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Best Docketing Practices Risk Management

2. Agenda. Intellectual Property risks and trendsAre you at risk?Risk mitigation strategies:People: training, hiring,

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Best Docketing Practices Risk Management

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    1. 1 Best Docketing Practices & Risk Management

    2. 2 Agenda Intellectual Property risks and trends Are you at risk? Risk mitigation strategies: People: training, hiring, … Docketing and processes Technology & data Questions and answers I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

    3. 3 THE VALUE OF INTELLECTUAL PROPERTY “The value of intellectual property in the U.S. has been estimated at $5.5 trillion, more than the gross domestic product of any other country.” “40% of the market valuation for the average company is missing from its balance sheet.” Source: Essential of Intellectual Property by Alexander Poltorak and Paul Lerner

    4. 4 The New Realities This growth and stability have led to 35% market share in CPA’s core renewals – or annuities - business. Our clients, though, are faced with a number of harsh, new realities. If you follow industry press, you know that malpractice claims are on the rise, attorney salaries are increasing while attorney attrition rates also increase, litigation trends continue upward. In particular, law firms are being challenged to find innovative ways to manage risk, costs, and resource capacity – and this is where we feel we are able to provide value.This growth and stability have led to 35% market share in CPA’s core renewals – or annuities - business. Our clients, though, are faced with a number of harsh, new realities. If you follow industry press, you know that malpractice claims are on the rise, attorney salaries are increasing while attorney attrition rates also increase, litigation trends continue upward. In particular, law firms are being challenged to find innovative ways to manage risk, costs, and resource capacity – and this is where we feel we are able to provide value.

    5. 5 Risk Vs. Reward in Intellectual Property As we saw on a prior slide, recent analysis reveals that over half (60%) of IP malpractice claims originate from administrative mistakes. Accordingly, some US firms have begun to divest “high risk” activities such as annuities and docketing in order to reduce exposure and increase focus on clients and more profitable, substantive, client-facing work. CPA can provide assistance in these areas: IP Maintenance/Annuity Payments Patent and Trademark Data Verification Docketing Solutions IP Portfolio Transfer Support IP Process Reviews & Consulting Our discussion today will focus on alternative for annuity payments – providing pros and cons not just from a risk perspective but from an administrative, financial and client management perspective. As we saw on a prior slide, recent analysis reveals that over half (60%) of IP malpractice claims originate from administrative mistakes. Accordingly, some US firms have begun to divest “high risk” activities such as annuities and docketing in order to reduce exposure and increase focus on clients and more profitable, substantive, client-facing work. CPA can provide assistance in these areas: IP Maintenance/Annuity Payments Patent and Trademark Data Verification Docketing Solutions IP Portfolio Transfer Support IP Process Reviews & Consulting Our discussion today will focus on alternative for annuity payments – providing pros and cons not just from a risk perspective but from an administrative, financial and client management perspective.

    6. 6 2001 Enron sued Vinson & Elkins for $40 billion damage claim 2003: Fish & Richardson $30 million lawsuit for a filing deadline 2005: Baker Botts pays $71 million for breach of fiduciary duty 2006: Sidley Austin & Pepper Hamilton hit with claims >$100M Law firms are now sued frequently for IP administrative errors

    7. 7 AMERICAN BAR ASSOCIATION LAWYERS PROFESSIONAL LIABILITY STUDY BREAKDOWN OF “ 114,866 ” CLAIMS BY AREA OF LAW - 1983-2003

    8. 8 ALAS Patent Related Malpractice Claims 1979 Thru July 31, 2006 MOST COMMON TYPE OF ERROR ALLEGED 43.0% - Failure to Timely File 12.0% - Conflict of Interest 9.0% - Negligent Advice 7.0% - Negligent Drafting 7.0% - Improper Opinions 6.0% - Breach of Duty 1.0 % - Sanctions 17.0% - Other Miscellaneous Causes * * A number of claims have arisen from patent litigation, particularly in cases where the litigation team did not include a patent lawyer

    9. 9

    10. 10 IP Malpractice Claims - 2008 AON, ALAS, Jamison, and others have released stats showing that missed maintenance fees account for between 10-15% of IP malpractice claims. CNA, the biggest carrier in the market, has stated that 12% of claims arise from missed maintenance fees. AON, ALAS, Jamison, and others have released stats showing that missed maintenance fees account for between 10-15% of IP malpractice claims. CNA, the biggest carrier in the market, has stated that 12% of claims arise from missed maintenance fees.

    11. 11

    12. 12 Agenda Intellectual Property risks and trends Identify potential risks around docketing Risk mitigation strategies Questions and answers I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

    13. 13 Docketing Risk Management Are you at risk? I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

    14. 14 Errors Within The System A service provider in the IP industry has conducted some analysis on over 19,000 patent and trademark records Portfolios originated from a mix of 30 law firms and corporations Data verification was performed for consistency checks, due diligence and M&A transactions. Results: 51% of cases had 1+ error 32% of cases had errors in their renewal dates 8% of cases in Japan, Taiwan and Korea would have caused non-restorable lapses 34% of cases had errors in their priority dates

    15. 15 Patent Proofreading Statistics Certificate of Correction (COCs) are filed for 12% of patents issued by the USPTO Statistics from sample of 1600 US patents proofread by a service provider: 98% had identified mistakes 50% of mistakes by USPTO; 50% by prosecutors 34% resulted in a Certificate of Correction 2% had mistakes impairing the core claims 12% had wrong expiry dates: PTA, software calculation… Proofreading a patent, although mind numbing to some, is important. Many patents contain errors, which, if not resolved, could impair the core claims. Intellevate can help you sort through this tedious task, and even help you file a certificate of correction if necessary. Proofreading a patent, although mind numbing to some, is important. Many patents contain errors, which, if not resolved, could impair the core claims. Intellevate can help you sort through this tedious task, and even help you file a certificate of correction if necessary.

    16. 16 If you are you at risk with docketing, Can you do something about it? Absolutely! I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

    17. 17 Can you do something about it? ORGANIZATION: Klarquist Sparkman PROBLEM: Increased professional risk caused by: Administrative errors around annuity payment management Poor IP data integrity SOLUTION: Patent Annuity Exit- reduced risk by offloading annuity payment administration Data Verification – reduced risk of missed annuity deadlines by identifying and updating data discrepancies RESULTS: Greater control and management of IP Practice Risk -Applying data verification and annuity outsourcing to gain control over risk. -Applying data verification and annuity outsourcing to gain control over risk.

    18. 18 Risk & Capacity Management ORGANIZATION King & Spalding PROBLEM: Transferred client portfolios needed to be seamlessly integrated into firm's IP management system No electronic data available Data problems Shortage of experienced resources to safely assess and manage the transfer project SOLUTION: 3rd party recreated case data through electronic patent data extraction and culling through onsite paper files 3rd party docketing specialists onsite to docket case data into firms’ IP management system RESULTS: Safe integration of client IP portfolios in a timely manner to ensure no prosecution and maintenance deadlines were missed -Addresses risk and resourcing -Products: Intellevate on-site docketing resources-Addresses risk and resourcing -Products: Intellevate on-site docketing resources

    19. 19 Risk Management ORGANIZATION: Buchanan Ingersoll & Rooney PC PROBLEM: Pressure from insurance carrier to exit annuity payment business to decrease exposure to risk Meet aggressive timeline mandated by Executive Committee as part of firm’s risk management and insurance premium reduction strategy SOLUTION: Structured program to complete renewals exit strategy in a timely and risk conscious manner RESULTS: Firm successfully exited annuities management while: Avoiding risk pitfalls associated with exit process Preserving client relationships through a firm but friendly client communication approach Overcoming initial internal and external resistance

    20. 20 Other impressive prosecution practices Morrison Foerster Kenyon & Kenyon Fish & Richardson Kilpatrick Stockton And many international firms: Gowlings Danneman Spruson Ferguson I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

    21. 21 Agenda Intellectual Property risks and trends Are you at risk? Risk mitigation strategies Questions and answers I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

    22. 22 Risk mitigation strategies Strategies & Commitment Where is the risk? Short-term strategies Mid/long-term strategies I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

    23. 23 Strategies & Commitment Proactive Vs. Reactive You can spend your time fighting fires or… “Law firm risk management is thus evolving from reactionary and rudimentary to proactive and comprehensive. Brian Kinman, a partner with PricewaterhouseCoopers LLP”

    24. 24 Strategies & Commitment Start at the top & involve everyone: Most problems can be traced back to some lack of involvement, or investment from the top Successful risk management is a firm-wide initiative Risk Management is a business/financial decision: Risk management is expensive, but the measures ultimately protect a firm's reputation and enhance profitability Cost savings strategies are best driven when quality of staff, processes and technology is the primary initiative. Improving quality will not only mitigate risk but also drive efficiency which in itself will drive cost savings. This is because it will eliminate re-work, redundancy and higher variability in outcomes. Keep the process measurable: Find out where you are and where you want to be Keep track of the progress Develop benchmarks, scorecards, KPIs, SLAs, and ROIs

    25. 25 Create a Docketing Risk Committee Involve the General Counsel, IP Chair, Managing Partner, COO… The general counsel has emerged in recent years as the gatekeeper of the firm's risk management strategy Large firms are recognizing the benefit of concentrating overall responsibility for risk management and related issues, such as professional responsibility, client intake, conflicts and professional liability insurance, in a single role More than two-thirds of the top 200 U.S. law firms have an in-house GC Build a team: Put together a Process Committee comprised of staff who represent the entire docketing Department as well as partner level ownership Have weekly meetings until you are where you want to be with people, processes and infrastructure Have monthly meetings to measure progress, ensure continuity and explore opportunities for additional improvement: work in progress Implement clear change management procedures and define how they will be communicated Keep the members accountable

    26. 26 Risk mitigation strategies Strategies & Commitment Where are we at risk? Short-term strategies Mid-term strategies Long-term strategies

    27. 27 Finding risk: start in the mail room and follow the trail looking for…

    28. 28 Evaluating the People: Are only trained and/or supervised employees granted editing rights to the docket? Is on-going training provided to all members of the docketing team? Is docketing staff easy to hire and retain in your firm’s market? What is your turnover rate? Is there a career path for docketing staff? Does the firm have a “docketing task force” or a group of employees cross-trained in docketing that can fill in when docketing team members are absent? Has your firm appointed a senior member of the IP department to monitor the daily docket and confirm that all required filings have been cleared from the docket prior to close of business? Is a senior member of the firm accountable and responsible for the docketing Department? Does docketing staff reside in a quiet area within the office away from noise and other distractions? Health Check – People See the white paper for an exhaustive list of question across all areas: people, process and technologySee the white paper for an exhaustive list of question across all areas: people, process and technology

    29. 29 Health Check –Technology Evaluating technology & data: Does the firm use reliable and proven IP software from a proven vendor to manage deadlines, contacts and case information? Does the firm’s software have the ability to cross-validate the entered PTO data with the USPTO data? Does the software provide an “audit trail” with regards to data changes in each record? Does the firm have sufficient in-house configuration skills to take advantage of software available functionality? Is the software sufficiently configurable to complement and enhance the firm’s docketing processes? Does the firm have a documented disaster recovery plan with respect to docketing information? Has the disaster recovery plan been tested on a regular schedule? Is someone within the IP department designated to manage the law updates to the firm’s docketing software? Sample data verification and file audit (acid test)

    30. 30 Health check – Processes Evaluating the Processes: Is a docketing email inbox exclusively utilized by IP clients, USPTO, and agents wherein all prosecution and maintenance matters are centrally received by docketing? Are members of the patent practice mandated to immediately forward any electronic correspondence they receive directly to docketing? Is a parallel or double docketing system in place and adhered to, where dates are calculated, maintained, and reconciled independently? Is IP data stored and maintained within the firm’s docketing system periodically verified against public data sources? Is there defined procedure for handling new client and attorney portfolios? Do you keep track of the average # days to docket an item Do you keep track of mistakes: statistics and learned lessons

    31. 31 Health Check: Docketing Double docketing & Double-checking Daily check of deadlines - reconciliation Centralization Department structure & Role definition Documented processes (LT) Ownership and accountability (LT) Measurement process established (LT)

    32. 32 Risk mitigation strategies Strategies & Commitment Where are we at risk? Short-term strategies Prioritize Getting some help Backlog Data verification & File audits Mid-term strategies Long-term strategies I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

    33. 33 Short-term strategies Prioritize: Rapid assessment of the situation – Think of triage in an emergency room Have you missed a deadline? Do you have a backlog or a capacity issues? If so get some help and take care of it Has the problem been reported? Are the right people involved within the firm? Getting help: You can make mistakes, but failure to ask for help when in need is not acceptable Internally if extra capacity is available: other offices Other Departments Externally: Often requires a fresh set of eyes - Check your ego at the door Temps and interns are not whom you need in an emergency Hire trained IP specialists There are lots of way a portfolio may require updating and these are a few we have experienced and provided support withThere are lots of way a portfolio may require updating and these are a few we have experienced and provided support with

    34. 34 Backlog – A ticking bomb! Assess the situation: What is the nature of the backlog? Lateral transfer, new client, merger… Structural: volume of work has progressively exceeded capacity Capacity reduction: staff turnover, transfer… Assess the risk level: Pending, granted/issued/closed Evaluate the volume of work Assess the level of assistance required Assess the skill level required Access resources: Internally if extra capacity is available and the backlog is a one-off problem that can be resolved rapidly Externally if the volume of work exceeds capacity, the expertise required is not available internally… Do not nickel & dime with backlog – Hire trained IP specialists Absolutely not an opportunity to work extra hours for more money over the next 6 months There are lots of way a portfolio may require updating and these are a few we have experienced and provided support withThere are lots of way a portfolio may require updating and these are a few we have experienced and provided support with

    35. 35 Data verification & File audits Patents Trademarks Current Status Current status Next Renewal Date Application Date Owner Application Number Grant Date & Number Registration Date Publication Date & Number Registration Number Application Date & Number Trademark Name Parent Application Number Owner Name PCT Date & Number Next Renewal Date Priority Date & Number List of Classes Number of Claims Prosecution deadlines Next renewal data Prosecution deadlines

    36. 36 Risk mitigation strategies Strategies & Commitment Where are we at risk? Short-term strategies Mid-term strategies Portfolio transfers Processes Software Maintenance fees People Docketing Long-term strategies I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

    37. 37 Develop a strong client-intake system to weed out poor quality clients and attorneys; companies with too much red ink, attorneys in contentious situations Plan in advance: Get involved early and ask questions! Lateral hires background information Mergers and acquisitions / Client due diligence projects Portfolio management or IT contacts Familiarity with software capabilities Portfolio confidence? Data sources? Schedule qualified resources: will you need external help? Triage: assess volume of work, data quality, risk level Portfolio Reports Standard chart report to easily spot missing data, logical sorts, count comparisons, etc. Portfolio transfers: managing incoming portfolios

    38. 38 Checklist: Conflict checks! Develop agreed upon transition plan and schedule with originating firm: who, when, what Maintain dialogue with originating firm. Maintain paper trail Pending applications: obtain revocation and grant of POA. After filing POA, check the file on private PAIR Issued patents: obtain fee address indication form from applicant Notify USPTO if agent of record change Handle the recordal work quickly. Signatories might be heading for dissolution… Notify all foreign agents ASAP Portfolio transfers: managing incoming portfolios

    39. 39 Planning: Get involved early and ask questions: Partner departures, client departures, client asset sales and divestitures Know your software capabilities Data sources preparation: Provide electronic files printed reports Quality control: Run queries to verify count of records to be transferred. Print full deadline dockets for portfolio Print full matter listings for portfolio Create data extracts Portfolio transfers: managing outgoing portfolios

    40. 40 Leverage technology: software & infrastructure

    41. 41

    42. 42 Leverage technology to go paperless

    43. 43

    44. 44 Invest in PTO Integration = greater data accuracy

    45. 45 USPTO PAIR Integration

    46. 46

    47. 47 Maintenance fees = 12% of claims against IP prosecution practices in the US (and rising) Maintenance fees For years firms worked directly with PTOs and foreign agents. About 40 years ago, vendors got into this space to send reminders directly to firms, or what I call the outsourcing model here. Most people are familiar with the outsourcing model and I believe is how you work with CPI today. However, more and more firms are exiting this business. Today I will explain some of the pros and cons of both the outsourcing and exit models, explain how CPA works with firms to exit, and how it affects your firm.For years firms worked directly with PTOs and foreign agents. About 40 years ago, vendors got into this space to send reminders directly to firms, or what I call the outsourcing model here. Most people are familiar with the outsourcing model and I believe is how you work with CPI today. However, more and more firms are exiting this business. Today I will explain some of the pros and cons of both the outsourcing and exit models, explain how CPA works with firms to exit, and how it affects your firm.

    48. 48 Historical models to manage annuity payments: Traditional model: work with PTOs/foreign agents Back office outsourcing model: work with annuity provider Exiting model (latest trend): exit the annuity business High severity claims Increasing frequency Low income activity Admin burden Proven exit strategies: safe and no client losses Leading insurance carriers (ALAS, AON, CNA) no longer want to bear the risk Maintenance fees For years firms worked directly with PTOs and foreign agents. About 40 years ago, vendors got into this space to send reminders directly to firms, or what I call the outsourcing model here. Most people are familiar with the outsourcing model and I believe is how you work with CPI today. However, more and more firms are exiting this business. Today I will explain some of the pros and cons of both the outsourcing and exit models, explain how CPA works with firms to exit, and how it affects your firm.For years firms worked directly with PTOs and foreign agents. About 40 years ago, vendors got into this space to send reminders directly to firms, or what I call the outsourcing model here. Most people are familiar with the outsourcing model and I believe is how you work with CPI today. However, more and more firms are exiting this business. Today I will explain some of the pros and cons of both the outsourcing and exit models, explain how CPA works with firms to exit, and how it affects your firm.

    49. 49 Industry Trend of the Top 350 US IP Firms From CPA’s perspective, we’ve definitely seen an upward trend in the number of newly contracted firms who have chosen to manage annuities AND risk by going exiting with a provider. In 2001 there were about 3 firms that had completed this. CPA changed its account management model to focus on the top 500 firms in the US. In speaking to them, we realized that by 2005 10% of the top 500 had exited. Currently approximately 35% of the top 500 firms are out of the business. From CPA’s perspective, we’ve definitely seen an upward trend in the number of newly contracted firms who have chosen to manage annuities AND risk by going exiting with a provider. In 2001 there were about 3 firms that had completed this. CPA changed its account management model to focus on the top 500 firms in the US. In speaking to them, we realized that by 2005 10% of the top 500 had exited. Currently approximately 35% of the top 500 firms are out of the business.

    50. 50 Exit methodology

    51. 51 Two-phased approach Phase one: Removal from reminders, instructions & invoices Phase two: data responsibility Firm but friendly contact with clients Call to action Individual follow-up with each individual client Firm must be 100% committed: Provide resources and project manager Adhere to project plan What should you expect: Proven methodology and vendor Dedicated and experienced staff Safe, quick and well-managed project Get out and stay out Positive impact on clients: win-win-win Maintenance fees - Summary

    52. 52 Risk mitigation: People Define a Hiring Strategy: recruit technical IP experience or recruit general skills and train Develop a training curriculum & Continued Education Cross train staff in different departments to support spikes of work Staffing level: cross-training and extra capacity Roles & Specialization: specialization & efficiency Vs. burnout Implement a Career Advancement Program to help retain, control employee attrition and reward Senior IP Admin staff: Invest in and empower key staff in the docketing team: Their knowledge is invaluable They will keep you safe Learn from great bottom-up business success stories: Southwest, Toyota – Great ROI: $K compensation Vs. $M deductibles & damages

    53. 53 “Outsourcing Is Increasingly Integrated Into Many Organizations’ Business Models”* Look at how much organisations are outsourcing already – again it’s not a new phenomena Look at how much organisations are outsourcing already – again it’s not a new phenomena

    54. 54 Partner with an IP specialist Calling for help when the house is on fire is reactive Developing a long-term partnering relationship with an IP specialist is proactive: Manage 85% of the normal workload in-house and outsource the rest Know the people: be involved in the hiring and training Outsource the work you don’t want to manage internally: proofreading, IP recordal, data entry… Benefits: Create an extension of your team Consistent training, processes and tools Creates flexibility to manage: Spikes of work Portfolio transfers Work reduction File audits and data verification Cost-effective

    55. 55 Summary Administrative risks in the IP prosecution practice can be mitigated It requires a relentless, no-nonsense, systematic and disciplined approach: measure, document, & train Check your ego at the door and ask for help Invest in people, processes and technology Stronger team Better workflows and processes More automation Improved efficiency Improved quality More satisfied clients greater safety = competitive edge, greater profits --

    56. 56 Agenda Intellectual Property risks and trends Are you at risk? Risk mitigation strategies Questions and answers I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone. I’d like to provide some framework discussion by giving you a better sense of CPA as an organization. So I wanted to take just a few minutes to talk about CPA and how we are assisting our law firm clients with some very complex issues. I’d like to talk specifically about our recent focus on managing administrative risk in the IP practice, options for managing annuities, including the option of exiting annuities – and provide some specific examples through case studies. Finally, you may have some questions and then I’d like to open this up to discussion among everyone.

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