IP Budget Planning for 2020Considerations for Building Your IP Budget

Gene Quinn, IPWatchdog (Moderator)

Carlo Cotrone, Baker Hughes

Benjamin Brown, Schwegman, Lundberg & Woessner

Richard Kolar, Derwent

11.19.2019

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Speakers Gene QuinnPresident & CEO, IPWatchdog, Inc.GQ@ipwatchdog.com

Carlo CotroneSenior Counsel & IP Strategies, Baker HughesCarlo.Cotrone@bhge.com

Benjamin BrownCounsel, Schwegman, Lundberg & WoessnerBBrown@slwip.com

Richard KolarHead of IP Services, DerwentRichard.Kolar@Clarivate.com

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AGENDA The 2020 budgeting season is upon us and organizations everywhere are reviewing costs, resources and business priorities as they began to plan for next year. For IP teams, both in-house and within law firms, much of that assessment includes aligning filing strategies to business plans and client demand, recruiting and sourcing specialized talent and assessing operational infrastructure to see where it’s impeding productivity and incurring unnecessary costs.

In addition to answering as many questions as possible, we plan to discuss:

• Aligning patent filing strategies with prosecution operations and workflows

• Mapping resources to filing volume projections• Identifying common operational friction points impacting your budget• Balancing increasing work with flat or shrinking budgets• Strategies to plan for the unexpected

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Budgeting ChallengesAbout Choices

• Corporate pressureso Financial performanceo Cost center perception

• Cost control and unpredictabilityo Multiplier effect of growing global portfolioso Activity at patent officeso Inventive output / new projectso Scope creepo Shifting prioritieso Transactions and disputes

• Departmental challengeso Personnel costso Infrastructure costs (e.g., asset management software)o Gaps in budgeting expertise within IP team / lack of turnkey tools

The unfortunate reality is everyone has a budget. There is only so much money to go around. Inevitably, choices must be made regarding intellectual property protection. Which innovations should be patented? How do you control costs once you decide to pursue patent protection?

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Common Scenarios

Annual IP Budgeting

Process

Cost-Out Initiatives

Ad Hoc Inquiries from Internal Clients

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Big Picture Tactics for Tackling ChallengesAbout Choices

• Constant focus on aligning IP and business strategieso Right prioritieso Quality inputs and decisions / feedback loopo Rational global filing strategyo Leverage outside counselo Portfolio pruning

• Communication with clientso Educate internal client base on IP concepts and costso Provide meaningful reportso Minimize surprises

• Tools for budgeting and tracking of expenseso Third-party softwareo Spreadsheets

One strategy often employed, and over the past decade employed with increasing frequency, is for corporations of all sizes to simply demand more work from their outside patent counsel. In a world where the Federal Circuit and Supreme Court demanding only more disclosure and greater sophistication with every opinion released, artificially pushing down attorneys’ fees isn’t the best, and certainly isn’t the wisest, strategy.

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Specific Solutions and Suggestions

• Rather than having a portfolio dominated by C-rated patents with a smattering of B-rated patents, corporations should be paying more to acquire fewer patents.

• There are numerous, highly qualified patent attorneys and patent agents all over the country. Competent attorneys are located in small cities where overhead is modest, or in or near large cities but practicing in smaller firms that offer competitive rates.

• Prioritize new patent filings and pass on the least valuable to save costs.

• File related ideas together in a filing to minimize filing fees and then use continuation filings (and divisionals if necessary) to expand later after you have a better sense of the importance of the innovation to the overall business objectives.

• Ask counsel for help with pruning patent applications in process.

• Prioritize foreign filing decisions. Obtaining and maintaining patents in too many countries can eat up a budget very quickly. Where do you really need protection?

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Closing remarks

Derwent Services:• Patent Search Services• Patent Analytics• Licensing & Litigation Support• Prep & Prosecution Support• Docketing & Admin Support• Translations

For more information about Derwent Services, please contact Rich Kolar at: richard.kolar@Clarivate.com.

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