IP Portfolio Evaluation and Management

Improved management of IP raises portfolio value while reducing costs

IP portfolio costs reduced while IP portfolio value increased

The client, a leading global mobile network operator, had very successfully focused on homegrown innovation over a 7+ year period which resulted in the accelerated growth of their patent portfolio.  While the growth was very positive, they faced the side effect of increased patent prosecution cases and maintenance costs that were growing at a rate of double digits year over year.

As they faced rising maintenance costs, there was also significant pressure across the organization to cut costs. The IP management team found themselves in a position where they had a backlog of patent applications in the prosecution process and the caseload was becoming difficult to manage. They were spending a considerable amount on outside counsel and prosecution deadline extension fees. They knew they could curb this spending, but like many IP departments, they were struggling with resources. To address this, they wanted the ability to better predict and report the quarterly costs of the growing portfolio to better manage the budget.

IP Portfolio assessment, strategy, and management

The client reached out to ClearVeiwIP to conducted a handful of initial workshops and consultations to establish the strategic priorities for their patent portfolio. Once strategic goals were defined, a criteria was created to rank the patent portfolio against. The next step was to develop a scoresheet to rank each asset in the patent portfolio against the established criteria. From there, ClearViewIP provided recommendations regarding the target portfolio size and feasible cost-saving targets based on industry benchmarks. Next, ClearViewIP designed a monthly review process to review cases as they came up for renewal and to track cost savings. Over the 18-month period of the project, (x number) cases were reviewed to recommend which cases to keep or drop and the rationale for each decision.

Over the course of 18 months, the client was able to fully streamline their portfolio and significantly reduce costs. This project required some, but not a considerable amount of the client’s time. For the first six months of the project, the client allocated one senior and one junior IP professional to support the effort, which required about one day a month from each of them, six days each. After which, the client’s junior IP professional was able to lead the remaining 12 months of the project.

Significant cost savings and improved processes with strategic IP management

Over the course of the 18 months, the client achieved a cost savings of about 40%. The investment in the project lead to a 10X ROI. Even while reducing overall costs, there was no negative impact to the defensive capability, monetization potential, or strategic value of the patent portfolio. ClearViewIP helped the client identify and cluster patents for future monetization projects to drive additional revenue. No renewal deadlines were missed and no extension fees were needed. All patent renewal decisions were made on time and were based on specific value-driving criteria. In addition to avoiding extra fees and missed deadlines, outside counsel feels were also reduced. Within the first six months of the project, the prosecution backlog had been cleared and the interactions with legal counsel was limited to situations where specific expertise is required.

  • 40% savings in overall portfolio management costs
  • 10X ROI from initial project investment
  • Increased strategic value of portfolio
  • Additional monetization and revenue opportunities identified
  • No missed renewal deadlines, and all renewal decisions aligned with business goals
  • No extension fees
  • Less money spent on outside counsel

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