Canadian Lawyer

April 2012

The most widely read magazine for Canadian lawyers

Issue link: https://digital.canadianlawyermag.com/i/59285

Contents of this Issue

Navigation

Page 23 of 55

BY JASON LEUNG TECH SUPPORT The benefits of records management One of the most useful features of our software system is its ability to store client- specific, matter-specific, and docketing information in a client matter record. In order to file the Canadian patent application, we prepare several documents including: (i) a cover letter to the Can- adian Intellectual Property Office; (ii) a form to request national phase entry; (iii) a declaration of entitlement; and (iv) a reporting letter to the client. Upon filing the Canadian patent application, there will often be due dates for several action items that must be docketed including: (i) maintenance fees, which must be paid annually on the anniversary of the fil- ing date of the PCT application; and (ii) requesting examination, which must be done within five years of the filing date of the PCT application. M y firm uses a single software solution for records man- agement, docketing due dates for action items, and generating precedent letters and forms. One of the most useful fea- tures of our software system is its ability to store client-specific, matter-specific, and docketing information in a client matter record and, when desired, auto- matically merge such information into the appropriate locations of precedent letters and forms. This feature signifi- cantly improves our firm's efficiency in generating almost all of our commonly used letters and forms, and also ensures that this information will be transcribed accurately. In this article, I will describe a specific example of how we have been able to take advantage of this system to enhance our IP law practice. In this example, a foreign patent attorney files a Patent Co-operation Treaty international patent application on behalf of his or her client. The foreign patent attorney then retains Ridout & Maybee LLP to file a Canadian patent application based on the PCT application. The foreign patent attorney is considered to be our firm's client, and the foreign pat- ent attorney's client is the applicant. 24 A PRIL 2012 www. CANADIAN Lawyermag.com Traditional IP practice In a traditional IP practice, a firm stores client-specific information, such as the foreign patent attorney's name and contact information, in an electronic database. Upon receiving instructions from the for- eign patent attorney to file a Canadian application based on a PCT application, matter-specific information is entered into the same electronic database. Matter- specific information may include the PCT application serial number, the filing date of the PCT application, the name of the applicant, and the title of the patent appli- cation. The due dates for action items, such as maintenance fees and requesting examination, are manually calculated and entered into dockets. A patent-filing clerk normally pre- pares draft copies of the cover letter to CIPO, the request for national phase entry, the declaration of entitlement,

Articles in this issue

Archives of this issue

view archives of Canadian Lawyer - April 2012