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10 STEPS TO SELECT AN IPMS PROVIDER THAT MEETS THE MARKBY NOEL YOUNG PRODUCT MANAGER, CPA GLOBAL

10 Steps to Select an IPMS Provider that Meets the Mark 2

Executive Summary 4

Choosing a Modern IP Management System 4

10 Important Guidelines to Understand when Choosing Your IPMS Provider 5

1. Vendor Reputation and Service Quality 5

2. For Most Organizations, SaaS is the Right Choice 6

3. Performance, Security and Operations: Investment and Expertise is Important 7

4. Strong Country Law and Forms Coverage 8

5. TaskandWorkflowManagementisVital 10

6. Dashboards and Reporting: Use Your Data to Drive Value 11

7. An IPMS Needs to be a Platform for Collaboration 12

8. Centralize and Automate Prior Art (IDS) Management 13

9. Stay Ahead of the IP Data Revolution 14

10. Excellent Implementation, Training and Support: Successful Adoption of an IPMS 16

Bonus Step: Enterprise Integration, Data Loading, and APIs: Understand the Possibilities 17

Conclusion 18

About CPA Global 19

CONTENTS


NOT ALL

IPMS

PROVIDERS

ARE CREATED

EQUAL


EXECUTIVE SUMMARY

Choosing the right Intellectual Property

Management System (IPMS) can be a

challenging and time-consuming endeavor

for any organization.

Originally limited to a few providers, the

number of IPMS providers has increased

significantlyinthelastdecade.

Over the same period of time, technology

has evolved from antiquated, client-server

systemstocomplexandconfigurable

cloud Software-as-a-Service (SaaS), or

managed service solutions.

Withlawfirmsandcorporatelegal

departments tracking highly sensitive

IP data, many organizations have realized

their decades-old IPMS no longer meets

the baseline security requirements that

their clients and/or IT departments expect.

Additionally, organizations are becoming

aware of the productivity improvements

modern day solutions can provide.

Features such as PTO integration,

workflowandtaskmanagement,prior

art management, dashboards and others

features are now widely available.

These improvements can transform how

IP departments function and deliver

services to their organization or clients.

CHOOSING A MODERN IP MANAGEMENT SYSTEM

If your organization is prepared to migrate

to a modern IPMS it is important that you

assess a variety of factors.

You need to understand potential pitfalls,

but also where value can be added.

It is also important to plan for the future by

choosing a scalable solution that will grow

with your organization’s requirements.

To that end, the following 10 guidelines are

provided below to assist your organization

in making and informed decision when

choosing your next IPMS partner.


Not all IPMS providers are created equal.

With many new providers on the market it is

important to assess the strength and health

of the provider versus your needs.

Consider the following:

• What is the size of the customer base

and do they have a history of customer

growth? New customer growth is an

important factor to consider when

evaluating an IPMS. If an IPMS shows

stagnant growth or only has attracted a

handful of customers every year – what

does that say about its overall health?

• How active is the customer base?

Larger customer bases tend to, not

surprisingly, have the most active and

loyal users. These are often your best

sources for honest assessments. Ask the

provider for references and information

on independent user groups or forums.

• Does the IPMS provider adequately invest

in development and have a track record

of success? Ask to see their product

roadmap and determine whether their

vision is aligned with your future growth.

10 IMPORTANT GUIDELINES TO UNDERSTAND WHEN CHOOSING YOUR IPMS PROVIDER

VENDOR REPUTATION AND SERVICE QUALITY1

EXPERTTIP

Does the provider offer additional IP services?

Larger providers can often provide more value for

your investment based on bundling services such as

docketing support, patent and trademark renewals,

and search services.


SaaS IPMS solutions offer a number of

advantages to on-premise installations,

particularly when compared to older

client-server deployments. Unless your

organizationhasveryspecificneedsor

preferences, SaaS is the obvious choice.


• In order to maintain many older

client-serverIPMSsolutionsasignificant

on-going IT investment is required.

Choosing a SaaS IPMS provider can

alleviate your organization of this cost

as it is responsible for all application

upgrades, software license costs,

security, servers, etc.

• Software doesn’t need to be installed and

maintained on users’ computers; all users

access the IPMS via a web browser.

• You are always on the current version.

Application upgrades happen more

frequently with no need for testing and

acceptance periods. Therefore, there is

no additional strain on your organization’s

resources.

• SaaS is scalable. On-premise deployment

models may require a variety of

infrastructure investments to keep up

with your growing business or changing

requirements. With a SaaS solution you

can easily create additional records, add

newusers,oraugmentyourworkflows–

placing the burden of performance and

infrastructure on the IPMS provider.

• SaaS IPMS solutions can usually be

implemented quickly. For smaller

customers, SaaS IPMS solutions can

be activated in hours. For larger

implementations with more complex

requirements, the time to go-live for a

SaaS IPMS solution is generally between

two to three months.

FOR MOST ORGANIZATIONS, SAAS IS THE RIGHT CHOICE

2


DID YOU

KNOW?

With thousands of concurrent users and varying levels of

system load, IPMS solutions require dedicated monitoring.

Beware of providers that do not adequately invest in the

resources needed to ensure optimal performance and security.

Over a decade ago, hosting a SaaS software

solution would be an extremely challenging

and expensive endeavor for any IPMS

provider. However, today’s technology

means almost anyone can take a system

and make it available in the cloud, with

little to no investment.

This evolution has transformed systems

andprovidednumerousbenefits,butit

does not replace organizational investment,

resources and, above all, expertise.

With an increase in cyber attacks,

identity fraud and corporate espionage,

it is more important than ever to carefully

consider a provider’s ability to keep

your data safe. Make sure your next IPMS

partner is taking the appropriate steps to

ensure improved performance and security.

• Does the provider have a dedicated

Dev-Ops team responsible for monitoring

the application?

• Does the provider publish performance

data and metrics? If so, where can you

obtain the details?

• Is the data hosted by a respected third-

party provider?

• Does the provider maintain industry

certifications(e.g.ISO2700)?

• Does the IPMS vendor have a

dedicated security team? What is the

reporting process and audit schedule

(e.g. SOC 2, etc.)?

• Does the IPMS have mechanisms to

enforce and audit ITAR compliance?

• DoestheIPMShaveaflexibleand

manageable security model? Do they

support single sign-on options?

PERFORMANCE, SECURITY AND OPERATIONS: INVESTMENT AND EXPERTISE IS IMPORTANT

3

https://www.cpaglobal.com/blog/politics-cyber-espionage-us-continues-struggle-chinas-espionage-dominion/


A fundamental value proposition of an

IPMS is the ability to automate the

tracking and maintenance of important

global IP deadlines directly within the

system. With global IP law constantly

changing, organizations need an IPMS

that contains accurate and up-to-date

countrylawdefinitions.

Similarly, without access to a managed

PTO forms library, users will be left

copying and pasting data from their

IPMS and monitoring PTO sites for updates.

In the absence of either of these services,

an IPMS loses much of its value.


• How often does the provider update

country law and forms? Ask for details

about the breadth of coverage across

jurisdictions and IP types.

• Who is responsible for implementing

the country law updates? Look for

IPMS providers that handle country law

updates in a similar way to how SaaS

providers handle application updates -

i.e. updates should happen automatically,

ensuring organizations always have the

mostrecentlawdefinitions.Bewareof

IPMS providers that place this burden on

the customer. Country law updates can

requireasignificantamountofinternal

resource commitment and cost to

complete successfully. All too often this

burden can cause an organization’s law

definitionstogetneedlesslyoutofdate.

• If you are considering an additional tool to

handle PTO Forms generations, beware of

the added training and infrastructure cost

associated with integration between third

party solutions and your IPMS.

• Does the IPMS allow users to easily

customize country law rules? If so,

ensure the update process respects

those changes.

• Ask to see how country law actually

works in the system as a user dockets

various pieces of correspondence.

Do events automatically launch when

appropriate triggers occur? Are events

named in a logical fashion and easy for

users to identify, locate, and docket?

4STRONG COUNTRY LAW AND FORMS COVERAGE

IP DEPARTMENTS ARE DRAMATICALLY

TRANSFORMED BY

THE ADDITION

OF AN IPMS


Today’s enterprise systems need to provide

more value to organizations than simply

acting as electronic versions of old, paper-

based processes. Organizations demand

solutionsthatcanautomateworkflowand

transform how IP departments operate.

However,designingandmaintainingworkflow

that is catered to your organization can be

a time-consuming and challenging activity.

Be sure to understand what your own users

canrealisticallyconfigureversuswhatitems

mayrequireconfigurationassistancefromthe

IPMS provider directly.

• Does the IPMS offer the following building

blocksofworkflowandtaskmanagement?

- Ability to launch other tasks based on

the creation, deletion or update of a

task or attribute of a task. Alternatively,

you should be able to easily launch

a task based on another activity

happening (e.g., entering a Filing Date).

- Ability to launch tasks in other related

members of the family.

- Ability to automatically send emails

(withconfigurabletemplates)basedon

common factors such as the update or

completion of a task.

- Ability to perform any of the above

actions based on conditional logic

(e.g., launch email if Date A is later

than Date B).

- Abilitytoupdatebibliographicfieldsas

a result of tasks being completed.

• Abilitytoautomaticallyfilerepliestoemails

sent from the IPMS. Deploying a process

where you can easily centralize all e-mail

correspondence against appropriate

activities in your IPMS, as well as having

the infrastructure to automatically

log e-mail replies without any manual

intervention is a frequently overlooked

area in the evaluation of IPMS providers.

Thistechnologycansignificantlyincrease

efficienciesinIPlegaldepartments.

• How does the IPMS communicate assigned

tasks to users?

Look for the following features:

- Ability to schedule the delivery of

task reports to users based on a role

(via email).

- Ability to set organizational wide email

reminder settings (e.g., always send

reminder emails two weeks before due

date for anyone assigned a task as an

attorney).

- A self-service task search in which users

can use to see what they are assigned

easily from within the IPMS.

- Are there any dashboard capabilities,

where a user can quickly see upcoming

tasks via a visual calendar or list?

TASK AND WORKFLOW MANAGEMENT IS VITAL5


Reporting, or the ability to format and

effectively organize the presentation of your

data, is a fundamental value proposition of

an IPMS. Many IP professionals rely on the

reporting capability of an IPMS to effectively

communicate tasks, KPI’s, portfolio

information, performance, and many other

types of information across

their organization.


• Many IPMS systems, as a standard,

include a built-in report writer. Ensure

that the report writer has the following

fundamental features:

- Confirmthatthereisanabilitytobuild

a wide variety of reports (from easy to

more complex) with a full range of

datafilters.

- Dataformatsshouldbeflexiblewith

an ability to export in a wide variety of

formats (e.g.,.csv, .xml, .xls).

- Administrators should not need to

create the same fundamental report

repeatedly for different users.

Ensurethatyoucanusedynamicfilters

so that reports can be customized on-

the-flybytheusersrunningthem.

- Check for the ability to easily manage

docket reports across your entire

organization. Does the IPMS have the

ability to set up docket reports so that

when new attorneys or staff are added

as users they automatically receive

standard reports?

- Reportsalsoneedtobeconfigured

to output data into a variety of other

fileformatsandvisualizations.Confirm

that the IPMS can handle merge

document creation (e.g., .doc, .pdf,

.xls). Additionally, ensure that you can

create and share charts and graphs

based on report results.

• Dashboards allow an IPMS to present

pertinent information to a particular

user or type of user in an on-demand

fashion. Usually positioned in the IPMS

as a landing page after a user logs on,

dashboards expand the ability of an IPMS

to present and understand data using

interactive widgets.


- Can you administer the dashboard at

an organizational level? Ensure that

you can change the default display

based on the user role (e.g., Attorney)

logging on to the IPMS.

DASHBOARDS AND REPORTING: USE YOUR DATA TO DRIVE VALUE

6


IPMS systems can provide more value to

your organization than simply optimizing

your internal IP operations, processes, and

records. Today, many modern SaaS IPMS

systems have the ability to act as a platform

for your organization to engage external

parties or clients directly from within the

system. Corporate legal departments will

commonlygrantlawfirmsorthird-party

service providers direct access into their

IPMS to perform docketing or other tasks.

Alternatively,lawfirmswillusetheirIPMS

as a client-facing portal allowing their clients

direct access to their cases and the most

up-to-date status.


• Are there any additional costs for

external users?

• If the system is not SaaS (or hosted),

how is external access managed?

• Is the system intuitive enough so that

access can be rolled out to a variety of

usertypeswithoutasignificantamount

of training?

• Ensure that permissions and security

controls can be managed easily to

control what external parties can view

and edit within the IPMS.

• Can the IPMS be customized with your

organization’s logo and branding?

• Dashboards provide a very good

opportunity for personalizing the

experience for external users, as well as

sharingspecificpiecesofinformation.

Check with the IPMS provider to ensure

that dashboard functionality and

configurabilityextendstoexternalusers.

• Does the IPMS have an audit capability

that allows easy reporting and

monitoring of external user activity?

AN IPMS NEEDS TO BE A PLATFORM FOR COLLABORATION

7

- Do users have the ability to personalize

the dashboard on their own (i.e., move

the location of widgets around, hide

widgets, etc.)?

- How many widgets are available in the

IPMS?

- Charts and Graph widgets are a very

important part of making a dashboard

relevant to your organization’s user

base. Ensure that you will have the

ability to create and customize charts

and graphs in a variety of different

formats and publish those to a user’s

dashboard.


Management of prior art is a common

challenge amongst IP departments,

particularly for those who do not have an

IPMS or other tool that can effectively handle

therequirementsfromstarttofinish.

Unfortunately, organizations often end up

dealing with the act of assembling an SB08

form (US) as a special project – ordering

search reports, collecting copies of patent

or publication documents from various

PTO sites, tracking citations in spreadsheets,

andthenfillingoutthePTOform.Thiscan

be a very time-intensive activity, particularly

when it is common to have many references

cited on a single application.


• Does the IPMS have a dedicated IDS

management feature (e.g., a searchable

library which allows patent, publication,

and NPL documents to be stored in a

centralized location and associated with

many patent applications)?

• When references are added to a patent

application,dotheyflowautomaticallyto

all related matters in the family?

• Does the IPMS have the capability to

easily add Supplemental Information

Disclosure Statements to related cases?

• Does the IPMS integrate with any global

patent sources that enable users to

search for, retrieve, and add patent or

publication documents to the IPMS IDS

library quickly?

• Can you easily generate the USPTO SB08

form in the EFS accepted format?

CENTRALIZE AND AUTOMATE PRIOR ART (IDS) MANAGEMENT 8


STAY AHEAD OF THE IP DATA REVOLUTION9

THE INTERSECTION OF PUBLIC AND PRIVATE DATA IS GOING TO TRANSFORM THE INDUSTRY.

Legal departments spend a

considerable amount of time,

money, and resources on

manually entering, verifying,

and consolidating data from

multiple public sources.

With the availability of

high quality patent data

increasing daily, the potential

now exists for many of

these manually driven

processes to be eliminated.

Imagine the possibilities

if your existing private

data could be seamlessly

augmented by public data

in your IPMS, alerting users

when there are changes or

critical discrepancies, and

automatically updating

your IPMS records so they

are always accurate and

up-to-date.”

Noel Young

Product Manager, CPA Global

The IPMS industry is on the edge of a data revolution. According

to the World Intellectual Property Review dated July/August, 2016:

“New technologies enabling predictive analysis of big data provide

IP professionals with a platform for better decision-making and

vastlyimprovedefficiencies.”

For decades, IP departments have dedicated an enormous amount

of resources to manually maintain records with information from

public IP sites. Imagine the possibilities if public and private data

could be effectively intertwined in an IPMS. Today, organizations are

increasingly leveraging big data techniques to obtain a competitive

edge and discover insights in their markets. IPMS providers, on the

other hand, are also partnering or acquiring modern IP data providers.

Before investing in a long-term relationship with a new IPMS provider,

understand its vision for the power of public and private data, and

ensure it is in alignment with your future growth and needs.


• Does the provider have access to high quality IP data?

• If so, consider the breadth and quality of the IP data the IPMS

provider has access to. Pay attention to the type of data they

offer, how frequently it is updated and whether it assesses

the quality of data to ensure it can be properly leveraged.

Does the provider offer private PTO integration? Three features

to look for:

• If the provider offers USPTO integration, does it allow you to

use and manage multiple customer numbers?

• Can you retrieve and utilize the bibliographic data available

against your IP cases?

• Does the IPMS offer integrated one-click docketing from

private PTO events?

https://www.innography.com/learn-more/world-ip-review-creating-big-value-from-big-data

https://www.innography.com/learn-more/world-ip-review-creating-big-value-from-big-data

https://www.innography.com/learn-more/future-of-ipms


https://www.innography.com/who-we-are



IPMS INCREASES AN ORGANIZATION’S

ABILITY TO MAKE

SUCCESSFUL BUSINESS

DECISIONS


Implementing a new system can be a

challenging and time-consuming endeavor.

However, it can also present a number of

valuable opportunities to introduce improved

processes and productivity savings. Consider

the following best practice recommendations

when discussing implementation methodology

with potential IPMS providers:

• Does the IPMS provider have a clearly

definedimplementationmethodology?

The IPMS provider should be able to clearly

describe how they gather requirements,

design the implementation and perform

quality assurance and testing.

• Does the IPMS provider offer the ability to

perform data cleansing or validation as a

part of the implementation? Alternatively,

can they provide the means to load data

into the IPMS from public sources (e.g., by

Assignee)?

• What involvement does the IPMS

provider expect of the customer in the

implementation? Beware of implementation

methodologies where responsibility of

testing the entire implementation is placed

on the customer. Customer involvement

in the project is important, but it shouldn’t

entail many days of additional work.

• Understand the number and type of

resources available to your organization

and whether or not they will be available

after the implementation is complete for

go-live support.

• Ensure that you understand how the

IPMS provider structures the cost of their

implementation and what is included.

Further to the implementation, it is also critical

that the IPMS provider has numerous training

and support options which can enable your

organization to be supported not just during

the implementation, but throughout the entire

customer lifecycle.

On-demand systems require on-demand and

knowledgeable training and support.


• How large is the IPMS provider’s customer

support team? Inquire as to the number

of tickets received per month versus the

number of resources.

• What are operating hours for telephone

support?

• Does the provider offer webinars or make

any other type of free web-based training

resources available?

• Does the provider offer global support

coverage? Inquire as to the location and

size of other regional support teams.

• Check with the IPMS provider on what

support response and target resolution

times to which they are prepared to

commit.

• Who will be the point of contact for the

duration of the implementation?

EXCELLENT IMPLEMENTATION, TRAINING AND SUPPORT: SUCCESSFUL ADOPTION OF AN IPMS

10


Enterprise Integration and the availability

of industry standard APIs are fundamental

aspects of a modern IPMS. In today’s

interconnected world, many IP departments

are reliant on a variety of solutions, such as

HR systems and billing and document

management systems, working in tandem

with their IPMS to deliver services

to their organization or clients.

Additionally, many organizations want the

ability to interact and manipulate their own

IPMS data via APIs. Some organizations

wish to load their own data to facilitate new

business acquisitions or perform their own

data clean up. Others may look to load data

into other systems, leverage third-party

reporting tools, or design bespoke views

and applications within their own ecosystem

using IPMS data.

Above all, the modern day IPMS needs be

openenoughtogiveuserstheflexibilityto

deploy a wide variety of solutions, on their

own, with their IPMS data.


• Does the provider offer Web Services, and

which you can use to facilitate numerous

integration scenarios (REST or SOAP) as

a part of their base subscription?

• Does the provider have the ability to

easily schedule or transmit data from the

IPMS to other locations (e.g., FTP, SFTP)?

• Does the provider offer any tools which

allow customers to perform their own

data imports or mass updates?

• Does the IPMS provider integrate with

their own services, such as Patent

Renewals?

• Does the IPMS provider offer single sign-

on integration so that you can utilize your

organizations internal HR directory for

user management?

• Does the IPMS provider offer consulting

services to assist with integration services,

if needed?

ENTERPRISE INTEGRATION, DATA LOADING, AND APIs: UNDERSTAND THE POSSIBILITIES

BONUSSTEP


Watch CPA Global’s Product Manager Noel

Young describe how big data will radically

change the role of IPMS and the IP professional. EXPERT

TIP

CONCLUSION

IP departments can be dramatically

transformed with the addition of a modern

IPMS.Withfeaturessuchasworkflowand

task management, prior art management,

and dashboards, among others, a modern

IPMS will not only save time and money,

but will also dramatically increase an

organization’s ability to make successful

business decisions and deliver premium

services to their users or clients.

Keeping these 10 guidelines in mind will

help you determine which IPMS is right for

you and your organization.

https://youtu.be/or1odkle6Bo





© CPA GLOBAL 20160164

LET’S GET STARTED

Contact our team today to

book a demo

email: [email protected]

CPA Global is the world’s leading Intellectual Property

management and technology company.

Trusted by many of

the world’s respected

corporationsandlawfirms.

Our integrated offering

is underpinned by an

outstanding global team of

2000 people.

Now we offer customers

The IP Platform: delivering

integrated Innovation

and IP Portfolio software,

services and insights across

the entire Idea Lifecycle,

supporting customers every

step of the way to realize

the value of their ideas.

For further information

please contact us at

[email protected]

or visit us online at

cpaglobal.com.

ABOUT CPA GLOBAL

http://cpaglobal.com

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