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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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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Outdated/On Prem Disjointed Systems Security/Access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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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.