Published On: March 13th, 2020Categories: Patent Applications, Patent Portfolio, Patents

In-house patent counsel has the difficult job of satisfying multiple constituents, including inventors, business unit executives, outside counsel, the GC, and even the CFO, who have disparate goals.

To succeed despite these formidable challenges, in-house attorneys can take a leadership role to build a patent portfolio development process that drives IP development forward, on budget and in alignment with business goals. By strategically leveraging all available resources, in-house patent counsel can establish rewarding working relationships with key stakeholders and achieve desired outcomes.

The first step is to set global IP priorities in collaboration with the GC and company business executives. Once created, this strategic foundation will then facilitate budgetary decisions and goal-setting for the patent department. Establishing clear objectives and precise measurement from the beginning is essential. This allows in-house patent counsel to apply the right resources to deliver quality results. Both human and technology resources can play pivotal roles to help in-house patent counsel transform the patent portfolio development process.

Leveraging Technology Resources

Technology can be used to automate many processes, relieving the support staff from performing onerous repetitive tasks and running the operations smoothly with minimal care. Whether cloud-based or on-premise/server-based, software solutions can be ideal for replacing more repetitive, predictable processes like invention disclosure processing, awards management, docketing and other such routine tasks. However, more skilled activities that require human effort, such as claim drafting, are not yet ready for automation. When used judiciously, technology can be leveraged to enable greater visibility, efficiency and results.

Using KPIs for Improving Outcomes

Data-driven metrics and key performance indicators (KPIs) can provide tremendous insights to shed light on the patent portfolio development process. In many cases, these resources provide greater visibility, while also setting a higher standard of rigor and performance. Relevant measurements reveal activities and results that reflect progress.  also expose where progress is lacking.

Metrics, such as KPIs, provide business intelligence about what the patent department is achieving. A KPI is most meaningful when measured against a specific goal. Assessing and analyzing KPIs can inform workflow efficiency, progress toward goals, and expenditures, thereby optimizing the department’s ability to do its part to achieve company goals.

Actionable metrics are always preferable because they can lead to process improvements and efficiencies. If the metrics indicate deviation from the targets, proper corrective actions become apparent. If the business goals shift, the metrics should reflect those changed goals.

Motivating Inventors

Developing a strong invention disclosure pipeline is essential to a quality patent portfolio that reflects the company’s business goals. In-house patent counsel can use KPIs when working with inventors to achieve a robust disclosure pipeline. Inventors may not be motivated to submit invention disclosures. Setting measurable goals and KPIs, providing incentives and streamlining the submission process are all good ways to monitor and inspire action. Measurable goals may include the number of invention disclosures an inventor submits, or the number of patents filed and/or granted for individuals or teams. Goal achievement can be rewarded with incentives which may include monetary rewards, swag, awards or online portals where inventors’ names are posted for “bragging rights.”

To reduce friction for inventors to submit invention disclosures, the invention submission process must be intuitive and easy. Technology solutions can simplify the submission process, especially if they require very few clicks and require only the most essential information. Going with the grain of human nature, the easier the submission process is, the more often inventors will submit inventions.

Managing Outside Counsel

In-house counsel typically works with a lean staff, and therefore relies heavily on outside counsel.  In-house counsel can enforce accountability from outside counsel by establishing benchmarks for their performance. KPIs for outside counsel could include performance ratings for quality of the output (perhaps ranked in comparison with peer firms), and billing conformance to budgets.

Patent Department Goals

A culture of measurement can also benefit the in-house patent department itself. Performance metrics could include time taken to process invention disclosures; number of applications filed; the number of patents issued; conformance to budget; how effectively are the company’s products covered by the company’s patents, and the like. Metrics can also, for example, evaluate the quality of the overall patent portfolio, indicating its breadth, relevance to the business, and lasting integrity and defensibility of patents.

Budget Management and Resource Utilization

From a financial standpoint, in-house patent counsel is accountable to both the GC and the CFO (and potentially to the business units) to stay on budget. Quarterly or even monthly reporting requirements on budget necessitate real-time accountability and visibility from both patent counsel and the GC. IP counsel must look at the budget and business to determine which activities to prioritize and when.

Setting goals will help determine the appropriate deployment of resources. If there is a major strategic push for patent portfolio development in a particular jurisdiction, then additional resources must flow to support IP activity accordingly. Or, if a particular area of the business is being phased out or declining in importance, resources must adjust to reflect that decision.

A Unique Opportunity to Lead

In-house patent counsel has the unique opportunity to lead transformation of the patent portfolio development process by harnessing and leveraging diverse resources. Goal-setting and KPIs are great allies to align patent activity with business goals. Their results will determine which resources are needed for global patent portfolio development. Using goals and measurement tools, human resources including in-house attorneys and staff, inventors, and outside counsel are motivated to deliver optimal performance. Implementing technology solutions can automate processes to make them more effective and efficient. By creating a more dynamic and measurable work environment, in-house IP counsel is well-positioned to lead its departments to greater success.

D. Bommi Bommannan is a patent attorney and CEO of MaxVal (, an IP management software company. Bommi earned his J.D. from Stanford Law School and his Ph.D. in bioengineering from UC Berkeley and UC San Francisco.

Read this article on Corporate Counsel.

Reprinted with permission from the March 12, 2020 edition of Corporate Counsel © 2020 ALM Media Properties, LLC. All rights reserved.

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