There is a continuing expectation from senior leaders that teams managing intellectual property (IP), whether corporate IP counsel or academic tech transfer, need to do more with less. Unfortunately, IP budgets across many industries are staying the same or, worse, shrinking. At the same time, IP portfolio sizes at companies and universities are on the rise, resulting in more reliance on external law firms to pick up the slack. This reliance, in turn, can result in more service fees in addition to the increasing fees from additional patent applications. When these stressors start to pile up, IP management activities can feel reactive rather than strategic.
The situation sounds doomed, but there is hope. Tech transfer offices and corporate IP teams can establish simple guidelines to provide immediate relief. With just a few reports, teams can equip themselves with the necessary insights to make informed decisions while saving money on their portfolios. Wellspring spoke with successful offices. Here are their top recommendations.
Examine foreign filings
Foreign filings are expensive. The cost to file a PCT application can range from $3,000 to $4,500, depending on the size of the entity seeking patent protection and the invention itself. Additional fees include a transmittal fee (~$240), search fee (~$2,000), and international fee (~$1,100). And that doesn’t include the fees charged by law firms to prepare the application itself. Although dealing with foreign filings can feel like a venture into a financial abyss, there are opportunities to save.
Within your IP management system, run a report to check foreign filings against R&D status to identify those without initial or ongoing development. Next, review these technologies with the product and R&D development teams. It is possible that these products or the development strategies behind them were abandoned but the IP management team hasn’t been informed yet. For tech transfer offices, any foreign filings on technologies without a license or current interested party might be filed unnecessarily and can likely be stopped.
Examine each fee individually
Claim fees, administrative costs, U.S. government fees, patent maintenance fees, and other expenses add up. Similar to the foreign filing report, it pays to analyze the fees associated with each patent case or invention. Assessing the value of the technology against the cost of maintaining it is an important factor for managing spending.
Audit these costs by pulling a line item report from your IP management system and examine each fee individually. Do some appear to be higher than expected? Next, inspect the sum of these fees within each invention or patent case to see which cases have exceedingly high expenses. Not only can you identify your high cost cases to evaluate their necessity within your IP portfolio, but you can better forecast your spending into the future as well.
Institute cap guidelines for outside legal firms’ filing fees
Not knowing the true cost of patent applications is a costly mistake to make. Evaluating fees contained within each case is the fastest way to understand the true cost and determine where to cut back.
Armed with the reports above, you can decide what to keep and what to drop. Compounding on these savings, some offices also institute a cap for outside legal firms’ fees. They run regular reports to identify when filing fees exceed the cap. This practice keeps fees from going unchecked and spiraling out of control.
Alternatively, some IP management systems allow you to define a specific budget for each patent family or invention case. When you run out of budget, the system alerts your team to review the case. Some software, like ours, will show you the burndown of these specific budgets as expenses are added to the invention entry.
And finally...
Don't wait
As the writer and lecturer, Karen Lamb, once said “A year from now you may wish you had started today.”
There is no reason to put off running and reviewing these reports. The sooner these reports are collected, the faster the team can gain insights about where the budget is going. For many offices, these reports deliver big financial gains. Reports offer insights about which cases are using up most of the budget. They give offices the ability to catch blindspots where the team might be spending too much. Every small improvement is worthwhile as they all add up quickly.
With Wellspring, the information necessary to make intelligent decisions is at management’s fingertips. Can your platform run these reports? Can you set budgets for your cases? If you’d like to upgrade your IP Management experience or explore how Wellspring can help you manage your IP portfolio while saving money, drop us a line through our form here.
Source:
1. How Much Does an International Patent cost: Everything You Need to Know
