Management of IP portfolios has undergone significant evolution in the past decade. However, this has been true more for strategic management i.e. treating IP assets as other business assets, keeping them aligned with business objectives, monetizing them, divesting them when needed and so on. Administrative management i.e. management of physical and online files, dockets, interaction with patent offices, external counsel etc, on the other hand still remains without a scientifically managed process in most companies. Due the nature of the administrative management, it has traditionally remained an activity that a few people in the legal department have done without much focus of the legal department managers towards ensuring continuity of operations and not really depending heavily on the specific individuals handling the tasks. This, however, is set to change.
The current economic environment has had an impact on the budgets of the corporate IP departments. Some departments have had as much as 30% budget cuts in the current financial year - some others are expecting a second round of cuts in a few months. This may also be due to sometimes prevalent perception of IP department being a 'cost center'. Tighter budgets are only one of the factors for progressive Heads of IP departments to start demanding efficiency and process for the administration of their portfolios. In some companies, the initiatives to move away from physical files or in general going paperless ('green' is in!) has led to a sharp increase in the workload of the personnel involved in the task. Bringing in the temp workforce has been a solution, but not without its problems. Temp workforce is known to have a lower accountability and require a closer day-to-day management, something which not all IP departments are able to provide. In increased workloads, whether using temps or otherwise, there is usually a lack of discipline in ensuring data consistency and data entry problems often abound.
Due to a lack of bandwidth to provide tight management, there is often a concern of wasted effort or duplicated effort. In geographically spread IP departments, a lack of a central command has led to concerns over quality, consistency and productivity of staff involved in handling of external communication. In many corporations with more than 300 patents, the docketing function in general can benefit immensely from being more efficient and reliable. I have witnessed a desire to establish better organization, reporting and continuity around the administrative support processes.
In addition to the need to improve the processes, the Heads of IP are also looking for ways to 'upskill' their IP administrators and paralegals. This is also true of law firms. It is not uncommon to see the desire in paralegals to enroll themselves in JD or equivalent courses and explore a career beyond just handling the paperwork. This leads to the need for addressing this HR issue.
One reliable solution to the problems mentioned above is surfacing in the form of sending part of the routine IP administration work offshore to destinations such as India , Philippines , South Africa or parts of Eastern Europe . This is not a new move; many of the largest patent filers such as Microsoft have been using India
§ Cost savings due to labor arbitrage in lower cost locations. There are vendors who may offer the extremely low costs, however with IP, Quality is not something anyone would like to compromise - therefore, important to select vendors carefully.
§ Own staff can be up-skilled to perform higher level work; thereby reducing cost of tasks hitherto going to outside counsel, improving morale and tackling attrition.
§ Greater control of costs of outside counsel and tasks performed by the outside counsel. Some offshore based vendors also provide IP Billing Management that involves managing the invoices, properly coding them and loading them onto a database, some even manage the wire transfer of payments. It is sometimes surprising to see the lack of transparency that some organizations live with when it comes to managing outside counsel costs.
§ Introduction of a process, that is both repeatable as well as scalable, in tasks which do not involve custom thinking each time they need to be executed. Activities such as docketing (document filing) and form-filing (majority of paralegal's activity) can definitely benefit from thoroughly documenting, reengineering if required and tightly controlling through metrics. Some vendors which have international certifications such as the ISO 9001 can easily help in attaining such process-centric methodology for such tasks. This should not only help in making these activities person-independent but also present opportunities to optimize cost, remove necessary steps and attain greater efficiency.
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