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.”
Impressive collaboration model that could be easily replicated by other
departments of any size; zero percent increase in outside legal costs –
simply Wow!
FROM THE
JUDGES