Our research found that IP professionals are currently grappling with what AI could mean for them, their practice and their processes. They are keen to realize benefits but are largely skeptical about AI deployment with relatively low industry adoption.

As AI grows more pervasive and powerful, however, IP practitioners are at a critical juncture where investigating and evaluating AI is paramount. Key questions for the sector to ask include:

• What does AI mean for IP law and practice?
• Where is AI likely to have the most transformative impact for IP professionals?
• How do you make AI ‘fit for purpose’ when it comes to IP processes and decision-making?
• What does responsible and ethical AI look like?

To assist, Clarivate hosted a webinar, Is AI the dawn of a new era for IP practitioners. Our experts explored the implications of AI in IP and the importance of preparing to capitalize on this fast-developing technology.

Watch the on-webinar here: Is AI the dawn of a new era for IP practitioners?

Keep reading for insights shared by Clarivate experts, Arun Hill, Senior Consultant Intellectual Property, Peter Keyngnaert, Director, Data Science and Phil Arvanitis, Practice Director, Intellectual Property Consulting.

What do IP practitioners need to know about the AI basics?

First, AI is an umbrella term for a wide range of machine-led capabilities that perform and automate cognitive functions associated with humans. These include perception, learning, reason, pattern recognition, and interaction.

Secondly, it is possible to assess the current state of AI based on its level of sophistication. A distinction can be made between narrow, general and super-intelligence. Separately, there is automation which falls below the threshold of ‘intelligence’ in the technical sense.

AI promises to bring significant advantages to IP practices such as process efficiencies, accelerated outcomes, prediction and analysis. There is little doubt it will have significant impact on the industry.

Ultimately, the effective application of AI depends largely on how IP practitioners want to use it. Oren Etzioni, former CEO of Allen Institute for AI, and Professor of Computer Science, comments: “AI is a tool. The choice about how it gets deployed is ours.”

What does AI mean for IP law practice?

IP professionals are already looking into specific use cases where AI can have an impact on the patent and trademark lifecycle. The transformative power of AI can be used to enhance human activities with smart, fast or creative machine cognition.

For the practice of law, this could mean productivity gains, process automation and/or deeper analytical and predictive capabilities. For example:

• Trademark and licensing

AI could help with trademark availability and infringement monitoring, renewal prediction as well as generating enhanced alerts and reminders. In licensing, AI could assist with matching with licensees and agreement optimization.

• Prosecution and litigation

In prosecution, AI could enhance evidence gathering, and provide useful predictive analytics and contract analysis.

• Drafting and ideation

AI could be used for market trend, consumer, and existing IP data analysis. It could also be applied to automated patent drafting, with natural language processing (NLP) used to make improvements.

Watch the related webinar for more information: The Future of the IP Profession: Balancing the rise of AI with human expertise.

The state of AI in IP

To find out how IP practitioners felt about AI, if they were using it in their practices and where they saw its advantages, Clarivate surveyed 575 professionals across patents and trademarks. The global sample included attorneys, executives, R&D, and law firms.

One attorney who responded to the survey speaks for many IP practitioners in observing: “AI is not a goal in itself…the focus is, and should always be, what is my task and how can AI support me.”

• 43% said AI is not currently used in their practice
• 64% expect minimal change to their role due to AI
• 49% cited the lack of AI regulation as a concern

Based on the skepticism voiced by IP professionals, it’s fair to say that caution and diligence are certainly called for, especially when integrating emerging technologies in complex and highly regulated environments.

To read the full report visit : Redefining Artificial Intelligence: How IP practice meets the coming wave.

Ensuring AI is responsible and ethical

A cautious approach is needed to address issues arising from AI, including hallucinations and bias. In response, IP law practitioners, as well as professionals in other industries, are increasingly recognizing the need for AI to adhere to responsible and ethical values if it is to be trusted.

• Explainability and transparency

Key issues that matter most for IP include explainability: the need for machines to show us how they produced a decision, what sources they used, and how they classified them. Secondly, IP requires transparency and informed consent, so that it’s clear where AI is being used. It will also require continuous monitoring and validation.

• Fairness and bias mitigation

Finally, while AI may introduce bias depending on the data sources used, it can also help to identify and reduce bias that could impact IP-related decisions. Ethical principles and norms for human-machine interaction continue to be shaped by the evolving regulatory landscape including the European Union Artificial Intelligence Act.

Conclusion

Signals point toward a fundamental shift in both law and practice, which will usher in a new era for IP practitioners as they are given access to superior machine intelligence. Nevertheless, human oversight and expertise will continue to be essential to maintain the integrity of the IP system and the wider profession. The need for nuanced legal interpretation and strategic input in legal practice remains clear.

Learn how Clarivate can help you select the right AI-based solution for your intellectual property needs. Contact us today.

The post From skepticism to strategy: How AI is transforming the IP practice appeared first on Clarivate.

We explored these timely topics with a panel of experts, capturing their insights in a new white paper entitled “The future of the IP legal profession: Balancing the rise of artificial intelligence with human expertise.” You can access it here.

Listen to the full panel discussion using the on-demand webinar link here.

The experts represented both corporate and law firm perspectives—Monica Baig-Silva, Vice President, Intellectual Property Counsel for Thermo Fisher Scientific; and Theresa Weisenberger, Intellectual Property and Technology Partner at BakerHostetler LLP—as well as Clarivate thought leaders Vasheharan Kanesarajah, Vice President, Head of Strategy for Intellectual Property; and Arun Hill, Senior Intellectual Property Consultant.

Kanesarajah set the stage by highlighting the key drivers of change in today’s IP ecosystem, including:

• Increasing IP management complexity
• Industry-driven strategies impacting IP development
• Growing influence of Mainland China in IP matters
• Emergence of generative AI and its growing use in IP processes

These trends are impacting the IP legal profession in every dimension—people, process, data and technology.

The impact of AI

A recent Clarivate global survey of IP and R&D professionals revealed that 43% reported AI is not currently used in their practice, with 64% expecting minimal change to their role due to AI and 49% citing the lack of AI regulation as a concern. Survey responses suggested there is an appetite for using AI in low-risk, easily automated tasks and for intelligence-based use cases and ideation, rather than for supporting prosecution.

Attorneys Weisenberger and Baig-Silva saw little chance of AI replacing legal professionals. Rather, they foresee AI playing a support role, helping IP professionals work more efficiently and effectively. Both shared concerns over accuracy and confidentiality as potential barriers to AI adoption for IP legal processes. Entering sensitive information into tools like ChatGPT could present risks, requiring careful attention to policies governing use of AI tools.

Despite these concerns, the panelists noted that patent law may be a good field for introducing AI tools due to the fact that information in patent applications are public and the period of confidentiality is relatively short. However, they underscored the need for human experts to be embedded in the process of training and overseeing AI and large language models.

The post The future of the IP legal profession: new strategies, new technologies appeared first on Clarivate.

Using DesignVision from Clarivate, an Intellectual Property AI & Image Search Platform for Government, examiners will be able to easily expedite patent examinations by using reverse image search AI to quickly identify relevant prior art. The Design Patent IP right protects the form of an object, so the visual representation is core to the IP protection. The tool is already used by IP offices globally, including three major North American IP offices.

Francois Neuville, Senior Vice President Product Management, Intellectual Property, Clarivate said: “We use the latest AI models, custom trained on Clarivate data, to retrieve relevant prior art from across over 69 global registers, with more than 80 million images, in just seconds. This allows for much faster examination than with traditional approaches. The system provides AI suggestions to enhance the search, as well as workflow tools designed specifically for global Patent and Trademark offices, and is being used by offices globally.”

The same design image search technology is available in other Clarivate offerings to law firms and corporates including in the Compumark offerings for Brand, Incopat offering for Patents, and through the Clarivate Search and Watch Services.

**

For more information see the Award Notice on SAM.gov.

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Establishing a strategic plan for 2024 requires IP leaders to place their bets on which of these trends will most likely impact patents and trademarks this year. To help, we asked senior leaders at Clarivate who have a broad perspective on the IP landscape to provide predictions for the IP legal industry in 2024 and beyond.

Question 1: What are your predictions for the IP legal space in 2024?

“The Chinese economy’s future hinges on innovation, prompting increased investment in R&D in strategic technology areas such as AI, wireless communication, and biopharmaceuticals. To bolster this effort, China is upgrading its IP legislations, infrastructure, and related processes to enhance IP protection and enforcement. This persistent trend will put pressure on foreign organizations to reassess their China strategy.”
Vashe Kanesarajah, VP, Corporate Strategy, IP

“Leveraging IP for corporate financing is causing a transformation in the financial and legal world. Companies using their IP assets as collateral are viewed as less risky investments and become more attractive to financial institutions that fund them, particularly in a complex economic climate.

“In 2024, we will see significant growth in IP-based financing, and the IP service providers and financial institutions supporting this practice will be expected to adapt to this trend. Accurate valuation of a company’s intellectual property assets is essential for securing IP-based financing. This reinforces the need for an effective valuation strategy, reliable IP data, and efficient processes to actively protect and accurately determine the value of an IP asset. This will be a game-changer.”
Annya Dushine, Senior Director, IP Consulting

“In terms of trademark activity, 2024 is likely to be in line with volumes that we have seen in 2023, with filing activity at most trademark registers growing moderately (3-5%) and renewal volume increasing by around 5%. China has been the only major trademark register to see a significant fall in filing volume over the past 12 months (down by around 10%) and this looks likely to continue in 2024. Anyone looking to set budgets for the next year should treat 2020-2022 as outliers and consider 2024 as closer to 2018 and 2019 than recent more unpredictable years.”
Robert Reading, Director, Corporate Strategy Content, IP

“Increasing datasets and new technologies will converge in new trademark solutions that connect brand lifecycle management steps more closely. Trademark practitioners can expect to see more integrations and toolsets that combine previously separate workflows.”
Francois Neuville, Senior Vice President, Product Management, IP

If you are also interested in a pulse check of AI in IP read the special report, Redefining AI: How IP practice meets the coming wave.

Question 2: What do you think will be the biggest area of focus for the IP legal profession in 2024?

“AI is endemic now in the world of IP. Its adoption isn’t a question of ‘if’ but ‘where and how’. I expect to see a surge in new AI-enhanced solutions for IP professionals as ideas are tested in 2024. Not all will survive, and it is important for legal professionals to focus on guiding this development to make it as helpful in the practice as possible. We are in an era of large-scale change-management, and this is one area to focus on.”
Francois Neuville, Senior Vice President, Product Management, IP

“Our customers (both corporate and law firm alike) are being challenged to ‘do more with less’. They are looking at methods for standardization and automation to reduce budget and increase efficiency allowing their stakeholders to focus on higher value tasks. Although not a new focus, this year will be a pivotal point for the IP industry amid the AI discussions while many are balancing market pressure with regulatory complexity.”
Reanna Myers, Vice President, Customer Success, IP

If you are interested in reading about doing ‘more with less’ read the blog post, IP Diagnostic consulting: The key to working smarter with less.

“Leveraging the advancements of technology while also maintaining the ultimate role and value of the legal professional.“
Irmina Stroud Senior Vice President, Global Sales, IP

“Last year, the Federal Trade Commission (FTC) proposed a ban on non-compete agreements between employees and employers. A final vote will take place in April 2024 and given the clear trend of restricting or banning employee non-compete agreements, employers will need to prioritize protection of their confidential and trade secret information. It will reinforce that adequately protecting trade secrets and intellectual property requires a strategic approach that aligns business goals with employment agreements, IP protection, internal policies, as well as the need to have a clear plan of attack should trade secret or IP infringement occur.

This will also influence the start-up culture, entrepreneurship, and exchange of information among innovators, thus stimulating new ideas and technologies. Reducing the adverse consequences of a ban on non-competes will require finding the right balance between stringent IP protection and cultivating an open innovation culture. As a result, there will be a greater need for partnerships, industry standards, clear IP protection strategies, and effective policies and procedures to protect corporations.”
Annya Dushine, Senior Director, IP Consulting

“AI related commercial activity will have an impact on trademark filing volume, with applications at the USPTO that include ‘artificial intelligence’ now accounting for around 2% of applications filed each month and growing. A significant proportion of trademark applications are ‘self-filed’ without the assistance of an attorney; online AI based tools can give self-filers false confidence that they have been given reliable advice, leaving IP offices to deal with ‘hallucinations’ and invented ‘facts’ that are presented by inexperienced applicants during the registration process.”
Robert Reading, Director, Corporate Strategy Content, IP

Question 3: Aside from AI, what other trends or advancements do you see impacting the IP space in 2024?

“One, risk tolerances are shifting which impacts the IP ecosystem. Two, the speed of technology advancements continues to increase, year-over-year. This will increase the sense of urgency to realize commercial value from IP assets.”
Irmina Stroud Senior Vice President, Global Sales, IP

“With most key trademark registers now part of WIPO’s Madrid International registration system, there will be a continued shift away from filing nationally to filing via the Madrid system. Attorneys need to consider changing their focus – instead of concentrating on gaining ‘filing’ customers the growth opportunities will increasingly come from being the local problem solver – dealing with refusals and third-party actions as they arise. Attorneys who manage to change the focus of their practice may find they are moving away from filing to higher revenue/margin work.”
Robert Reading, Director, Corporate Strategy Content, IP

“New jurisdictions, such as the UPC, will result in new jurisprudence, decisions and a shift in the way IP is protected internationally. For IP professionals within the UPC, adapting strategies and approaches based on new precedent is going to be a challenge.”
Francois Neuville, Senior Vice President, Product Management, IP

Conclusion

While we will have to wait and see what 2024 brings for the IP legal industry, one thing remains true: “The only constant is change”. Contact us today, to learn how Clarivate can help your IP team plan for 2024 and into the future.

The post What’s ahead? 2024 predictions for the IP legal industry appeared first on Clarivate.

From the possibility of a recession to the swift acceleration of artificial intelligence, the past year has been one of uncertainty for the global economy. As IP legal teams strategically navigated 2023, Clarivate created resources, backed by insights from industry experts to support.

To ensure you don’t miss out, we complied the Top Five IP resources from 2023 below.

Special Report: Redefining Artificial Intelligence – How IP practice meets the coming wave

The interplay between IP, AI and the wider legal industry is complex. To get a pulse-check of the perception of AI in the IP industry, Clarivate surveyed 575 IP and research and development (R&D) professionals from law firms and corporations worldwide.

What did we learn? Rapid advancements in artificial intelligence will undoubtedly influence intellectual property law and practice, forcing IP practitioners and their technology partners to reevaluate certain assumptions in how IP is created, protected and managed. Likely, change will not come as a revolution but through a series of incremental steps.

The special report with full survey results can be found here: Redefining Artificial Intelligence. How IP practice meets the coming wave

Special Report: Innovators to Watch 2023

A true assessment of innovation goes beyond measuring accomplishments; it charts exceptional potential. This report identifies the next cohort of top global innovators. Through additional analysis built on the ongoing Top 100 Global Innovators data, focused on the fastest-rising entities, we pinpoint those potential future recipients who are poised to make it to the very top.

Innovators to Watch recognizes 36 companies that are on the path to becoming a Top 100 Global Innovator. These organizations sit within the top 250 innovators yet have never made the Top 100 before. Now, we anticipate that these organizations are within reach of Top 100 status.

The special report and complete list of Innovators to Watch 2023 can be found here: Innovators to Watch 2023.

On-demand webinar: The future of the IP legal profession: Balancing the rise of AI with human expertise

In the next three to five years, the legal space will likely look and operate differently than what intellectual property professionals experience today. The global workforce is experiencing significant shifts to keep pace with changing workplace expectations, increased retirement eligibility and evolving customer needs. Simultaneously, the artificial intelligence (AI) sector is forecasted to grow exponentially, creating new jobs that are unimaginable today.

These factors will likely result in an unavoidable reshaping of the way law firms and in-house counsels currently work. What will this mean for the future of the IP legal profession? Hear from industry experts and the Clarivate team as they discuss how IP legal teams can successfully navigate the evolving IP ecosystem through upskilling, knowledge sharing, technology adoption and process optimization.

The on-demand webinar can be found here: The future of the IP legal profession: Balancing the rise of AI with human expertise.

Case Study: A new global IP team with a tailored strategy for success

Clarivate recently helped Versuni reshape their IP legal strategy after their business was spun out from a much larger parent organization. The legal team needed help redefining their team roles, processes, technology and data to align with a new commercial business strategy and a smaller setup.

With the help of the Clarivate IP Diagnostic consulting team, Versuni implemented a tailored IP legal strategy that optimized the team structure and increased automation of existing tools to deliver rapid efficiency gains. Now, Versuni’s IP team is positioned to work in a more agile way that is both faster and more flexible.

The full case study can be found here: A new global IP team with a tailored strategy for success.

White Paper: Investing in innovative IP legal strategies during challenging times

Budgets and staffing are tight, competitive pressures are on the rise, and clients and business leaders are demanding more for less—without compromising quality.

This creates a perfect storm for corporate and law firm intellectual property (IP) teams and an opportunity to rethink how IP teams operate. Is this the right time to make strategic investments in new ways of working?

In this white paper, three IP legal experts examine how IP law firms and in-house legal teams can drive successful outcomes by investing in transformation now—and avoid playing defense later.

The white paper can be found here: Investing in innovative IP legal strategies during challenging times.

Conclusion

The continual and constant change of 2023 is expected into 2024 and beyond. It will undoubtedly influence IP law and practice, reshaping the roles of people, process, data and technology in the way IP is created, protected and managed.

To see how Clarivate can help your IP team plan for the future, contact us today.

The post Looking back on 2023: Top five resources for IP legal teams appeared first on Clarivate.

Today’s global workforce is experiencing significant, swift and continuous shifts. Customer needs are evolving. Retirement eligibility is increasing. The growth of artificial intelligence (AI) is forecasted to cause even greater changes.

These shifts are impacting the way business is done within law firms and in-house corporate legal teams. To keep pace, IP legal teams are trying to understand the downstream impact on traditional lawyering and what is needed to successfully navigate the evolving IP ecosystem into the future.

To help, Clarivate recently released two resources that explore the current state of AI in IP and the importance of embracing change to prepare for what is on the horizon:

• Webinar: The future of the IP legal profession: Balancing the rise of AI with human expertise
• Report: Redefining Artificial Intelligence. How IP practice meets the coming wave.

Changing expectations will undoubtedly influence the current norms of IP law and practice, forcing the industry to reimagine the roles of people, process, data and technology in the way IP is created, protected and managed.

What is the current state of AI in IP?

According to Forbes, AI is projected to see an annual growth rate of 37.3% from 2023 to 2030 and the AI market size is estimated to reach $407 billion by 2027.

What does that mean for the IP legal industry? The interplay between IP, AI and the wider legal industry is complex. To get a pulse-check of the perception of AI in the IP industry, Clarivate surveyed 575 IP and research and development (R&D) professionals from law firms and corporations worldwide between July 17 and August 1, 2023.

One attorney pointedly said, “Practitioners and clients need to lead the change instead of being pulled along by startups and new tech.” Clarivate found respondents were skeptical about AI deployment but keen to realize benefits. 67% of respondents were most excited about adopting AI for automating manual tasks. While 74% expressed reservations about AI, with accuracy being the top concern.

The full survey results can be found in the report: Redefining Artificial Intelligence. How IP practice meets the coming wave.

Harnessing AI technology & innovation

Advancements in AI are providing legal teams with new ways of harnessing technology to offset resource constraints. AI can help staff scale to meet growing workloads, automate routine tasks and free up time for higher value work.

• Digitalization

There is a shift toward more consolidated technology stacks to improve scalability, flexibility, and cost-effectiveness. Cloud-based solutions, such as IPFolio from Clarivate, enable IP operation management from a flexible, centralized hub.

• AI and automation

At the same time, IP professionals show growing adoption of next-generation technologies to automate repetitive tasks and focus on higher-value strategic matters. Gartner predicts that by 2024, legal departments would have automated 50% of their legal work relating to major commercial transactions.

 Read the related blog: Unlocking New Applications of AI: What IP Practitioners Need to Know Before Selecting an AI-based Solution

Preparing your people for the Great Retirement

Alongside the rise of AI, another significant event is expected to impact the legal industry. There is great anticipation around the potential effects of the sizable “Baby Boomer” generation leaving the workforce, also known as “The Great Retirement”:

• 76 million United States Baby Boomers are expected to retire by 2030
• 245 million Chinese fall into the Baby Boomer generation
• 21.3% of the EU population are Baby Boomers

As a result, prioritization is needed for knowledge transfer, supporting non-traditional and diverse candidates, and focusing resources on training, upskilling, and outsourcing. Legal teams can prepare their people though:

• Upskilling and reskilling programs

As legal functions evolve from conducting standardized legal work to digitally enhanced and impactful service delivery model, upskilling and addressing potential skill gaps is critical.

• Diversity, equity and inclusion

Organizations are shifting towards a more diverse talent base as well as implementing initiatives to foster the development of leadership skills for women in IP.

• Expanding talent pipelines by recruiting nontraditional candidates

Companies now seek candidates from nontraditional backgrounds for their valuable perspectives and experiences. Gartner also predicts that by 2024, legal departments will replace 20% of generalist lawyers with nonlawyer staff.

Leaning into data

Organizations are increasingly recognizing the value of data associated with their intangible assets. However, when using data, analytics and intelligence for efficient and informed decision making it’s important to remember not all data is worth fighting over. When it comes to AI, it can only ever be as good as the input data.

• Data driven decision making

IP portfolios are growing in volume and in strategic value. Analysis of large volumes of data can help predict what is likely to happen and promote effective decision making. While AI solutions can quickly extract deeper insights from large volumes of data, the reliability and validity of these insights depend on the types of data used.

• Data privacy and cyber security concerns

With more remote work and online deliverables, there is a higher threat to virtually held data and increased scrutiny on where said data is stored. Many organizations and their legal counsel are challenged as legal professionals deal with sensitive information, privacy and data security risks. In addition, new applications of AI could expose organizations, law firms and governments to new vulnerabilities, and these should be top of mind as IP practitioners balance the opportunities and risks.

Conclusion

As change continues to come at a faster pace, setting IP teams up for success is key to surviving the constant shifts. Responsibly leveraging AI and proactively preparing teams for change can help law firms and corporate teams stay ahead of these shifts.

Interested in learning more? Watch the on-demand webinar: The future of the IP legal profession: Balancing the rise of AI with human expertise

To see how Clarivate can help your IP team become faster, people focused, and more flexible, contact us today.

The post Change on the horizon: The evolving IP legal profession appeared first on Clarivate.

That is why many corporate legal departments and law firms have invested in personnel and systems to manage the renewal process. However, is that the most efficient and effective way to meet the challenge? When trademark renewals eat into your team’s valuable time, you may need to consider outsourcing the administrative burden.

Lots of moving parts

Consider all the factors involved in managing trademark renewals. In addition to keeping track of deadlines, in-house teams need to stay up to date on changing local fees, evolving laws and regulations for dozens or even hundreds of jurisdictions. They need to manage local agents operating around the world in different languages. Plus, they need to handle payment of agent and trademark office fees in a variety of currencies, making sure to pay on time.

These tasks add up to a significant administrative burden that diverts paralegals and attorneys from other activities—like making strategic decisions about which trademarks to renew, in which jurisdictions, and in which goods and services classifications.

The outsource decision

Outsourcing trademark renewals to a service partner can alleviate that administrative burden, freeing in-house professionals to focus on strategic tasks. Given the critical nature of trademark rights, corporate IP and law firm professionals should ask pointed questions about any prospective service provider:

1. Do they have the expertise and experience to manage all renewal tasks, including more complex power of attorney (POA) and evidence of use (EOU) requirements?
2. Do they have a well-established process for requirements management, with automated tools to maximize efficiency? Do they have processes in place to ensure accuracy and manage risk?
3. Do they have a global network of vetted local agents that covers jurisdictions worldwide? Will they work with your preferred agents?
4. Will they provide clear, transparent, and reliable pricing—and are their costs competitive?
5. Will you receive a high level of service and attention? Will the service provider conform to your needs and preferences, rather than the other way around?

In summary, does the provider have the capabilities, resources, and commitment to help ensure your valuable trademark rights are renewed on time and on budget, so your team can focus on critical business priorities?

View On-Demand Webinar: Harnessing the potential of IP Administrative services

A partner you can trust

With Clarivate the answer to these questions is a resounding “yes.” We offer a comprehensive solution for trademark renewals designed to safeguard your rights, while maximizing efficiency. We are uniquely qualified to optimize the renewal process with:

• Unmatched trademark expertise and support. With more than 50 years of experience and a team of 200+ in 12 countries, Clarivate has the resources to handle renewals for even the largest global trademark portfolios.
• Quality and accuracy assurance. Our data verification team manually verifies any discrepancies in public records. We have the world’s largest IP laws team that monitors thousands of renewal laws worldwide to help ensure compliance. Our comprehensive liability insurance minimizes the risk of costly errors.
• Global agent network. Our global network of 2,000+ local agents enables us to handle renewals around the world. Plus, our negotiated agent contracts give us preferred pricing. Have agents you like in key jurisdictions? We’re happy to work with them.
• Cost efficiencies. Our well-established processes, automated systems, and economies of scale enable us to maximize efficiency, resulting in highly competitive pricing for services.
• Customized solution. We tailor our service around your needs, with flexible reminders and invoice settings. We handle all payments, so you receive a consolidated invoice in the currency of your choice, plus customized reports to simplify budget management.
• Superlative service. A dedicated account manager is assigned to coordinate services and ensure your needs are met. Our Client Service Portal offers easy access to your portfolio, providing a 360-degree view and the ability to easily share case data with your IP team.

Some of the world’s leading brands entrust their trademark renewals to Clarivate. They recognize the value of having a trusted service partner who can alleviate resource strain, freeing up their own internal talent to focus on strategic priorities, secure in the knowledge that their trademark rights are in good hands.

Is it time to rethink your trademark renewal strategy? Contact us today to discuss how Clarivate can help.

The post The Outsource Decision: Key Considerations When Optimizing Trademark Renewal Operations appeared first on Clarivate.

Recent legal decisions are heightening the need for, and in some ways, changing the focus of patent research when preparing for litigation. As the litigation landscape evolves, so too must your approach to patent research. To meet this evolving challenge, we explore the crucial elements that should be a part of your patent research when preparing your defense.

Evaluate all possible sources to build a stronger prior art search strategy

To put you in the best possible position to invalidate the claims being asserted, the value of comprehensive, “scour the earth” invalidity searches cannot be understated. But how can a patent litigator know their invalidity searches are exhausting all possible sources?

A comprehensive invalidity search should include, at a minimum, an electronic based patent and non-patent literature (NPL) global search as well as a citation and class/subclass search.

The invalidity search scope should specifically be tailored to the asserted claim limitations to ensure that the most relevant prior art is being cited, and to reduce noise.

Prior art not published in English, and obscure non-traditional publications such as manuals, YouTube videos, or conference proceedings, also qualify as relevant prior art for invalidity purposes. So, to ensure thoroughness you may also want to consider a non-English native language search as well as a physical library or patent office searches.

For many jurisdictions, historical full text patent documents are only available in the local language and not accessible electronically. Searches of NPL databases can be beneficial in helping you determine where to focus your physical search efforts.

Find out how the Clarivate team of patent search experts helped a pharmaceutical company make an informed decision with an on-the-ground search of physical documents

Create a more strategic approach through an in-depth prosecution history analysis  

Prosecution history analysis is also a very important step when crafting the best defensive position. One compelling reason to analyze the asserted patent’s prosecution history is to uncover the patent examiner’s search strategy during prosecution. The examiner’s search history provides a wealth of knowledge of “where they have” and “where they have not” searched already. Knowing this information is powerful and will allow you to create the most effective invalidity search strategy—increasing your chances of finding “invalidating” prior art that had never been found, or considered, by the examiner.

Understanding the asserted patents legal status, the patent family structure, rejections/objections raised during prosecution, and other attempts to invalidate any claim limitations will help also guide your defensive strategy. Actions taken by the applicant during prosecution, could potentially render the asserted patent unenforceable. Furthermore, and in view of the recent Cellect Opinion, it is possible that an asserted patent could be deemed expired without the timely filing of a terminal disclaimer.

See how the IP team at Pure Storage uses Innography® to strengthen their defensive IP strategies

Evaluate litigation trends in different courts and jurisdictions

Whether to file a motion to transfer venue, and when to do so, can seriously disrupt the plaintiff’s overall litigation strategy. The disruption can create leverage for settlement discussions and/or can negatively impact the plaintiff’s ability to successfully try their case. In any event, it would be advantageous for the defense to move quickly when challenging venue.

Conducting proper due diligence and being aware of venues that historically favor plaintiff’s vs defendant’s (outcomes and verdicts), the number of cases filed, timeliness, and costs should all be considered.  It’s also important to note how the US Supreme Court Case- TC Heartland vs Kraft Foods (2017) limits a plaintiff’s ability to file suit in venues historically favorable to plaintiff’s.

Discover how Darts-ip can help you analyze litigation outcomes from over 3,371 patent courts

Monitor similar cases to capture new insights that could improve your odds 

The organization asserting their IP may be actively involved in litigation with other parties in other jurisdictions. By researching IP litigation case data, you can find these potentially relevant cases, and actively monitor them for new filings, decisions and outcomes. Automated alerting allows you to continuously monitor these cases and receive an alert anytime there is new case activity. These alerts can provide highly valuable insights (and potentially new references) to help you evolve your defense strategy.

These are just a few examples of how comprehensive patent research can have a meaningful impact on your defensive strategy and put you in the best position to succeed in a patent infringement case.

To learn more about how expert patent research can improve your odds, contact our team of experts.

The post Preparing for patent litigation: how comprehensive patent research pays off when the stakes are high appeared first on Clarivate.

IP legal teams continue to face a universal business challenge: how to do more with less. If this challenge is not thoughtfully addressed, it can have a negative impact on an organization’s ability to meet business requirements. Plus, it can also intensify employee burnout.

A 2022 McKinsey survey of 15,000 employees across 15 countries and various demographics found that on average one-in-four employees were experiencing symptoms of burnout. Fortunately, investments to support well-being are increasing, but how do organizations address root causes of burnout, for example doing more with less? One solution: make investments to identify efficiencies and enable teams to work smarter with less.

Working smarter with fewer resources

In the latest case study from Clarivate^TM, we explore how our IP Diagnostic consulting team collaboratively engaged with global domestic appliance business Versuni to create a tailored strategy, fine-tuning and reshaping their IP organization, including:

• Adjusting organizational requirements after becoming a new smaller company
• Aligning with the new commercial business strategy
• Addressing employee needs and concerns

“Product lines and priority deadlines keep coming, everything goes on, and all the work needs to continue. But we faced insufficient capabilities to deal with daily matters, such as the people and procedures to do the required filings or searches,” explained Birte Vanrobaeys, Head of Trademarks and Designs at Versuni.

Based on analysis of the data collected, Clarivate presented a report which proposed a range of initiatives and recommendations, structured to make both immediate and long-term changes. The Versuni team was excited at the prospect of adapting their roles and structure, honing their processes, and accelerating operations.

Understanding the changes needed

A tailored IP legal strategy starts with identifying where change is needed. To achieve an effectual outcome, careful analysis of an organization’s roles, processes, technology, and information is required. Questions to consider include:

• Are members of your IP team overburdened?
• Does your IP team need to increase operational efficiency or mitigate risk?
• Are you concerned about the quality of your patent and trademark data?
• Are you trying to reduce costs in IP protection and portfolio management?
• Do your processes support business objectives?

If this resonates, an unbiased third-party evaluation, such as an IP Diagnostic, can help identify strategies to achieve key business priorities, gauge the efficacy of the team structure and technology in place and verify whether the processes are optimal.

The benefits of unbiased evaluation 

Creating a modern and efficient IP legal team is a complex and vital undertaking. The IP Diagnostic consulting team has helped organizations successfully position themselves for the future with over 150 projects in over 15 countries.

Each IP Diagnostic is customized, focused on amplifying four key benefits:

1. Maximize the value of people
   Place the right people on the right tasks to improve productivity and adjust responsibilities to optimize workload.
2. Increase process efficiency
   Evaluate current processes for logic and consistency to uncover ways to reduce costs and boost team output.
3. Utilize the best data for key decisions
   Review the input and processing of data, analyzing where your data comes from and the quality.
4. Optimize use of IP technology tools and systems
   Assess whether existing systems are working well together and identify opportunities to meet objectives through automation.

When asked about the IP Diagnostic methodology Dries Duijnstee, Chief Legal Officer at Versuni said: “I really liked the Clarivate approach of interviewing everybody in an intensive and open way with very candid discussions about how they did their work and what was on their mind. I could see that our people enjoyed it and didn’t see it as threatening, and it also gave us a lot of insight.”

Conclusion

The case study concludes with Dries’ thoughts on the impact of the IP Diagnostic: “Clarivate came to us with a good and clear solution… As a result of the changes we’ve made, we have increased speed, solved a number of challenges, and reduced quite a lot of stress for people”.

As change continues to come at a faster pace, setting employees up for success with optimized processes, technology, and information is critical for both the business and the burnout.

Interested in learning more? Download the case study: A new global IP team with a tailored strategy for success.

To see how Clarivate can help your IP team become faster, people focused, and more flexible, contact us today.

The post IP Diagnostic consulting: The key to working smarter with less appeared first on Clarivate.

Budgets and staffing are tight, competitive pressures are on the rise, and clients and business leaders are demanding more for less — without compromising quality. This creates an inflection point for rethinking how corporate and law firm intellectual property (IP) legal teams operate.

The value of investing in change during challenging times has been demonstrated historically. A 2020 report by McKinsey & Company found that organizations that invested in innovation during the financial crisis of 2009 outperformed the market by 10% during the crisis and by 30% in the post-crisis years.

Now is the time to be bold

Against the backdrop of increasing demands and shrinking budgets, forward-looking IP legal teams are re-examining status quo approaches to managing IP assets.

“During a downturn and in this post-pandemic era, this is absolutely the time to be bold and invest in the future, strengthening our services to our internal and external clients,” says Tina Powers, Intellectual Property Operations Manager at Mintz.

The importance of IP is elevated during a downturn as companies seek to bolster their revenue and gain competitive advantage. David M. Weirich, Vice President & Associate General Counsel, Patents at The Procter & Gamble Company says: “It may seem counterintuitive, but a downturn is a good time to evaluate your systems and how work is done. Make changes that will help in the future, even if there is a cost now.”

Where should law firm and corporate IP leaders focus their attention and investment? The experts point to four key areas to encourage risk mitigation, agility, and morale: people, process, data and technology.

People: Investing in your teams

Knowledgeable people are a crucial resource. Making sure you are applying peoples’ skills in the most effective way is key to optimizing your investment in talent. “It’s all about having the right thing done by the right person at the right time… using their unique industry experience, talent and knowledge to serve clients,” says Robert K. Burger, Executive Director & COO at Sterne Kessler.

Third party experts like IP Services teams from Clarivate focus on utilizing specialists to decrease pressure on your internal teams, by reducing administrative burden and risk. It is important to note that the goal of these services is not to reduce in-house headcount. It is to enable and empower IP teams to focus on more strategic and value driving activities.

Process: Reduce pressure and improve output

An uncertain business environment is also a catalyst for IP departments and law firms to rethink their processes. It provides an opportunity to meet cost and staffing pressures while improving output.

“We had Clarivate take over the payment of trademark annuities, dealing with all of our agents around the world. This freed up our internal people to work on more interesting and important things. At the same time, our costs are reduced because we have the benefit of a larger organization negotiating rates” Weirich says.

He also notes the need to look at process transformation from a culture standpoint. “We got everyone thinking about simplification, encouraging them to bring ideas to the table.”

Data: Work smarter, not harder

IP management software (IPMS) and other systems are filled with data relating to IP portfolios. Optimizing and enhancing this data can help you prioritize focus and funds while enriching IP portfolios.

For example, combining portfolio data with Clarivate IP Intelligence solutions can provide clear insights to help IP legal teams:

• Accelerate critical insights with AI-powered analytics solutions combined with correlated patent, trademark, litigation, non-patent literature and firmographic data.
• Boost competitive advantage with IP intelligence you can use for a variety of high-value analyses – from evaluating IP value and risk to performing competitive intelligence.

Technology: Taking on tech

Technology plays a major role in transformation, with the experts emphasizing the importance of targeting the right opportunities for improvements.

Powers notes that connecting FoundationIP with the firm’s other software tools — such as linking docketing to billing software — yields significant improvements. “The investment we made in an IPMS, both in time and financially, has taken our technology to the next level.”

Increasing adoption and harnessing the full capabilities of existing technologies can optimize internal processes and enhance efficiency.

Conclusion

Transformation is the great unifier across IP legal teams, both law firms and corporates. It starts by carefully evaluating how your IP team is working today and identifying opportunities for new and better ways of working.

While we must always expect the unexpected, the experts agree that taking a proactive approach to transformation is a wise strategy, and we can help.

Interested in learning more? Download the report for a deep dive on this topic: Investing in innovative IP legal strategies during challenging times.

About our speakers

The IP legal experts sharing their approach to investing in innovative IP legal strategies during challenging times include:

• Robert K. Burger, Executive Director & COO at Sterne Kessler
• Tina Powers, Intellectual Property Operations Manager at Mintz
• David M. Weirich, Vice President & Associate General Counsel – Patents at The Procter & Gamble Company

The post Being bold with your IP legal investment strategy during challenging times appeared first on Clarivate.