Canadian Lawyer

implemented at our firm. The DMS has allowed our firm to start maintaining files in electronic format and to reduce our use of paper files. Furthermore, all firm members now have two computer screens so they can easily view two or more documents at a time. In the past, we found one of the downsides of using checklists is that it is an additional sheet of paper that must be passed around with the paper file and can easily get lost. To overcome this problem, the checklists we are implementing are an electronic, fillable Word document. By using the DMS, a document such as an office action from the Canadian Patent Office can be workflowed along with its related checklist through the DMS from an assistant to a patent law- yer. As the patent lawyer works through objections in the office action, he or she fills out the checklist and can also add comments to it. The benefits of implementing such checklists are numerous and include: reducing the risk of missing critical steps; encouraging a more uniform prac- tice across all three offices; and serving as tools for training new firm members. As with other projects, applying pro- ject management principles to the imple- mentation of electronic checklists will increase the chances for its success. Pro- ject management includes carrying out specific processes within several know- ledge areas, including scope, time, costs, quality, human resources, communica- tions, risk, and procurement. Scope management begins with col- lecting requirements. By referring to Canadian patent legislation, as well as our experience as patent lawyers, we made a list of the steps in a typical Can- adian patent prosecution, which should be included in the checklists. We also made a list of administrative require- ments for the checklists from a user's perspective, such as using fillable Word documents. After gathering the requirements, we determined the scope of the pro- ject would be limited to six different phases of patent prosecution, including reporting office actions, responding to office actions, and paying final fees. We then created the work breakdown structure, a hierarchical listing of all the work packages needed to finish the project. Time management: A schedule was developed to provide timelines to perform the work packages in the work break- down structure. Timelines were set for: developing the checklists; testing them; and implementing the checklists across all three offices. One major constraint in the sched- ule was that the final implementation of the checklists could not take place until the DMS went live and our paperless workflow had been fully established. The development and testing of the checklists in paper format could take place, but the implementation of the electronic check- lists will only take place after giving our firm members several months to adapt to the new paperless workflow. Cost management involves preparing and controlling the project budget. In this case, the project budget is relatively simple because most of the costs involved internal labour for developing and testing the checklists. Quality management: One of our quality control methods was to conduct a series of pilot subprojects using drafts of the check- lists. I selected a small group of lawyers, assistants, and clerks in our Toronto office to test each checklist for a month. At the end of the testing period, I met with them individually and reviewed their section of each checklist step by step. In doing so, I was able to add certain steps to increase quality and decrease risk in our practice. At the same time, I was able to delete unnecessary steps. Human resources management for this project required me to acquire a project team. While developing the checklists, the project team consisted of members from our firm's patent operations group, which is made up of four lawyers and managers with expertise in patent prosecution. I used their feedback in preparing the check- lists to ensure they met all requirements in Canadian patent legislation and would work well within our firm's operations. During testing, I selected a small group of lawyers, assistants, and clerks in our Toronto office to participate. I made sure we had people on the project team who worked in each area of patent prosecution, including electrical/high-tech, mechanic- al, and biotech/pharmaceuticals. Communications management: One important process at the beginning of any project is to identify the stakehold- ers. In this case, I identified all firm members who would use these check- lists, including clerks, patent lawyers, and their assistants, clients for whom we are performing patent prosecution servi- ces, and the Canadian Intellectual Prop- erty Office. I then had to determine what information to communicate, to which stakeholders, how often, in what detail, and using what medium. I decided to speak personally with all firm members who would be using the checklists to advise them that I was working on this project. For those participating in the pilot subprojects, I provided them draft versions of the checklists, asked them to test the checklists, and provide me feed- back by a certain date. I then followed up to collect their feedback. Risk management involves identifying and analyzing risks, planning responses if such risks arise, and controlling risks as they arise. In this project, one risk is that this project could be significantly delayed as the checklists' implementa- tion depended on the DMS going live and on firm members becoming accus- tomed to using a paperless workflow. Procurement management is the set of processes performed to obtain goods and services from outside the organ- ization. For this project, there was little need for this process as the software required for the electronic checklists was already in-house. Furthermore, the development and testing of the check- lists was performed internally. Jason Leung practises intellectual prop- erty law and is the director of knowledge management at Ridout & Maybee LLP in Toronto. Jason can be contacted at jleung@ridoutmaybee.com. www.CANADIAN Lawyermag.com FEBRUA R Y 2012 25

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