ACC Value Challenge Resource Library - The 2015 ACC Value Champions

The JPLT created a new program in which all worldwide patent assets are reviewed for strategic return. Departmental paralegal Heidi Woods created a collaboration site for outside counsel to input all decision points for the quarter—everything with a deadline:

• U.S. office action responses

• U.S. restriction responses

• U.S. issue fee due

• U.S.-issued patents with annuities due

• Foreign office action responses

• Foreign annuities for pending and issued cases.

This technology-enabled system equips the two patent attorneys on staff—Bhuta and Megan Sugiyama, director for IP—to assess the value of 500 to 600 patent assets every quarter. That assessment now includes a consideration of the asset’s value in a review and pruning strategy that prioritizes assets for continued investment.

As a result, patent prosecution costs have been reduced by 10 to 11 percent, although Bhuta cautions that this figure can be deceptive, and underestimate the true savings:

“Mid- to long-term savings from this initiative can far exceed immediate savings,” she says.

“For example, if a patent application gets
abandoned today, we may have saved $3,000
in outside counsel fees in the immediate
moment because we don’t have to file a
response to a communication from the patent
office. However, had the patent application
continued to be prosecuted, we would have
likely incurred tens of thousands of dollars in
cost over the next one and a half years in order
to get the patent application issued. Then,
Juniper would have incurred tens of thousands
of dollars to keep the patent alive until
expiration by paying annuity fees to the patent
office. As a result, 10 to 11 percent is really the tip
of the iceberg of cost savings from this project.”

Heidi Woods, along with the JPLT, set up a budget analysis system in which outside counsel provide monthly estimates for the quarter and beyond on legal costs associated with a fixed set of fee categories for new filings, U.S. prosecution cost, foreign prosecution, and U.S. patent office expenses. The JPLT then worked with outside counsel and the finance department to ensure that the right fees were associated with the right fee categories. Outside firms are better able to predict spend and provide estimates that enable accurate budget forecasts, and the goal of achieving budget targets within 2 to 3 percent has been achieved.

“The initial reaction from the outside firms was positive,” Bhuta says. “They went back and forth with us, generating ideas and helping to customize the necessary spreadsheets. We worked closely with them and with our finance department to generate the model and bridge the gaps between the three.”

McKenzie has a few words of advice for aspiring Value Champions: “Communicate with your outside counsel not only what you want but why, and what you plan to do with it. Emphasize that accuracy is more important than coming in under budget. This turned on a light bulb for them.”