For many years, vendors of office automation systems expended considerable effort trying to convince corporate and law firm patent attorneys to adopt paperless file management systems by touting the time and money savings associated with electronic files over the traditional patent file system. However, relatively few patent attorneys have done so, instead, remaining loyal to the traditional three-sided manila patent file folder. Until recently I was one of those patent attorneys. Now that I have discovered the vast efficiencies and improvements possible with these electronic systems, the question is why I remained true to this clearly outdated system of maintaining client patent prosecution records. Given the remarkable efficiency and knowledge management improvements possible with electronic patent file management systems, there can be no viable excuse for either corporate or law firm patent attorneys not to adopt such systems.In retrospect, I think I found that the heft and history represented by the
Confessions of a Reluctant Convert to Electronic Patent File Management Systems & Why I Am Now a True Believer
Chief IP Counsel: Stop Trying to Change How Your Lawyers Bill You and Focus on the Model They Use to Provide Your Legal Services
As legal service fees continue to rise five percent or more year after year, corporate IP managers, such as Chief IP Counsel and the like, continually face pressures from their management teams to reduce outside counsel legal expenses. The current economic downturn has also resulted in corporate legal budgets being slashed, thus increasing the pressure on corporate IP managers to reduce outside counsel costs, even while IP asset value is becoming more important to C-level management. As a result, the need for corporate IP managers to achieve outside counsel fee relief while at the same time maintaining IP legal service quality is more acute than ever today. Today, there are a number of commonly accepted methods to achieve outside IP counsel fee relief including fixed (or "capped") fee arrangements and a percentage reduction per total hours billed, as well as electronic billing systems set up to automatically audit law firm bills.
Without Disruptive Innovation, Many IP Law Firms are Destined to Meet the Same Fate as Buggy Whip Manufacturers
A possible upside to the recent economic downturn is that many previously accepted business models are being revealed as in need of substantial reinvention or even total elimination. The billable hour/leverage law firm model for legal services is one of these increasingly maligned business models, and is now appearing to be in danger of ending up in the dustbin of history. Specifically, even those who benefit handsomely from the billable hour, such as the Cravath firm's many $ 800 per hour lawyers, now realize the fundamental irrationality of charging a client for time spent instead of value provided. This alone should signal that change is in the air. Notwithstanding the growing conversation about the need for alternative legal service billing methods, I fear that the majority of IP law firms will either try to ignore the desire for change or will respond by offering
Do You Know Your Company Needs Strategic In-House IP Counsel, But Think You Can’t Afford It? One Company’s Solution is Hiring Part-Time Counsel
Analysts say that the current economic downturn will likely last at least until early 2010. While this no doubt seems like almost an eternity for the average consumer, for business strategic planning purposes, this date is just around the corner. Indeed, business managers at many companies are likely conducting “short term” strategic planning efforts targeted for introduction in mid-2010. This might account for the recent uptick in job postings for experienced corporate intellectual property attorneys. I see this increase in job opportunities as signifying that smart corporate leaders are realizing that sustainable business success requires companies to not only introduce innovative products and technology offerings, but also that they strategically protect such innovations. As a result, I believe that more companies will seek to hire strategic in-house IP counsel, which is good news for us IP types. Of course, the traditional model of hiring an in-house IP counsel results in
You Paid WHAT for that Patent?! or How the Choice of Patent Law Services at Many Companies is Like the Vice Presidential Wardrobe Selection Process
The recent hullabaloo regarding Sarah Palin's "gold plated" wardrobe from Saks and Neiman Marcus got me thinking about how many companies select patent law firms. This may seem like a non-sequitur, but bear with me. . . Those responsible for dressing Gov. Palin apparently believed that the large expenditures at Saks and Neiman Marcus automatically translated into value for the Republican ticket by allowing her to be viewed as more "Vice Presidential" than she would otherwise been considered. Notwithstanding the high cost of her new wardrobe, as reported in the New York Times, her overall "look" remains the same as when she campaigned for and served as Governor of Alaska: business-appropriate jackets, feminine skirts and high heels. The response to this wardrobe makeover by a major fashion commentator: "Honey, I could have dressed you for a lot less than that." From this comment, as well as the continuing backlash
If You Have to Ask Your Patent Attorney What Your Company’s Patent Strategy Is, You Don’t Have One
Tonight I had dinner with a patent attorney friend of mine who I have known for more than 10 years. For the purposes of this post, let's call her "Sue." Sue and I met as young patent attorneys at an intellectual property law firm and grew up together to become partners there. Unlike myself, however, Sue has remained in the law firm environment. These days, she works at a highly prestigious national law firm and has a billable rate of close to $600 an hour. Of course, at this rate, Sue's clients expect to obtain quality representation and, having been a client of hers when I was an in-house corporate attorney, I know that my friend is a great patent attorney and gives excellent service. As an IP Business Strategist and Consultant, I am no longer engaged on a daily basis in working with clients to obtain patents. In this IP
Only You Can Prevent Patent Expertise Creep: Recognizing the Proper Role of Your Patent Attorneys
Your company has a question about your company's patent portfolio. This is an issue for your company's in-house or outside patent counsel, right? Maybe not. If the question relates to whether an invention is patentable and whether the patent is likely to grant, a patent attorney is the correct person to contact. But if the question is whether you should obtain a patent on a patentable invention, your company's patent counsel is quite probably not the correct source of counsel. The latter is a question of patent strategy, which is inherently a business question, not a legal question. However, many businesses assume that when a patent issue comes up, a patent attorney should be contacted because a patent attorney knows about patents. So why are patent attorneys typically not suited to address patent business questions? As many people know, useful, novel and unobvious inventions are patentable. Significantly, however, there is no
Your Company Does Have the Resources to Hire Seasoned In-House IP Business Counsel
In today's business world, forward-thinking business leaders at small and mid-sized companies understand that they must develop and deploy IP strategies that will grow their company's intangible asset base. As an IP Strategist and owner of an IP strategy and consulting service (more info here: www.jackiehutter.com), I know that to accomplish this bold objective, the first question must necessarily be whether the company should hire someone as permanent in-house IP counsel, or whether they engage outside IP counsel on an ongoing basis. Regardless of which option they choose (and they realize they must choose), the result for the company is significant expense in the form of headcount cost and/or outside counsel legal expense. Let's assume that your company has decided to take the plunge and engage either in-house or outside counsel to direct and deploy a business-focused IP strategy. How do you know who to hire if you know little
Do You Have the Right In-House IP Legal Team to Successfully Execute Your Business Plans?
As a leading business strategist, you understand that your company must “innovate or die.” In embracing this philosophy, you realize that intellectual property (“IP”) strategy is critical to your ability to successfully execute your company's business plans. You also realize that your company's IP constitutes a business asset that can (and should) be monetized, traded and sold, just like any other asset. And, like other assets, the goal should be to maximize these assets. Accordingly, you consider IP to be a critical aspect of your company's business plans. Unfortunately, the people that manage your IP assets, that is, your in-house IP legal team, may not be eager to introduce innovations into the IP management process that can significantly increase IP asset value. Your company may therefore be leaving significant “money on the table” because you do not have the right IP legal team in place. I am now an IP Strategist and
Intellectual Property Strategy Consultants: A New Model for the Small to Mid-Size Corporation
As a business leader in a small to mid-sized corporation, you know that businesses such as yours are increasingly looking toward intellectual property as a means to generate assets. This is not surprising because it is estimated that less than 15 % or greater of your corporation’s value today is situated in its tangible assets. (See for example, http://www.ipfrontline.com/depts/article.asp?id=3674&deptid=3) Not all of this intangible value is located in your patents, off course. Indeed, your corporation may not even own any patents today. But if your organization extracts measurable value from proprietary technology or products, corporate value is heavily reliant on your patent and intellectual property strategy. That is, if your corporation’s technology and/or products are valuable, another company is likely to want a piece of the action, which, will result in erosion of your sales and profits. If this is the case for your corporation, you may be wondering