IP Asset Management and Litigation Costs
Published By Executive Counsel May/June 2006

Q: What are the one or two key issues you will need to address in your practice area in the coming months, and what business developments are driving them?

The executives I serve are usually IP counsel or general counsel; sometimes they are presidents, CEOs or managers of technology functions.

Two issues that have become more prominent recently are intellectual asset management and IP litigation cost control. Companies are becoming more focused on using patents they have obtained and acquiring patents that can be used profitably. Bottom line profitability concerns are requiring companies to justify the cost of maintaining these assets.

There is much more creativity in analyzing a patent portfolio: selling unneeded patents, licensing valuable ones, or litigating those that provide desired market exclusivity. Also, the continued increase in patent challenges and litigation is requiring companies to amass patent portfolios that can be asserted defensively.

Patent, trademark and copyright disputes that cannot be resolved amicably by sale or licensing of the assets are now more likely to move to the courts. Litigation budgets for companies that thought themselves immune from such challenges now double or triple as patent owners stretch the scope of their patents. As a result, cost-savings has become a major issue. In-house counsel and managers demand expense predictability and “no surprises” from their outside litigation counsel, with alternative fee arrangements, forecasts, and updated budgets. Trial lawyers are having to become cost- containment partners with their client companies so that the litigation expense balances the market value of asserting or defending against the patent infringement.

Reproduced with the permission of Executive Counsel magazine.