IP Benchmarking: A quick win for in–house intellectual property counsel
The role of an intellectual property counsel is to be a legal advisor for the internal business as well as a manager of external activities related to the legal and IP strategy. Similar to the responsibilities of a general counsel, they are expected to act as advisors and leaders within an organization to drive the growth of a successful and diverse IP portfolio.
While driving this performance, they also need to optimize costs to ensure that the external fees associated with IP do not become exorbitant for the business. This is where IP benchmarking can bring value.
As an IP portfolio grows, each additional IP asset comes with its own set of costs. In many cases, a business will use local agents to protect and enforce IP rights. Therefore, one of the main costs that can become burdensome in a growing IP portfolio is agent fees. Over time, these fees need to be reassessed and compared with the profitability of each IP asset, which can be a cumbersome undertaking, especially with a large IP portfolio that requires resources in multiple jurisdictions.
IP benchmarking is an IP management service that is used to assess and determine whether the current charges applied by local counsels are still competitive for the business needs. In the first stage of the benchmarking process, detailed information is gathered about the current counsels fees being charged as well as the applicable categories of work. This information is gathered within a proprietary online platform and then compared against fees charged to other businesses in similar industries with similar categories of work. Various data will be used to draw the most relevant comparisons, including the industry or industries of the business, the geographical locations of the business and the comparable or competitive businesses.
The results are provided in a detailed report, which demonstrates how the current fees being charged to a business compare with market rates. With this information, an intellectual property counsel can make informed decisions about how a business can optimize costs. The pricing matrix with the report provides them with a breakdown of charges, whereby they can view service provider fees and the acceptable level of charges for their needs. They can also make more informed legal and business decisions about which IP assets are profitable to maintain within their portfolio.
When an intellectual property counsel has decided on the pricing levels that make sense for their business needs, the IP service provider works with local counsels and attorneys network to negotiate new fee agreements, thus lowering future counsel fee billed to the business. Overall, the process of IP benchmarking aims to ensure that a business is not overcharged for services from external counsels. However, the information gathered through the process can also provide valuable insights into how funds are allocated for IP management.
Managing and leading activities for an IP portfolio in a cost-effective way can present many challenges for an intellectual property counsel, especially when operating within a global market. By using an IP benchmarking service, it can provide clarity, transparency and control over external IP service costs. It ensures that a business is not unduly overpaying for external counsels.
Whether the goal is to optimize costs, renew counsels agreements or gather information for internal knowledge sharing, the first step in an IP benchmarking project to carry out preliminary research to understand how a business works with its counsels. Brandstock works with IP counsels to help them through this process by creating a bespoke strategy depending on their desired outcome of an IP benchmarking project. On average, our projects result in over 30% cost savings to businesses. We have also helped clients to consolidate and optimize their counsels networks, providing control over their external resources as well as their budget. Contact our team today to find out how more about the benefits of IP benchmarking.