Vincent Brault is senior vice president of product and innovation at Anaqua. Views are the author’s own.
The USPTO’s recent proposal for IP filing fee hikes would raise rates by 5% across the board.
With budgets already tightening, these fee hikes, if approved, will make it even more crucial for in-house legal counsel to streamline their organization’s IP portfolio management strategies to control costs effectively.
Proper IP portfolio management is not only a critical strategy to ensure organizations aren’t paying for unnecessary IP, but it also helps organizations identify the right IP to invest in and safeguards them against potential IP legal disputes.
To set their organization up for success, regardless of the economic volatility of industries, in-house legal counsel can implement the following strategies and best practices.
Researching the current state of IP
Understanding how to hone an organization’s IP portfolio practice starts with understanding the current state of IP.
The USPTO raising rates by 5% might not sound like a substantial increase, however, the reality is these increases will affect organizational IP budgeting.
For example, while all fees could be raised by at least 5%, the USPTO also announced the basic trademark application fee would be raised from $250 to $350 and filing Letters of Protest will cost $250 rather than $50.
To stay up to date with fee increases and understand what might need to be updated in annual IP budgets, in-house legal teams can refer to the USPTO fee schedule, which is updated regularly.
Organizations who do not have a streamlined IP portfolio management process will likely feel the impacts of the price hikes more — paying unnecessary fees to automatically renew unused and/or not needed IP — compared to organizations that have prioritized strengthening their management strategies.
Understanding the role of IP as a business function
Before reevaluating an organization’s IP portfolio and management strategy, it’s crucial for all parts of the business to build a general understanding of IP and how it works in tandem with and impacts their section of the business.
As an organization discusses business goals, make sure leaders are thinking about how the goals fit in with IP.
To help those unfamiliar with IP and its importance, in-house counsel should emphasize that IP is an investment in the company's future. They can provide specific examples of how IP impacts day-to-day jobs and markets by breaking down IP at a micro level and explaining the patents needed for each product.
This approach helps team leaders understand how IP drives their market, business needs and competitive advantage.
To garner more support from others within the organization, make sure to stress the value IP brings as an enabler or protector of business function rather than a block to creativity.
While the legal department stepping in can often feel stressful for other teams, position the in-house legal team as a partner who wants to help each part of the business succeed.
Developing a strategy for identifying value and waste
Once the in-house legal team is in communication with the other business functions, it’s important to provide processes everyone needs to go through to evaluate the IP and determine where cost savings can be made.
Making a list of criteria each patent or trademark needs to meet before being renewed helps remove confusion and bias over what makes IP valuable.
Having set criteria for evaluating IP removes human bias and brings structure to the portfolio management process. IP management should be a science, not an art.
Implementing a decision framework for IP protects individuals from blame in case of poor decision-making.
Now that teams are educated on the IP process and have solid criteria to reference, in-house legal teams can initiate conversations on how the current portfolio fosters innovation and where improvements can be made.
They can identify crucial IP assets for the business, potential opportunities for future ventures and patents/trademarks that might not be worth renewing.
Implementing IP portfolio changes
With all business sections aligned and new IP portfolio management processes in place, the in-house legal team can now optimize the portfolio.
The newly set process will allow the organization to monitor and make changes as needed, whether it’s identifying outdated patents, redundant applications or new ideas for IP to give the organization a competitive advantage.
Through evaluating current and potential IP, in-house counsel can proactively set their organization up for success amid future budget changes, whether the USPTO fee hike proposal passes or not.