Specifio’s Co-Founder & CEO, Ian C. Schick, presented in the main programming of this year’s AIPLA Mid-Winter Institute in a session entitled “Will a Machine Replace Me? The Impact of AI and New and Emerging Technologies on IP Practice”. Below is a link to the slide presentation.
By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (first posted on blog.specif.io)
For attorneys, gaining a practical understanding of technologies impacting the practice of law is no longer just an option. The rules of professional conduct in most US states now explicitly require a duty of technology competence, primarily so that attorneys can (1) determine whether and when to incorporate technologies into their own practices and (2) adequately counsel their clients on the benefits and risks associated with these technologies. In states that do not have the explicit requirement, the duty of technology competence is generally considered to fit implicitly within the existing duty of competence requirements. To be sure, the duty exists always, not just if an attorney decides to leverage technology in their practice.
In patent practice, the industry is experiencing an explosion in new technologies that let practitioners process their work efficiently with less errors, make data-driven decisions, and, overall, provide more value to their clients while respecting existing budget constraints. Indeed, tech adoption is becoming a competitive imperative for patent practices in order to cope with challenging economic and demographic trends in the hyper-competitive patent industry.
At the recent Intellectual Property Owners Association (IPO) Annual Meeting in DC, the general session that opened the conference was titled “IP Automation – What’s Here Today, Not Years Away?” Representatives from private practice and in-house presented ways they are automating processes (e.g., docketing, filing, etc.) and automating patent preparation. The latter made a huge splash and dominated the buzz for the rest of the conference.
This article seeks to provide a practical understanding of document automation in legal, generally, as well as in patents, specifically.
What is Document Automation?
Document automation (also known as document assembly) relates to technologies designed to assist in creating electronic documents. Typically with some amount of human input, computers assemble text and other content into new documents. The text used to build the documents may be pre-existing (or “canned” such as boilerplate or templated text) or it may be computer-generated on the fly during the assembly process.
Document automation has been on the rise for years across many industries and is now becoming mainstream in legal. Stanford’s LegalTech Index lists about 250 legal document automation companies with more and more being added regularly. These companies serve virtually all areas of legal practice.
Benefits and Risks
The benefits of contemporary document automation generally far outweigh the potential risks. For example, document automation reduces labor needs for rote and mundane writing. Not only are these types of tasks detrimental to attorney job satisfaction, it is also wasteful to have a highly-trained practitioner performing tasks like this at steep hourly rates. Reducing burnout saves in recruiting and training costs. And reducing waste is essential for patent practices competing in today’s market.
Document automation has benefits beyond labor savings in document drafting. It reduces risks associated with human error. Because of this, and the ability to create more consistency between documents of the same type, document automation can drastically reduce the amount of time needed for proofreading. Since proofreading often rests with law firm partners or time-strapped in-house attorneys, time savings here is particularly impactful.
Some of the risks associated with document automation are the same as with any technology for attorneys, such as maintaining confidentiality and data security. Here, vendor transparency is critical so that attorneys can accurately assess these risks and counsel their clients accordingly.
Other risks relate to adoption and utilization. For example, failure to properly use or leverage technology where the costs are passed on to the client can potentially result in overbilling. If the cost being passed to the client does not reflect the full value that should be realized by using the technology, then the fees may be considered unreasonable from an ethical standpoint.
Another risk might be improper reliance on a technology due to a misunderstanding of its capabilities. For example, if an attorney relies on a technology to perform tasks A and B, but the technology is only designed to perform task A, then task B is either not being done at all or it’s being done inadequately, and potentially without the attorney realizing it.
A Framework for Understanding Document Automation
To have a practical understanding of how and to what extent a given type of legal document is or could be automated, it is useful to decompose the document based on content type. Legal documents generally have some combination of bespoke writing, mechanical writing, and canned text.
Bespoke Writing
Bespoke writing reflects the intellectual heavy lifting performed by attorneys while preparing legal documents. It often involves original analysis or disclosure on a unique fact set. This type of writing requires creativity and judgment. It is typically guided by the attorneys’ training, experience, and their knowledge of their client’s business and business strategy. Bespoke writing is too nuanced and context-dependent to be automated with existing technologies. This is where attorneys provide their primary value-add to written work product, which will likely remain the case for the foreseeable future.
The world’s most advanced system for natural language processing (NLP) and natural language generation (NLG), by far, exists between your ears. Expecting a machine to do bespoke legal writing is unrealistic with today’s technologies. Some cutting-edge technologies can generate text that may appear bespoke, but it can be unpredictable and nonsensical in the context of a specific legal document and underlying fact set. Recurrent neural networks (RNNs), for example, can create never-before-seen text, but only in relatively short spans (under 100 words). RNN plus neural bag-of-words (BoW) is used for real-time predictive text (e.g., Gmail’s Smart Compose), but is currently limited to just a few words ahead of a typist’s cursor.
Mechanical Writing
Mechanical writing is the traditionally rote and mundane parts of legal writing projects. This writing is usually driven by convention and/or by satisfying document requirements. It must be accurate and complete, but does not require significant mental work. Since the mechanics of mechanical writing are essentially repetitive across different documents of the same kind, this type of content in legal documents is ripe for automation.
From a technical perspective, mechanical writing can be automated with some combination of text transduction, text extraction, and text generation. Text transduction simply means turning one span of text into a different span of text. A common example of this in legal writing is propagating certain language throughout a document. If it were done manually, an attorney might copy and paste text into different parts of the document and then massage it so that the text reads appropriately for the different parts.
Text extraction relates to locating and describing facts to provide context and support within a document. In legal writing, extracted text may come from resources such as dictionaries, rules and statutes, encyclopedias, and other written bodies of knowledge. When used for document automation, relevant text (e.g., sentences or paragraphs) may be lifted from existing documents and used as content in newly generated documents.
Mechanical writing can include text generation such as summarization and data-to-text. With summarization, the most salient points of a larger document are distilled into a brief passage, which can be automated. One technique for automatically identifying pertinent terms in a document is known as “term frequency–inverse document frequency” (TF-IDF). This approach involves measuring, for each term used in a given document, the frequency in which the term is used in written language, generally, and then dividing that by the frequency of the term in the document itself. If a term is normally used rarely but appears often in a given document, the term is likely an important one.
When it comes to data-to-text, classic examples include weather reports, sports reports, and stock reports where noteworthy aspects of numerical data is automatically expressed with language. Because legal writing is not often informed by numerical data, data-to-text is less common in legal document automation.
Canned Text
Canned text is predetermined language such as boilerplate and template text. While this type of text is pre-existing, there is still an associated labor cost with manually identifying and locating appropriate canned text (e.g., in a template repository, old related documents, etc.). Different canned text needs to be properly organized within a document. It also may need to be adapted for specific projects, for example, by completing variable or conditional parts of the canned text.
Luckily, computers do a very good job of dealing with canned text for the purposes of document automation. A simple example is mail merge for letters and simple documents. Here, given some basic input information, a document with templated text is automatically completed by essentially filling in the blanks. A more complex example is contract assembly. With automated contract assembly, an attorney may identify a type of contract as well as the basic facts and terms. Based on that information, standard-language clauses are assembled into a draft contract document.
Different Legal Documents Lend Themselves to Different Automation Technologies, or Not at All
Depending on the type of legal document, there will be different ratios of bespoke writing, mechanical writing, and canned text. The ratio for a given type of legal document determines whether or not the document is a good candidate for automation and, if so, which technologies are best suited to automate that type of document.
At one end of the spectrum, contracts are dominated by canned text. There may be some amount of mechanical writing (e.g., propagating certain facts throughout the document) or bespoke writing (e.g, novel terms), but, by and large, contracts are mostly standard language. On the other end of the spectrum, memoranda are often primarily composed of bespoke writing where original analysis is being performed on a unique fact set. As such, they are generally not candidates for automation. Most legal documents, however, will fit somewhere in between where mechanical writing makes up a significant portion.
Document Automation in the Patent Context
A combination of statutory requirements and case-law-informed drafting conventions drive the contents and structure of patent applications. To be sure, a significant component of patent preparation includes bespoke writing where key concepts and nuances of an invention are described in a careful and strategic manner. The claims, obviously, fit squarely into this category, as do the background section and problem / solution statement.
A substantial component of most patent applications, however, includes mechanical writing and canned text. These are the parts that can be readily automated with currently available tools. In a patent application, mechanical writing may cover things like the title, field of the invention, summary, literal claims support in the detailed description, additional claim sets mirroring attorney-written claims, abstract, and basic drawing figures like those illustrating the environment in which the invention is practiced and method flow charts.
Other examples of mechanical writing may include lists of well-known examples (e.g., “Examples of types of material strength may include compressive strength, shear strength, tensile strength, and/or other types of strength.”), dictionary definitions (e.g., “Tensile strength is the resistance of a material to breaking under tension.”), and descriptions of well-known facts (e.g., “Steel is an alloy of iron and carbon, and sometimes other elements.”).
Canned text in patent applications often includes things like boilerplate, stock figure descriptions, and stock definitions.
Conclusions
The duty of technology competence is now widely adopted in the US and applies regardless of whether tech is actually adopted. The threshold is not expertise, but rather knowing your limits and asking for help when appropriate so that you can make determinations about adopting tech in your practice and counseling clients as to the benefits and risks.
Document automation is becoming increasingly relevant to legal practice, particularly with patents. It helps practitioners avoid rote and mundane writing, which benefits them and their clients alike. With more and more products coming to market, it is important to have a practical understanding of document automation to have realistic expectations and appreciate the potential for your practice.
DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.
By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (first posted on blog.specif.io)
Should your firm’s patent work product be a part of the firm’s brand strategy? How does having a “house brand” for work product matter for law firms involved with patent procurement? These are some of the topics covered in this article but, before getting into the weeds, let’s first take a step back and discuss branding for patent law firms more generally.
What is “brand” when it comes to patent law firms?
In the broadest sense of the word, your firm’s brand could be thought of as a collective mental construct associated with your firm. It is the overall impression of the firm felt by clients, prospects, and the public at large. It includes everything that comes to mind when one thinks of your firm—both factual (e.g., firm name, logo, attorney pedigree, types of clients, etc.) and emotional (e.g., reputation, quality, value, prestige, etc.).
Why is brand consistency important for law firms?
Brand consistency refers to a pattern of expression affecting perception about your firm. The more consistency in the pattern, the more consistent the brand, which is important on a variety of fronts. For example, a cohesive law firm brand projects professionalism as compared to a brand expression that is all over the place. With professionalism comes trust and loyalty. Brand consistency encourages confidence among law firm clients that they’ll dependably receive a certain level of service when they engage your firm.
A well-defined brand image acts as a guide for marketing and branding decisions. It is crucial for shaping your firm’s brand perception. Only when all brand elements are coordinated and complementary can a firm’s brand be reliably shaped in the minds of clients and others. And it’s not just important for people outside of your firm. A consistent brand facilitates internal direction by aligning attorneys and staff with the firm’s values and positioning.
One of the most important functions of brand consistency is for differentiating your firm from other patent law firms. In competitive markets with near-identical offerings, a clear and consistent brand is what sets your firm apart while attracting new clients and helps retain existing ones.
Is patent work product an element of a law firm’s brand?
Your firm’s brand is what it projects to the world outside your firm, most crucially to the firm’s existing clients. Along with direct client communications and billing, the provisioning of work product is one of the most important interactions between a firm and its clients. Substantive work product for patent law firms primarily includes patent applications, office action responses, and briefs.
The work product itself is the culmination and results of what your firm’s brand stands for. It represents delivery on the promise of a level of service your clients pay for and expect. As such, to support brand consistency, the work product coming out of your firm should consistently reflect your firm’s brand–just like any other brand element.
Who controls brand–the patent law firm or individual patent attorneys?
Imagine if every cook at McDonald’s had their own twist on the Big Mac? Customers would never know what they were going to get unless they only went to McDonald’s when their “favorite” cook was there. But even with their favorite cook, they may never be content and may instead be constantly wondering whether they could be getting a better sandwich from a different cook at the same restaurant. While this analogy may be silly, it is exactly the type of situation many patent law firm clients find themselves.
A law firm client cannot be consistently assured they are getting the value they’re paying for if the work product is not well-defined. Because one client’s patent cases are often handled by a team of practitioners with ranging experience levels and backgrounds, the work product they receive can vary widely depending on who was responsible for preparing it. That is, unless the firm’s work product is managed to provide a consistent work product each and every time.
What about the argument that diverse work product is actually an advantage when it comes to patents because it acts as a hedge against future changes in laws affecting patent interpretation and validity? To some, this may seem more like an unprovable client pacifier than savvy business advice. While sounding logical and soothing on its face, the argument reflects a dangerous underlying position that a firm’s attorneys should not do what the firm regards as best practices and should instead “do their own thing” when it comes to work product.
Because the business value of brand consistency in work product likely outweighs any potential benefits of diverse work product, patent law firms may be wise to consider dictating firm branding as it relates to work product, instead of leaving it in the hands of individual attorneys.
How to make patent work product consistent across practitioners such that it supports brand consistency?
A variety of strategies can be deployed to promote consistent work product across a firm. First and foremost, however, it is essential to centralize the management of work product branding in a way that is accessible to individual attorneys. The firms should establish what it regards as best practices to guide practitioners as they generate work product.
Templatization
Among chefs, there’s a saying that diners eat first with their eyes. The same goes for law firm clients when they’re evaluating your work product. The appearance of the documents is a reflection of your firm’s brand. A clean-looking and well-organized document will always be received better than a sloppy or inconsistent one. Templates are a powerful tool for ensuring a consistent look and feel to your firm’s work product. Often, even template formatting can be augmented and changed by an individual attorney’s copy and paste actions, resulting in an ugly work product that is scrutinized more heavily based on the appearance of the document, let alone the content. Thus, to work effectively, templates need to be maintained by a single person or group of people. The benefits of templates also extend to efficiency and quality control. For example, with centralized template management, firmwide updates to boilerplate can be effectuated instantly and consistently for all practitioners.
Standardized document parameters
Having well-defined and enforceable document parameters is another key element for generating consistent work product. Take a patent application, for example. Firm mandated document parameters may include things like the time spent taking in and studying each invention prior to drafting the corresponding application, the number of claims, the types of claims, the time spent drafting claims, the number of figures, the types of figures, the time spent preparing figures, the length of specification, the sections to be included in the specification, the structure and language used for each individual section in the specification, time spent preparing the specification, and so on.
Document parameters can extend to document-related processes as well. For example, there may be prescribed client approval checkpoints such as after the claims are prepared but before work has begun on the specification and figures.
Successful implementation of a well-defined set of document parameters will likely depend on a project intake process that includes categorizing new projects based on client, technology, and/or complexity. This is necessary to align each project with the appropriate parameters. An organized intake process may also complement the alternative fee arrangements (e.g., tiered flat fees) becoming ever more popular.
Why do law firm clients value consistent work product?
From an in-house practitioner’s perspective, consistent work product means knowing ahead of time what they’re going to get in return for each work assignment to outside counsel. That, in turn, means less review time and peace of mind knowing that they won’t be hung out to dry.
As for the patent-owner company, the value of consistent patent work product may be more along the lines of transparency into the strength of their portfolio. If a portfolio manager is confident in what is consistently portrayed in the underlying patents, then there is more clarity when it comes to opportunities for leveraging the portfolio. Indeed, work product consistency is so important for some sophisticated consumers of patent services that they prescribe their own application templates and stringent document requirements to their outside counsel.
How do patent law firms benefit from delivering consistent work product?
The benefits of consistent work product are not limited to brand perception and the value felt by firm clients. The patent law firm itself also benefits. For starters, it encourages systematization of document preparation, which in turn encourages efficiency. Despite the billable hour, law firm efficiency allows for “doing more with less” and coping with challenging economic trends in the patent market.
Consistent work product lets quality control be streamlined and tightened. For example, if the underlying document template is already firm-approved, the reviewer need only review the substantive parts of the document that differ from similar prior documents. Well-defined document parameters lend predictability to the work product itself, not to mention delivery times and the law firm’s cost associated with generating the document.
Conclusion
It is not controversial that brand consistency is one of the central tenants to modern businesses. Why should patent law firms differ? Law firm brand encompasses work product and, therefore, consistent work product across a firm is an essential element of successful branding. The stronger the brand, the easier it is to win new clients and keep your existing ones happy and loyal to the firm.
DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.
By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (first posted on blog.specif.io)
When we think of a “production environment”, a law firm patent practice is not usually the first thing that comes to mind. But why not?! Patent practices are highly process-oriented and they certainly involve “manufacturing” work product, primarily in the form of new patent applications and office action responses. This article discusses how, with a production view on patent procurement, exploiting the principles of lean production can be a compelling way to adapt to tough issues presently roiling the patent ecosystem.
The idea of commercial manufacturers providing completely-handcrafted products went out the window, for the most part, during the industrial revolution (the first one). To be sure, examples of prideful handiwork can still be found today, like with Amish woodworking or specialty items like, say, Rolls Royce automobiles. Speaking of cars, Rolls Royce and BMW both had record sales last year. Rolls Royce automobiles are assembled by hand and are of the finest quality. BMW automobiles are also very high quality, but manufactured by employees, automation, and OEMs working in concert. Rolls Royce sold 4,107 vehicles in 2018 (0.082 vehicles per employee), while BMW sold over 2.49 million vehicles (18.5 vehicles per employee). If these car companies were law practices and the cars were patent applications, which one would you want to model your own practice after?
We all know the Rolls-Royce approach to patent procurement–more or less the way it’s been done for the past 100 years. In today’s hyper-competitive patent market, however, having a more BMW-style practice may prove key to prospering (or even to survival in some cases). So what would a BMW-style patent practice look like? More specifically, how can patent practices modernize through lessons learned in traditional production industries–where decades of intense competition has resulted in process optimization evolving into a science?
Some of the most successful patent firms today are leveraging ideas from “lean production” to maximize their competitive edge. Lean production is a convenient framework for thinking about operations and possible improvements. It is a school of thought that originated in the Japanese automotive industry in the 1990’s. The basic idea is to maximize the creation of value for customers while eliminating waste. Here, “value for customers” means any action or process that a customer will be willing to pay for. Parts of the production process that do not add value are considered waste.
Several interrelated concepts are central to the lean production ethos. They include minimizing waste, just-in-time production, kaizen (continuous improvement), and cell production. Each of these is explained below in the context of patent procurement.
Waste in patent procurement can take on many forms. At a high-level, however, waste can be categorized as overprocessing, overproduction, or defects.
There is a waste of resources if an expensive resource (e.g., an attorney, a patent agent, a paralegal, a secretary, etc.) is used for a task when another resource could complete the task just as well. At first blush, this sounds a lot like the classic mantra of law firm leverage. However, there are things that can be done besides delegating talks to lesser-trained individuals to avoid overprocessing. For example, tasks can be decomposed into subtasks and those subtasks can be examined for further delegation even if the larger task is traditionally handled entirely by the more expensive resource. Also, in some cases, emerging technologies in automation may present alternatives to delegation. Where automation can be utilized instead of human labor, tasks are often performed cheaper, faster, and with less errors.
In the law practice context, overproduction means generating more work product than is needed to meet a client’s needs. Take patent application preparation, for example. How does a drafter know when a patent application is done? In traditional practices, it’s often done when the budget is exhausted. What if, instead, the drafter stopped working on the application when it (1) provides sufficient backup positions that might actually end up in the claims during prosecution, (2) provides sufficient enablement for the initially-claimed and potentially-claimed embodiments, and (3) conforms to any and all requirements from the client. Law firm clients expect work product that satisfies official and strategic requirements, not a treatise on the field of invention.
In order to cut out overproduction, practice management will need to align their own incentives with those of the practitioners doing the drafting work. One easy change, for fixed-fee projects, is to give practitioners a fixed billable hours credit for completing the project, regardless of whether it came in under the budgeted time. Rather than just hours worked, which encourages overproduction, this ties performance more closely to revenue generated.
This includes any mistakes that occur in the patent pipeline, whether they be clerical (e.g., errors in filing forms), more substantive (e.g., curable § 112 issues), or procedural (e.g., incurring extension of time and other unforced fees). Defects-type waste can lead to additional cost in the form of penalties and legal fees for curing mistakes. Prosecution can also be delayed while defects are addressed, meaning even more waste.
Adjustments in processes and leveraging technology can effectively reduce defects. For example, getting religious about the “four eyes principle” can have a drastic impact in catching errors, but perhaps at the expense of efficiency. Today, there are many automated patent proofreaders available that, in just seconds, can thoroughly review a patent application or office action response for common errors.
In general, the focus of just-in-time production is on reducing inventory waste. That is, products are not stockpiled, but rather produced “just in time” to meet orders. With minimal stockholding, producers can be more flexible. For example, they can switch to make new products without having to get rid of much stock, meaning they can act quicker to add value.
Inventory in the law-practice context is work that has been requested by clients (i.e., “work orders”) but not yet completed. In traditional practices, where a stable headcount means production capacity (i.e., full utilization of all employee resources) is essentially fixed, completion of any overage work (i.e., work orders above and beyond what employees can process at a given time) is delayed until work orders dip below the production capacity of the practice. A goal of this conventional approach is to compensate for the ebb and flow of work coming in so that practitioners keep as close as possible to their individual capacities (e.g., 35-40 billable hours per week). The inherent side effect of the traditional model, however, is the stockpiling of inventory in the form of pending work orders.
To realize just-in-time production in a patent practice, flexible production capacity is required. Practices should be able to handle bursts in work orders without having to delay completion for lack of available resources. This is done by incorporating non-employee resources into patent workflows. Non-employee resources can include automation tools, contract patent professionals, and/or domestic or offshore outsourcing services. These are resources that can effectively be turned “on” and “off” as needed such that overage work is completed on pace with client work orders while keeping employee resources at their production capacity. All of the undulations in work orders are absorbed by non-employee resources, thus sufficient resources are always available to meet production needs but the practice is never punished by having to pay for unused or underutilized resources.
For work orders that come today, when is “just in time” to complete them? For a variety of reasons, conventional wisdom says filing by client deadlines (e.g., a product release), non-statutory deadlines (e.g., three-month deadline for office action responses), or statutory deadlines (e.g., on sale bar) should not be the goal. Instead, with a lean production approach, work should be completed as expeditiously as possible to minimize inventory, i.e., the time between the client requesting the work and the work being finished. With the rapidly expanding range of available non-employee resources, be it automation or outsourcing, it has never been easier to find right-fit services for patent procurement production.
This is really process optimization but in an incremental fashion and in a way that involves all members of a patent practice, top to bottom. The philosophy of kaizen relies on a continuous effort to improve production. To be effective, a decentralized organizational structure is required with regular team meetings to identify and implement small, often quite simple, improvements to processes and activities. Discrete steps may be eliminated, combined, automated, outsourced, or made more efficient in other ways. Providing training to practice members to help them be more analytical may boost results.
Another requirement for effective kaizen is that efficiency among practice members must be incentivized. As with overproduction, the traditional billable-hours model for assessing practitioner performance can be counterproductive for kaizen. Here again, tying compensation to revenue generated may often get closest to aligning the interests of management and other practice members. One way to do this, as mentioned previously, is awarding practitioners the full balance of the hours budget for fixed fee projects even when they come in under.
According to lean production thinking, processes should be viewed as a series of separate but interlinked subprocesses. Each subprocess is then delegated to the most efficient resource. Traditionally, in manufacturing, each process is assigned to a “cell” or group of production workers. In patent processes, a cell could be comprised of one or more employee resources, one or more non-employee resources (i.e., automation tools, contract patent professionals, and/or domestic or offshore outsourcing services), or combinations thereof.
Processes large and small can be decomposed and optimized in this way. At one end of the spectrum, the “process at issue” could be an overarching process (e.g., “starting with an idea, procure a patent”). In fact, some leading practices have one group of practitioners who draft new patent applications and a completely separate group of practitioners who prosecute pending applications before the USPTO. As the process at issue becomes more granular, however, the opportunity is enhanced to squeeze out more value and eliminate more waste.
To illustrate, if the process at issue is preparing a patent application, subprocesses may include something like (a) invention download, (b) drafting claims, (c) assembling a first draft of the specification with baseline § 112 support, (d) bolstering the draft specification with strategic additions for future prosecution and litigation, (e) preparing formal drawings, and (f) finalizing the application ahead of filing. An attorney can certainly perform all of these subtasks, like in a Rolls-Royce-style practice, but it involves a significant amount of “overprocessing”, in the lean production sense. A more BMW-style practice would find the most efficient solution to each subprocess in order to maximize the creation of value for customers while eliminating waste.
With changing demographics among practitioners, challenging economics in the patent market, and exciting new technologies designed for patent practices, it is imperative that practices evolve their operations to remain competitive. To some, transitioning an operating patent practice to incorporate the tenets of lean production may sound like repairing a car while driving down the highway. But it can be done, it has been done, and an incremental approach will keep the changes relatively painless.
DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.
By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (first posted on blog.specif.io)
A wave of new technologies is hitting the market with a specific focus on solving problems and inefficiencies in the patent procurement pipeline, from invention conception to patent issuance. This growing subset of LegalTech has come to be known as “PatentTech.” These new solutions are challenging the status quo of patent practice and becoming increasingly mainstream across the spectrum of law firms and in-house patent departments.
Two analogous technology disruptions in service industries include electronic spreadsheets in accounting[1] and computer-aided drafting in architecture[2]. In both cases, these disruptive technologies resulted in “a net positive for the industry with higher quality, higher efficiency, better access to services, and growth in the workforce”[3].
PatentTech solutions are wide-ranging, but generally fit into the following categories: document automation, process automation, and big data insights. Below is a breakdown of the top 10 ways in which PatentTech is changing how patent professionals and patent practices operate.
1. Invention harvesting: Ideation starts the patent process. Traditionally, patent attorneys often hold brainstorming sessions with engineering teams to identify potentially protectable inventions. Once identified, those inventions are assessed for business value, likelihood of eventual protection, and expected cost to pursue protection. This analysis then forms the basis for a comprehensive IP portfolio strategy. At least two companies–Legit.ai and Bright Marbles–are working in this space.
Automating this brainstorming process addresses strategic and practical aspects. Brainstorming automation can be informed by the prior art, specific competitor products, and the patent owner’s portfolio or the portfolios of their competitors, which can make the results highly-targeted based on business strategies. At the same time, automated ideation may offer more thorough mining via systematic and context-based approaches. Since the information gathered is in digital form, brainstorming automation should also force good IP inventory management. From a practical standpoint, being able to automate ideation eases friction with inventor/attorney scheduling and can even be performed asynchronously among inventors.
2. Invention disclosure: Once inventions are identified, the inventor must sufficiently convey the invention to the patent practitioner such that the practitioner can prepare a patent application that would enable one of ordinary skill in the relevant art to make and use the invention. One popular way of doing this includes having inventors complete a standardized invention disclosure form (IDF) covering the topics relevant to preparing and filing a patent application. Some companies, like ClearAccessIP and AppColl, have platformized this step in the patent procurement pipeline. These existing solutions seem focused on form-based approaches but are presented via a user-friendly web-based interface.
Indeed, anything that addresses friction in the disclosure process is a step in the right direction. However, invention disclosure could be one of the best areas of opportunity for future PatentTech solutions. For example, a semi-intelligent chatbot could certainly perform a more-than-cursory invention disclosure meeting that results in a completed, standardized IDF. The practitioner may still need to follow up with the inventor with some specific questions, but automating a majority of the disclosure process with a natural language interface accessible by the inventor anywhere, anytime would take a lot of pain out of the process and likely result in a higher volume of disclosures.
3. Prior art searching: Evaluating the relevant prior art is an important part of informing the decision of whether to file a patent and, if the answer is yes, determining the appropriate language and scope of the claims and specification. The goal of this exercise is to file patent applications with the highest chances of being allowed based on what is known about the prior art. Cutting out low probability applications and minimizing the number of office action cycles results in efficiencies enjoyed by all stakeholders–patent owners, practitioners, and the Patent Office.
Several young companies, including Legalicity and DorothyAI, are automating patent search using AI. Automating this process, even if it’s just an initial screen of the prior art, can save hours of time for practitioners and professional searchers. In addition to speeding up turnaround on search projects, automation also makes it more feasible to do in-depth prior art analyses on a greater portion of a given portfolio.
4. Application drafting: The most time-consuming project in the patent procurement pipeline is drafting patent applications, which generally takes a skilled practitioner 20+ hours to complete. By segregating the judgment- and creativity-driven parts of patent preparation from the more mechanical aspects, automated drafting lets practitioners focus their talent on the truly high value-added components of the process. With intensifying cost pressure (see our prior post discussing revenue and cost trends in patent procurement), practitioners are turning to auto-drafting as a viable alternative to offshoring their drafting work.
A handful of rudimentary auto-drafting tools have popped up over the past year or so, mostly bespoke solutions developed in-house by drafting outsourcers and even by law firms in at least two cases. Fully- and partially-automated third-party drafting services, however, are now becoming available to the broader market. With Specifio‘s service, attorney-written claims are used to automatically generate a first-draft patent application with baseline 112 support. The idea, then, is for practitioners to bolster and finalize their auto-drafts ahead of filing with additional details and context around the invention.
5. Claim and spec proofreading: Sometimes small mistakes in patent applications can cost thousands of dollars to fix after the application has been filed. If a patent issues with certain errors in the text, it can even render the patent unenforceable or severely limit the scope of protection. As such, careful proofreading of the claims and specification is prudent (if not essential) ahead of filing the application.
While the rules are relatively simple, performing a thorough proofread by hand is tedious, time-consuming, and error-prone. Automated patent-specific proofreaders, like ClaimMaster and PatentOptimizer, have been around for a few years. However, the adoption of proofreaders like these seems to be accelerating. New AI-based proofreaders hitting the market, like BluePencil and PatentBots, are further evidence of how mainstream these tools are becoming.
6. Art unit prediction: Patent examination is still largely a human-driven process. And humans tend to be creatures of habit. As a result, the USPTO art unit to which an application is assigned once it’s filed can greatly affect a number of factors during prosecution, such as time to first action, number of actions before allowance, and, ultimately, the chances of ever being allowed.
In an effort to provide some control of the outcome, companies, like Juristat, provide an art unit prediction service. Coupling these insights with art unit analytics, such as that provided by BigPatentData, practitioners are able to adjust claim language to affect classification to improve prosecution outcomes and provide more realistic expectations to their clients.
7. Docketing: The patent process is a deadline-driven one. Missing deadlines can cost dearly in late fees and, for some deadlines, can cause the application to go abandoned. As such, docketing is one of the most critical aspects of any patent practice. Traditionally, the intake of USPTO correspondence and entry of corresponding deadlines is performed by a team of docketers. Beyond calendaring errors, the stress and monotony of these positions often result in moral issues and costly turnover.
Automation is becoming more and more prevalent in the patent docketing world. BlackhillsIP, for example, uses automation to augment its human docketers, while AltLegal provides a fully-automated solution. Both companies report cost savings and reduction in docketing errors. Building off of docketing, areas of opportunity for future PatentTech solutions include automated client reporting as well as schedule generation and workflow management for practitioners.
8. IDS preparation and management: Information disclosure statements (IDSs)–the mechanism by which patent applicants report known prior art to the Patent Office–make up another very tedious and error prone component of the patent procurement pipeline. Conventionally, this is often managed with spreadsheets, which is a problematic approach for obvious reasons. One of the earliest in the current PatentTech wave, SyncIDS, manages reference citations and relationships and generates ready-to-file USPTO-compliant IDS forms.
9. Prosecution: Preparing written responses to Patent Office rejections is one of the most time-intensive tasks for patent practitioners. With intense budget pressure, practitioners have found ways to maximize efficiency and leverage. Each office action response is unique, but there is definitely a rhythm to generating these documents. Traditionally, response “shells” are often produced by a paralegal or patent secretary. The shells include bibliographic info, claims in their current state of amendment, and an outline of the rejections in the office action. Shells take time and cannot have any errors. But due to the formulaic nature of these documents, shells are also great candidates for automation. Companies like ClaimMaster and TurboPatent offer automated shell generation as well as office action response proofreading.
When it comes to the practitioner’s part of preparing an office action response, examiner statistics are becoming essential. Examiner statistics are available from PatentBots, BigPatentData, and other sources. Practitioners can make data-driven decisions for things like “Should I appeal or file an RCE?” or “Have we successfully argued this particular issue in the past?”. One clear area of opportunity for the prosecution stage is automated claim charting, which could be leveraged during office action response drafting as well as infringement analysis, examination, and other aspects of patent law.
10. Strategic counseling/planning: One of the highest value-added parts of patent practice is strategic counseling to help solve business issues having an IP component. The analysis often considers various business objectives, likelihood of positive outcomes at the Patent Office, and the associated projected costs.
Patent filing strategies can be informed by a mapping between certain products (e.g., a competitor’s) and relevant patent claims (e.g., in an applicant’s portfolio and/or their competitor’s portfolio). Think of it as the opposite of a product clearance analysis where opportunities for patent protection are easier to identify. This is one of the myriad uses of ClearstoneIP’s platform, which also facilitates analyses like clearance/reverse clearance, FTO/reverse FTO, assessing licensing opportunities, enforcement analysis, competitor monitoring, etc.
Big data insights, like from BigPatentData, can help patent practice managers answer questions like “Should we prepare the client for lengthy prosecution?” or “Who at the firm is familiar with this technology?” or “Where is our prosecution practice most/least profitable?”. For in-house counsel, possible insights can inform decisions like “Should we pay for an examiner interview?” or “Which of our firms have handled this particular issue?” or “To which firms should we send more/less work?”.
More and more PatentTech companies are hitting the market and the rate is accelerating. Indeed, the companies mentioned above are just a few examples in the growing numbers of PatentTech. We are beyond a first-movers-only market with each area outlined above becoming increasingly competitive. Only a few years ago, it seemed like automation and big data insights were barely, if at all, on the radar of patent practice leadership. Now, in today’s hyper-competitive market, it’s dominating the conversation.
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DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.
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By Ian C. Schick, PhD, JD, CEO & Co-founder of Specifio (originally posted here on Sept. 17, 2018)
Patent application drafting is an art form. Or at least parts of it are. Take claims for example. Some describe claims drafting as a cross between writing computer code and poetry. There’s certainly a significant aspect that is syntax driven, but the rest can be very nuanced being driven largely by creativity and judgment. A rule of thumb is that it takes around four years of apprenticeship for a practitioner to gain a solid command of claims drafting.
To craft commercially-valuable claims, the practitioner must have a firm grasp of the invention, requiring technical expertise in the area. But that’s not the end of it. Patent law is constantly evolving, so precedent is also a major factor in developing claims, which is where legal expertise then comes into play. The practitioner must have a sense for things like the client’s business and how the invention fits into their business strategy. There can be many other factors considered by the practitioner when writing claims.
The claims define the legal right being sought during prosecution and, as such, are by far the most important part of a patent application. Great claims, however, can fall flat if they are not sufficiently supported by the specification. MPEP 608 provides:
To obtain a valid patent, a patent application as filed must contain a full and clear disclosure of the invention in the manner prescribed by 35 U.S.C. 112(a). The requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent.
Section 112(a) states:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Not all, but much of the process for preparing a specification that meets the Section 112 standard is more mechanical-writing in nature and, therefore, is ripe for automation. Below, we’ve laid out the steps practitioners can follow to leverage Specifio’s automated patent drafting service to minimize drafting time without diluting quality or the unique impact skilled practitioners bring to the work product.
Step Zero: The Doc Plan
It all starts with a solid Doc Plan. This is what controls the appearance, content, and structure of the auto-drafts generated by Specifio. In addition to stylistic preferences, a practitioner will want to build in any contextual-but-non-invention-specific material. Traditionally, this might include template language and stock figures, which can all be incorporated into a Doc Plan. Once a Doc Plan is designed, it’s kind of like “set-it-and-forget-it.” So, this part doesn’t count toward the five hours.
Step One: The Pre-App
A pre-app is a technique for rapidly developing content for claims. It’s a way to outline an invention using claim-style language, but in a more intuitive and easy-to-follow format than starting with the claims themselves.
Here is a simple example for creating a pre-app covering a software-related invention:
First, identify the main thrust of the invention and write it out in this form:
Second, think of the main steps the software performs, and write them out like this:
Finally, flesh out the concepts in the IND lines and use indentation to keep track of dependency:
Step Two: The Claims
Once the pre-app is complete, it needs to be converted to normal claim format. Copy the PREAMBLE and IND lines to create the independent claim. Add numbers and preambles to the DEP lines to create the dependent claims. And you’re done with the claims!
Step Three: The Auto-Draft
This is the best part. Simply put the claims into a Microsoft Word document and send them to Specifio. In only a couple minutes, you’ll receive a first draft application complete with basic figures. Two or three pages of claims (almost) instantly becomes a 20–30 page first draft.
Step Four: Bolster and Finalize for Filing
Once the auto-generated first-draft patent application is received from Specifio, it’s time to add in descriptions of specific examples, flesh out key terms and concepts, and add in descriptions of any additional invention-specific figures. After that, the application should be done and ready to file.
For more information on Specifio’s automated patent drafting service, visit our website or email us at info@specif.io.
DISCLAIMER: The views and opinions expressed in this article are those of the author and (1) are not provided in the course of and do not create or constitute an attorney-client relationship, (2) are not intended as a solicitation, (3) are not intended to convey or constitute legal advice, and (4) are not a substitute for obtaining legal advice from a qualified attorney. You should not act upon any such information without first seeking qualified professional counsel on your specific matter. The hiring of an attorney is an important decision that should not be based solely upon Web site communications or advertisements.