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Legal19 July, 2017

Do more with less: Bring IP management in-house with the right tech

Patent filings are on the rise, but in-house IP management budgets are shrinking. That according to the annual “2017 Global Patent & IP Trends Indicator” report from patent filing services provider RWS inovia, which found that while patent filing are up 16 percent over last year, one-third of in-house counsel surveyed have dealt with IP budget cuts in 2016.

To deal with their shrinking intellectual property budgets, 35.5 percent of in-house counsel are bringing IP management work in-house. In fact, according to 86 percent of those surveyed, reducing costs was the main driver for bringing patent work in-house.

The report highlights what we’ve known to be true of in-house counsel for awhile – GCs are consistently finding ways to do more with less. And technology is driving this increase in efficiency.

Using technology for IP management

Technology is helping legal department manage contracts, claims and compliance – so why not IP

The core of IP management is being able to effectively track the status of your IP portfolio and protect it from risk. Once you have registered your IP rights, including patents, copyright, and trademarks, it’s your responsibility to protect them by ensuring they remain valid. In-house counsel need to choose the right solution that will help them proactively manage intellectual property registrations to avoid missing renewal deadlines.

Furthermore, in-house legal teams may also have to retrieve old registration documentation, automate or standardise tasks related to filing and renewal, and report on IP protection activities.

Here are some key features to look for when implementing an in-house IP management solution:

  • Document storage: Whether you’re filing a registration in another jurisdiction, or renewing an existing registrations, having all your IP information in one secure database can save you time. Look for a solution where you can organise, manage, and store current and historical documents, information, art, and logos related to your IP registrations.
  • Alerts: Missing a deadline can have serious negative consequences for your business, as well as other parties like licensees. You simply don’t want to leave renewals up to chance. Choose a solution that helps you monitor approaching renewal dates.
  • Tasks & Workflows:  tasks and simple workflows can help you standardise who does what when it comes to filing and renewals. When you use software, you can see the real-time status of the IP management lifecycle. By keeping track of tasks, you can ensure that enforcement, licensing, and other critical tasks don’t fall through the cracks.
  • Reporting: Can you quickly export a map that shows where your IP is registered and by which authority? What about a list of the IP registrations that expire in the next 3 months? Don’t settle for a solution that doesn’t empower you to see exactly where your risks lie.
  • Security: It should go without saying, but you don’t want to settle for any solution that puts your IP data at risk of loss. Cloud-solutions offer legal departments the ability to increase access to shared documents and move away from less secure methods of document storage, like paper files or saving files on a hard drive.

Bringing IP management in-house not only makes sense from a budget perspective. When you have full oversight over your legal risks, you can assume a more strategic role in your organization. Find out more about how technology can help boost your visibility with the C-suite in our ebook “The Changing Role of General Counsel”

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