IP Frontline: Five Tips for Chief IP Counsel

Originally Published in IP Frontline | October 17, 2012 | By Paul Mandell

At a recent Consero Group Forum, Pallavi Singh, President and Founder of Beacon IP, Cary Levitt, Chief IP Counsel of Dow Corning, and Patrick McBride, Director of IP Defense and Protection at Red Hat, provided insightful guidance for their peers to maximize efficiency and reduce cost in the context of patent application and defense

Chief IP Counsel have never been under more pressure to manage their departments efficiently while optimizing costs. At a recent Consero Group Forum for Chief IPCounsel, Pallavi Singh, President and Founder of Beacon IP, Cary Levitt, Chief IP Counsel of Dow Corning, and Patrick McBride, Director of IP Defense and Protection at Red Hat, provided insightful guidance for their peers to maximize efficiency and reduce cost in the context of patent application and defense. Below are five of their most useful tips:

1. Align Patent Strategy with Business Strategy. While it may seem obvious, Chief IP Counsel must communicate with their business-side peers to understand completely the value of the patent portfolio. By understanding the context surrounding the pursuit of a new patent—e.g., for licensing vs. exclusivity vs. defense—Chief IP counsel can make more educated determinations of whether particular patents are worth pursuing or defending. Moreover, an understanding of the specific short- and long-term goals of the business can help dictate when holes in a patent portfolio can be filled by developing technology internally instead of the generally more costly effort of acquisition.

2. Use metrics to evaluate team productivity. Measuring any legal team’s productivity can be a substantial challenge, and this is particularly true in the context of filing patent applications. One novel metric that can help Chief IP Counsel assess the efficiency of their teams is the amount of dollars spent per application pending. By evaluating this figure over time, an IP team can determine whether its efficiency is improving, or whether it is relying excessively on applications for extension of time. Each extension application carries a filing fee. But more importantly, a steady or increasing trend of such applications is a sign that the team may lack discipline and/or focus, and is otherwise underperforming—signs that Chief IP Counsel must address.

3. Do Not file more pages than necessary. One simple strategy to reduce cost is to make filings no longer than they need to be. Some applications must be 120 pages, but many do not. Working to make applications concise is a good practice that any reviewer will appreciate, and it is a good way to shave down the cost of filings.

4. Do Not Pay Small Invoices. The patent application process may require support from a variety of vendors for everything from translation services to drafting. It is important to pay your vendors promptly, but keep in mind that paying each invoice takes time—regardless of the size of the invoice. Given the typical corporate payables process, the cost for processing a single invoice could exceed the cost of a small invoice itself. As a result, it is a good practice to encourage vendors to bill only after the amount due exceeds a particular minimum threshold—e.g., $500. By doing so, you may be surprised by how much time your payables team will save, and how much more they can do inthe same amount of time.

5. Establish a Clear Chain of Title From the Start. One of the most common speed bumps in the sale or assertion of patents is a sloppy chain of title, which causes additional internal work and can drive up outside counsel fees. It is always better to establish a clear chain of title from the start, which will likely save future time and money, as well as headache.

While the pursuit and defense of patents is costly, there are often opportunities to increase efficiency and reduce cost. By following the tips above, Chief IP Counsel just might find themselves looking at a better departmental bottom line, and proving their worth as skilled managers focused on the company’s best interests.