Many people have asked me how to best mitigate IP risks associated with legal entities that assert patents of dubious quality for nuisance value (e.g., cost-of-litigation) settlement purposes – these are the proverbial “patent trolls” or more politely called non-practicing entities (NPEs). My answer unfortunately starts with a stereotypical lawyer-like answer, “it depends”.
Enabling companies to unleash the power of innovation
As I reviewed our 2017 Patent Program Benchmarking Survey, I was excited to see that an increasing number of companies are embracing key performance indicators (KPIs) to help them not only increase the operational efficiency of their patent portfolio programs, but to also increase the quality of their output. This increased corporate focus on patent quality resonates with me. For years, many of you have likely heard me express my belief that quality over quantity is a critical path for all of us. It ensures that we can develop strategic intellectual property programs for our companies. It also helps further improve our Nation’s confidence in our intellectual property system, which has taken a hit over the last decade due to the unfortunate use of dubious-quality patents for litigation settlement purposes.
Managing IP budgets can be time-consuming and complex – and because IP budgets can account for up to 75% of all legal spend in some companies, we are talking about some pretty significant costs that typically receive senior level attention. Given the magnitude of the budget needing active management and time and resource constraints with competing priorities, it’s no wonder that IP departments fall prey to some common pitfalls when managing their IP budgets.
I had the pleasure of moderating a panel at Consero’s Global IP Management Forum in Newport Beach, California this week, where Karl Renner and Gwilym Attwell from Fish & Richardson facilitated the conference program. My panel on “Protecting Global IP While Keeping To Budget” included such luminaries as Jeff Duncan from Elevance Renewable Sciences, Inc., Kim Jessum from Heraeus Incorporated, Dr. Tim Joyce from Bayer West Coast Corporation and Julie Vanderzanden from Jarden Corp.
Recently, I attended CodeX’s fourth annual FutureLaw 2016 conference, which was hosted by the Stanford Center for Legal Informatics. The conference featured an impressive group of speakers and attendees, who ranged from academics and policy makers to lawyers, investors, engineers and entrepreneurs. The conference focused on how technology is changing the landscape of the legal profession, the law itself, and how these changes will eventually impact us all.
It was a privilege to have Lecorpio sign onto a recent letter of support for Congressmen Tony Cárdenas and Blake Farenthold’s introduction of H.R. 4829, the Trade Protection Not Troll Protection Act. Several Lecorpio clients and other IP thought leaders had signed onto this letter of support as well.
As has been widely publicized, approximately 40% of patent suits this year have been filed in a single district where most of the defendants are neither incorporated nor have a place of business. This trend has existed for a number of years. Today, November 6, 2015, Lecorpio LLC joined a diverse group of 23 other Amici Curiae in submitting a brief to the Court of Appeals for the Federal Circuit supporting TC Heartland’s petition for mandamus (Case No. 16-105) urging that a domestic corporation’s “residence” for patent-suit venue purposes, under 28 USC 1400(b), is limited to its state of incorporation.
Like many areas in the enterprise, your legal department is probably being asked to do more with less. You’re certainly not alone. Most IP attorneys are tasked with filing significantly more patent applications within the same budget as well as enhancing their responsiveness to business clients without any increase in department headcount. To meet these challenges, you’ll need to maximize your IP process efficiency across the entire enterprise and expect the same of your external partners. Below are a few best practices for enhancing the patent management process at scale (while keeping your sanity).
Earlier this week, I read an interesting article that explored the reasons why law firms often struggle to innovate. The article highlighted what is already well-known, that most law firms are driven by the almighty billable hour – a metric that is said to discourage efficient behavior.