To help examine IP cost control strategies through an operational lens, Prokurio contacted Trexo Global, the experts in IP operations, for their perspectives.

Chris Burger suggested strategies and approaches that we think you’ll find helpful when confronted with the challenges of prioritization and balancing the competing challenges of cost versus quality.

Lastly, if you have questions or would like operational assistance, we encourage you to reach out to Trexo Global at info@trexoglobal.com

Happy Reading!

Phil: Chris, when we talk to corporate IP groups, a constant theme is “Our budgets are under severe pressure.” While this theme is the same across groups, we find that approaches to dealing with budget pressures are all over the map. What are you hearing from your clients about controlling costs?

Chris: Great question, Phil. Cost pressure is certainly a constant theme among IP groups. That said, I find many corporate IP departments struggle with identifying how to reduce costs without sacrificing the quality or quantity of their IP and then deciding if they want to make a “big splash” with radical changes or smaller, less disruptive incremental changes. Unless there is a defined mandate to save X% on their budget, and X is a very high number, most corporate IP groups look for easier wins. Once the size & scope of the cost reduction goal has been identified, the next challenge for IP managers is deciding which tasks, processes, or roles should be streamlined or automated.

Phil: That’s interesting, Chris. I hadn’t really considered the motivations behind the “big splash” and incremental approach, but it all makes sense. It also leads me to a couple more questions. First, how do you see organizations prioritizing what should be streamlined or automated? Is it by savings, ease of implementation, or some other factor?

Chris: While every organization is somewhat different, there are typically common threads across IP groups. Most look for incremental wins, which include solutions that are easy to implement. Change management is a huge obstacle in any organization, so trying to overhaul massive enterprise-wide systems or processes is usually too complex for most organizations to effectively adopt. I would suggest companies refer to their network of peers or IP vendors who are thought of as thought leaders to help them identify which tasks may be “low-hanging fruit.”

Phil: We all know that focusing solely on costs can lead to disaster in IP. How does a group balance cost and quality?

Chris: It goes without saying that companies can’t sacrifice quality, especially with something as valuable as their IP. Ultimately, it comes down to companies being very selective about choosing the vendors with whom they decide to partner. Companies should consider several factors when evaluating external help.

• Does the vendor have actual hands-on IP expertise in the area they serve? Companies should look at vendors with extensive IP experiencewho can provide best practice recommendations. These recommendations should come from the vendor having actual IP experience coming from being in the trenches. For example, a vendor whose team members have been IP paralegals for decades are likely better able to provide real-world advice to companies looking to streamline paralegal tasks than a vendor whose team’s experience has been serving as a consultant.
• Does the vendor focus exclusively on IP – and not just focus on IP, but the specific niche aspect of IP they’re looking to address? For example, if a company wants to optimize its cost forecasting better, an IP vendor focusing on patent research or IP docketing systems may not be the best fit. Instead, companies should evaluate vendors that focus on cost forecasting.
• Does the vendor customize its solutions for each project? No two IP organizations are identical, so a cookie-cutter approach is likely unsuitable for most IP departments.

Phil:As you’ve mentioned earlier, change is difficult, and different organizations have different priorities and challenges – plus, everyone has a day job. With that in mind, how does an organization get started? In other words, what’s the first step an organization should take once they’ve identified a challenge they want to take on?

Chris:In my experience, there are several ways to get started.

First, talk to your IP network that works outside of your own company. This could be people you know very well or someone in your LinkedIn network whom you barely know. See how other companies have solved similar issues and leverage their experience to help shape your own path. If you’re unsure who can provide advice, post something on LinkedIn asking for assistance!

Second, seek vendor input. This can be tricky, as vendors obviously have a vested interest in selling you their own product. Look for vendors who have a deep IP background, heritage, and reputation for under promising & over-delivering. Since the IP industry is small, you’ll learn that some vendors have a great reputation for actually trying to help their customers solve their problems. In contrast, other vendors have a reputation for pushy sales. Engage the former and avoid the latter. Vendors who serve specialized markets like IP should be able to provide references that not only speak to the value of their solutions but also who can attest to how knowledgeable and helpful the vendor is in solving their customers’ challenges.

Third, attend industry conferences. This is usually a great opportunity to network with other IP professionals, learn what’s new in the industry, and discover how other organizations are solving problems similar to yours. The only downside to this approach is a shortage of IP conferences focusing on IP operations. Conferences such as AIPLA, IPO, INTA, etc, are fantastic, but sessions tend to focus on the legal side of IP instead of the administrative/operational side of it.

Phil:We’ll wrap it there, Chris – you’ve given us plenty to consider! From my notes, I’ve captured three takeaways:

1. An incremental approach will likely be the most successful.
2. Companies must be selective with vendors and do their homework to ensure quality.
3. Networking is a crucial tool that can help identify where to start and what to prioritize.

Nearly every law firm with an IP prosecution practice worries about the quality of the data in their IP docket. Most firms want to take extra steps to ensure their data is accurate, yet prior solutions were ineffective, riddled with false-negatives, time-consuming, or cost-prohibitive.

That is, until now. In this case, study, learn how Trexo Global’s Data Risk Manager technology has given Lathrop GPM better & faster access to accurate IP information while automating the double docketing process.

Forget diets, being better about cleaning the house, or promising to go to the gym more often. As IP professionals embark upon 2024, now is an ideal time to revisit several aspects of your organization’s IP department to ensure it is well run in 2024 and beyond. Trexo Global and Prokurio are pleased to announce our suggested New Year’s resolutions.

1. Do a quick profitability analysis of IP paralegals.

Few IP groups have the time & resources to do an exhaustive financial analysis of their IP paralegals. Instead, we suggest doing a rudimentary review to identify the least profitable tasks; the firm can then dive into those duties in greater detail to understand the true profitability (or lack thereof) and how to make that task more profitable for the firm. For example, consider the following scenario for a law firm: your paralegals cost $50 per hour in salary, they are supposed to bill at $200 per hour, and they spend six hours on an IDS. Ideally, they bill $1,200 for this and cost the firm $300 in salary. However, what if your clients only allow you to bill $250 per IDS? Your costs (without including any attorney time) are $300, which is a direct loss of $50 per IDS and does not account for the possibility that your paralegal could spend those six hours billing elsewhere. If you find yourself in such a situation, look for an alternative for how you’re managing IDSs!

2. Review Fixed Fee Agreements to make sure they are up to date and have been communicated internally

Outside Counsel Guidelines are standard these days, yet it isn’t unusual for a firm to have no idea what’s in their client’s guidelines – or even where they are. Take this New Year opportunity to organize your Outside Counsel Guidelines and ensure your team knows what is expected and allowed. This can save you tens of thousands of dollars in rejected and disputed invoices. Better yet, implement a system to track and manage your guidelines – it will pay for itself quickly.

3. Consider modular technology that solves specific IP problems vs. swapping out large, wholesale, enterprise-wide system changes.

Most IP groups realize they could leverage new technology to operate more efficiently. The challenge is that switching enterprise systems such as an IPMS or DMS – that are heavily integrated with other tools and intertwined in current workflows – is daunting. Therefore, we suggest IP groups instead consider looking at specific tasks within IP and evaluate technology that can solve those problems instead of upsetting the entire apple cart. Examples include Office Action Shell response, PTO document generation, IP cost forecasting, IDS management, and double-docketing.

4. Review and automate IP maintenance vendor and international associate invoice controls.

The days of simply forwarding an annuity provider or international associate’s invoice to a client are coming to an end. IP owners are using invoice control solutions to monitor and manage third-party costs and they expect their Outside Counsel to do the same. Furthermore, fixed fee agreements are beginning to extend to international associates, which forces firms to take a more active role in policing associate charges. Take the new year to evaluate your invoice controls and implement any quick wins you identify.

5. Perform a Health Check of IP administrative processes – whether through hiring a consultancy or networking with IP peers to understand best practices that may be applied to your firm.

Most firms suspect or know parts of their practice are inefficient. Take the time to identify the most impactful tasks if they were streamlined. Firms often turn to their network of peers to understand best practices or attend conferences such as the ALA IP Conference. Others have relied on IP operations experts – such as Trexo Global – who have experience working with hundreds of IP groups for expert advice on improving the entire end-to-end prosecution process or focusing on specific tasks that can be streamlined.

While January could be spent in overcrowded gyms alongside others focusing on their (likely short-lived) 2024 New Year’s Resolutions, Prokurio & Trexo are confident that our list will lead to long-lasting financial & operational efficiencies in your IP department. Happy New Year! To learn more, please email us at info@trexoglobal.com or hello@prokurio.com.

In March of 2021, the NFL announced a new television deal, with networks paying $105 billion to broadcast games through 2033. Traditional networks such as NBC, CBS, and FOX will continue to air games but for the first time a streaming platform- Amazon Prime – will join the fray.

The NFL remains king in an era of virtually unlimited content catering to every imaginable taste. Since its initial broadcast in 1939, which reached roughly 1,000 to 2022, when the average viewership is over 20 million for each game, football and television in America have been in a symbiotic relationship, each helping the other to prosper. Of the top 100 television broadcasts in 2022, 82 of them were NFL games. This massive fanbase allows NFL to charge astronomical sums from networks eager to broadcast the games. Data gleaned from Amazon shows that the key demographic of age group 18-34 has shown an average increase of 12 percent for Thursday night football from 2021. The 2021 Super Bowl, which saw the Los Angeles Rams defeat the Cincinnati Bengals, witnessed close to 100 million people watching the game in the US alone.

With such a captive audience comes a long list of companies seeking a chance to leverage their trademarks and place advertisements for their products during the games. The price tag is not for everyone though, as 30-second ads during the 2022 Super Bowl were selling for $6.5 million.

Is it Worth ?

Super Bowl advertisements and their ability to influence buying decisions have been a subject of research for premier institutions. A paper published by Stanford observed that advertising during the Super Bowl helped in fostering positive associations between a brand and viewers. Mc Granaghan et.al (2016) provided an even more valuable insight who documented that both the number of viewers in a room and their attention increased during the commercial breaks. This is not surprising as the ads surrounding the Super Bowl have become an industry in itself, with many reports indicating that over 40% of Super Bowl viewers tune in to the commercials instead of the game. Of course, the emotional bond an ad can create between a consumer and a company influences decision-making more than anything. The real benefit of placing advertisements in the Super Bowl is generating Brand awareness.

As noted in an article by Nielsen, “After airing, Super Bowl ads typically reap the benefit of social media chatter and people engaging with the advertised brand. Many consumers also seek out ads they missed during the game, further increasing viewership.”

This highlights the cost-to-benefit ratio for advertisers regarding buying spots for their products during the Super Bowl. Large conglomerates such as NFL’s official sponsors Pepsi and alcohol giant Anheuser-Busch can easily afford the million-dollar price tags and continue spending through the year to reinforce product awareness.

Smaller companies and start-ups must find other ways to tap into the football craze and catch fans’ attention. Sly efforts to use the term “Super Bowl”, over which the NFL holds intellectual property rights, has brought swift Cease and Desist letters and lawsuits. The NFL is so zealous in protecting its IP rights that even large social gatherings are prohibited from using the term “Super Bowl”; thus consumers often encounter ads referring to “The Big Game”.

Challenges with Brand Management

While the Super Bowl remains the number one event of the year in terms of sheer viewership, the fact remains that it’s a once-a-year event. Whether your company invests millions in Super Bowl ads or wouldn’t begin to consider such an investment, there are still several common challenges that Intellectual Property attorneys must face when protecting the IP of their company or their firm’s clients.

With restricted budgets, the challenge becomes to strike a balance between investing in brand creation, advertising, and protection of Intellectual Property rights. The situation gets further complicated as the avenues for possible infringements are vast, and manpower costs in a highly specialized field are high.

Companies and law firms struggle to manage a growing portfolio of trademarks, prosecution and renewals. With economic uncertainty ahead, some organizations are going through the painful process of layoffs, whereas others are keeping their headcount flat. In either case, it is rare that the volume of trademark filings is decreasing. This is forcing in-house counsel and law firms to identify innovative ways to address the age-old cliché of “do more with less.”

Due to the lingering effects of the Great Resignation, finding qualified IP professional resources such as paralegals & docketers continues to be challenging. Now that there is pressure from the finance group to more tightly control costs, this creates an even bigger headache for IP executives – how do you manage a growing IP portfolio when you can’t find experienced IP resources to fill open roles or your finance business partners will not approve new headcount? This is where qualified third party Intellectual Property outsourcing companies come into play. By partnering with an outsourcing vendor, companies & law firms can scale resources up and down quickly, and access a wider pool of skill sets, all while reducing costs. Outsourcing mundane IP tasks also have the benefit of improving in-house employee’s morale, as they can send less-desirable tasks to the vendor, thus allowing them to focus on higher-value work tasks.

Jerry Rice, widely considered to be one of the best wide receivers in football history, said “Today I will do what others won’t, so tomorrow, I will accomplish what others can’t”. While his quote was related to his accomplishments on the gridiron, the message also holds true for companies & law firms looking at innovative ways to manage their Intellectual Property.

As the Kansas City Chiefs and Philadelphia Eagles prepare to line up on February 12th at State Farm Stadium in Glendale, Arizona, numerous companies will hand over a small fortune to be a part of the event with the hope to catch their buyer’s eye. Innumerable smaller companies will try to tiptoe around the legal minefields and try to cash in the craze as well. The challenges that professionals face today will continue after the game ends, and companies that “will do what others won’t” will be able to “accomplish what others can’t”. The question is, which companies will win?

The fact that COVID-19 has affected all industries is old news. Since last year, it has come to light that many lawyers & administrative staff are contributing to “The Great Resignation” and leaving their current law firm in shockingly high numbers.

The Great Resignation has been highlighted as an economic trend where employees in droves have been handing in their resignations. This is no longer seen as a fad that started in 2021; as 2022 draws a close, it has impacted not only sectors and services where physical presence is a must –such as food, hospitality, or the healthcare industry – but also other professional jobs, whether employers offer in-office, work from home, or hybrid working options. This challenge is exacerbated for Intellectual Property (IP) practice groups since that field remains to be in high demand, and thus there are more competing opportunities for job seekers. At the same time, IP requires a unique skill set that does not easily transfer from other practices of law. Therefore the volume of job openings often outpaces the number of qualified candidates. At times finding experienced IP staff & lawyers can seem akin to searching for a unicorn.

Legal professionals, especially the younger ones, are switching to other law firms and different careers altogether. The source of this information is not limited to the grapevine. One only has to look at LinkedIn to figure out that The Great Resignation has hit law firms in the US. A search on Indeed.com in October 2022 for IP administrative roles in the US such as paralegal, docketer, etc., brings up over 300 job openings. Firms are reporting extensive challenges in hiring IP administrative staff, ranging from increasing salaries to the inability to find qualified candidates to interview. Some firms have even reported extending job offers, and the candidates simply don’t show up for their first day of work as they secured a better offer from another firm during the interview process!.

Additionally, an article on Youconnect states that over the last year, there has been an increase from 38% to 47% in job changes with lawyers who have one to two years of work experience. Resignation levels for legal professionals with three to five years of work experience have risen from 27% to 32%. (1).

Why is the Great Resignation Happening?

The question arises as to why The Great Resignation is happening. The COVID-19 pandemic forced the world to pause and introduced a break from the hectic pace that characterises any company, especially law firms. Many people took this time to reflect, rethink, and reimagine their options. There was a mass realization that there was more to life than poring over files, courtrooms, battles, judgements, and awards. Combined with relief from work-induced stress, a relook at unfulfilling jobs and a renewed focus on me-time & family life led to the Great Resignation.

Legal professionals in the US who have left their firms give an array of reasons for doing so. These range from ‘needing a new challenge’ to ‘the management does not have a clear vision’, ‘bad bosses’ to ‘want a better work-life balance’ to ‘increased earning potential.’ The younger lawyers & staff, in particular, want to be able to give back more to their community and be active participants in a firm where CSR and pro-bono are not empty terms. They want an inclusive work culture where their voice can be heard and heeded.

Given that opportunities abound for legal professionals, whether experienced or not, it is not surprising that many lawyers and staff in the US are heading for the exit door.