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IP Prosecution Firms - Brace For Impact (part 3)


Intellectual Property prosecution is specialized ... very, very specialized. Specialized enough to where expertise in other branches of law, other than understanding the nuances of working hand in hand with attorneys, absolutely do not apply. Therefore comparisons to other branches of law will not be discussed.

What will be discussed however is intellectual property prosecution's sibling discipline: litigation. With the possible exception of docketing requirements, of note is how little the two have in common. Litigation involves ways and means that don't mesh with prosecution and vice versa. They are completely different animals.


Borrowing from Part 1's analogy: in matters of intellectual property research - prosecution engineers the product that litigation sells. As a result the prosecution paralegal's day-to-day job possesses enormous technical breadth and depth when compared to their litigation counterpart. The two disciplines are mutually exclusive in scope, methods and tools. Consequently their operations, core competencies and fundamental processes are equally divergent.

But that won't prevent litigation enterprises breaking into the prosecution market from painting themselves as prosecution-centric. Legal Process Outsourcing firms (many of which are litigation e-Discovery software houses by trade) as well as their prosecution spin-offs are good examples. Many are making concerted efforts to either mask their litigation origin or spin doctor their litigation history into prosecution expertise.


Reliability in the IP prosecution services field requires that every step of the internal process be a product of innate IP prosecution-centric operations, infrastructure and expertise. Repackaging litigation-derived processes or repurposed e-discovery software to mimic prosecution's look and feel is superficial. One cannot refit a commercial airliner for space exploration and expect the expedition to be as safe and fortuitous as the same journey made in a space shuttle. IP prosecution operations are entirely purpose-built from the ground up.

Most LPO-evolved firms offering IP prosecution services rely heavily on proprietary litigation discovery software applications for much of their investigative work. This confines the bulk of their investigations to the software's box. In a world that operates well outside of boxes, any limitation portends missed information.

Third-party applications (including software bots) won't penetrate the myriad proprietary databases that warehouse the lion's share of critical information. Though there may be the occasional LPO proprietary software solution that gets incorporated into one of these subscription-based proprietary databases. In which case, simply subscribing to that database diminishes the proprietary software solution's value - leaving pure prosecution (along with all of those other databases) to achieve accuracy.

A software tool in any guise is just a software tool. It is but one tool amidst a workshop full of them, not a competitive edge and definitely not a substitute for working knowledge. Intellectual Property prosecution is an expertise-driven human intelligence science that software-driven artificial intelligence can only hope to embellish. Fortunately, experienced IP prosecution law practitioners recognize this. They fully understand the difference between technical skill and voodoo.


Unfortunately, there also exists concern that the aspiring 600lb. gorilla may try hiding deficiencies behind lowball pricing predicated on purported cost savings from litigation-based automation. Bargain pricing can be an effective carrot for attracting law practices on a tight budget. But in IP prosecution, automating anything more than the most rudimentary of document management processes equates to taking shortcuts. REAL IP prosecution paralegals don't take shortcuts because shortcuts in this line of work are megasuits waiting to happen. Pure and simple.

Should this convention continue flying under the radar, then problems greater than a "you get what you pay for" conundrum may well emerge. That would be a bad thing.


In time the dust eventually settles and everything comes full circle. Which means the prosecution triage professionals will ultimately be called in to affect damage control - but not without trepidation. Matter resuscitations aside, on an interpersonal level repairing a betrayed psyche can be a daunting task.

In the patent, trademark & copyright prosecution paralegal services business, the back end attorney-paralegal trust is as integral as the front end attorney-client privilege. Securing the attorney-paralegal bond can be challenge enough to establish from scratch. Having to resurrect this confidence for a new attorney client coming from a bad relationship can be a painful and expensive process for both services firm and attorney alike. Not to mention what the end-client has to endure.

However, affecting change which rights the ship can help grow that attorney-paralegal relationship into a collaborative and truly synergistic team. Rock solid professional teamwork is a good thing, with the end clients benefiting greatly as a result.

In Part 4's final installment of ' IP Prosecution Firms - Brace For Impact', steps that IP prosecution practitioners can take to help assess their prospective contract nonlawyer partners are examined.

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