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The Canadian trademark automation experience
World Patent Informatton, Vol 14, No 2, pp 101-108, 1992 Prmted m Great Brltam
0172-2190/92$5 @I+ 00 Pergamon Press Ltd 0 1992 CECIWIPO
The Canadian Trademark Automation Experience* C. McDermott, Director, Corporate Services Branch, Intellectual Property Directorate of Canada, Hull, -Quebec, Canada
Summary
Organization: Documentation and Registration (D&R) Branch is the “mformation processing engine” of the Office D&R handles most processing requirements, maintains the Search Room, maintains mformation, both electronic and manual; Exammation Branch, Opposition Board
The article outlines briefly the Canadian experience m trademark automation and m particular the history of the current computer system which is called the INtegrated TRademark Electronic Processmg of Information and Designs (INTREPID) system The aim is to share the Canadian experience such that those contemplating new or further automation can draw some useful pomters Technology is one area m which someone’s successes or mistakes help little unless you use largely the same technology People, however, are the same As a result, the article focuses on the people aspects of the Canadian experience. It was found that while technology is important, the people are crztzcal to the success of automation. It is now known that success is not a technological but a human victory Technology and expertise can be bought, people to use it effectively and productively must be nurtured How well it is done ultimately represents the difference between conspicuous success and resounding failure
The Canadian Trademark (Canadian TMO)
Employees:
Location. Hull (Ottawa) All units and staff are located m the same building, spread out over many floors. Trademark profession strong, active and well organized Represented by the Patent and Trademark Institute of Canada (PTIC). The Office has built a good relationship with the profession maintained through ongoing contacts, periodic meetings and ongoing consultations through the Joint Liaison Committee (JLC) Key statistics and volumes. Active registered trademarks. over 350 Ooo; Pending trademarks: over 55 000; New applications (annually). 26 000; Note one application may cover wares and services in many or even all classes New registrations (annually). 16 000.
Office
The Canadian TM0 is a component of the Intellectual Property Directorate m the Federal Department of Consumer and Corporate Affairs, Canada A few basic facts follow* l
Legislation m force. the Trademarks
0
Process: Formahttes, Exammatton, Pubhcation, Opposition, Registration. Opposition before Regtstration imposes stringent timing and accuracy requirements on the Publication
100.
History of the First Automation Efforts
Act.
In automation. Plannmg for INTREPID started m 1985 Before that, a number of systems were developed to deal with specific aspects associated with the processmg of trademarks. A brief history follows: l
*The article IS based on a presentation at the Semmar on InternatIonal Cooperation and The Use of Computers m The Field of Trademarks convened by the WIPO Permanent CommIttee on Industrial Property InformatIon and held at the U S Patent and Trademark Office, Washmgton, DC, 27-31 May, 1991
101
In 1977 the first automated system was put m place. It consisted of relatively primitive microcomputers used as a front-end to a batch system running at a service bureau At the service bureau, the system produced index cards and file labels.
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C. McDermott
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In 1977 work began on bmldmg an electronic trademark register (database) The aim was to provide the public and the trademark professton with a widely available, reliable, current and searchable electronic register. The electronic register was provided to the public and the professton through private sector electronic publishers
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In 1979 the second automated system the Trademark Information System (TMIS) - was implemented It consrsted of more advanced mtcrocomputers used as a front-end to a more functtonally-complete and sophisttcated batch system at the servtce bureau Ftve sub-systems were implemented. Apphcatton, Advertismg (Pubhcatron), Registration, Regtstration Amendment and Agent mformation maintenance. The microcomputers were used for data capture and prmtmg of mdex cards, register pages and others.
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In 1979 start of a back capture project to electronically capture electronic information about some 180 000 marks. This was a dtfficult and often frustrating exercise owmg to (1) the source of the mformation (1.e old register pages), (2) relatively expert mterpretatton and coding required (I e less than stratghtforward) and (3) complicated logrstics involved By 1983 the project was completed, but it soon became evident that a thorough verification and clean-up process was required. Thus work was completed m the spring of 1985
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By 1985 the online electromc trademark database contammg some 300 000 registered and pendmg marks became reality With this, a rehable electronic trademark register became available for use by the public and the profession The users could access the mformation and search the electronic database vta two private sector servtce bureaux/electronic publishers The Canadian Trademark Office’s own TMIS system was updating the databases hosted by the two private sector electronic publishers By 1985 NUANS - Newly Upgraded Automatic Name Searching - was adapted to be used m trademark searches NUANS 1s a successful Canadian product developed mmally to search names at mcorporation to determine srmilarity confltcts Available from one of the two electromc publishers, NUANS was becoming increasingly accepted within the Canadian Trademark Office and the profession By 1985 it was clear that the quality and efficiency of operations m the Canadian
Trademark Office were bemg helped by. automatton. Key accomplishments to that point mcluded. a good degree of automatton with evident gams m efficiency and effectiveness; an electronic trademark database (regrster) hosted and supported by the private sector, and used by both the Canadian Trademark Office and the professron The electronic mformatton was becoming mcreasmgly acceptable as an alternative to paper records; sophrsticated electronic search tools avadable from the private sector and used by the Office and the professton alike It must be emphasized that the Canadian Trademark Office did not discriminate between internal (Office) use and use by the profession or the public The same information and tools were being used by the Office, the profession and the public, a good working relattonshtp wtth the private sector mformatton publishers However, as regards the status of operations m the office, by 1985, workloads handled by the Office were some 1 5 times higher than m 1979, when the TMIS system went mto production As well, the logistics and effort of mamtammg more mformation more up-to-date was taxing the resources available For example The equipment - most of it six or seven years old by 1985 -was fast becommg functronally obsolete and unreliable There were frequent breakdowns and mterruptions Many tasks had to be repeated The productivity gains made when the TMIS was implemented were fast erodmg These factors began to cause information In turn, this began to integrity problems create operattonal problems m the Office and credtbtllty problems outstde, with the professton and the public As a direct result, serious backlogs were beginning to accumulate m the Office This was causing a lot of overtime, delays m all phases of trademark processmg and a lot of stress The average time from filmg to regtstration increased considerably Expertise and spare parts were becoming harder to come by This made a bad snuatton worse It was becoming evident that the Office was now more exposed than ever m the case of a major equipment breakdown
The Canadian Trademark l
In 1985 fee increases were announced This put the Office under pressure to lusttfy the increases in relation to its performance which had been steadily detertoratmg because of the workload increases and erosron m the performance of rts automated systems Clearly, the public was expectmg value m the way of a better service - m return for higher fees
How we got to Today: by the People, for the People! Preparing to plan
In April 1985 the Canadran Intellectual Property Directorate resolved to act dectsrvely It established a planning framework to deal with the need to renew rts mformatton processmg capabthtres and deal with serious operational problems the Office was expertencmg More spectfically* l
A Trademark Automation Steering Commtttee (TASC) was established. It included the directors of the Trademark Office and the Director of Informatron Systems It was also decided that m order to streamline the process, promote increased accountabrhty and speed up actton, TAX would make all decisions wrthm then “realm of competence”
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A Trademark Automation Working Group was also established The working group was chaired by the deputy director of the Documentation and Registration Branch (D&R) The working group was made up of users, systems professionals (m-house and consultant) and management professionals The role of the working group was to perform fact-finding and consult wtth stakeholders, document the current sttuatron and determine short and long term needs and requirements, develop and propose strategic automatton plan, prepare necessary approval (business case) and funding vehtcles (Treasury Board submission)
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A con<atrve framework was also set up to ensure that ongomg consultatron and dtscusstons with internal and external stakeholders were carried out effectively Key stakeholders included users (internal), other areas m the Canadian Intellectual Property Directorate and the department, the professron;
Automatron -
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Experience the public, the private sector mformatton
industry
Key decision automatton would not be an isolated process, but an integral part of the Management Strategy m the Canadian TM0 Isolatmg automatton from the mainstream management process would have margmahzed rt and eroded tts relevance
Plannmg, overcommg fears and budding teams
Concomrtantly, planning actions and moves designed to smooth the planning and subsequent rmplementatton process were mrttated l
Key prmcrples were set for the planning process They included. broad consultattons; decisions to be kept at lowest reasonable level; practical outlook on things and conservative attitude regarding technology (“leadmg edge” but not “bleeding edge”), commrtment to human factors Automation IS a tool for the people m the Office It 1s THEZR tool, and therefore tt needs to fit the people (and not, as too often 1s the case, the other way around), users involved at all stages and actually managing the project
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The working group developed and received approval for. a situation assessment, short-term strategy and medium and long-term directions, rt proposed a short-term course of action designed to lessen barriers to efficient operations through a prudent, staged approach The operatronal and busmess prtorttres were articulated, as well as the key mdrcators of achievement Among these were speed of process and conststency of dectstons a technology, mformatton and apphcattons strategy consistent with the short term strategy and medium and longterm drrectrons IBM’s Business Systems Planning (BSP) methodology was used successfully Relative prrortttes among the various technology elements, mformatron and applications were established based on the busmess/operattonal prtorttres of the Office a business case for the tmplementatron strategy a funding and procurement strategy a Request for Price and Avarlabthty Information to determine prrcmg and avarlabrhty for the technology and applications proposed to be developed on
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a turnkey basis Key obJectives. to find out d there was a feasible solutton and to determine costs. This would also serve m the preparation of the request for fundmg. The mformatton would also assist m finalizing the tendering and acqtusttton strategies for the subsequent process request for funds (Treasury Board Submission)
The planning process revealed many things to us we found that people are naturally fearful of change regardless of whether the change 1s perceived to be good or bad for them They are fearful of ANY change Fear needs to be overcome and turned mto opportunity, otherwise success 1s elusive we knew that to succeed you need dedicated teams and that fearful people make poor teams They do not blend well mto smooth-working, tightly-kmt teams we realized that the only way to overcome people’s fears is to work contmually to inform them, to increase then awareness and comfort You need to make people buy mto where you are going. You need to let them know and repeat to them the obJecttves and the approach you are taking and the reasons for it. You need to tell them how they will be affected, whether it is good or not so good for them In essence, you need to be open and caring but sincere with your people we developed and experimented with a new maxim. “when m doubt, open commumcanons more widely”; tt seemed to work m our case, although you probably never do enough commumcatmg You have to explain more, talk, keep things m the open, keep talking If you stop talking to your people - your users you find that silence can actually destroy good intentions we found that success depends on the ability of the various parts of the orgamzatton to work together - not at cross-purposes Success is strictly a co-operative effort a good motto for us was “by the users for the users”, meaning that the users were not only parttcipatmg m developmg then own tools - the tools to make them be more productive, more pleasantly employed and more fulfilled m their work - but they were actually managing the entire process! change affects people and orgamzattons alike You have to prepare both for the changes brought on by new systems and, imphcttly, by the new ways of doing
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things Change, and its effects, need to be anticipated and prepared for Just like getting the people ready for change - by preparing them for the change, getting them to buy mto change and trammg them for the changed world awaiting them orgamzattons need similar treatment You cannot talk to an orgamzatton and tram an orgamzatton m the same way you can talk and tram people You need to MANAGE CHANGE and get the orgamzatton ready We called this a process, Change Management - an approach which makes the orgamzatton ready and cushions the impact of change To succeed you need partners, and you have to be prepared to share success You need both internal and external allies Internally, you need your people, your management and other parts of the organization Outside, you need the profession and the private sector mformatton industry In our case, we decided to rely on all of them for parts of the proIect and its outcome In other words, we decided early on to give them all a meanmgful role m the proJect
Implementmg
the new systems
A competttive process was designed to select the equipment and the systems integrator for the turnkey system The integrator was responsible for all aspects associated with the development, tmplementatron, trammg and post-implementatton support The points below reflect on some of the relevant issues and events l
Some of the eiements of the chosen strategy were technical (mformattcs) personnel m the Office the Trademark Informatics Group - were to be an Integral part of the development and tmplementatton process This would ensure early transfer of knowledge and experience to the mhouse team vendors were encouraged to form consortta m order to cover the broad range of expertise required, however, there would be a prime contractor with overall responsibihty (single point of contact)
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The Request for Proposals was issued m March 1987 Seven consortta of vendors (software houses and hardware vendors) presented proposals
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Control Data Canada (CDC) was selected on the basis of the best price/performance/feature combmation
The Canadian Trademark
0
Automatron
Implementanon proceeded in phases. mformatton analysts usmg a spectahzed methodology, prototyping; system development; acceptance testing; live operation
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Key. users managed all phases of the prolect Key users were tramed m mformatton analysts and directed the preparation of the spectficattons as it related to then own areas
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Key users were thoroughly prepared to take over the system This preparation started early m the mtttal spectficatton preparation stage This gave the users a sense of ownershtp and promoted a greater wtllmgness to learn how to use the system more producttvely
0
Key* ongomg trammg It 1s easy to underesttmate trammg requirements when budgeting and planning for tmplementatton It IS also easy to underestimate the ongomg component of training, i e post-implementation training which users and your technical personnel receive to sharpen/hone their skills, or learn necessary new ones
The tem -
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Trademark Work Support Trademark personnel need support of various kinds m their day-to-day work associated with the processmg of trademark transactions These needs vary according to the function performed For instance, a trademark exammer’s needs are drfferent from those of a person working m the Assrgnment sectton Many of the needs are, however, common The strength of the INTREPID system comes from Its abthty to accommodate both the differences and the common needs Among the common needs, the system will help trademark people to prepare correspondence to the applicant or hts agent qutckly and efficiently, both free-form text and standard paragraph capabtlmes are provided Names, address and other mformatton need not be retyped - they are downloaded from the trademark database directly mto the correspondence production (office support) envtronment, look up any current mformatton on the trademark database, update tmmedtately the trademark and process information on the database, exchange mformatton mstantaneously with other people m the Office
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Productton of Work Products (Output). The Office maintains manual records m the Public Search Room These records consist of index cards (organized by various sorting criteria),
system
malor functions of the INTREPID sysare Management of mformatton, Trademark process management and decision assistance, Trademark work support, Productton of work products (output)
Management of Information The INTREPID system maintains m Its database the followmg major types of information: trademark mformatton, 1.e mformatton about the mark, such as apphcatton and registration numbers, owner’s name, owner’s address, assrgnments, wares and services, etc Some 1 GB of znformation IS maintained online, whtch includes htstortcal mformatton covering
all active and most abandoned and expunged trademarks; trademark process mformatton, 1.e mformatton which describes the process the mark went through This 1s mformatton of a type simtlar to project management data, Agents and Representative for Service mformatton, 1 e mformatton about prtvate sector people accredited to prosecute trademarks or to represent clients VU the TM0
Trademark Process Management and Dectsron Assistance Programs were written which enable the system to keep track of the process and help m tts management, and to make process decisions automattcally, without human mterventton, based on pre-defined “triggers” built mto the data, control the trademark process such that processmg bottlenecks and delays are spotted before they become problems, report to management on the state of the various processmg units m the Office, bottlenecks, flows, processmg stattsttcs, volumes and disposal rates, etc.
INTREPID replaces the old and functtonally obsolete Trademark Informatton System (TMIS) It represents a quantum leap m functional coverage, complextty and decision assrst capabthttes Expert system elements and techmques have been mcorporated to strengthen the decision assist capabthttes of INTREPID The pomts below provide more substanttatton l
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Where We are Today The INTREPID
Experience
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C McDermott name cards (Index of trademark owners) and Register Pages (provtdmg more detatls about the registered marks) All these are part of INTREPID’s output, or work products The previous TMIS system printed the text part of these work products, and the designs had to be pasted by hand on 30% of them The INTREPID system, through a relatively inexpensive ($50 000) microcomputer, local area network (LAN) and optical disk-based extension, provides electronic capture of trademark designs (images) and storage on an optical disk, downloadmg of text from INTREPID for the purpose of producing work products, unattended printing, on laser printers, of index cards and register pages combmmg text and designs, weekly productton on laser printers of Trademark Journal camera-ready pages using desktop pubhshmg replacing a complicated process mvolvmg tape output to the Queen’s Printer The Journal (Pubhcatton) section can now produce the Trademark Journal camera-ready copies m-house, faster, cheaper and with no back and forth correctton process to the Queen’s Printer
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The Mam Processmg Environment The processing environment for the INTREPID system consists of a CDC Cyber 932 Main-frame dual-CPU computer under NOS/VE, IBM-compatible 286 (8 and 10 Mhz) and 386 (16 Mhz) workstations wtth 40 MB hard disk and at least 2 MB of memory, the workstattons are used both m standalone mode (for Office Automatton and other stand-alone operattons and functions) and connected as termmals to the Cyber main-frame through CDCNET, CDCNET for local commumcattons, connect and data interchange between the PCs and the Cyber, ORACLE relational DBMS for the Trademark database on the Cyber, MS-DOS and text interface-based oflice support software on the PCs The Work Product (Output) Productton Subsystem The work product extension to the INTREPID system consists of capture (scanning) of trademark designs and store them on an optical disk using an HP ScanJet, Scanning Gallery software, and a Maxtor Optical Disk Unit, prmtmg of index cards and Register Pages mcorporatmg both designs (from the optical disk) and text (from INTREPID) on HP LaserJet II-compatible laser prmters
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The print software (actually a batch-type of desktop pubhshmg software called Scenic Writer) runs on 286 and 386 workstattons, productton of the Trademark Journal camera-ready copies using Ventura 2 0 from Xerox, and two 386 workstation and HP LaserJet II’s, a peer-to-peer LAN from LANtasttc, connecting all components, i e scanmng statton, optical disk server, and Journal production workstations and printers
Commumcattons INTREPID also provides gatewaymg mto the service bureau’s mamframe computers which are used by the Office (and the public and the profession m Canada) to run comprehensive searches mtttated by the examiners the Office benefits from INTREPID A more efficient, adept workforce
happier and mformatton-
Faster registration
of trademarks
Better quality work products (Index cards, Register pages, Trademark Journal) More conststent dectstons based on more accurate and timely mformatton Better search tools available to Office staff and externally, to the trademark commumty at large Better credtbihty for the Office A stronger private sector mformatton industry presence m trademarks
Where We are Going: a More Paperless Future The Office plans to use the platform achieved with INTREPID as a staging grounds for INTREPID Phase II The future should look substanttally more paperless than today’s operations Key oblecttves of phase II are l
Extending INTREPID Functtonahty to Other Areas INTREPID Phase I was designed to serve prtmartly as the mformatton management tool of the Office residing m the Documentatton and Registration Branch of the Trademark Office Phase II extends the benefits to other areas This will allow these areas to cope better with growing workloads and the contmuous scarcity of resources
The Canadian Trademark l
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Automatron
Trademark Designs m Electronic Form Avatlabthty of trademark designs will permtt (1) reduced reliance on paper records and indexes by at least 30%, (2) complete automatron of the trademark search process as search reports would now mclude both textual and design mformatton, (3) avarlabtltty to the public across Canada of complete trademark mformatton for dectston-making, and (4) ability to derive significant operating benefits by relying exclustvely on electronic means to publish trademark mformatton
The simpler the approach usually the better If m doubt, choose the simpler solutron In most cases, tt turns out to be the better one Quahty trammg There IS no substitute this, and rt IS one of the keys to success
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Adopt a phased approach m everything
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Avoid excesstve control
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Identify and use key (representattve) from the orgamzatton
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Keep all hnes of commumcatrons open both up (to senior management) and down, mto the orgamzatton
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Use consultants as facthtators to the extent possrble and keep the real and significant achievements m the orgamzatron Many organizations tend to hue consultants to work
for
It makes sense to go for a turn-key solutton, however, you also want to use the opportunity to learn the system, pick up experience and expertise and educate key people who will play a role during and after rmplementatton Go to the market (e g through Requests for Informatron, Request for Price and Avarlability, etc ) to gather technical and prtcmg mformatron and to narrow your choices This 1s probably a better bet than paymg consultants to dtg through technical magazines and price lists Use your procurement agency for help and as consultants m developing the procurement strategy and approach Project management and project management personnel are extremely important to a successful outcome A good project manager 1s worth his/her weight m gold Do not skimp on prototypmg If your data capture mvolves srgmficant Judgement and mterpretatton consider doing rt under very close supervrsron (if not actually m-house) In our case, the logtsttcs and effort associated with the mtttal data capture-done at a remote locatton - almost drove the entire project mto the ground
The Lessons we Learned Recognize and be prepared for a process which 1s often complicated, difficult, taxing and logtsttcally demanding
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on the real exciting things while the rest of the orgamzatton tolls with the marginal, unexcrtmg and routme tasks
Trademark Files m Electronic Form In the long run, trademark processmg files will become the biggest processmg bottlenecks m the TM0 There are almost 700 000 processmg files The Office receives over 1 mtlhon pieces of correspondence annually, each of which needs to be placed on the files The file 1s then routed to the appropriate area and m turn, paper produced by each area IS filed An approach mvolvmg the electronic capture of processmg files will (1) eliminate the processmg bottleneck, parttcularly m the trademark pendency, stage, (2) reduce the maintenance requirements associated with the paper files and permtt re-dtstrrbutton of those resources to program delivery areas, (3) prevent loss of essential documents and files, (4) reduce the mcidence of dectston reversal and Court costs associated with these proceedmgs, (5) provide the professton and members of the public with fast and reliable access to processmg files, (6) allow the Office to respond to mqurrres wrthout delays
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Experience
Thmgs we would change
centrahzatton
a
If posstble (I e given more staff) we would put more users and techmcal people on the project Many of the problems occurred because our people were spread rather thm throughout the project
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Communications, particularly internal commumcatrons, must be given a high profile Having a commumcatron plan as part of the tmplementatron strategy and putting someone m charge of makmg tt happen 1s crtttcal
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The process whereby the impact of change on the organization IS cushtoned and made bearable -the management of changeprocess
of project
people
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C McDermott -
such teams could do a better safe - Job
should be well organized and carrted out as an ongoing activity Ideally, a champion should exist to see the process through
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Results and expectations project should be drawn on by participants This sense of dtrectton for better accountability for
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Self-managed teams empowered to make decisions should be set up to deal with specific tasks m the project This would be a good counterweight to the natural tendency toward excessive centrahzatton of project control and dectston acttvtttes While central dectston-making 1s crucial for tmportant dectstons, there are a lot of tasks where
and entirely
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The project manager 1s a very important player We would mstst that the vendors’ proposals suggest two or three candidates to manage the project We would mstst on mtervtewmg the candidates proposed by the successful vendor and make the selectton This implies that the planning process also sets criteria for the selection of the prolect manager
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Prototypmg - particularly prototypmg done well - allows the users to “touch and feel” the system and help shape tt before tt 1s too late We would mstst that prototypmg be done well, thoroughly and extensively
at all phases of the up early and agreed also fosters a better all parttctpants and results
0172-2190/92$5 @I+ 00 Pergamon Press Ltd 0 1992 CECIWIPO
The Canadian Trademark Automation Experience* C. McDermott, Director, Corporate Services Branch, Intellectual Property Directorate of Canada, Hull, -Quebec, Canada
Summary
Organization: Documentation and Registration (D&R) Branch is the “mformation processing engine” of the Office D&R handles most processing requirements, maintains the Search Room, maintains mformation, both electronic and manual; Exammation Branch, Opposition Board
The article outlines briefly the Canadian experience m trademark automation and m particular the history of the current computer system which is called the INtegrated TRademark Electronic Processmg of Information and Designs (INTREPID) system The aim is to share the Canadian experience such that those contemplating new or further automation can draw some useful pomters Technology is one area m which someone’s successes or mistakes help little unless you use largely the same technology People, however, are the same As a result, the article focuses on the people aspects of the Canadian experience. It was found that while technology is important, the people are crztzcal to the success of automation. It is now known that success is not a technological but a human victory Technology and expertise can be bought, people to use it effectively and productively must be nurtured How well it is done ultimately represents the difference between conspicuous success and resounding failure
The Canadian Trademark (Canadian TMO)
Employees:
Location. Hull (Ottawa) All units and staff are located m the same building, spread out over many floors. Trademark profession strong, active and well organized Represented by the Patent and Trademark Institute of Canada (PTIC). The Office has built a good relationship with the profession maintained through ongoing contacts, periodic meetings and ongoing consultations through the Joint Liaison Committee (JLC) Key statistics and volumes. Active registered trademarks. over 350 Ooo; Pending trademarks: over 55 000; New applications (annually). 26 000; Note one application may cover wares and services in many or even all classes New registrations (annually). 16 000.
Office
The Canadian TM0 is a component of the Intellectual Property Directorate m the Federal Department of Consumer and Corporate Affairs, Canada A few basic facts follow* l
Legislation m force. the Trademarks
0
Process: Formahttes, Exammatton, Pubhcation, Opposition, Registration. Opposition before Regtstration imposes stringent timing and accuracy requirements on the Publication
100.
History of the First Automation Efforts
Act.
In automation. Plannmg for INTREPID started m 1985 Before that, a number of systems were developed to deal with specific aspects associated with the processmg of trademarks. A brief history follows: l
*The article IS based on a presentation at the Semmar on InternatIonal Cooperation and The Use of Computers m The Field of Trademarks convened by the WIPO Permanent CommIttee on Industrial Property InformatIon and held at the U S Patent and Trademark Office, Washmgton, DC, 27-31 May, 1991
101
In 1977 the first automated system was put m place. It consisted of relatively primitive microcomputers used as a front-end to a batch system running at a service bureau At the service bureau, the system produced index cards and file labels.
102
C. McDermott
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In 1977 work began on bmldmg an electronic trademark register (database) The aim was to provide the public and the trademark professton with a widely available, reliable, current and searchable electronic register. The electronic register was provided to the public and the professton through private sector electronic publishers
l
In 1979 the second automated system the Trademark Information System (TMIS) - was implemented It consrsted of more advanced mtcrocomputers used as a front-end to a more functtonally-complete and sophisttcated batch system at the servtce bureau Ftve sub-systems were implemented. Apphcatton, Advertismg (Pubhcatron), Registration, Regtstration Amendment and Agent mformation maintenance. The microcomputers were used for data capture and prmtmg of mdex cards, register pages and others.
l
In 1979 start of a back capture project to electronically capture electronic information about some 180 000 marks. This was a dtfficult and often frustrating exercise owmg to (1) the source of the mformation (1.e old register pages), (2) relatively expert mterpretatton and coding required (I e less than stratghtforward) and (3) complicated logrstics involved By 1983 the project was completed, but it soon became evident that a thorough verification and clean-up process was required. Thus work was completed m the spring of 1985
l
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By 1985 the online electromc trademark database contammg some 300 000 registered and pendmg marks became reality With this, a rehable electronic trademark register became available for use by the public and the profession The users could access the mformation and search the electronic database vta two private sector servtce bureaux/electronic publishers The Canadian Trademark Office’s own TMIS system was updating the databases hosted by the two private sector electronic publishers By 1985 NUANS - Newly Upgraded Automatic Name Searching - was adapted to be used m trademark searches NUANS 1s a successful Canadian product developed mmally to search names at mcorporation to determine srmilarity confltcts Available from one of the two electromc publishers, NUANS was becoming increasingly accepted within the Canadian Trademark Office and the profession By 1985 it was clear that the quality and efficiency of operations m the Canadian
Trademark Office were bemg helped by. automatton. Key accomplishments to that point mcluded. a good degree of automatton with evident gams m efficiency and effectiveness; an electronic trademark database (regrster) hosted and supported by the private sector, and used by both the Canadian Trademark Office and the professron The electronic mformatton was becoming mcreasmgly acceptable as an alternative to paper records; sophrsticated electronic search tools avadable from the private sector and used by the Office and the professton alike It must be emphasized that the Canadian Trademark Office did not discriminate between internal (Office) use and use by the profession or the public The same information and tools were being used by the Office, the profession and the public, a good working relattonshtp wtth the private sector mformatton publishers However, as regards the status of operations m the office, by 1985, workloads handled by the Office were some 1 5 times higher than m 1979, when the TMIS system went mto production As well, the logistics and effort of mamtammg more mformation more up-to-date was taxing the resources available For example The equipment - most of it six or seven years old by 1985 -was fast becommg functronally obsolete and unreliable There were frequent breakdowns and mterruptions Many tasks had to be repeated The productivity gains made when the TMIS was implemented were fast erodmg These factors began to cause information In turn, this began to integrity problems create operattonal problems m the Office and credtbtllty problems outstde, with the professton and the public As a direct result, serious backlogs were beginning to accumulate m the Office This was causing a lot of overtime, delays m all phases of trademark processmg and a lot of stress The average time from filmg to regtstration increased considerably Expertise and spare parts were becoming harder to come by This made a bad snuatton worse It was becoming evident that the Office was now more exposed than ever m the case of a major equipment breakdown
The Canadian Trademark l
In 1985 fee increases were announced This put the Office under pressure to lusttfy the increases in relation to its performance which had been steadily detertoratmg because of the workload increases and erosron m the performance of rts automated systems Clearly, the public was expectmg value m the way of a better service - m return for higher fees
How we got to Today: by the People, for the People! Preparing to plan
In April 1985 the Canadran Intellectual Property Directorate resolved to act dectsrvely It established a planning framework to deal with the need to renew rts mformatton processmg capabthtres and deal with serious operational problems the Office was expertencmg More spectfically* l
A Trademark Automation Steering Commtttee (TASC) was established. It included the directors of the Trademark Office and the Director of Informatron Systems It was also decided that m order to streamline the process, promote increased accountabrhty and speed up actton, TAX would make all decisions wrthm then “realm of competence”
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A Trademark Automation Working Group was also established The working group was chaired by the deputy director of the Documentation and Registration Branch (D&R) The working group was made up of users, systems professionals (m-house and consultant) and management professionals The role of the working group was to perform fact-finding and consult wtth stakeholders, document the current sttuatron and determine short and long term needs and requirements, develop and propose strategic automatton plan, prepare necessary approval (business case) and funding vehtcles (Treasury Board submission)
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A con<atrve framework was also set up to ensure that ongomg consultatron and dtscusstons with internal and external stakeholders were carried out effectively Key stakeholders included users (internal), other areas m the Canadian Intellectual Property Directorate and the department, the professron;
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Experience the public, the private sector mformatton
industry
Key decision automatton would not be an isolated process, but an integral part of the Management Strategy m the Canadian TM0 Isolatmg automatton from the mainstream management process would have margmahzed rt and eroded tts relevance
Plannmg, overcommg fears and budding teams
Concomrtantly, planning actions and moves designed to smooth the planning and subsequent rmplementatton process were mrttated l
Key prmcrples were set for the planning process They included. broad consultattons; decisions to be kept at lowest reasonable level; practical outlook on things and conservative attitude regarding technology (“leadmg edge” but not “bleeding edge”), commrtment to human factors Automation IS a tool for the people m the Office It 1s THEZR tool, and therefore tt needs to fit the people (and not, as too often 1s the case, the other way around), users involved at all stages and actually managing the project
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The working group developed and received approval for. a situation assessment, short-term strategy and medium and long-term directions, rt proposed a short-term course of action designed to lessen barriers to efficient operations through a prudent, staged approach The operatronal and busmess prtorttres were articulated, as well as the key mdrcators of achievement Among these were speed of process and conststency of dectstons a technology, mformatton and apphcattons strategy consistent with the short term strategy and medium and longterm drrectrons IBM’s Business Systems Planning (BSP) methodology was used successfully Relative prrortttes among the various technology elements, mformatron and applications were established based on the busmess/operattonal prtorttres of the Office a business case for the tmplementatron strategy a funding and procurement strategy a Request for Price and Avarlabthty Information to determine prrcmg and avarlabrhty for the technology and applications proposed to be developed on
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a turnkey basis Key obJectives. to find out d there was a feasible solutton and to determine costs. This would also serve m the preparation of the request for fundmg. The mformatton would also assist m finalizing the tendering and acqtusttton strategies for the subsequent process request for funds (Treasury Board Submission)
The planning process revealed many things to us we found that people are naturally fearful of change regardless of whether the change 1s perceived to be good or bad for them They are fearful of ANY change Fear needs to be overcome and turned mto opportunity, otherwise success 1s elusive we knew that to succeed you need dedicated teams and that fearful people make poor teams They do not blend well mto smooth-working, tightly-kmt teams we realized that the only way to overcome people’s fears is to work contmually to inform them, to increase then awareness and comfort You need to make people buy mto where you are going. You need to let them know and repeat to them the obJecttves and the approach you are taking and the reasons for it. You need to tell them how they will be affected, whether it is good or not so good for them In essence, you need to be open and caring but sincere with your people we developed and experimented with a new maxim. “when m doubt, open commumcanons more widely”; tt seemed to work m our case, although you probably never do enough commumcatmg You have to explain more, talk, keep things m the open, keep talking If you stop talking to your people - your users you find that silence can actually destroy good intentions we found that success depends on the ability of the various parts of the orgamzatton to work together - not at cross-purposes Success is strictly a co-operative effort a good motto for us was “by the users for the users”, meaning that the users were not only parttcipatmg m developmg then own tools - the tools to make them be more productive, more pleasantly employed and more fulfilled m their work - but they were actually managing the entire process! change affects people and orgamzattons alike You have to prepare both for the changes brought on by new systems and, imphcttly, by the new ways of doing
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things Change, and its effects, need to be anticipated and prepared for Just like getting the people ready for change - by preparing them for the change, getting them to buy mto change and trammg them for the changed world awaiting them orgamzattons need similar treatment You cannot talk to an orgamzatton and tram an orgamzatton m the same way you can talk and tram people You need to MANAGE CHANGE and get the orgamzatton ready We called this a process, Change Management - an approach which makes the orgamzatton ready and cushions the impact of change To succeed you need partners, and you have to be prepared to share success You need both internal and external allies Internally, you need your people, your management and other parts of the organization Outside, you need the profession and the private sector mformatton industry In our case, we decided to rely on all of them for parts of the proIect and its outcome In other words, we decided early on to give them all a meanmgful role m the proJect
Implementmg
the new systems
A competttive process was designed to select the equipment and the systems integrator for the turnkey system The integrator was responsible for all aspects associated with the development, tmplementatron, trammg and post-implementatton support The points below reflect on some of the relevant issues and events l
Some of the eiements of the chosen strategy were technical (mformattcs) personnel m the Office the Trademark Informatics Group - were to be an Integral part of the development and tmplementatton process This would ensure early transfer of knowledge and experience to the mhouse team vendors were encouraged to form consortta m order to cover the broad range of expertise required, however, there would be a prime contractor with overall responsibihty (single point of contact)
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The Request for Proposals was issued m March 1987 Seven consortta of vendors (software houses and hardware vendors) presented proposals
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Control Data Canada (CDC) was selected on the basis of the best price/performance/feature combmation
The Canadian Trademark
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Implementanon proceeded in phases. mformatton analysts usmg a spectahzed methodology, prototyping; system development; acceptance testing; live operation
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Key. users managed all phases of the prolect Key users were tramed m mformatton analysts and directed the preparation of the spectficattons as it related to then own areas
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Key users were thoroughly prepared to take over the system This preparation started early m the mtttal spectficatton preparation stage This gave the users a sense of ownershtp and promoted a greater wtllmgness to learn how to use the system more producttvely
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Key* ongomg trammg It 1s easy to underesttmate trammg requirements when budgeting and planning for tmplementatton It IS also easy to underestimate the ongomg component of training, i e post-implementation training which users and your technical personnel receive to sharpen/hone their skills, or learn necessary new ones
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Trademark Work Support Trademark personnel need support of various kinds m their day-to-day work associated with the processmg of trademark transactions These needs vary according to the function performed For instance, a trademark exammer’s needs are drfferent from those of a person working m the Assrgnment sectton Many of the needs are, however, common The strength of the INTREPID system comes from Its abthty to accommodate both the differences and the common needs Among the common needs, the system will help trademark people to prepare correspondence to the applicant or hts agent qutckly and efficiently, both free-form text and standard paragraph capabtlmes are provided Names, address and other mformatton need not be retyped - they are downloaded from the trademark database directly mto the correspondence production (office support) envtronment, look up any current mformatton on the trademark database, update tmmedtately the trademark and process information on the database, exchange mformatton mstantaneously with other people m the Office
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Productton of Work Products (Output). The Office maintains manual records m the Public Search Room These records consist of index cards (organized by various sorting criteria),
system
malor functions of the INTREPID sysare Management of mformatton, Trademark process management and decision assistance, Trademark work support, Productton of work products (output)
Management of Information The INTREPID system maintains m Its database the followmg major types of information: trademark mformatton, 1.e mformatton about the mark, such as apphcatton and registration numbers, owner’s name, owner’s address, assrgnments, wares and services, etc Some 1 GB of znformation IS maintained online, whtch includes htstortcal mformatton covering
all active and most abandoned and expunged trademarks; trademark process mformatton, 1.e mformatton which describes the process the mark went through This 1s mformatton of a type simtlar to project management data, Agents and Representative for Service mformatton, 1 e mformatton about prtvate sector people accredited to prosecute trademarks or to represent clients VU the TM0
Trademark Process Management and Dectsron Assistance Programs were written which enable the system to keep track of the process and help m tts management, and to make process decisions automattcally, without human mterventton, based on pre-defined “triggers” built mto the data, control the trademark process such that processmg bottlenecks and delays are spotted before they become problems, report to management on the state of the various processmg units m the Office, bottlenecks, flows, processmg stattsttcs, volumes and disposal rates, etc.
INTREPID replaces the old and functtonally obsolete Trademark Informatton System (TMIS) It represents a quantum leap m functional coverage, complextty and decision assrst capabthttes Expert system elements and techmques have been mcorporated to strengthen the decision assist capabthttes of INTREPID The pomts below provide more substanttatton l
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Where We are Today The INTREPID
Experience
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C McDermott name cards (Index of trademark owners) and Register Pages (provtdmg more detatls about the registered marks) All these are part of INTREPID’s output, or work products The previous TMIS system printed the text part of these work products, and the designs had to be pasted by hand on 30% of them The INTREPID system, through a relatively inexpensive ($50 000) microcomputer, local area network (LAN) and optical disk-based extension, provides electronic capture of trademark designs (images) and storage on an optical disk, downloadmg of text from INTREPID for the purpose of producing work products, unattended printing, on laser printers, of index cards and register pages combmmg text and designs, weekly productton on laser printers of Trademark Journal camera-ready pages using desktop pubhshmg replacing a complicated process mvolvmg tape output to the Queen’s Printer The Journal (Pubhcatton) section can now produce the Trademark Journal camera-ready copies m-house, faster, cheaper and with no back and forth correctton process to the Queen’s Printer
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The Mam Processmg Environment The processing environment for the INTREPID system consists of a CDC Cyber 932 Main-frame dual-CPU computer under NOS/VE, IBM-compatible 286 (8 and 10 Mhz) and 386 (16 Mhz) workstations wtth 40 MB hard disk and at least 2 MB of memory, the workstattons are used both m standalone mode (for Office Automatton and other stand-alone operattons and functions) and connected as termmals to the Cyber main-frame through CDCNET, CDCNET for local commumcattons, connect and data interchange between the PCs and the Cyber, ORACLE relational DBMS for the Trademark database on the Cyber, MS-DOS and text interface-based oflice support software on the PCs The Work Product (Output) Productton Subsystem The work product extension to the INTREPID system consists of capture (scanning) of trademark designs and store them on an optical disk using an HP ScanJet, Scanning Gallery software, and a Maxtor Optical Disk Unit, prmtmg of index cards and Register Pages mcorporatmg both designs (from the optical disk) and text (from INTREPID) on HP LaserJet II-compatible laser prmters
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The print software (actually a batch-type of desktop pubhshmg software called Scenic Writer) runs on 286 and 386 workstattons, productton of the Trademark Journal camera-ready copies using Ventura 2 0 from Xerox, and two 386 workstation and HP LaserJet II’s, a peer-to-peer LAN from LANtasttc, connecting all components, i e scanmng statton, optical disk server, and Journal production workstations and printers
Commumcattons INTREPID also provides gatewaymg mto the service bureau’s mamframe computers which are used by the Office (and the public and the profession m Canada) to run comprehensive searches mtttated by the examiners the Office benefits from INTREPID A more efficient, adept workforce
happier and mformatton-
Faster registration
of trademarks
Better quality work products (Index cards, Register pages, Trademark Journal) More conststent dectstons based on more accurate and timely mformatton Better search tools available to Office staff and externally, to the trademark commumty at large Better credtbihty for the Office A stronger private sector mformatton industry presence m trademarks
Where We are Going: a More Paperless Future The Office plans to use the platform achieved with INTREPID as a staging grounds for INTREPID Phase II The future should look substanttally more paperless than today’s operations Key oblecttves of phase II are l
Extending INTREPID Functtonahty to Other Areas INTREPID Phase I was designed to serve prtmartly as the mformatton management tool of the Office residing m the Documentatton and Registration Branch of the Trademark Office Phase II extends the benefits to other areas This will allow these areas to cope better with growing workloads and the contmuous scarcity of resources
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Trademark Designs m Electronic Form Avatlabthty of trademark designs will permtt (1) reduced reliance on paper records and indexes by at least 30%, (2) complete automatron of the trademark search process as search reports would now mclude both textual and design mformatton, (3) avarlabtltty to the public across Canada of complete trademark mformatton for dectston-making, and (4) ability to derive significant operating benefits by relying exclustvely on electronic means to publish trademark mformatton
The simpler the approach usually the better If m doubt, choose the simpler solutron In most cases, tt turns out to be the better one Quahty trammg There IS no substitute this, and rt IS one of the keys to success
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Adopt a phased approach m everything
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Avoid excesstve control
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Identify and use key (representattve) from the orgamzatton
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Keep all hnes of commumcatrons open both up (to senior management) and down, mto the orgamzatton
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Use consultants as facthtators to the extent possrble and keep the real and significant achievements m the orgamzatron Many organizations tend to hue consultants to work
for
It makes sense to go for a turn-key solutton, however, you also want to use the opportunity to learn the system, pick up experience and expertise and educate key people who will play a role during and after rmplementatton Go to the market (e g through Requests for Informatron, Request for Price and Avarlability, etc ) to gather technical and prtcmg mformatron and to narrow your choices This 1s probably a better bet than paymg consultants to dtg through technical magazines and price lists Use your procurement agency for help and as consultants m developing the procurement strategy and approach Project management and project management personnel are extremely important to a successful outcome A good project manager 1s worth his/her weight m gold Do not skimp on prototypmg If your data capture mvolves srgmficant Judgement and mterpretatton consider doing rt under very close supervrsron (if not actually m-house) In our case, the logtsttcs and effort associated with the mtttal data capture-done at a remote locatton - almost drove the entire project mto the ground
The Lessons we Learned Recognize and be prepared for a process which 1s often complicated, difficult, taxing and logtsttcally demanding
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on the real exciting things while the rest of the orgamzatton tolls with the marginal, unexcrtmg and routme tasks
Trademark Files m Electronic Form In the long run, trademark processmg files will become the biggest processmg bottlenecks m the TM0 There are almost 700 000 processmg files The Office receives over 1 mtlhon pieces of correspondence annually, each of which needs to be placed on the files The file 1s then routed to the appropriate area and m turn, paper produced by each area IS filed An approach mvolvmg the electronic capture of processmg files will (1) eliminate the processmg bottleneck, parttcularly m the trademark pendency, stage, (2) reduce the maintenance requirements associated with the paper files and permtt re-dtstrrbutton of those resources to program delivery areas, (3) prevent loss of essential documents and files, (4) reduce the mcidence of dectston reversal and Court costs associated with these proceedmgs, (5) provide the professton and members of the public with fast and reliable access to processmg files, (6) allow the Office to respond to mqurrres wrthout delays
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Thmgs we would change
centrahzatton
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If posstble (I e given more staff) we would put more users and techmcal people on the project Many of the problems occurred because our people were spread rather thm throughout the project
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Communications, particularly internal commumcatrons, must be given a high profile Having a commumcatron plan as part of the tmplementatron strategy and putting someone m charge of makmg tt happen 1s crtttcal
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The process whereby the impact of change on the organization IS cushtoned and made bearable -the management of changeprocess
of project
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should be well organized and carrted out as an ongoing activity Ideally, a champion should exist to see the process through
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Results and expectations project should be drawn on by participants This sense of dtrectton for better accountability for
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Self-managed teams empowered to make decisions should be set up to deal with specific tasks m the project This would be a good counterweight to the natural tendency toward excessive centrahzatton of project control and dectston acttvtttes While central dectston-making 1s crucial for tmportant dectstons, there are a lot of tasks where
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The project manager 1s a very important player We would mstst that the vendors’ proposals suggest two or three candidates to manage the project We would mstst on mtervtewmg the candidates proposed by the successful vendor and make the selectton This implies that the planning process also sets criteria for the selection of the prolect manager
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Prototypmg - particularly prototypmg done well - allows the users to “touch and feel” the system and help shape tt before tt 1s too late We would mstst that prototypmg be done well, thoroughly and extensively
at all phases of the up early and agreed also fosters a better all parttctpants and results