The Problem

A West coast based IP law firm was having issues with their IDS practice as it was losing money based on the fixed fee pricing arrangements they had with their clients.

The Challenges Faced

Existing IDS management software required significant manual intervention and was not able to seamlessly manage complex IDS’

No visibility into which IDS’ are more urgent than others.

Incurring avoidable late IDS filing fees and RCE’s that are not billable to clients.

Some of their clients wanted to reduce the number of IDS filings without incurring any additional PTO fees

In-house paralegals spending time on pulling foreign office actions from public data sources for some of their US based clients; resulting in billing write-offs for such clients.

What Solution did BlackBox IP implement – The law firm migrated to cloud based BlackBox IDS as their technology tool to manage all IDS’ firm wide.  BlackBox IDS reduced the manual touch points by automating reference entry from office actions.  Cross citation even between large groups of related matters is completely automated including NPL duplicate checks.  BlackBox IDS is also pulling IP5 foreign office actions and completing its reference entry. All IDS data including the firm’s reference PDF library is contained in BlackBox IDS.

Automated rules were set up in BlackBox IDS allowing the firm to accumulate uncited references and strategically file IDS’ based on the prosecution history. For example, the firm wanted to file subsequent IDS’ not until 400 days from filing the patent application.

Early NOA and OA alerts allow for the elimination of RCE and late filing fees.  The firm now has a standardized way to manage their IDS practice reducing errors and overall risk.

What We Achieved as Final Outcome

Yearly costs savings of $125K by eliminating RCE and late filing fees

Automated processes enabling for strategic IDS filings – thereby, optimizing the number of IDS filings

Return to profitability of IDS work for their fixed fee clients

65% efficiency gains allowing for paralegals to work on other billable activities

Consistent firm wide IDS processes reduces overall IDS risk