FROM THE PUBLISHER OF THE AMERICAN LAWYERwww.iplawandbusiness.com

OCTOBER 2003

The IPMaster

PlanHow Brinks Hofer updated its patent docketing system.

By Susan Hansen

ince Chicago’s Brinks

Hofer Gilson & Lione

overhauled its patent docket-

ing system six months ago,

the firm’s clients have become

more self-reliant. And that’s a

good thing. With the upgrade,

clients can access the docket-

ing system directly through

the Web. So now, instead of

asking their lawyer to check

the status of a specific patent

application, clients with a

Brinks Hofer password can log

on to the docketing system

and get status reports them-

selves—meaning they don’t

have to call their attorneys to

get the information, and they

save some extra legal fees.

The docketing system provides a

sophisticated way of filing, searching,

and organizing the 75,000 patent and

trademark prosecutions Brinks Hofer

handles for clients. Docketing soft-

ware is not new; patent lawyers have

been using programs for years

to track filings. What’s new about

Brinks Hofer’s system is its client-

friendly approach.

Since March, 44 clients have

received passwords for the system,

called IP Master, and those inter-

viewed say they appreciate the do-it-

Jerold Jacover (left)

and Mark Rolla

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yourself approach. “It really is a

user-friendly system,” says Marc

Filigenzi, an in-house IP attorney

with Brinks Hofer client Amway

Corporation. “It will pull up all my

cases, and I can get a basic overview

and info on the whole patent

portfolio.” Client George Seay says he

also likes not having to bug his

lawyers with questions. “I’m able to

do the research myself,” says Seay,

manager of intellectual property for

design firm Herman Miller (a compa-

ny used to innovation and best-known

for its Aeron chairs, which were

favored by dot -commers in the

late 1990s). “And I can do it at my

own pace.”

The do-it-yourself approach might

mean reduced billings for Brinks

Hofer, but firm chair Jerold Jacover

says the enthusiastic response to the

new system is worth any potential rev-

enue loss. “The feed-back I’m hearing

from clients,” says Jacover, “is ‘Why

didn’t anyone offer this before?’ ”

The system is a nice touch for

clients, but it is essential for the firm’s

lawyers. An automated tracking

component alerts attorneys to key

deadlines for filing applications and

patent renewal fees, and helps keeps

them on top of their caseloads.

Missing a renewal deadline can lead to

a losing trifecta: abandoned patent

rights, angry clients, and malpractice

suits. For any firm with a robust IP

practice, a docketing system is a

mission-critical application.

Brinks Hofer treated the conversion

as a top priority. From start to finish,

getting the new docketing system up

and running took nearly six months—

and cost the firm upwards of

$100,000, including software, new

equipment, and overtime for the

firm’s docketing staff. “It was a major

ordeal,” says Brinks Hofer partner

Kent Genin, a former member of the

firm’s docketing oversight committee.

Still, Genin and other partners say

that the firm needed a change. Brinks

Hofer has been growing, from about

90 lawyers in 1997 to roughly 150

today. And the firm’s caseload has

gotten bigger, too. By mid-2000, it was

obvious that the firm’s old Computer

Packages Inc. (CPI) docketing system,

which was originally

installed in 1993, was

straining to accommo-

date all the demand.

“People would try to get

in the system, and it

would make you wait

for minutes,” recalls Jeffery Duncan,

head of Brinks Hofer’s biotech and

pharmaceutical practice group.

In early 2001 Brinks Hofer was set to

make the switch. The firm’s first big

step was hiring Mark Rolla, the former

manager of docketing for Chicago’s

(now defunct) Altheimer & Gray, to

serve as point person for the conver-

sion. His first order of business was to

survey the market for software. The

choice ultimately came down to

docketing software vendors CPI and

Master Data Center. Both companies

were offering systems that could

accommodate up to 100 concurrent

users. But Rolla notes that Master

Data Center’s IP Master package

offered Web access for clients, and

generally seemed more user-friendly.

Also, Master Data Center was pledging

to install future upgrades of the soft-

ware for free. “We thought if we start-

ed with a whole new system, we’d be

better off in the long run,” says Rolla.

On Rolla’s recommendation, Brinks

Hofer signed a licensing deal with

Master Data Center in June 2002.

Chris Calogero, CPI’s director of

marketing, declined to comment for

this story.

In the short run that meant Rolla

had his work cut out for him. First, he

needed to give software developers at

Master Data Center specifications for

organizing the new database. Then

that data—including roughly 35,000

patent records and about just as many

trademark records—had to be

transferred to the new system.

Last September Rolla and a five-

person team from Brinks Hofer’s

docketing department entered the so-

called parallel testing

phase, during which they

ran the old and new

docket systems side by

side to test the integrity

of the converted data,

and make sure the new IP

Master software was generating accu-

rate docket reports. All through the

six-month testing period, the conver-

sion team held weekly assessment

meetings in conference calls with

Master Data Center staffers. “We

wanted to make sure we were doing

everything correctly,” says Rolla.

In February Rolla began holding

training sessions to prep Brinks Hofer

lawyers for the switch. And on March

10, the firm unplugged the old system

and took IP Master live. Partner Genin

says the new software is faster and

does not get bogged down. “Our main-

tenance time is way down,” he says.

Plus, say partners, IP Master’s

search function is much more dis-

criminating. The old system “would

spit out every detail about the case

instead of the specific information

you needed,” recalls partner Duncan.

Now lawyers and staffers can type

in targeted queries—asking, say,

which of a client’s cases have U.S.

Patent and Trademark Office actions

pending—and get only the informa-

tion they want. Partner Shannon

Mrksich says she likes that she

can now drag data off the docketing

system and put it into Word and Excel

files. “It really is a much easier

system,” she says.

For lawyers and clients alike. �

Now searchesare quicker and more discriminating.