Trends in trademark management technology

Figure 1: Use of e-business services

Trademark practice leaders increasingly rely on technology to improve productivity and drive down costs. While docketing systems remain the cornerstone of most trademark groups’ technology ecosystems, recent innovations in systems, online tools and data availability are bringing a wave of new products to the market.

Traditional docketing systems have evolved significantly over the last five years. Today’s leading solutions comprise a much broader and more capable operations platform, which supports the full trademark lifecycle. While providing the core ability to track global prosecution rules, many of these systems have also introduced more sophisticated capabilities that automate processes with well-defined workflows. They also require significantly less manual interaction, thereby reducing the staff required to support operations. In addition, the ability to control access and provide business-relevant tools is allowing trademark groups to open their systems to other stakeholders interested in trademark information and processes. These enterprise trademark management systems provide modules for everything from new search requests all the way through to renewals.

Of particular note, the promise of full electronic and automated prosecution management is getting closer as government trademark offices have vastly improved their electronic business capabilities - a recent poll of IP departments and firms found that 63% of professionals often access online trademark office systems, with an additional 27% saying that they occasionally use these resources (Figure 1).

From a product and services perspective, certain innovative solution providers are beginning to develop interfaces to trademark offices that enable companies to reduce or even eliminate the need for manual filing and docketing (Table 1). This trend will increase as data formats are standardised to allow docketing systems to directly read official data and trigger rules, workflows and reporting.

However, the trademark software market can be challenging. Trademark specialists find that some solutions are not as well aligned to their unique requirements, sometimes seeming more patent oriented in their capabilities. Such solutions can also be exceedingly complex, with some companies reporting that the implementation and training required for some of these systems can be overwhelming. Prospective solutions must be closely evaluated to ensure that they align with resources and expectations.

While historically paper intensive, trademark practice is quickly becoming digitised. Working with electronic documents offers improved work collaboration, record retention and overall operational efficiency. Implementing paperless work environments is particularly important for building and managing an effective trademark programme. Document management systems (DMSs) have long been a core element of legal records management and are becoming increasingly prevalent in trademark operations.

Figure 2: Maintain official electronic files

In a recent benchmarking poll (Figure 2), we found that 47% of IP groups reported that they keep all of their official files electronically, with another 34% maintaining most of their files digitally.

However, the technical approach to how trademark groups manage their electronic files is crucial. Of the organisations reporting that they now run a paperless office, the majority (55%) do not use a specialised DMS. Instead, they use shared directories (23%), their own docketing systems (20%) or local drives (12%). However, not using a proper DMS has important implications, as the trademark group will not achieve the full potential or value of working electronically, and may introduce data security risks.

A number of vendors are specifically targeting the needs of legal and IP practice groups (Table 2). These include both established solution providers and new entrants. Also, certain trademark management docketing vendors have enhanced their capabilities to provide full DMS support. The advantage is that electronic documents can be directly stored with docketing and prosecution records. However, the disadvantage is that non-official records may be inappropriately stored in the docketing system.

The vast breadth of global trademark data and the use of advanced online search technologies are also revolutionising the trademark search market. While this was historically dominated by a select few global providers and country or region-specific specialists, a number of new business models are emerging.

Figure 3: Use web-based search tools

The viability of online search systems is particularly important for both cost savings and greater control of the process. In a recent benchmarking poll, we asked participants whether they use web-based databases as part of their search and clearance process. We found that a strong majority of companies (65%) are using the Web frequently, and 30% occasionally (Figure 3). The most common use of these online search sites is for initial screening or knockout searches; full availability searching tends to still use established service providers, which are considered to provide superior data and results.

The use of advanced search technologies is an important area of new innovation. Search vendors are beginning to develop sophisticated linguistic-based algorithms and image-based recognition capabilities which open up new approaches to search and clearance. These are allowing for quicker, more accurate results and are reducing costs (table 3).

Meanwhile, the importance of global brand protection is driving trademark owners to become more strategic in how they approach filing activities. With this heightened focus, global filing rates have experienced a sustained period of growth over the last decade (see our previous article, “Trends in portfolio development and global filing strategies”, in World Trademark Review issue 56).

Figure 4: Expected rate of global filing 2015-16

In a recent study we found that 37% of companies expect to increase their rate of global filings in the coming year, with 53% maintaining their current levels and only 10% expecting a decrease (Figure 4).

The technologies and tools to support these heightened filing volumes are allowing trademark owners to work more efficiently and at a lower cost. From a workflow and project management perspective, the trademark management systems provide special modules that help with the organisation and execution of global registration projects. Managers can create a single family view of filings and maintain a calendar of action items. Many of the systems also provide forms that can be produced in bulk with data merging and cloning across related applications.

Government trademark offices are also providing technology improvements to assist filers, while a number of global trademark filing services are beginning to offer coverage of almost every possible filing country (Table 4).

While many online filing services tend to cater to solo registrants, a few providers have developed services and tools that are suited to larger corporate filers. By using an outsourced service, a trademark owner can offload all administrative and formality-related work. These services provide global filing project management software and an established network of local agents; with some services, clients may be able to continue using their preferred agents. Many companies find that a specialist service can significantly reduce filing costs.

The market for management systems has entered a new phase, with both established vendors and new entrants offering sophisticated solutions. Organisations seeking to implement new systems and tools must take care to choose the solutions that are best suited to their needs.