Guideline for Choosing an IP Software Vendor

May 2023

Starting or managing your own Intellectual Property law practice can be exciting but at the same time be a bit overwhelming. You used to have a support staff to rely on for docketing, preparing invoices, filling out PTO forms and essentially prioritizing your time. Now it all falls on you. You could certainly hire staff or work more hours but that can be expensive and take some of the fun out of running your own business. The challenge is to accomplish in a workday all that you were able to do at the big firm, with the same efficiency but with fewer people.

So how does the small firm move toward the efficiencies of the bigger firm without hiring costly support staff? One answer is automation: taking advantage of technology to automate any non-billable functions.

Thankfully, there are many ways to automate functions today that used to be people or time intensive. Online meetings instead of face-to-face are possible because of tools like Webex and GoToMeeting. Financial software to manage your backend finances is available. And IP Management tools are available to replace calendars and spreadsheets used for docketing.

Now the question is: where to start? Concurrently learning and adopting multiple pieces of technology can be overwhelming. Setting up a new work computer is disruptive enough. So you need a starting point. A recommendation on how to prioritize what first to explore is to take a stab at what your efficiency is today and what factors are working against you.

Here’s a helpful way to measure efficiency.

Efficiency = billable hours/total hours x 100

So for example, if you worked 50 hours this week but only billed 25, you’re only 50% efficient. If I can squeeze out another 5 billable hours in the week you can get that up to 60% and make more money.

Note all the non-billable items in your weekly routine, then prioritize those by most time spent to least time spent. Now you can begin to understand the problem.

One that seems to rise to the top for many is docketing. If you’ve been managing your practice using spreadsheets, calendars and multiple software packages you probably have a good deal of inefficiency. What if you had a tool that automatically interfaces to the USPTO to set docketing deadlines. At the same time generating a calendar entry and preparing an email to the client that you received something of importance. Wouldn’t that make you more efficient? Imagine this process takes 8 minutes per PTO communication. Maybe you prepare three a day Monday-Friday. At a $400 billing rate you wasted $3,200 in potential billing time per month retrieving docketing items and sending client reporting letters. With larger firms, the wasted costs exponentially increase.

What about managing prior art and data entry of IDS forms? This can easily steal hours of lost billing potential. ADS forms take 15-20 minutes, especially with complex priority chains. Creating invoices in Quickbooks can be a huge efficiency killer. What if this was built into a docketing system and automatically recorded your time? See the value in docketing software now! What would this type of automation be worth to you? Depending of your firm size, the right solution could save $100s of thousands per year.

It used to be that the cost of a docketing system made it prohibitive for smaller firms. Not so today. There are options in the market that are very cost effective and do more than just docketing. They are essentially IP management systems built to help you manage all aspects of your practice. Features like PTO form generation, prior art and Information Disclosure Statement management, customized report generation, auto-email reminders, invoice generation, and others all in one system. These systems allow you to input data once and reuse it for many different purposes. By having all the information in one place, getting to what you need when you need it is simple.

So you see, if you can save several hours a week of non-billable time by having an IP management system and the cost is a fraction of an hours’ billing rate then it seems the question is not do I need a system but which system should I use.

Here are some things you’ll want to consider:
1. Cost
2. Features
3. Ease of Use
4. Support

Figuring out the cost is fairly simple. Make your list of potential vendors, check the websites for pricing and if it’s not published, make a few phone calls. You can also ask your colleagues what they’re using, what they’re paying and whether or not they’re happy. Visit independent review websites like G2Crowd to see what your peers are saying about the products you’re interested in. These sites require verification of being an active user of the software they review, so the reviews are legitimate.

Researching and comparing the features for various systems is really important and should take some time. A system that’s really inexpensive may not include enough automation to make a marked improvement in efficiency. Conversely an expensive system may do things you’ll never use, be difficult to learn and therefore have a negative effect on efficiency.

Here’s a checklist of activities and features that you may want to consider. Use this to help create your feature list.
• Auto-docketing from the PTO
• Auto-downloading of documents from the PTO
• Auto-updating matters from Private Pair
• Ability to retrieve information for international patents
• Ability to create custom reports and graphical charts
• Send reports automatically on set schedules
• Generate PTO forms
• Generate custom form letters
• Auto-adding docketing items to 3rd party calendar systems
• Conflict Checking
• Cloud-based
• Document management
• Easily import your existing data
• Easily export and archive your data
• Is your data stored overseas or strictly in the U.S.
• How secure is your data
• Invoicing and integration with other billing systems
• Configurable to setup workflows or rules
• What kind of support is offered and are they strictly in the U.S.
• Are there additional costs for ongoing training and support
• Are there initial set-up costs
• Can you cancel services at any time or are you bound to a lengthy contract

Ease-of-use should not be overlooked, or the importance underestimated. The less time you spend learning a system the more time you have to do billable work. Hence when evaluating a system, think in terms of time necessary to go from one to the other, including migrating data, so making full use of the system and becoming more efficient.

Many vendors allow a trial of their system. Invest the time if you’re serious about making a change. It’s the best way to sort through marketing versus reality. Ask the vendor offering a trial if the data you’ve been managing is transferable at the end, so you don’t have to start over.

Support is hard to assess but critically important especially at the outset. As we’ve all experienced too many times, a product may be great but if you can’t figure out how to use it and there’s no help the product is bad. The result is you’re frustrated, unhappy and burning hours meant for doing billable work. Ask if support is 9-5 Monday through Friday or can you get in touch with them Sunday afternoon. Is support strictly email based or can you talk to a live person? What about webinars and one or on training?

If you take advantage of a trial period also test the support. Send in questions and see how quickly they respond and how complete the response is. If it takes a long time or several iterations to get the answer the team is likely not very knowledgeable.

Test how good the documentation is or if they have instructional videos. Do they offer live webinars? If you have access to tools to easily answer your own question, that may be beneficial for when you can’t reach someone during off hours.

Once you make your decision and have a system in place you’ll notice in short order that you are more efficient. A bi-product may also be that your clients notice a higher level of professionalism due to the fact that everything is more easily accessible.

Automation can’t replace all non-billable functions. There will always be some part of your time spent on business development, accounts receivables, and others. But by taking advantage of technology as it evolves, and embracing it as part of your business strategy you can certainly achieve higher levels of efficiency and success in your business.