How to get more with a smaller IP budget?

 In Patent Commercialization, Patent Prosecution, Popular Strategies

Corporate leadership is squeezing IP budgets across the country. This impacts both staffing and overall IP creation efforts. In-house IP management is being asked to file more applications with less staff, under strict budget limitations. For example, several months ago we visited a west-coast client, a U.S. subsidiary of a large multinational electronics company. The client had a small IP staff of two (2) full-time attorneys and one (1) part-time attorney. Corporate headquarters was asking the client to maintain a yearly filing rate of 100+ patent applications with no increase in the budget. We also noted that there had been no budget increases in the past three (3) years. How can this in-house IP department meet or exceed filing goals and stay within this flat budget?

At the most basic level protecting corporate research & development involves drafting, filing and docketing utility patent applications. In the past, this has almost always been accomplished under a fixed fee structure. Typically, in-house counsel retains a U.S. Law firm to handle the entire process.

This one-stop solution has advantages. It simplifies overall management, provides an established communications channel and allows for easy monitoring of the budgetary process. However, there are costs. Full-service law firms are limited in their ability to reduce costs in response to client pressures. At some point, quality will suffer when fixed fees are squeezed.

How to maintain quality while reducing the cost of obtaining a patent application?

Is there a way to maintain patent application quality, reduces costs and still obtain a one-stop solution? The short answer is “Yes.”

The solution requires selecting the right staffing for each task in the IP creation process. With a law firm based approach, the firm handles each task and charges a fee based on its overhead and staffing costs. Using a U.S. firm means paying a premium.

We have a worldwide approach that targets the cost-effectiveness and known expertise of various countries. Our IP creation team leverages the legal expertise and administrative procedures of U.S. Attorneys and U.S.  law firms only where such services are needed – for example, providing initial drafting instructions, reviewing and editing draft applications, filing, reporting and, at the end, docketing. The “heavy lifting”, on the other hand, is handled by an exceptional Indian-based team of engineers with years of patent drafting experience.

Less focused, “foreign only”, solutions have been tried in the past. The results were not promising and left in-house counsel without a low-cost quality option for patent application drafting, filing and docketing. We offer this new approach, focused on retaining quality, to in-house counsel looking for a cost-effective alternative. The approach works. When budgets are cut, but filing goals remain high, our IP creation team can get your IP legal department back on track.


Eric Halber Patent Attorney

Eric Halber, the author of the article, is a thought leader in the IP space. He has over 25 years of experience patent litigation and prosecution with Fortune 500 companies and top law firms. You can follow Eric on LinkedIn from here.

Eric is sharing his extensive experience through a series of articles on GreyB. You can also subscribe to our email newsletters to get notified about his strategies and thought process from here: Click here to Subscribe.

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