New Year’s Resolution – Optimize my IP Department

03 Jan

By: admin

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.