29 August 2012

IP databases

I sometimes see requests for recommendations on IP software asking, "what is the best IP software available?"

There are no right and wrong answers to this and it depends on your unique circumstances.

Here are a number of considerations you may consider key. This is meant to be direct and concise. It's not meant to be rude - I am fairly stereotypically English!

Your budget

It goes without saying that this is critical. I doubt you have an unlimited budget so set it down. Be realistic, a database should be an important part of your operations and this is not a short term decision you are making. If you want an all singing and dancing database - and by this I do not just mean one which is aesthetically pleasing - you will have to pay for it. Databases are not created by a geeky teenager who couldn't sleep one night. They have taken a long time to develop and continually improve.

If you're a solo practitioner your database needs could be more minimal, but note that you can often pay a license fee per person so if you recruit someone (who needs database access) then you could have immediately doubled your database costs.

Your portfolio size

Know your portfolio size and understand your predicted growth. Some databases will be ideal for smaller portfolios, but check out performance if a portfolio reaches a certain size. Some databases charge as the number of records increase. You might think that's fair enough as if your records are growing then you are generating more work and income, but be wary of the additional overhead you could be creating. Take into account what is regarded as a "record". For example, it may also include name and address records. If you have, say, 100+ client and agent contacts around the world you are already on the way to eating into your basic allocation.

Document management features

Is this important to you? Are you looking to go paperless? If you are, take into account the business operations surrounding this. Is your post room going to be scanning in correspondence? Are you already doing enough work through e-filing and e-mail? Now is an ideal time to think around your business processes and even if you are not proposing to change them to be open to change. Try to think of how you will work before you test out such a feature of a database.

Or have you already gone paperless? Can the new database interact with your existing document management software or will the documents need to move across? Can a separate document management regime exist smoothly alongside the database? Think about avoiding duplication.

Other integration features

Are they important or can they be performed separately? Do you need integrated accounting? For dedicated IP boutiques this could be important, but for law firms with multiple practice areas they may want to use their firm wide accounting software. Are there ways the IP software can "talk" with your other accounting software which could be important for law firms or in-house teams for producing financial reports and avoiding duplication of input.

If you're in-house do you wish to manage licensees and royalties through the IP database? The communication and accessibility of your database with other internal departments, agents and/or clients could be important. Do they need access rights, input rights and/or the ability to upload documents?

Look at B2B concepts that have been developed or that are in development. These could significantly streamline your dealings with your local IPO or OHIM in the future.

Your own in-house capabilities

Determine if you will be hosting the database yourself or externally and evaluate what IT support you have in-house. Upgrades and patches or fixes may need to be installed so establish how much expertise is needed for them and how autonomous you can be or do you need the database supplier to be more hands-on.

Importantly, get someone from your team who is regularly handling docketing and record keeping on board this project from the start. They understand exactly what the current database does and what a new one needs to do. It will also empower them. Database evaluations and decisions are sometimes driven by the partners in a law firm. Generally speaking, I find this perplexing. Fair enough, perhaps they have the record keeping knowledge, but if you're finding yourself constantly logging in to your current database when you need to use it because your previous session has timed out then, with respect, you need to get other people on board to help make the right choice.

IP types

Some databases are more geared towards patents, others towards trade marks. Determine your percentage of work. For example, if you are 90% a patent practice and only 10% trade marks, you may evaluate that a basic trade mark system is OK as long as the patent part of the system is sophisticated.

Consider other IP types. If you file a particular large number of registered deign applications check out the robustness of this side of a system. The Netherlands, for example, is a niche for plant variety applications yet this might not be an IP type available on all databases. 

Big organisations with separate patent and trade mark departments may even explore having separate databases, but consider any synergies and cost sharing that could be lost with this approach.

Language capabilities

Ascertain the language capabilities you need and can be provided. If you have a corporate language you will likely want this to be the default language of the system. If a database is demonstrated to you in English but you will want it in French ask to see the French version and make sure it's up to scratch.

See if records can be kept in more than one language. For example, you're a German law firm and for trade mark records you may wish to maintain the specifications of goods in English for American clients but also in German for communication with the local Trade Marks Office.


How much customisation is possible and how much will it cost? Is this important to you? Consider that making a database more unique to your organisation means you may make it less compatible with improvements driven by its general users. It could also leave you alone in your dealings with the software company rather than being part of a collective push for improvements and amendments.

Migrating your current data

This is critical. Can your data be moved across effortlessly or is it going to require any form of manual input? Subject to you providing a suitable file, can the software company do the migration for you? What liability will the software company accept should any data be incorrectly migrated? Or, in other words, how much double-checking is needed from your side?

Training support

Ascertain what training is provided not just at the outset but ongoing too. And find out how this happens - do they come to you, you go to them (and if so where) or is it web based? How easy is it get hold of their helpdesk, particularly during your business hours? If you will have users in other parts of the world consider the accessibility for all users. You don't want your Chinese office twiddling their thumbs all morning because the system is down and they're waiting for 9.00am European time before they can speak to someone.

Networking opportunities

Does the software company organise seminars and networking events with other users? Understand how often these take place and how structured or informal they are. Check their relevance - all day seminars where 80% of the talk is regarding patents might give little value if you're only using the trade mark modules. Do users also meet independently and will benchmarking opportunities exist?

Reputation and references

Research a database's reputation. Talk to peers and get their input. Seek references particularly from users you know have similar case loads and operations to you.

Personal touch

See how intuitive a database is to use. The more sophisticated the database, the more complicated they can be to use, but this can be balanced by your own internal expertise. Get a feel for the software company you are dealing with. If they are hard sell and you don't like this then explore other options, but equally don't be fooled by niceness. Straight talking is useful but make sure they have listened to you and understood your needs. You wouldn't try to sell tight trousers to an elephant so don't stand for someone with this mindset.

In short, the best IP database out there will have the right service and features at the right price for your organisation. There are numerous IP databases our there, possibly more than you think. Computer savvy patent attorneys are also known to develop their own databases and license them out to clients (although they do not tend to actively advertise these). This blog has looked at regular IP database situations and has not even touched on developing your own database in-house or in having a preferred law firm or outsourcing company manage a database and docketing on your behalf. I hope it has been a useful discussion.

As usual, I welcome any comments or queries.