Administrative Savings for Your IP Budget

Cost Controls, IP Management

Saving on legal spending is top of mind for most in today’s market.  Finding ways to transition to less expensive legal services without the sacrifice of quality and value is a big task.  A thoughtful approach and some short-term expense will be required, but may be worth the investment.  This article outlines just a few ideas to consider for reducing costs in the area of intellectual property.

A place to start is a simple review of your outside counsel invoices.  There are likely traditional billable events that you can ask outside counsel to stop performing thus reducing unnecessary billing.  What might seem to be a small expense at first glance may add up over the course of a year and be particularly significant for a high volume IP portfolio.  Ask yourself if there are elements of the work within your IP portfolio that could be handled differently?  Perhaps some of the activity could be handled less expensively with the appropriate people, systems and processes in place.

Here are a few ideas to think about.

Reminder Letters – Do you really need them?

If you receive more than one reminder letter relating to a foreign filing deadline, PCT national stage application, broadening reissue deadline, etc. then consider the following.  Cut down on the number of reminder letters and chose when you’d like to receive reminder letters.  Receiving a reminder letter that doesn’t cause you to react to it may be an indication that you either don’t need it or the reminder letter is being sent to you too soon.

Additionally, if your company has engaged a payment service to take care of the payment of your annuities and maintenance fees, then reminder letters from outside counsel aren’t necessary.  For U.S. issued patents, consider filing a Fee Address form changing the fee address from outside counsel to the company so that all post-issuance maintenance fee statements are sent to the company rather than the law firm.  This change can be easily accomplished when the Issue Fee is paid.

More About Annuities and Maintenance Fees

The process of paying a company’s annuities, maintenance fees, or renewals is mostly administrative in nature.  Although tracking these payment deadlines is extremely important, it doesn’t require substantive analysis.  Savings can be realized by working with a payment service provider, taking this activity in-house and training your staff to handle the payment process.

Changing the U.S. Patent Office Correspondence Address

A more focused approach to saving outside counsel expense is to change the U.S. correspondence address from outside counsel to your internal IP legal department address.  This allows the client to gain better control over the work that outside counsel is performing by receiving all correspondence and only sending work to outside counsel that can’t be handled internally.  Implementing this process will immediately cut down on reminder letters and incidental activity from outside counsel.  Granted, in order to be able to handle this activity it becomes necessary to have the appropriately trained staff and docketing system in place to handle the influx of correspondence.  However, the upfront investment in these systems can save you thousands of dollars on your IP budget.  One company reportedly saved $600,000 a year by simply putting this process in place.

With a good docketing system, trained personnel and standard processes and procedures in place, the return on the investment could begin to make a noticeable reduction in your IP budget.


Suzanne Kiefer is a consultant with twenty years legal experience who assists corporations and law firms in cost- saving recommendations, assessing and implementing enhanced IP docketing practices for patents and trademarks, improved workflow processes and non-attorney staff training.  Suzanne can be reached at 214-683-5662 or