The potential for using information systems to enhance information flows and relationships in the intellectual property sector: The case of Kennedys Patent

Barlow, Alexis; Duncan, Peter; Huntley, John; Gordon, Allan; Adams, Jim Article The potential for using information systems to enhance information flows and relationships in the intellectual property sector: The case of Kennedys Patent International Journal of Business Science & Applied Management (IJBSAM) Provided in Cooperation with: International Journal of Business Science & Applied Management (IJBSAM) Suggested Citation: Barlow, Alexis; Duncan, Peter; Huntley, John; Gordon, Allan; Adams, Jim (2007) : The potential for using information systems to enhance information flows and relationships in the intellectual property sector: The case of Kennedys Patent, International Journal of Business Science & Applied Management (IJBSAM), ISSN 1753-0296, International Journal of Business Science & Applied Management, s.l., Vol. 2, Iss. 3, pp. 22-35 This Version is available at: https://hdl.handle.net/10419/190589 Standard-Nutzungsbedingungen: Die Dokumente auf EconStor dürfen zu eigenen wissenschaftlichen Zwecken und zum Privatgebrauch gespeichert und kopiert werden. 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Journal of Business Science and Applied Management, Volume 2, Issue 3, 2007 The potential for using information systems to enhance information flows and relationships in the intellectual property sector: The case of Kennedys Patent Alexis Barlow Caledonian Business School, Glasgow Caledonian University 70 Cowcaddens Road, Glasgow, G4 0BA, UK Tel: +44 (0) 0141 331 8816 Email: [email protected] Peter Duncan Caledonian Business School, Glasgow Caledonian University 70 Cowcaddens Road, Glasgow, G4 0BA, UK Tel: +44 (0) 0141 331 3723 Email: [email protected] John Huntley School of Law and Social Sciences, Glasgow Caledonian University 70 Cowcaddens Road, Glasgow, G4 0BA, UK Tel: +44 (0) 0141 331 3723 Email [email protected] Allan Gordon Kennedys Patent 185 St Vincent St, Glasgow G2 5QD, UK Tel: +44 (0) 0141 226 6826 Email [email protected] Jim Adams Kennedys Patent 185 St Vincent St, Glasgow G2 5QD, UK Tel: +44 (0) 0141 226 6826 Email [email protected] Abstract This paper investigates the potential use of information systems (IS) for enhancing the supply chains of organisations positioned in the intellectual property (IP) sector. Exploratory research has been conducted through the lens of a patent and trade mark agent who is involved in advising on a range of IP issues. The research highlights the opportunities offered by IS (including online technologies) for generally improving the provision of business services e.g. automating supply chain processes. More specifically, though, it investigates the potential IS have for integrating information flows and providing timely, in-depth and better presented information and the options for online filing. It also explores the capabilities for improving interactions with clients and enhancing relationships with key stakeholders in the supply chain e.g. government agencies, overseas patent agents and lawyers. The paper additionally outlines key challenges that are at the forefront and need to be addressed when using IS within the IP sector such as identity management, security and authentication. The key findings of the research will be of value to researchers and practitioners in the IP field but many of the issues and challenges faced will also be applicable to other sectors. Keywords: information systems, intellectual property, supply chain, information flows, relationships; e-business; e-government Acknowledgements: The authors would like to thank Dr Kevin Grant (Caledonian Business School, Glasgow Caledonian University) for his valuable comments on an earlier draft of this paper. Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams 23 1 INTRODUCTION Current developments in information systems (IS) have focused heavily on the Internet and the World Wide Web (www). Furthermore, the proliferation of the Internet in the 1990s has given rise to E-Commerce and E-Business. E-Commerce relates more to the online buying and selling of goods and services. E-business includes e-commerce but covers a wider application of online technologies to an organisation’s front end and back end processes (Kalakota & Robinson, 2000). E-business exploits many technologies such as the Internet, intranets, extranets, e-mail, electronic data interchange (EDI), Enterprise Resource Planning (ERP), document management systems and portals: and so on. A further application area which has grown significantly in recent years has been E-Government which relates to the government’s use of online technologies for transforming services, exchanging information and interacting with citizens and businesses. Generally, IS and in particular online applications, are playing an increasingly prominent role in the management of organisational supply chains. Supply chains are networks of organisations and the related business processes involved in the production and delivery of goods and services (Laudon & Laudon, 2006). IS are being used for enhancing the management of these supply chains in terms of streamlining key business processes, improving information flows and enhancing relationships with key stakeholders. In tandem with the rise of the Internet and the so-called ‘knowledge economy’, another societal trend has been a growing awareness that intellectual property (IP) can be, and should be, managed strategically for creating and sustaining competitive advantage (Davis & Harrison, 2001; Hemphill, 2004; Thumm, 2004). The term ‘intellectual property’ refers to rights which relate to, most commonly, “patents, copyright, designs and trade marks” (Gowers, 2006, p13). The effective management of IP requires an awareness of the legal and regulatory framework(s) across a number of jurisdictions and may necessitate the specialist expertise and experience of IP specialists such as patent agents. Patent agents are a form of professional service firm, and a subset of the legal services sector. The technical, commercial and legal nature of IP (and specifically patents; Bently and Sherman, 2004) requires significant skills to undertake the process of creating and managing such intellectual property rights (Gordon et al, 2006). This context provides firms in the sector with the opportunity to adopt IS/ebusiness for increased effectiveness and competitive advantage, and also the prospect of enhancing the relationships with government agencies through e-government related initiatives. The purpose of this paper is to explore the potential for using IS for strategically managing organisational supply chains, information flows and relationships in the IP sector. In particular, the paper is based around a case study of a patent and trademark agents - Kennedys Patent (shortened to ‘Kennedys’). Registering a patent is complex, and involves the exchange of information between a number of stakeholders. The patent supply chain involves a range of different processes, different organisations such as clients, patent agents and patent offices and many internal and external information flows. Traditionally, the process has been principally paper-based. However, many jurisdictions across a number of areas of law have become aware of the opportunities offered by the advent of e-business technologies to instigate electronic online filing (eOLF) of documents (see for example UK Patent Office, 2006; European Patent Office, 2005). The patent supply chain is expanded upon in Section 2. The insights provided by Kennedys have arisen from the authors’ collaboration in a DTI funded Knowledge Transfer Partnership (KTP) Project between Kennedys Patent and Glasgow Caledonian University. Kennedys Patent was founded in 1997 and now has offices in Glasgow, Newcastle and Aberdeen, employing a total of 18 fee-earning staff and 9 support staff. Although the main focus of Kennedys’ work is patent and trademark advice and applications, they offer advice across the field of IP law, as well as on the strategic use of IP within organisations. As the firm has grown in size, the need to manage its information flows and relationships internally and externally has increased substantially. The structure of the paper is as follows. The next section examines the work of patents agents such as Kennedys Patent in more detail, describing the overall supply chain, the patent process (focusing on registering patents and related processes, as an example of the processes which are central to much of Kennedys’ work), the relationships with key players and the key information flows. Section 3 discusses the single case study research design. This will be followed by an evaluation of current issues across Kennedys Patent and the potential role of IS, E-Business and E-Government for addressing some of these issues. Consideration will be given to opportunities enabled but also the challenges. The paper will close with a discussion of the conclusions and implications of the work and areas for future research will be identified. Int. Journal of Business Science and Applied Management / Business-and-Management.com 24 2 PATENT PROCESS, INFORMATION FLOWS AND RELATIONSHIPS As noted in Section 1 above, supply chains are networks of organisations and the related business processes. The management of information flows constitutes an “important aspect of managing the supply chain” (Combe, 2006, p196). This section describes a simplified version of the process of registering a patent, highlighting the principal relationships in and information flows in the supply chain. The discussion is based on Gordon et al (2006) where a more extended treatment, with greater emphasis on the legal aspects, is given. A patent is: “an intellectual property right, granted by a country’s government as a territorial right for a limited period. Patent rights make it illegal for anyone except the owner or someone with the owner’s permission to make, use, import or sell the invention in the country where the patent was granted. As long as renewal fees are paid every year, a UK patent has a life of 20 years and provides protection throughout the UK, but no further” (UK Intellectual Property Office, 2007, p6.) This definition introduces several concepts which are explored further below. Firstly, invention – what can be protected by a patent. Secondly, a patent is granted by a government and has to be applied for. Related to this is the concept of territorial rights – there is no single patent that covers the whole world so multiple patents covering a number of different jurisdictions may be required. Finally, renewal – the registration must be kept ‘current’ or it will lapse; allowing others to use the invention. Supply Chain/Principal Relationships The Oxford English Dictionary defines a relationship as “the way in which two or more people or things are connected” or “the way in which two or more people or groups behave towards each other”. Supply chains incorporate relationships between people involved in supply chain processes and activities across the same organisation and between different organisations. Relationships between organisations can range from arm’s length relationships (consisting of one-off exchanges between two organisations) to vertical integration of the two organisations. In the United Kingdom (UK), the supply chain of patent agents comprises of three principal relationships: Client ↔ Patent Agents; Patent Agents ↔ Patent Offices (UK or European); Patent Agents ↔ Overseas Patent and Trademark Agents1. These are discussed in greater detail below. Client ↔ Patent Agents Dawson emphasises the importance of client relationships as being “central to the ability of professional service firms to differentiate themselves from their competitors” (Dawson, 2000, p 19). A (prospective) client may approach a firm of patent agents seeking advice on what they hope is a patentable invention. To be eligible for patent protection the invention must be novel, involve an inventive step, be capable of industrial application and not be ‘excluded’ (eg a mathematical method) (Gowers, 2006, pp13-14). The patent agents may advise on the legal and commercial alternatives available. If appropriate, the patent agents may then act on behalf of the client in registering the patent. As noted above, patents are territorial in scope and a key decision may be in which jurisdictions to register. In the case of UK based patent agents, the firm would normally interact directly with the relevant UK2 or European patent office. 1 For brevity, the term ‘foreign associates’ will be used in this paper as a synonym for ‘Overseas Patent and Trademark Agents’. 2 The UK Patent Office (UKPO) became the UK Intellectual Property Office (UKIPO) on 2 April 2007. Where more than one patent office may be relevant (eg UK, European or US) then the term ‘patent office(s)’ is used. To simplify the terminology, the acronym UKIPO is used when referring specifically to the UK office whether or not it is, strictly speaking, the UKPO (pre-April 2007) or UKIPO (April 2007 onwards) that is relevant. References have been left as referring to the UKPO or UKIPO depending on the date of publication of the source material. Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams 25 Patent Agents ↔ Patent Offices Taking registering a patent in the UK as an example (see Gordon et al, 2006 for greater detail), the process is as follows (see Table 1): Table 1: Simplified process of registering a patent in the United Kingdom Stage Activity Comment 1 Filing an Application for Registration with the UK Intellectual Property Office (UKIPO). Starts the process and gives the extremely important ‘filing date’. 2 Preliminary Examination, Search and Search Report The application will be examined to ensure if meets all formal requirements. A search of the UKIPO’s database for published material upon which to assess whether the invention is ‘new’ and ‘inventive’. 3 Initial, or ‘A’ Publication The application and search report are published and made available for public inspection. The purpose of this is to allow third parties to comment on whether the patent should be granted. 4 Substantive Examination Examines the validity of the invention in relation to the requirements of novelty and inventive step and industrial application. This may require a dialogue between the examiner and the applicant (client; via the patent agents) concerning, for example, objections raised regarding the granting of the patent and the applicant’s responses. This iterative process, if required, will continue until agreement is reached. 5 Grant of Patent If the application is not rejected following substantive examination, the patent will be Granted. 6 ‘B’ Publication of Granted Patent The details of the patent are ‘published’ and are in the public domain. Source: Adapted from Gordon et al, 2006, Section 4.2 Once granted, the protection offered by the patent is initially for four years, with renewal (and related fees) required every subsequent year up to a maximum of twenty years. Patent Agents ↔ Overseas Patent and Trademark Agents As noted above, patents are territorial in nature. So for non UK and European jurisdictions (such as the United States) a UK based firm of patent agents may liaise with a firm of patent agents (‘foreign associate’) in that country. This requires the timely and appropriate transfer of information between the UK based agent and the foreign associate. The relationships between client(s), government agency(ies) and overseas associate(s) can be considered to form the patent agents’ supply chain (see Figure 1). Where appropriate, such as to secure the enforcement of IP rights, relationships with lawyers may also be involved. However for the purposes of this paper, the lawyer-patent agents’ relationship is not seen as being a ‘principal relationship’. Communication and the exchange of appropriate, accurate and timely information are crucial to the process – in particular to ensure strict adherence to deadlines. Int. Journal of Business Science and Applied Management / Business-and-Management.com 26 Figure 1: Patent and Trademark Agents: principal relationships UK Patent Office European Patent Office US Patent Office Government Agencies (examples) Patent and Trademark AgentsClient Overseas Patent and Trademark Agents UK Patent Office UK Patent Office European Patent Office European Patent Office US Patent Office US Patent Office Government Agencies (examples) Patent and Trademark Agents Patent and Trademark AgentsClientClient Overseas Patent and Trademark Agents Overseas Patent and Trademark Agents Information Flows Based on the discussion above, the process of registering a patent can be seen to be complex, time consuming (“usually [taking] between three and four years”; UK Intellectual Property Office (UKIPO), 2007, p9) and, perhaps in consequence, expensive. Fees for the UKIPO and the professional services of the patent agents may run to several thousand pounds for a UK patent, or tens of thousands where an international application is made in several countries (UK Intellectual Property Office, 2007, p9). The information flows relating to the work of patent agents can be regarded as being externally and internally driven. The flows within these two broad categories are two-way rather than unidirectional and there is, of course, interplay between the two broad categories themselves. Some examples of these information flows and the nature of the information required are given below. External Flows Between the client and the patent agents: • Information from the client regarding the nature of the invention to enable the patent agents to the draft the application. • Information/communication with the client regarding any subsequent clarification required, for example relating to the substantive examination if objections are made. • Ongoing communication with the client regarding the progress of the application, and the amount (and payment) of any fees due such as outgoings (eg fees due to the relevant patent office(s)) and/or payment to the patent agents for the work undertaken on the client’s behalf. Between the patent agents and the patent office(s): • Filing an application and subsequent monitoring of its progress. Awareness of the law and process required including the form and content of the documentation as well as the timescales involved. • The patent agents will act as ‘conduit’ for communication between the patent office(s) and the agents’ client. • Where the patent agents are also managing the renewals process – knowledge of that process and in particular the date renewal is due. Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams 27 Between the patent agents and foreign associate(s): • Information concerning the location and availability of foreign associates, their specialisms, and in which jurisdictions they operate. • Communication and information exchange between the patent agents and the foreign associate(s) to inter alia, ensure the associate(s) are managing the client’s work in an appropriate and timely manner. • Information regarding the fees charged by the foreign associate, as well as the current and predicted amount to be billed. Between the patent agents and the legal system(s): • Patent attorneys require access to the relevant statue and case law relating to jurisdictions within which they are registering the patent; as well as practice guidelines issued by the patent office(s). Internal Flows • There is a need for efficient and effective case management to provide firstly, a clear indication of what task has to be done, and secondly internal monitoring of the progress of the application, renewals and communication with the client, patent office(s) and foreign associates - including a clear intimation when tasks have been completed. • An awareness of the time spent by a fee-earner on a particular matter for a particular client is crucial to the management decision-making of professional services firms (Mayson, 1997). From an external-facing perspective, these ‘billable hours’ form the basis for calculating the fee charged to the client. From an internal perspective the firm’s management will attempt to maximise the time fee-earners spend on ‘billable’ rather than ‘non-billable’ hours – a precursor of this is knowing who has done what, and when. • Related to time recording, as a for-profit business the patent agents must manage the information flows relating to invoicing clients for fees owed, and dealing with the payment/non-payment as required. In summary, the whole process is data and ‘date driven’ with the filing date being of crucial importance in establishing the ‘priority date’ (and time) for the client’s invention. The priority date being, effectively, the date upon which you would obtain protection from any patent – and any very similar ‘invention’ from after this date may have to yield to your priority/prior invention. A range of information in various forms (eg paper, electronic or speech-based) is required in order for patent agents to discharge their work effectively in such a date-driven environment. Effective workflow/case management is vital. This section outlined, in general terms, the work of patent agents (focusing on patents in particular), as well as the principal relationships and information flows involved. The next section discusses the case study strategy adopted to analyse the potential impact of IS on these aspects of the patent supply chain. 3 CASE STUDY STRATEGY: KENNEDYS PATENT A single case study based on Kennedys Patent has been conducted for the purposes of this research. Benbasat, Goldstein and Mead (1987, p 370) argue that case studies can examine: “a phenomenon in its natural setting, employing multiple methods of data collection to gather information from one or a few entities (people, groups, or organizations). The boundaries of the phenomenon are not clearly evident at the outset of the research and no experimental control or manipulation is used.” Case studies consist of detailed investigations and allow research to be conducted in natural settings. The phenomenon is not isolated from its context (as in, say, laboratory research) and is of interest precisely because of its relation to its context (Hartley, 1994). This research explored the potential use of IS for enhancing information flows and relationships within the intellectual property sector and in particular a patents and trademark agent. A case study was necessary for exploring why, Int. Journal of Business Science and Applied Management / Business-and-Management.com 28 how and what information systems could potentially be used. The research needed to essentially be contextualised, evolving and gather the subjective opinions of key actors in the patent supply chain. Case study strategies can involve single or multiple cases. Yin (2003) states that single case studies are appropriate if: it represents a critical case in testing a well-formulated theory; it is an extreme or unique case; it is a representative or typical case; it is a revelatory case; it is being used as a longitudinal case. There are of course other situations that single case studies may be used. For example, a researcher may use it for exploratory purposes, before they conduct a multiple case study (Benbasat, Goldstein & Mead, 1987). In this particular research a single case study was being used which was longitudinal for the purposes of exploratory research and as a stepping stone for further research. Case studies are also appropriate for studying areas of research that few studies have been carried out. The nature of IS, is such that many areas are new and emerging and consequently research and theory are at there early, formative stages (Benbasat, Goldstein & Mead, 1987; Eisenhardt, 1989). In particular, research on IS in the supply of services and specifically legal/patent services, is still in its infancy and case studies are therefore useful for exploring this emerging area of research. A range of data collection methods were used including participant observation, interviewing, questionnaires, document analysis and process mapping. 4 CURRENT ISSUES Firstly, the research explored issues and problems that needed to be addressed in Kennedys Patents’ current supply chain, key processes, information flows and relationships. These are summarised under the following categories: Case Management; Integration; Security. The state of the current IS within Kennedys has contributed to many of these issues. Currently, there is a client and case management system, an invoicing/billing system, a range of bespoke databases e.g. new enquiries, renewals, foreign associates, a range of documents and a poorly configured virtual private network (VPN) with limited access from remote offices. The different IS are not well integrated and consequently there is little coordination between (and with) the internal and external information flows. This raises a number of key shortcomings that are outlined below. It should be noted that many of these issues are not unique to Kennedys and are likely to be common across many professional services firms. Case Management: The first category of issues is related to the management of different cases. Kennedys does not have a common file naming convention and central repository for all electronic client and case documents. Problems are apparent when a new member of staff is introduced or a current member of staff is absent. Each secretary has implemented their own naming and saving process thus finding a particular document becomes a time consuming and tedious task. The invoicing process for cases handled for clients is also flawed. Certain aspects of the process are a major cause for concern including the manual generation of invoice numbers. For example, when generating a new invoice, the secretary needs to take the next available invoice number from the table and mark the client/case details next to it. This ‘manual’ (rather than automated) system proved efficient enough when the firm operated from one central office but is not easily supported by Kennedys' current multiple office structure. Moreover, the current system is proving inadequate for ensuring the correct account of time spent on each case is accurately recorded. Invoicing a client for the correct amount of money is obviously of great interest to both parties involved, as clients do not wish to be overcharged, just as firms would rather not sell themselves short. In line with many other firms in the legal services sector (Mayson, 1997), recording the time spent on a client’s work provides the ‘billable hours’ that form the foundation for calculating the amount to be invoiced to the client. Integration: Many of the above problems are exacerbated by the fact that Kennedys have outgrown their current IS as their business has seen significant growth in recent years, expanding from one office to three offices across the UK. Kennedys currently use a number of different systems and the limited integration has led to many dispersed documents (named inconsistently) across systems with no solid links between them e.g. certain documents in the document management systems should be linked to cases within the case management system. This currently means switching from one system to another to try and establish linkages between documents which is a very time consuming and error prone process. The lack of integrated systems and processes leads to unnecessary human intervention (with consequent cost increases in terms of time and the risk of errors). Lack of integration also limits the Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams 29 reporting options offered by the systems or at the least requires the difficult task of data reconciliation/mining across systems to generate relevant reports. The manual generation of invoice numbers is also symptomatic of the wider integration issue. For example, there is currently limited visibility of ‘bad payers’ (clients who are slow to pay or who do not pay). The only way of recognising/identifying bad payers is to manually check the accounts package. As few users have access to the accounts system or the time to investigate the issue, there is an increased chance of work being conducted which the firm may never get paid for. The potential integration of case, time, invoicing and document management systems would provide a number of potential solutions to current problems. For example it would alleviate the time spent through human intervention and also streamlines the whole process and ensure each client is charged the correct amount. It would also offer opportunities not only for the firm but additionally for the client (Hinde, 2006). Providing clients with access to integrated personal portfolios would cut down on client/attorney interaction time e.g. a client would no longer need to be charged for the breakdown/status report of a particular case. Security: The final category of issues is mainly related to security. This is a vastly important issue due to the sensitivity of the data with which patent agents such as Kennedys have to process. Ensuring client data is kept as secure and private is one of the most important aspects of any patent agents’ IS. Kennedys have recently changed the way they conduct certain matters across their offices. They introduced a Citrix enabled network has meant that there is now no need to transfer a copy of the client and case database to each of their other remote offices. The security, authentication and permissions have also been enhanced during this change of network architecture, leading to a more stable and efficient VPN. However there is a tension between the requirements for security, and being able to provide the appropriate access to staff (in office(s) or teleworking) or clients(for example), as required by the current business context facing the firm (Bunke, 2005; Hinde, 2006). Currently, clients have no access to the Kennedys system and must contact staff directly to be furnished with their desired IP report/portfolio. The way forward is to build upon the current architecture and introduce some kind of integrated practice management system that would allow client access. Due to Kennedys’ view on information security, extra layers of security and authentication will be required to ensure those, and only those, permitted will be capable of accessing the new system. One possibility is to introduce a requirement for biometric authentication before access is granted. Overall, the current systems are contributing to many of the issues or problems that are evident with Kennedys Patent. They are also providing limited business value and most certainly are only being used for operational purposes. The firm and its clients could potentially benefit from more careful application and greater exploitation of IS for maximising strategic opportunities. 5 THE POTENTIAL ROLE OF INFORMATION SYSTEMS, E-BUSINESS AND EGOVERNMENT From one perspective, IS can play a role in making information available, enabling communication and informing decision making. Many of Kennedys processes and information needs can be supported through the use case management tools such as electronic diaries, document assembly techniques, databases and automatic accounting and billing of clients to automate as much of the process as possible (saving fee-earner time and reducing costs), while ensuring quality standards are met (Leith and Hoey, 1998; Susskind, 2000). More innovative application of specific types of IS may even lead to aligning organisational activities, creating value, exploiting benefits and maximising strategic opportunities. Susskind predicted that most major law firms would be using IS and information and communication technologies (ICTs) to provide clients with a wide variety of services online by 2005 (Susskind, 2000). Unfortunately, this has not been fully met by providers of legal services (and indeed patent and trademark agents) despite clear benefits to firms and clients. The principal drivers for any changes which have taken place to date have been the internal dynamics of the firm which have, in turn, been influenced by the need to acquire competitive edge, through improving the service to the client (Barton et al, 2000; Bernstein et al, 2001; Thomson et al, 2000a; Thomson et al, 2000b). Historically at least, the interface of the law office with other, external bodies, most notably government, agencies has been limited, suggesting that there was not much pressure for change beyond that internal dynamic, whether from clients or the agencies themselves. Recent developments in IS and ICT, particularly those focusing on the Internet and the www, offer patent agents potential opportunities from two perspectives