IP Firms, Patent Families, and Matter-Centric Collaboration

IP Firms, Patent Families, and Matter-Centric Collaboration

The matter-centric model (MCC) of iManage presents more challenges in intellectual property firms and departments than it does in other practice areas.  The primary challenge arises when managing patent prosecution, the legal process of obtaining a patent.  In today’s global world, inventors not only want a patent in their home country, but they also want patents issued in other places in the world where they plan to sell their products.

If you have been following Apple v. Android litigations around the world, Apple has been suing or has been sued in multiple countries.  This relates to the fact that the same patent is filed in each country.  In IP parlance, the prosecution of the same or similar patent applications in multiple countries is called a patent family.

In all the firms I have interviewed over the years, each filing for the same patent in a different country gets a different matter number.  I have been told that clients like to track foreign filing separately for budgeting purposes.  The metadata or information that groups similar patents together is maintained in the IP docketing system with the appropriate matter number.

The patent lawyer’s goal is to have a unified view of the patent family.  However, because each part of the patent family is a separate matter, this can be difficult in a typical matter-centric deployment where —in almost all deployments—each matter gets its own workspace.

Prosperoware resolves this problem by offering two alternatives to our customers for creating the patent family view:

  • Create a single workspace for the patent family
  • Use the category function in “My Matters” to group the workspace shortcuts for the patent family together

In the single workspace model, the idea is that the core patent is managed in the root folder structure and then each foreign patent filing becomes a tab of the workspace.  When we create the tab, we can change the matter number on the tab and the sub-folders to reflect the matter number of the foreign filing.

The more popular choice is to create workspaces for part of the patent filing and group them through the category function in My Matters.  To do this, the client adds another metadata field on the workspace profile for the patent family.  Then, using Milan’s Manage My Matters function, end users can group workspaces into categories.  Because our system tracks the user’s selection, it can continue to maintain this grouping choice for all new workspace shortcuts.

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