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Monday, October 6, 2008 4:00am — STRATEGIC MANAGEMENT OF IP

3 ways to cut IP acquisition costs

The burgening economic downturn continues to put pressure on all departments of companies to reduce costs.  The intellectual property acquisition function is clearly no exception.

So here's 5 suggestions, what would you add?

1 - review your portfolio to identify pending or registered IP rights of lower value now and in the future, prioritise them, and lapse them (saves on annuities and prosecution costs of any pending applications);

2 - consider filing divisionals or continuations to extend prosecution rather than expend money in the short term on attorneys (of course, the act of filing these applications carries a cost of its own);

3 - consider whether applications for IP protection can sensibly be delayed;

4 - use lower cost filing methods, so for example: hire a patent attorney to carry more of the drafting, filing and prosecution costs internally, use PCT or Madrid for international applications, PCTFiler for National Phase entry, etc.

5 - consider blending your current attorneys with a lower cost firm for more routine work.

 

 

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6 Comments


TJ said

Consider abandoning non-key countries (as these tend to the expensive ones)?

posted on Monday, October 6, 2008 8:24am


Duncan said

Thanks TJ - great suggestion.
(Apologies to all for promising 3 and delivering 5 suggestions - but better to over deliver, I guess.)

Another suggestion of course would be to bring more of your IP work in-house.  If your corporate team will allow you the head-count...

posted on Monday, October 6, 2008 8:29am


Duncan said

The insightful and ever present Jeremy Phillips (this time at IPFinance) has posted a great comment on this post:

In global terms, I wonder whether the sort of savings which these suggestions are likely to achieve are likely to be relatively trivial in relation to the sort of business that is big enough to have the option of making them. Might greater savings, or greater income-generation, be made through cross-licensing of existing technologies, the adoption of more cost-effective marketing techniques such as co-branding, the responsible use of alternative dispute resolution rather than court-driven infringement ligitation; where IP rights are deemed superfluous, there is plenty of scope for developing online auction and licensing sites too. Finally, the delaying of applications in the pipeline looks like a recipe for chaos in the future if all the businesses within any given sector decide to press on with their previously-delayed applications at the same time.
(Thanks Jeremy)

posted on Monday, October 6, 2008 9:32am


Duncan said

Jeremy - some quick notes on your great comments:
1 - just looking at reducing costs here, not increasing revenues - great points though
2 - alternative dispute resolution sounds great, if you can get it to work - I guess that's what you mean by 'responsible use' - often worth a try.  However, depending on the economic climate and the situation at hand, it may be better to prioritise which disputes you even take on for a certain period.
3 - Delaying applications - I'm flattered that you think my suggestion would have such far reaching consequences.  But still, from the perspective of the IP Rights owner, it has some merit, irrespective of a possible greater delay at a point in the future.

posted on Monday, October 6, 2008 9:37am


Kristian Beyer said

www.innovationpartners.com

Another option is outsourcing your patenting work to India/asia. Cuts down costs for expensive attorneys. I can be hard for non-global companies doing this though.

Another version on your no. 1 is to only do IP that is important for your core business, and not waste money on something you don´t actually sell

posted on Monday, October 6, 2008 4:20pm


Duncan said

Kristian - welcome and thank you.  These are great points.

posted on Monday, October 6, 2008 8:21pm


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