The IP Proficiencies is the work product of a CLOC Community effort to define best practices necessary to successfully manage operations, as it relates to an organization’s intellectual property. To develop the IP Proficiencies a team of thought leaders from industry, law firms, and consulting firms, spent more than nine months identifying and documenting best practices for in-house legal departments that handle IP matters. The result of that effort is a set of IP Proficiencies matrices—one each for patents, trademarks, and IP litigation—that provide a maturity scale against which legal operations professionals can rate their organizations in each of the IP Proficiencies: people, process, technology, policies, 3rd party support, and enforcement / monetization.
The work of the IP Initiatives team focused on why organizations—both legal departments and the law firms that support them— should be enthusiastic about improving their IP operations. Team members representing in-house legal departments not only created the matrices, but have also used the Proficiencies in their own organizations to progress from Foundational to Advanced to Mature with respect to defining their teams (people), refining workflow (process), and improving their use of, or embracing entirely new, tools (technology).
The matrices developed by the IP team can also be utilized by outside counsel and law firms in a number of ways.
- To better understand their clients’ internal business constraints and why clients may make certain requests and set forth specific procedures
- Use their knowledge of how various organizations (i.e., other clients) manage legal operations to advise clients on possible ways to increase their maturity level in any given competency
- Improve their own internal operations within the IP practice groups, specifically as it relates to staffing matters with the right timekeepers (people), managing firm-wide, and client-specific, workflows (process), and selecting tools that support both the needs of firm personnel and their clients (technology).
In addition to the matrices, the IP team developed an online tool that organizations can use to score their organization’s maturity level in each of the IP Proficiencies, which can be accessed by visiting http://www.ipproficiencies.com/.
Legal operations professionals can use the results of the IP Proficiencies maturity scorecard to:
- Identify existing and desired competencies in the areas of Patents, Trademarks, and IP Litigation,
- Benchmark maturity level against other IP legal departments, and
- Focus on specific information, tools, and tasks that will help mature the IP operations function.
In the future, the IP team plans to expand the IP process matrices to include other aspects of IP practice, such as trade secret and licensing programs, and look into the best ways to increase cooperation across the legal ecosystem between companies, law firms, technology vendors, consultants, and extended services teams.
Resources and Tools
Thank you to the members of the legal ecosystem who participated in the creation of this initiative led by: Melanie Carmosino, Annya Dushine, David Brightman.
Core IP Team
- Melanie Carmosino, Director of IP Operations, Microsoft
- Dominic Crosby, Sr. Technical Program Manager, Microsoft
- Jennifer Karr, IP Operations Program Manager, Microsoft
- Brent Harris, Head of Global Patent Operations, Roche
- Amy Gagich, IP Manager, Koch Industries
- David Brightman, Former Associate General Counsel IP Litigation, Yahoo
- Stephanie Sanders, Global Patent Operations Chief, Kilpatrick Townsend
- Tina Elsner, Director of Client Value, Sterne Kessler Goldstein Fox
- Annya Dushine, Solutions Consultant, CPA Global
- Sam Wiley, Solutions Consultant, CPA Global
- Adam Jaffe, Director Innovation Asset Management, Duff & Phelps