Canadian Lawyer

April 2012

The most widely read magazine for Canadian lawyers

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and the reporting letter to the client. A lawyer reviews these draft copies, amends them as necessary, and even- tually approves them for submission. Generally, all of these documents will have client-specific and matter-specific information, and the reporting letter will have information from the dock- ets that were entered. A traditional IP firm probably has generic precedents for each of these four documents saved as Word documents. The patent-filing clerk opens the generic precedent letters and then manually types in or copies and pastes in client-specific and mat- ter-specific information into various locations of each precedent letter. This process is not very efficient because the patent-filing clerk must spend time manually typing or copying and pasting in such information. Further, there is a significant risk the filing clerk will make a mistake when transcribing the infor- mation from the electronic database to the precedent letter. IP practice enhanced by software Our firm's practice has been greatly improved by implementing a software system that combines records manage- ment, docketing of action items, and generation of precedent letters and forms. When a foreign patent attorney sends work to us for the first time, his or her client-specific information is entered into the system and saved for all matter records under his or her client series. When the foreign patent attorney provides us with instructions to file a new Canadian patent applica- tion based on a PCT application, our records department creates a new matter within the client series and enters mat- ter-specific information into that new matter's record. Our system has a useful feature where- upon entering a key trigger date, the soft- ware automatically adds the appropriate action item and due date. For example, upon entering the filing date of the PCT application, the system automatically adds dockets for paying maintenance fees and for requesting examination. This process is efficient because it is automated, elimin- ates the risk of a clerk forgetting to enter in these dockets, and ensures accuracy because the clerk does not have to calcu- late the due dates for each docket. Precedents for the cover letter to CIPO, the request for national phase entry, the declaration of entitlement and the reporting letter to the client are stored in a virtual server. Our system can generate a Word version of these documents, and client-specific and matter-specific infor- mation from the matter record automatic- ally merges into the appropriate locations of these documents. For example, if the new Canadian patent application is claim- ing priority on a previously filed U.S. patent application, a paragraph stating the priority claim merges into the appro- priate locations in each of the cover letter to CIPO, the request for national phase entry, and the reporting letter to the client. If no such priority claim is being made, this paragraph does not merge into these documents. The merging of such information from the matter record into these documents greatly increases our efficiency because, again, the patent-filing clerk does not have to manually type in or copy and paste in this information. Furthermore, this increases the accuracy of transcribing this information. When generating these documents, our system also allows us to fill in specific information not present in the matter record. For example, when generating the request for national phase entry, a window pops up asking the clerk to fill in the address of the inventor for the patent application. This address is then auto- matically inserted into the appropriate location in the request. In accordance with our firm's paperless practice, upon generating and checking over these documents, the clerk work flows them through our document man- agement systems to the lawyer for review. The lawyer reviews the documents, amends them as necessary, and work flows them through the DMS back to the clerk for submission. 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 A PRIL 2012 25 HELP ASSOCIATIONS MEET THEIR OBLIGATIONS UNDER COMPETITION LAW THE COMPETITION LAW GUIDE FOR TRADE ASSOCIATIONS IN CANADA STEVE SZENTESI AND MARK KATZ Get a deep analysis of competition law that will help you minimize risk for your clients. 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