106 cities & early adopters 1500+ ftes 55 countries...
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Digital Transformation and the
CLOC IP Proficiencies– a
Microsoft Use CaseMelanie Carmosino, Director of IPG Operations
Jennifer Karr, Sr. Program Manager
CELA Corporate, External & Legal Affairs
106 Cities & 55 Countries
1500+ FTEs Early Adopters
of New Technology
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Digital Disruption and the 4th Industrial Revolution
1780s 1870s 1970s 2015+
Mechanized production
Mass production
Automated production
Digitizedproduction
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4
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54 Azure regions
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Global Contracting Office
CRM Online with Azure cloud analytics
CELAWeb
Enterprise portal on Azure cloud
Litigation
eDiscovery search and storage capabilities
US Immigration
Dynamics CRM
Intellectual Property Group
Memotech on Azure with Power BI
CELA in the Cloud
Microsoft Story – People, Process & Technology
Outdated/On Prem Disjointed Systems Security/Access
Data Integrity Reporting User Satisfaction
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2015 vs. 2019
The Power of BI
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Digital transformation is an important trend across industries that is moving fast. You cannot avoid the 4th Industrial Revolution.
Moving “on prem” systems to the cloud can be time consuming costly, but the rewards and cost savings are substantial!
Technology does not stand alone - People and Process are critical to user adoption and efficiency.
Key Takeaways
Knowing where to start can be difficult – benchmarking with industry experts is important – CLOC can help!
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https://cloc.org
https://cloc.org/intellectual-property-ip-proficiencies/
http://www.ipproficiencies.com/
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Category Under Developed Foundational Advanced Mature
Process - General/
Workflows
Informal/inconsistent and undocumented
workflows and processes.
Workflows based on individual preferences.
No automation of process/workflows.
Primarily standardized process/workflows and
documentation/SOPs.
Hybrid use of automation and manual
processes/workflows.
Well-defined process/workflow documentation.
Emphasis on automation as a general approach when
defining process/workflows.
Automation of most process/workflows with
limited need for manual solutions.
Ability to monitor for compliance and identify
trends.
Evolving workflows that address real time needs and
developments in business.
Robust, well-defined processes implemented electronically.
Documented workflows for each business process within a
department.
Process ownership and escalation/approval path for changes.
Process - Patent/TM
Prosecution Task
Management
Reliance on vendor or OC to manage all drafting,
preparation, and opinion work.
Hybrid in-house and external management of
drafting, preparation, opinion work.
Defined strategy for in-house versus outside
resourcing model to manage all drafting,
preparation, opinion work.
Routine reviews of metrics to determine ROI of working
model; KPI's to measure efficiency of working model and
assess further optimization opportunities.
Absence of standard operating procedures and in-
house change management expertise.
Process - Change
Management
Central repository for procedures with reviews at a
defined cadence and basic change management
process for advising organization of changes.
Annual strategy planning process to identify change
needs or address new opportunities.
Established change management/knowledge management
practices for all processes and data.
Active knowledge management and change management
committees.
Routine reviews and compliance checks for adoption of new
processes.
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14
Patent Core Competency Matrix - Technology
Category Under Developed Foundational Advanced Mature
In-depth security reviews performed on all systems with
assigned data stewards, expanded beyond EU data.
Established compliance standards for security/privacy with
strict oversight.
AI capabilities to search across systems and documents for
unprotected or unsecure data/information.
No reporting platform or capabilities to extract
relevant data without manual interventions.
Technology -
Reporting
Ability to produce real-time docket reports and track
deadlines either in-house or through OC. Ability to
provide basic portfolio data and metrics through
system reporting or basic platform/tool.
Comprehensive reporting platform enabling ability
to combine data sources, produce metrics around
portfolio assets, and track costs associated with the
portfolio, in-house or via OC.
Data science expertise sufficient to establish reports
and data models/cubes.
Integrations/APIs between LOB tool and other key
business tools (e.g., with finance data).
Sophisticated reporting platform with cross-group integration
providing ability to accurately forecast spend and predict
trends through use of technology and data models, in-house or
via OC, also enabling visibility to IP licensing deals,
monetization, etc.
Six Sigma quality metrics around docketing/data processing
with automated reporting/audit capabilities to compare
internal and external data sources.
Machine Learning/AI capabilities applied to portfolio
analysis/strength and review of competitor landscape.
Established data science practices and expertise.
Technology -
Security/Privacy
Little or no security/privacy focus leaving
information generally unprotected.
Basic security and privacy standards applied to all
tools.
Export control and GDPR restrictions applied to all
LOB tools.
Security review of all LOB tools and systems housing
MBI/HBI data.
Technology - IP
System
No technology or unsophisticated docketing system
for tracking IP assets. IP assets tracked in
spreadsheet(s) or no tracking at all; trade secret and
copyright assets may not be tracked at all.
Queries, reports and templates available for
managing patent and TM assets, including docketing
deadlines and reminders; trade secret and copyright
assets integrated into electronic management
system. System will produce seamless reports with
corresponding figures/images.
Patent and TM assets in electronic IP management
system with full docketing capabilities; trade secret
and copyright assets tracked in spreadsheet(s).
Regular cadence of law updates and system kept
relatively current with upgrades (no more than 2
upgrades behind).
Dashboard(s) available to IP professionals (and other
stakeholders, e.g., inventors) for real-time visibility and
management of IP assets (e.g., patent families and prosecution
status, products, licensing, contracts, marking/virtual marking).
Use of technology for ongoing automated reconciliation of
assets and docketing deadlines between in-house and OC to
ensure accuracy and compliance with Patent Office deadlines.
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Patent Core Competency Matrix - Process
Category Under Developed Foundational Advanced Mature
Process - General/
Workflows
Informal/inconsistent and undocumented
workflows and processes.
Workflows based on individual preferences.
No automation of process/workflows.
Primarily standardized process/workflows and
documentation/SOPs.
Hybrid use of automation and manual
processes/workflows.
Well-defined process/workflow documentation.
Emphasis on automation as a general approach when
defining process/workflows.
Automation of most process/workflows with
limited need for manual solutions.
Ability to monitor for compliance and identify
trends.
Evolving workflows that address real time needs and
developments in business.
Robust, well-defined processes implemented electronically.
Documented workflows for each business process within a
department.
Process ownership and escalation/approval path for changes.
Process - Patent/TM
Prosecution Task
Management
Reliance on vendor or OC to manage all drafting,
preparation, and opinion work.
Hybrid in-house and external management of
drafting, preparation, opinion work.
Defined strategy for in-house versus outside
resourcing model to manage all drafting,
preparation, opinion work.
Routine reviews of metrics to determine ROI of working
model; KPI's to measure efficiency of working model and
assess further optimization opportunities.
Absence of standard operating procedures and in-
house change management expertise.
Process - Change
Management
Central repository for procedures with reviews at a
defined cadence and basic change management
process for advising organization of changes.
Annual strategy planning process to identify change
needs or address new opportunities.
Established change management/knowledge management
practices for all processes and data.
Active knowledge management and change management
committees.
Routine reviews and compliance checks for adoption of new
processes.
© 2019 Corporate Legal Operations Consortium, Inc.
Patent Core Competency Matrix - Technology
Category Under Developed Foundational Advanced Mature
In-depth security reviews performed on all systems with
assigned data stewards, expanded beyond EU data.
Established compliance standards for security/privacy with
strict oversight.
AI capabilities to search across systems and documents for
unprotected or unsecure data/information.
No reporting platform or capabilities to extract
relevant data without manual interventions.
Technology -
Reporting
Ability to produce real-time docket reports and track
deadlines either in-house or through OC. Ability to
provide basic portfolio data and metrics through
system reporting or basic platform/tool.
Comprehensive reporting platform enabling ability
to combine data sources, produce metrics around
portfolio assets, and track costs associated with the
portfolio, in-house or via OC.
Data science expertise sufficient to establish reports
and data models/cubes.
Integrations/APIs between LOB tool and other key
business tools (e.g., with finance data).
Sophisticated reporting platform with cross-group integration
providing ability to accurately forecast spend and predict
trends through use of technology and data models, in-house or
via OC, also enabling visibility to IP licensing deals,
monetization, etc.
Six Sigma quality metrics around docketing/data processing
with automated reporting/audit capabilities to compare
internal and external data sources.
Machine Learning/AI capabilities applied to portfolio
analysis/strength and review of competitor landscape.
Established data science practices and expertise.
Technology -
Security/Privacy
Little or no security/privacy focus leaving
information generally unprotected.
Basic security and privacy standards applied to all
tools.
Export control and GDPR restrictions applied to all
LOB tools.
Security review of all LOB tools and systems housing
MBI/HBI data.
Technology - IP
System
No technology or unsophisticated docketing system
for tracking IP assets. IP assets tracked in
spreadsheet(s) or no tracking at all; trade secret and
copyright assets may not be tracked at all.
Queries, reports and templates available for
managing patent and TM assets, including docketing
deadlines and reminders; trade secret and copyright
assets integrated into electronic management
system. System will produce seamless reports with
corresponding figures/images.
Patent and TM assets in electronic IP management
system with full docketing capabilities; trade secret
and copyright assets tracked in spreadsheet(s).
Regular cadence of law updates and system kept
relatively current with upgrades (no more than 2
upgrades behind).
Dashboard(s) available to IP professionals (and other
stakeholders, e.g., inventors) for real-time visibility and
management of IP assets (e.g., patent families and prosecution
status, products, licensing, contracts, marking/virtual marking).
Use of technology for ongoing automated reconciliation of
assets and docketing deadlines between in-house and OC to
ensure accuracy and compliance with Patent Office deadlines.
© 2019 Corporate Legal Operations Consortium, Inc.