Int. Journal of Business Science and Applied Management, Volume 2, Issue 3, 2007

The potential for using information systems to enhance

information flows and relationships in the intellectual

property sector: The case of Kennedys Patent

Alexis Barlow

Caledonian Business School, Glasgow Caledonian University

70 Cowcaddens Road, Glasgow, G4 0BA, UK

Tel: +44 (0) 0141 331 8816

Email: a.barlow@gcal.ac.uk

Peter Duncan

Caledonian Business School, Glasgow Caledonian University

70 Cowcaddens Road, Glasgow, G4 0BA, UK

Tel: +44 (0) 0141 331 3723

Email: p.b.duncan@gcal.ac.uk

John Huntley

School of Law and Social Sciences, Glasgow Caledonian University

70 Cowcaddens Road, Glasgow, G4 0BA, UK

Tel: +44 (0) 0141 331 3723

Email j.huntley@gcal.ac.uk

Allan Gordon

Kennedys Patent

185 St Vincent St, Glasgow G2 5QD, UK

Tel: +44 (0) 0141 226 6826

Email a.gordon@kennedyspatent.com

Jim Adams

Kennedys Patent

185 St Vincent St, Glasgow G2 5QD, UK

Tel: +44 (0) 0141 226 6826

Email j.adams@kennedyspatent.com

Abstract

This paper investigates the potential use of information systems (IS) for enhancing the supply chains of

organisations positioned in the intellectual property (IP) sector. Exploratory research has been

conducted through the lens of a patent and trade mark agent who is involved in advising on a range of

IP issues. The research highlights the opportunities offered by IS (including online technologies) for

generally improving the provision of business services e.g. automating supply chain processes. More

specifically, though, it investigates the potential IS have for integrating information flows and

providing timely, in-depth and better presented information and the options for online filing. It also

explores the capabilities for improving interactions with clients and enhancing relationships with key

stakeholders in the supply chain e.g. government agencies, overseas patent agents and lawyers. The

paper additionally outlines key challenges that are at the forefront and need to be addressed when using

IS within the IP sector such as identity management, security and authentication. The key findings of

the research will be of value to researchers and practitioners in the IP field but many of the issues and

challenges faced will also be applicable to other sectors.

Keywords: information systems, intellectual property, supply chain, information flows, relationships;

e-business; e-government

Acknowledgements: The authors would like to thank Dr Kevin Grant (Caledonian Business School,

Glasgow Caledonian University) for his valuable comments on an earlier draft of this paper.

Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams

1 INTRODUCTION

Current developments in information systems (IS) have focused heavily on the Internet and the

World Wide Web (www). Furthermore, the proliferation of the Internet in the 1990s has given rise to

E-Commerce and E-Business. E-Commerce relates more to the online buying and selling of goods and

services. E-business includes e-commerce but covers a wider application of online technologies to an

organisation’s front end and back end processes (Kalakota & Robinson, 2000). E-business exploits

many technologies such as the Internet, intranets, extranets, e-mail, electronic data interchange (EDI),

Enterprise Resource Planning (ERP), document management systems and portals: and so on. A further

application area which has grown significantly in recent years has been E-Government which relates to

the government’s use of online technologies for transforming services, exchanging information and

interacting with citizens and businesses. Generally, IS and in particular online applications, are playing

an increasingly prominent role in the management of organisational supply chains. Supply chains are

networks of organisations and the related business processes involved in the production and delivery of

goods and services (Laudon & Laudon, 2006). IS are being used for enhancing the management of

these supply chains in terms of streamlining key business processes, improving information flows and

enhancing relationships with key stakeholders.

In tandem with the rise of the Internet and the so-called ‘knowledge economy’, another societal

trend has been a growing awareness that intellectual property (IP) can be, and should be, managed

strategically for creating and sustaining competitive advantage (Davis & Harrison, 2001; Hemphill,

2004; Thumm, 2004). The term ‘intellectual property’ refers to rights which relate to, most commonly,

“patents, copyright, designs and trade marks” (Gowers, 2006, p13). The effective management of IP

requires an awareness of the legal and regulatory framework(s) across a number of jurisdictions and

may necessitate the specialist expertise and experience of IP specialists such as patent agents. Patent

agents are a form of professional service firm, and a subset of the legal services sector. The technical,

commercial and legal nature of IP (and specifically patents; Bently and Sherman, 2004) requires

significant skills to undertake the process of creating and managing such intellectual property rights

(Gordon et al, 2006). This context provides firms in the sector with the opportunity to adopt IS/e-

business for increased effectiveness and competitive advantage, and also the prospect of enhancing the

relationships with government agencies through e-government related initiatives.

The purpose of this paper is to explore the potential for using IS for strategically managing

organisational supply chains, information flows and relationships in the IP sector. In particular, the

paper is based around a case study of a patent and trademark agents - Kennedys Patent (shortened to

‘Kennedys’). Registering a patent is complex, and involves the exchange of information between a

number of stakeholders. The patent supply chain involves a range of different processes, different

organisations such as clients, patent agents and patent offices and many internal and external

information flows. Traditionally, the process has been principally paper-based. However, many

jurisdictions across a number of areas of law have become aware of the opportunities offered by the

advent of e-business technologies to instigate electronic online filing (eOLF) of documents (see for

example UK Patent Office, 2006; European Patent Office, 2005). The patent supply chain is expanded

upon in Section 2. The insights provided by Kennedys have arisen from the authors’ collaboration in a

DTI funded Knowledge Transfer Partnership (KTP) Project between Kennedys Patent and Glasgow

Caledonian University. Kennedys Patent was founded in 1997 and now has offices in Glasgow,

Newcastle and Aberdeen, employing a total of 18 fee-earning staff and 9 support staff. Although the

main focus of Kennedys’ work is patent and trademark advice and applications, they offer advice

across the field of IP law, as well as on the strategic use of IP within organisations. As the firm has

grown in size, the need to manage its information flows and relationships internally and externally has

increased substantially.

The structure of the paper is as follows. The next section examines the work of patents agents such

as Kennedys Patent in more detail, describing the overall supply chain, the patent process (focusing on

registering patents and related processes, as an example of the processes which are central to much of

Kennedys’ work), the relationships with key players and the key information flows. Section 3 discusses

the single case study research design. This will be followed by an evaluation of current issues across

Kennedys Patent and the potential role of IS, E-Business and E-Government for addressing some of

these issues. Consideration will be given to opportunities enabled but also the challenges. The paper

will close with a discussion of the conclusions and implications of the work and areas for future

research will be identified.

Int. Journal of Business Science and Applied Management / Business-and-Management.com

2 PATENT PROCESS, INFORMATION FLOWS AND RELATIONSHIPS

As noted in Section 1 above, supply chains are networks of organisations and the related business

processes. The management of information flows constitutes an “important aspect of managing the

supply chain” (Combe, 2006, p196). This section describes a simplified version of the process of

registering a patent, highlighting the principal relationships in and information flows in the supply

chain. The discussion is based on Gordon et al (2006) where a more extended treatment, with greater

emphasis on the legal aspects, is given.

A patent is:

“an intellectual property right, granted by a country’s government as a territorial right for a limited

period. Patent rights make it illegal for anyone except the owner or someone with the owner’s

permission to make, use, import or sell the invention in the country where the patent was granted.

As long as renewal fees are paid every year, a UK patent has a life of 20 years and provides

protection throughout the UK, but no further” (UK Intellectual Property Office, 2007, p6.)

This definition introduces several concepts which are explored further below. Firstly, invention –

what can be protected by a patent. Secondly, a patent is granted by a government and has to be applied

for. Related to this is the concept of territorial rights – there is no single patent that covers the whole

world so multiple patents covering a number of different jurisdictions may be required. Finally,

renewal – the registration must be kept ‘current’ or it will lapse; allowing others to use the invention.

Supply Chain/Principal Relationships

The Oxford English Dictionary defines a relationship as “the way in which two or more people or

things are connected” or “the way in which two or more people or groups behave towards each other”.

Supply chains incorporate relationships between people involved in supply chain processes and

activities across the same organisation and between different organisations. Relationships between

organisations can range from arm’s length relationships (consisting of one-off exchanges between two

organisations) to vertical integration of the two organisations. In the United Kingdom (UK), the supply

chain of patent agents comprises of three principal relationships: Client ↔ Patent Agents; Patent

Agents ↔ Patent Offices (UK or European); Patent Agents ↔ Overseas Patent and Trademark

Agents

. These are discussed in greater detail below.

Client ↔ Patent Agents

Dawson emphasises the importance of client relationships as being “central to the ability of

professional service firms to differentiate themselves from their competitors” (Dawson, 2000, p 19). A

(prospective) client may approach a firm of patent agents seeking advice on what they hope is a

patentable invention. To be eligible for patent protection the invention must be novel, involve an

inventive step, be capable of industrial application and not be ‘excluded’ (eg a mathematical method)

(Gowers, 2006, pp13-14). The patent agents may advise on the legal and commercial alternatives

available. If appropriate, the patent agents may then act on behalf of the client in registering the patent.

As noted above, patents are territorial in scope and a key decision may be in which jurisdictions to

relevant UK

or European patent office.

For brevity, the term ‘foreign associates’ will be used in this paper as a synonym for ‘Overseas

Patent and Trademark Agents’.

The UK Patent Office (UKPO) became the UK Intellectual Property Office (UKIPO) on 2 April

2007. Where more than one patent office may be relevant (eg UK, European or US) then the term

‘patent office(s)’ is used. To simplify the terminology, the acronym UKIPO is used when referring

specifically to the UK office whether or not it is, strictly speaking, the UKPO (pre-April 2007) or

UKIPO (April 2007 onwards) that is relevant. References have been left as referring to the UKPO or

UKIPO depending on the date of publication of the source material.

Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams

Patent Agents ↔ Patent Offices

Taking registering a patent in the UK as an example (see Gordon et al, 2006 for greater detail), the

process is as follows (see Table 1):

Table 1: Simplified process of registering a patent in the United Kingdom

Stage Activity Comment

1 Filing an Application for Registration

with the UK Intellectual Property

Office (UKIPO).

Starts the process and gives the extremely

important ‘filing date’.

2 Preliminary Examination, Search and

Search Report

The application will be examined to ensure if

meets all formal requirements. A search of the

UKIPO’s database for published material upon

which to assess whether the invention is ‘new’

and ‘inventive’.

3 Initial, or ‘A’ Publication The application and search report are published

and made available for public inspection. The

purpose of this is to allow third parties to

comment on whether the patent should be granted.

4 Substantive Examination Examines the validity of the invention in relation

to the requirements of novelty and inventive step

and industrial application. This may require a

dialogue between the examiner and the applicant

(client; via the patent agents) concerning, for

example, objections raised regarding the granting

of the patent and the applicant’s responses. This

iterative process, if required, will continue until

agreement is reached.

5 Grant of Patent If the application is not rejected following

substantive examination, the patent will be

Granted.

6 ‘B’ Publication of Granted Patent The details of the patent are ‘published’ and are in

the public domain.

Source: Adapted from Gordon et al, 2006, Section 4.2

Once granted, the protection offered by the patent is initially for four years, with renewal (and

related fees) required every subsequent year up to a maximum of twenty years.

Patent Agents ↔ Overseas Patent and Trademark Agents

As noted above, patents are territorial in nature. So for non UK and European jurisdictions (such

as the United States) a UK based firm of patent agents may liaise with a firm of patent agents (‘foreign

associate’) in that country. This requires the timely and appropriate transfer of information between the

UK based agent and the foreign associate.

The relationships between client(s), government agency(ies) and overseas associate(s) can be

considered to form the patent agents’ supply chain (see Figure 1). Where appropriate, such as to secure

the enforcement of IP rights, relationships with lawyers may also be involved. However for the

purposes of this paper, the lawyer-patent agents’ relationship is not seen as being a ‘principal

relationship’. Communication and the exchange of appropriate, accurate and timely information are

crucial to the process – in particular to ensure strict adherence to deadlines.

Int. Journal of Business Science and Applied Management / Business-and-Management.com

Figure 1: Patent and Trademark Agents: principal relationships

Patent

Office

European

Patent

Office

Patent

Office

Government Agencies (examples)

Patent and

Trademark AgentsClient

Overseas Patent

and Trademark

Agents

Patent

Office

Patent

Office

European

Patent

Office

European

Patent

Office

Patent

Office

Patent

Office

Government Agencies (examples)

Patent and

Trademark Agents

Patent and

Trademark AgentsClientClient

Overseas Patent

and Trademark

Agents

Overseas Patent

and Trademark

Agents

Information Flows

Based on the discussion above, the process of registering a patent can be seen to be complex, time

consuming (“usually [taking] between three and four years”; UK Intellectual Property Office (UKIPO),

2007, p9) and, perhaps in consequence, expensive. Fees for the UKIPO and the professional services

of the patent agents may run to several thousand pounds for a UK patent, or tens of thousands where an

international application is made in several countries (UK Intellectual Property Office, 2007, p9).

The information flows relating to the work of patent agents can be regarded as being externally

and internally driven. The flows within these two broad categories are two-way rather than

unidirectional and there is, of course, interplay between the two broad categories themselves. Some

examples of these information flows and the nature of the information required are given below.

External Flows

Between the client and the patent agents:

• Information from the client regarding the nature of the invention to enable the patent agents to the

draft the application.

• Information/communication with the client regarding any subsequent clarification required, for

example relating to the substantive examination if objections are made.

• Ongoing communication with the client regarding the progress of the application, and the amount

(and payment) of any fees due such as outgoings (eg fees due to the relevant patent office(s))

and/or payment to the patent agents for the work undertaken on the client’s behalf.

Between the patent agents and the patent office(s):

• Filing an application and subsequent monitoring of its progress. Awareness of the law and process

required including the form and content of the documentation as well as the timescales involved.

• The patent agents will act as ‘conduit’ for communication between the patent office(s) and the

agents’ client.

• Where the patent agents are also managing the renewals process – knowledge of that process and

in particular the date renewal is due.

Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams

Between the patent agents and foreign associate(s):

• Information concerning the location and availability of foreign associates, their specialisms, and in

which jurisdictions they operate.

• Communication and information exchange between the patent agents and the foreign associate(s)

to inter alia, ensure the associate(s) are managing the client’s work in an appropriate and timely

manner.

• Information regarding the fees charged by the foreign associate, as well as the current and

predicted amount to be billed.

Between the patent agents and the legal system(s):

• Patent attorneys require access to the relevant statue and case law relating to jurisdictions within

which they are registering the patent; as well as practice guidelines issued by the patent office(s).

Internal Flows

• There is a need for efficient and effective case management to provide firstly, a clear indication of

what task has to be done, and secondly internal monitoring of the progress of the application,

renewals and communication with the client, patent office(s) and foreign associates - including a

clear intimation when tasks have been completed.

• An awareness of the time spent by a fee-earner on a particular matter for a particular client is

crucial to the management decision-making of professional services firms (Mayson, 1997). From

an external-facing perspective, these ‘billable hours’ form the basis for calculating the fee charged

to the client. From an internal perspective the firm’s management will attempt to maximise the

time fee-earners spend on ‘billable’ rather than ‘non-billable’ hours – a precursor of this is

knowing who has done what, and when.

• Related to time recording, as a for-profit business the patent agents must manage the information

flows relating to invoicing clients for fees owed, and dealing with the payment/non-payment as

required.

In summary, the whole process is data and ‘date driven’ with the filing date being of crucial

importance in establishing the ‘priority date’ (and time) for the client’s invention. The priority date

being, effectively, the date upon which you would obtain protection from any patent – and any very

similar ‘invention’ from after this date may have to yield to your priority/prior invention. A range of

information in various forms (eg paper, electronic or speech-based) is required in order for patent

agents to discharge their work effectively in such a date-driven environment. Effective workflow/case

management is vital.

This section outlined, in general terms, the work of patent agents (focusing on patents in

particular), as well as the principal relationships and information flows involved. The next section

discusses the case study strategy adopted to analyse the potential impact of IS on these aspects of the

patent supply chain.

3 CASE STUDY STRATEGY: KENNEDYS PATENT

A single case study based on Kennedys Patent has been conducted for the purposes of this

research. Benbasat, Goldstein and Mead (1987, p 370) argue that case studies can examine:

“a phenomenon in its natural setting, employing multiple methods of data collection to gather

information from one or a few entities (people, groups, or organizations). The boundaries of

the phenomenon are not clearly evident at the outset of the research and no experimental

control or manipulation is used.”

Case studies consist of detailed investigations and allow research to be conducted in natural

settings. The phenomenon is not isolated from its context (as in, say, laboratory research) and is of

interest precisely because of its relation to its context (Hartley, 1994). This research explored the

potential use of IS for enhancing information flows and relationships within the intellectual property

sector and in particular a patents and trademark agent. A case study was necessary for exploring why,

Int. Journal of Business Science and Applied Management / Business-and-Management.com

how and what information systems could potentially be used. The research needed to essentially be

contextualised, evolving and gather the subjective opinions of key actors in the patent supply chain.

Case study strategies can involve single or multiple cases. Yin (2003) states that single case

studies are appropriate if: it represents a critical case in testing a well-formulated theory; it is an

extreme or unique case; it is a representative or typical case; it is a revelatory case; it is being used as a

longitudinal case. There are of course other situations that single case studies may be used. For

example, a researcher may use it for exploratory purposes, before they conduct a multiple case study

(Benbasat, Goldstein & Mead, 1987). In this particular research a single case study was being used

which was longitudinal for the purposes of exploratory research and as a stepping stone for further

research.

Case studies are also appropriate for studying areas of research that few studies have been carried

out. The nature of IS, is such that many areas are new and emerging and consequently research and

theory are at there early, formative stages (Benbasat, Goldstein & Mead, 1987; Eisenhardt, 1989). In

particular, research on IS in the supply of services and specifically legal/patent services, is still in its

infancy and case studies are therefore useful for exploring this emerging area of research. A range of

data collection methods were used including participant observation, interviewing, questionnaires,

document analysis and process mapping.

4 CURRENT ISSUES

Firstly, the research explored issues and problems that needed to be addressed in Kennedys

Patents’ current supply chain, key processes, information flows and relationships. These are

summarised under the following categories: Case Management; Integration; Security. The state of the

current IS within Kennedys has contributed to many of these issues. Currently, there is a client and case

management system, an invoicing/billing system, a range of bespoke databases e.g. new enquiries,

renewals, foreign associates, a range of documents and a poorly configured virtual private network

(VPN) with limited access from remote offices. The different IS are not well integrated and

consequently there is little coordination between (and with) the internal and external information flows.

This raises a number of key shortcomings that are outlined below. It should be noted that many of these

issues are not unique to Kennedys and are likely to be common across many professional services

firms.

Case Management: The first category of issues is related to the management of different cases.

Kennedys does not have a common file naming convention and central repository for all electronic

client and case documents. Problems are apparent when a new member of staff is introduced or a

current member of staff is absent. Each secretary has implemented their own naming and saving

process thus finding a particular document becomes a time consuming and tedious task. The invoicing

process for cases handled for clients is also flawed. Certain aspects of the process are a major cause for

concern including the manual generation of invoice numbers. For example, when generating a new

invoice, the secretary needs to take the next available invoice number from the table and mark the

client/case details next to it. This ‘manual’ (rather than automated) system proved efficient enough

when the firm operated from one central office but is not easily supported by Kennedys' current

multiple office structure. Moreover, the current system is proving inadequate for ensuring the correct

account of time spent on each case is accurately recorded. Invoicing a client for the correct amount of

money is obviously of great interest to both parties involved, as clients do not wish to be overcharged,

just as firms would rather not sell themselves short. In line with many other firms in the legal services

sector (Mayson, 1997), recording the time spent on a client’s work provides the ‘billable hours’ that

form the foundation for calculating the amount to be invoiced to the client.

Integration: Many of the above problems are exacerbated by the fact that Kennedys have

outgrown their current IS as their business has seen significant growth in recent years, expanding from

one office to three offices across the UK. Kennedys currently use a number of different systems and the

limited integration has led to many dispersed documents (named inconsistently) across systems with no

solid links between them e.g. certain documents in the document management systems should be linked

to cases within the case management system. This currently means switching from one system to

another to try and establish linkages between documents which is a very time consuming and error

prone process.

The lack of integrated systems and processes leads to unnecessary human intervention (with

consequent cost increases in terms of time and the risk of errors). Lack of integration also limits the

Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams

reporting options offered by the systems or at the least requires the difficult task of data

reconciliation/mining across systems to generate relevant reports. The manual generation of invoice

numbers is also symptomatic of the wider integration issue. For example, there is currently limited

visibility of ‘bad payers’ (clients who are slow to pay or who do not pay). The only way of

recognising/identifying bad payers is to manually check the accounts package. As few users have

access to the accounts system or the time to investigate the issue, there is an increased chance of work

being conducted which the firm may never get paid for.

The potential integration of case, time, invoicing and document management systems would

provide a number of potential solutions to current problems. For example it would alleviate the time

spent through human intervention and also streamlines the whole process and ensure each client is

charged the correct amount. It would also offer opportunities not only for the firm but additionally for

the client (Hinde, 2006). Providing clients with access to integrated personal portfolios would cut

down on client/attorney interaction time e.g. a client would no longer need to be charged for the

breakdown/status report of a particular case.

Security: The final category of issues is mainly related to security. This is a vastly important issue

due to the sensitivity of the data with which patent agents such as Kennedys have to process. Ensuring

client data is kept as secure and private is one of the most important aspects of any patent agents’ IS.

Kennedys have recently changed the way they conduct certain matters across their offices. They

introduced a Citrix enabled network has meant that there is now no need to transfer a copy of the client

and case database to each of their other remote offices. The security, authentication and permissions

have also been enhanced during this change of network architecture, leading to a more stable and

efficient VPN.

However there is a tension between the requirements for security, and being able to provide the

appropriate access to staff (in office(s) or teleworking) or clients(for example), as required by the

current business context facing the firm (Bunke, 2005; Hinde, 2006). Currently, clients have no access

to the Kennedys system and must contact staff directly to be furnished with their desired IP

report/portfolio. The way forward is to build upon the current architecture and introduce some kind of

integrated practice management system that would allow client access. Due to Kennedys’ view on

information security, extra layers of security and authentication will be required to ensure those, and

only those, permitted will be capable of accessing the new system. One possibility is to introduce a

requirement for biometric authentication before access is granted.

Overall, the current systems are contributing to many of the issues or problems that are evident

with Kennedys Patent. They are also providing limited business value and most certainly are only being

used for operational purposes. The firm and its clients could potentially benefit from more careful

application and greater exploitation of IS for maximising strategic opportunities.

5 THE POTENTIAL ROLE OF INFORMATION SYSTEMS, E-BUSINESS AND E-

GOVERNMENT

From one perspective, IS can play a role in making information available, enabling

communication and informing decision making. Many of Kennedys processes and information needs

can be supported through the use case management tools such as electronic diaries, document assembly

techniques, databases and automatic accounting and billing of clients to automate as much of the

process as possible (saving fee-earner time and reducing costs), while ensuring quality standards are

met (Leith and Hoey, 1998; Susskind, 2000).

More innovative application of specific types of IS may even lead to aligning organisational

activities, creating value, exploiting benefits and maximising strategic opportunities. Susskind

predicted that most major law firms would be using IS and information and communication

technologies (ICTs) to provide clients with a wide variety of services online by 2005 (Susskind, 2000).

Unfortunately, this has not been fully met by providers of legal services (and indeed patent and

trademark agents) despite clear benefits to firms and clients. The principal drivers for any changes

which have taken place to date have been the internal dynamics of the firm which have, in turn, been

influenced by the need to acquire competitive edge, through improving the service to the client (Barton

et al, 2000; Bernstein et al, 2001; Thomson et al, 2000a; Thomson et al, 2000b). Historically at least,

the interface of the law office with other, external bodies, most notably government, agencies has been

limited, suggesting that there was not much pressure for change beyond that internal dynamic, whether

from clients or the agencies themselves. Recent developments in IS and ICT, particularly those

focusing on the Internet and the www, offer patent agents potential opportunities from two perspectives

Int. Journal of Business Science and Applied Management / Business-and-Management.com

in particular. Firstly, there are general e-business opportunities relating to the electronic interactions

between the patent agent and their clients, overseas patent agents (‘foreign associates’), and lawyers.

Secondly, and in particular, there are e-government opportunities relating to electronic interactions with

government agencies such as the UKIPO.

The growth of e-business has presented significant opportunities. Amongst these is the potential

for adopting online technologies within the field of supply chain management (SCM). Online

technologies have been seen to impact major supply chain processes, supply chain coordination and

supply chain relationships. The use of e-business for enhancing the efficiency and effectiveness of

supply chains has provided many benefits. Croom (2005) suggests a collection of primary objectives of

e-business implementation including supply chain integration, cost reduction, knowledge development

and learning, IP and information flow control, supporting speed of change, managing global customers

and suppliers, developing e-procurement practices and improving lead time management. Online

technologies could potentially be used within supply chains of legal service firms (see for example

Holmes, 2006; Susskind, 2000), and more specifically patent agents (see for example Hinde, 2006), for

providing services and enhancing the management of supply chain and client relationships. Application

areas could revolve around key business processes such as case management, time recording, invoicing

and billing and online filing of patent applications and be used for communicating and sharing

information with clients.

E-government has also grown significantly, with important implications for the provision of legal

services (Mitrakas, 2005). This has been made possible by the convergence of technical infrastructure,

the uptake of broadband to make the transmission of complex documentation in lengthy procedures

possible, the development of appropriate authoring languages and software, and the provision of secure

networks. One particular area which is having an impact in the field of IP is electronic online filing

(eOLF). More particularly, IPR Registries like the United Kingdom Intellectual Property Office

(UKIPO) and the European Patent Office (EPO) have recognised the benefits of online filing of

applications (see UK Patent Office, 2006; European Patent Office, 2005) and a standard filing format

has been agreed (World Intellectual Property Organization (WIPO), undated; Berwin and Ankyn,

2002). This, it is suggested, is a powerful driver for change and provides a spur for Patent and

Trademark Agents to develop and/or enhance their use of online technologies, leading to competitive

advantage in what Bunke (2005, p1) describes as “an increasingly competitive environment, where

there is a necessity to develop … business in new ways”. It is also an environment circumscribed by a

constantly evolving legal and procedural framework within which identity, security and authentication

are of paramount importance due to the commercial sensitivity of the matters being dealt with.

6 OPPORTUNITIES

Focusing on the patent agents’ supply chain (Section 2) and the current problems identified in

Section 3, this section of the paper highlights the main areas of patent services that can be developed

through the use of IS, e-business and e-government. It will also outline the key drivers and

opportunities for using them including streamlining information flows and for enhancing relationships

with clients, government agencies, overseas agents and lawyers.

Patent agents specialise in IP which, given the data and date-driven nature of their product/service,

has a particular potential to be strategically managed through the use of IS, e-business and e-

government. There are many different classifications of IS depending on their role e.g. Transaction

Processing Systems, Management Information Systems, Decision Support Systems and in particular

there are specific types of IS available e.g. Enterprise Resource Planning (ERP) systems, Documents

Management Systems, Electronic Data Interchange (EDI) and Practice Management Systems. In

particular, IS such as integrated practice management systems will offer opportunities for automating a

range of functions and services provided by patent agents. For example, it can applied to many

different processes involved in case management e.g. registration of patents and renewals. It can also

be used for monitoring the amount of time that is spent on different cases, billing and invoicing, online

filing, effective date and deadline monitoring as well as searching for files or previous patent

applications. On top of this, e-business technologies such as intranets, extranets, EDI and so on can be

used to not only transform patent agent’s processes but also integrate back end and front end supply

chain processes. E-business and online practice management system can enhance the efficiency and

effectiveness of patent agents and offer a range of benefits including access to all case materials,

improved efficiency and workflow, time and resource savings, improved reports and structures, audit

and history trail and a user friendly interface. Online access also provides agents with easy access to

relevant information and the opportunity to telework (working from home or at another location remote

Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams

from the firm’s offices). Moreover, online access to a greater depth of information can enhance

knowledge sharing and encourage dissemination of best practice.

These kinds of benefits can have an impact on the level of customer service provided to clients

and the types of relationships that can be developed. In addition clients can have the benefits of easier

access to information, transparency and feedback, detailed reports (for example detailing the current

status of work-in-progress (WIP)) which are automatically generated by the system and an improved

invoicing service (for example adjusted automatically to display different currencies as required).

Portals may be developed for aggregating and customising information and facilities that are

appropriate for the needs of different clients.

As patent and trademark agents spend much of their time interacting with government agencies on

behalf of their clients, online technology now presents agents with the ability to increase efficiency and

profitability in the management of those relationships. In particular, Epoline (the EPO and UKIPO

online filing platform) (Epoline, 2006) offers an application building function that validates patent

applications electronically. This effectively automates the preliminary formalities examination (part of

Stage 2 in Table 1), thus minimising errors, inconsistencies or omissions. The system imposes a

standard file format, ensuring there is much less paper going backwards and forwards; aspects such as

‘filing dates’ can be issued immediately upon applying online, therefore saving time. There is much

more transparency and the chances of applications being lost or stolen during transit are nullified by the

use of this service. All information passed to the patent offices is encrypted using state-of-the-art smart

card technology and users have the reassurance that the application the patent office receives is

identical to the copy retained on the applicant’s PC. Patent agents are automatically sent a filing receipt

and another, perhaps the most important, benefit of online registration is that it attracts significant fee

reductions, or discounts (UK Patent Office, 2005).

Relationships with overseas agents can also be enhanced as overseas agents can be provided with

more information via secure portals which include cases related to them, and may on occasion allow

agents to make updates. In particular, the amount of work that has been given to overseas agents can be

monitored by the patent agents, and vice versa.

Overall, IS, e-business and e-government provide a range of opportunities for improving both the

internal and external information flow and the management of external relationships with clients,

government agencies and other overseas agents. They offer greater transparency, access to more

information and a higher level of efficiency and more importantly the opportunity for patent agents to

reap competitive advantage. Finally, they also present the organisation with more chances for

expanding their existing offices and moving into different locations (‘scalability’). In the future there

may even be the opportunity for developing online IP services offering “premium advice and know

how” to corporate clients (Holmes, 2006, p2; Susskind, 2000; Terrett, 2000).

7 CHALLENGES

Although there are various opportunities offered by IS, e-business and e-government across patent

agents’ supply chains and in particular for improved information flow and relationship management,

there are also a number of key challenges faced by firms such as Kennedys. Patent agents operate

within a challenging and evolving legal and procedural framework within which identity, security and

authentication are of paramount importance. Therefore, IS solutions need to incorporate technologies

that will address these issues. In some respects current developments in IS offer the opportunity for

patent agents and government agencies to articulate issues such as identity management, security and

authentication, but on the other hand they also pose greater challenges. These challenges include issues

such as establishing permissions, whether on a per-user basis or on a per-group basis, ensuring the

correct level of security is in place to allow authorised persons home access to certain electronic

documents or reports, and ensuring any of these changes do not compromise the functionality of the

current system being used.

As highlighted above, security is of paramount importance when opening a door/portal to a back

office system, for reasons such as confidentiality and privacy. This is especially important when

dealing with information as sensitive as that of new inventions. Needless to say, a simple username

and password may not be enough security to protect such highly sensitive information. Identity

management is required to ensure sensitive/private information can only be accessed by those

authorised to do so. There are a number of technologies currently available that can identify/verify

authorised users of a system and can be incorporated into an online environment. These range from

simple ‘username and password’ to digital certificates and digital signatures, to more advanced

technologies such as biometric solutions. Biometric solutions offer greater security over their

predecessors due to the incorporation of ‘something you are’ (Smart Card Alliance, 2002) as opposed

Int. Journal of Business Science and Applied Management / Business-and-Management.com

to ‘something you know’. Furthermore, authentication of users is significantly enhanced as passwords

can be guessed, conveyed to, or stolen by unauthorised users of a system, whereas biometrics cannot be

stolen or forgotten, and are extremely difficult to forge (Smart Card Alliance, 2002).

Once the decision has been made as to which level of security is required, the next challenge faced

is ensuring the correct permissions are in place. Visibility and access to certain levels of the system

should be sub-divided into a per-user and per-group hierarchy. Staff members at Kennedys should be

divided into groups (for example senior management, fee-earners and support staff) as they must have

access to most case details anywhere and anytime. However, efforts must be taken to ensure that some

fee-earners cannot access any documents where there may be a conflict of interest. This may prove to

be challenging and will depend greatly on the practice management system being implemented.

Permissions for client access should be based on a per-user basis, thus only allowing a view or read-

only permission when accessing the system. The main challenge here is ensuring that clients that have

access to the system cannot access any other documentation or reports not related to them.

For Kennedys in particular, due to the architecture of their current systems, providing streamlined

interaction with online filing would be a considerable task. The possibility of encountering problems

when generating the forms required for online filing is exacerbated due to the proliferation of systems,

especially when working across multiple sites. These issues of integration and streamlining must be

addressed by Kennedys in the near future to allow them to benefit, in turn, from the technological

advances made with respect to the online filing of patent applications.

In summary, using IS and related e-business/e-government applications for enhancing information

flows and relationship management is by no means a straightforward task, especially when dealing

with highly sensitive material. Ensuring the correct security measures are in place will go some way to

make clients feel secure when using organisational systems.

8 CONCLUSIONS AND IMPLICATIONS

This paper examined the potential role of IS, e-business, e-government for enhancing the supply

chains of organisations in the IP sector. There is a growing awareness that the strategic management of

intellectual capital, which includes IP, is a key aspect of business success. Exploratory research was

undertaken through a single case study of Kennedys Patent (a patent agent offering IP services) who

are responsible for handling information regarding patent and trademark advice and applications and

acting on behalf of clients with overseas agents, government agencies and lawyers. The key

conclusions are as follows:

The development and adoption of IS, e-business and e-government within this sector is driven by

the interplay of both internal and external factors. From the internal perspective, the research identified

a number of areas where current systems and supply chain processes could be enhanced and

streamlined through automation e.g. document management, invoicing and time recording. Moreover, a

significant issue was the integration of a range of existing and emerging systems and online filing to

allow maximised internal efficiencies and information flows across a range of staff, departments and

offices. This internal focus was seen as a precursor to benefiting from the opportunities offered by

online technologies (including e-business and e-government) for developing external relationships and

interactions with clients, government agencies, overseas agents and lawyers and providing facilities

such as portals allowing clients access to data such as customised reports.

The multi-jurisdictional framework within which patents agents operate, rather than being a

barrier to the emergence of standards may actually be a driver for change. From an e-government

perspective, it is clear that government agencies such as the UKIPO and EPO are committed to online

filing (see for example the UKIPO’s vision for an ‘Electronic Patent Office’ (UK Patent Office, 2004)),

and both standards (Berwin and Ankyn, 2002) and software such as Epoline (Epoline, 2006) are

emerging. Software houses will inceasingly model their case management solutions with electronic

online filing functionality in mind. The associated benefits of online filing in terms of time, and

perhaps cost, may be passed on by the firm to clients and overseas agencies. There may be the

opportunity to deprofessionalise (‘leverage’ in Mayson’s (1997) terms) some of the administrative

aspects of the patent agents’ work, freeing the fee earner to concentrate on high value tasks requiring

more of their professional competence.

Online technologies enables the clear benefits of 24/7 access to appropriate elements of the firm’s

systems from anywhere in the world to staff (in terms of teleworking) and to external bodies such as

clients (e.g. portals). However, given the nature of the work carried out by patent agents, firms must

strike an optimal balance between providing the appropriate access to the firm’s systems, and the

potentially devastating consequences of the misappropriation of sensitive information due to weak

security and authentication systems. One way forward may lie with biometric authentication.

Alexis Barlow, Peter Duncan, John Huntley, Allan Gordon and Jim Adams

The issues and challenges faced by Kennedys are not unique to the firm: they reflect and reinforce

many commentators’ views on the opportunities offered by IS and in particular online technologies for

streamlining information flows and enhancing relationships within the broader legal services sector and

beyond (for example Bunke, 2005; Croxton et al, 2001; Hinde, 2006; Susskind, 2000; Terrett, 2000).

9 FUTURE RESEARCH

The firm, around which this research is centred, is still undergoing substantial development and

implementation of the IS and online technologies. The practice management systems and the e-business

related systems are likely to be developed further to embrace other areas of internal and external

functionality, and provide greater opportunities for competitive advantage. This area of research would

benefit from conducting a more in-depth longitudinal case study research to monitor and evaluate the

organisational impact of these developments. Secondly, from an e-government perspective future

research should include observing further developments in the online filing systems offered by

agencies such as the UKPO and EPO, and the requirements which such bodies may make on patent

agents to embrace online filing.

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