all my deadlines in dry erase. So if every computer died I would still have my docket up on the wall and I can turn around my desk and say, ah, that’s what’s due today. Many many attorneys keep multiple dockets and that’s my method of doing it. I’ll always have a white board. It helps me keep sane so that I don’t freak out.
In the 18 years I’ve been doing patent law I can think of probably two or three instances where things were missed – never damaging a client’s rights but costing a considerable amount of money to fix – and it can be so easy if one person is being relied on. That’s why all firms need redundancy. ClearAccessIP adds another level of redundancy because it’s automated, so you are assured that things are going to be caught at least once.
What results have you seen from integrating ClearAccessIP into your workflow?
What I think ClearAccessIP does is it allows me to spend more time on things that I think are really productive and are good for the client. It’s actually one of the few pieces of software that filters straight all the way down to the client, and they can see the impact directly. It simplifies administrative tasks so it can dramatically reduce that type of cost for them.
The next thing I always do for any client that’s got more than a couple of new applications are status charts so we can show them where every application is and how they’re related to what the next action is. It gives the client information about what’s going on, but very importantly, it also shows the client what they’ve paid for. I think it has a really big impact on client satisfaction compared with just getting a bill and sending a check every month to their law firm.
If I’m a client and I see a $200 bill for reading some communication and reporting it to me, that doesn’t make me happy. That stuff really annoys clients. It annoys me now. When I get it from a foreign associate. I push it back. I’d much rather get a bill saying “Hey we wrote this great patent and it looks like the claims are going to be allowed.” So the automation that’s involved in ClearAccessIP really lets me focus on more productive work for a client. And from the client’s standpoint, it’s why they really should be expecting the law firm will have a system like this. And certainly in a few years if the law firm doesn’t have this type of thing they’re going to be at a huge disadvantage.
What advice do you have to those on the fence about harnessing AI in patent prosecution?
My fear of what the migration process was going to be like, the difficulty, was totally unfounded. It was as frictionless as I could imagine. Switching over to the ClearAccessIP system is as easy as pie. What ten years ago a docketing system would have charged more than ten thousand dollars for, ClearAccessIP can now do in a quick demo.
I would say that the trick to good law practice and docketing is to have systems where there’s multiple ways you could catch problems and ClearAccessIP for us is an integral part of that. We have humans and we have the machine, and the humans plus the machine is better than just humans alone. It’s much more likely to catch problems. When we first started with ClearAccessIP, we provided the serial numbers of our pending applications and that instantly kind of gave us an audit of our existing docket. If nothing else I think that the minute we started with ClearAccessIP I felt assured that we had a more accurate system than perhaps we did the day before.
We are definitely capable of doing more work with less staff right now. If I was bringing in associates right now I would definitely keep that in mind.
What has changed technologically since you began practicing law, and how do you see the future of patent prosecution?
I think what’s really changed in the last few years is that docketing used just to be calendaring – that you would put something on the calendar, on a spreadsheet or in a commercial piece of software or on a paper calendar, but now is docketing has become much more than that. Docketing is part of the trend towards AI and automation in law firms, and it’s actually one of the best entry points for that technology. So while we used to think of docketing as just keeping track of dates and so on, docketing now becomes a real useful part of my work product. We all know that in 10 years the law industry is going to be quite different. There is going to be a lot of work now done by senior people that will be done by clerks and by associates because artificial intelligence will have a major effect on how things are going.
When I chose ClearAccessIP, that was one of my driving reasons for doing so. You have a system that’s clearly heads above everything else that is out there, and as a law firm that’s going to be really successful and leading edge in the next decade we know that we have to have exactly this type of technology.
ClearAccessIP is a great example of how a law firm can get this type of thing into their firm and start a base of really using the latest in high tech…. I actually can say that ClearAccessIP improves my work product because I can look at a patent portfolio from a client and do quick searches on what we’ve actually claimed or haven’t claimed, and avoid claims that are too close to what we’ve already covered and identified. That’s the type of work product that really improves my work product. That’s the type of technology that really improves my work product.
Why is it important to stay on the leading edge of technology?
The movement towards using technology in law firms is really going to separate the haves from the have-nots in the next decade. It is indisputable that law firms that are on the cutting edge of technology, whether it comes to forming corporations, or working on developing patent portfolios, or doing searches and management of paperwork and litigation, will have an immense advantage down the line. The structure of law firms are going to change and the profitability model is really going to change quite a bit because if the software can replace as associate, that’s a huge difference to the bottom line of a law firm.
(condensed from interview with ClearAccessIP on March 7, 2018)
*Dr. Steve Colby is the director of Patent strategy at Royse law firm. His practice focuses on early stage companies with the goal of adding value to his clients through a well executed IP strategy. Prior to practicing law, Steve was a director of product development at a chemical instrument company. There, he spent several years in product management and design. This experience gives him a broad perspective on intellectual property and its importance in a company’s overall strategy.
Steve received his Ph.D. from Indiana University at Bloomington where he invented several key technologies in mass spectrometry. He’s a listed inventor on several patents and author of 40 academic publications.
**This interview has been lightly edited for content and clarity.