22 March 2012

Cost optimisation in a challenging trade mark world‏

I've recently read a report on trends in IP management. (Of course, the responses may not be truly representative of the global picture but let's assume they are.)

I'll concentrate my commentary on trade marks as this is my core area of expertise. It is not surprising that 93% of trade mark professionals say controlling costs is important.

Litigation costs are of most concern. The best lawyers are needed in order to fight litigation cases and they don't tend to come cheaply. Nevertheless, for key jurisdictions where there are a number of good law firms, large organisations should not be reluctant to shop around. Trying different approaches can work too. Negotiating a (bigger) blanket discount could be appropriate. Or debate dangling the carrot of juicy litigation but expect a firm to provide standard trade mark registration and prosecution services at beneficial rates. Alternatively, consider retaining some firms as pure litigators and use other (less expensive) firms to handle the less complex matters.

When it comes to trade mark registration, searches and portfolio management, these are more controllable.

When it comes to searches, the number of FREE tools out there to conduct preliminary searches is growing. I've blogged on Europe and the US before. Since then Avantiq now offer 35 databases for a free identical overview. Of course, free tools provide a lot of peace of mind when it comes to costs. I'm not here to endorse them but being aware of free tools should be helpful.

The commercial search providers are increasing the number of databases available on-line all the time. These tend to work on a price-per-hit basis which, to me, does not help transparency when it comes to costs. Consider a subscription for these (although they often have a "fair use" policy) and limit this to key databases that you need to check regularly, if necessary. Strategise which ones will give you the most value. If it costs, say, €1000 a year for one country's database this may seem reasonable, but if it is used merely as a preliminary step and you are still proceeding with nearly as many (non-clearing) full availability searches then you might not be recouping the costs.

Obviously the ease of use of a commercial database is important to ensure best internal efficiencies and do be careful not to be sucked in by a "our platform contains 70+ trade mark databases" if 80% of your portfolio is in, say, 20 countries.

I've worked in organisations that need global trade marks and then those that look for localised or regional brands. For the former, the commercial databases can be great as you can check multiple databases through a single platform. There can be costs incurred due to the number of hits but these could well be outweighed against the lengthy amount of time it would take to check multiple databases independently.

However, if your organisation has a local or regional approach to trade marks then many Trade Marks Offices provide free databases to check. These can be in the local language but if the field for trade mark is not apparent, a quick translation of the page through Google can usually point it out. Be careful in some countries that are members of the EU and/or the Madrid Protocol but where the Community and International Registers need checking separately.

Having multiple resources to check requires set down guidelines containing quick links to the appropriate web pages. This will be time-consuming to prepare - and with databases developing and new tools coming to market it will always be work-in-progress - but most would see it as worthwhile. Having a gatekeeper for this procedure can be good, alternatively having collective responsibility can keep it fresh and updated. Much of this can depend on department culture. But now you're thinking this sounds great but would never happen in our organisation, the procedure would get started and then put on the back burner and forgotten about? That's when you need to give someone like myself a call and have a procedure drafted up and presented to your team in an agreed time scale. If need be, have the external consultant review it each year too. A good consultant will be able to analyse and explore options for your paid-for searches too so you are getting the best value. The best consultants will be impartial to the various options available.

Consultancy is an area that was identified as requiring support by trade mark professionals. I can understand this. The definition of "consultancy" is broad but I'll narrow it down - for the purpose of this blog - to process management which can include when you go to suppliers and who those suppliers could be. It is important to have robust but easy-to-follow procedures. It can be very useful to have an outside pair of eyes look at internal processes. I've walked into an organisation before and with some remarkably small tweaks have enabled it to become more efficient. When you are busy with day-to-day work it can be difficult, to use an English phrase, to see the wood for the trees. Bigger changes can often require more selling. I've suggested wacky changes in the past - they've not been entirely serious but they can get other people thinking. The creativity of the collective can be an amazing tool.

"Old fashioned" methods are not always a relic from the past that we must move away from. Their simplicity can be undervalued. With some original thinking these can often be adapted to modern infrastructures.

Outsourcing was rated less important than consultancy although depending on your definitions there is an overlap. In terms of managing a trade mark portfolio, I would anticipate this is where trade mark professionals outsource the most, particularly with renewals and watching.

To be honest, outsourcing is not always going to save you external costs. If you're a big organisation then many of your agents will be giving you discounted rates so you can argue that the discounted rates an outsourcing company has negotiated may not be much greater than what you already have; then take into account the provider's charges. However, outsourcing the risk and having a reduced internal administrative burden can produce savings that are less easy to see. When you're located somewhere where recruiting staff is difficult it can be additionally advantageous.

Staff can be very much anti-outsourcing. To some they take it personally as though they cannot be trusted with, for example, managing a renewal programme. Some fear for their own jobs. It can be something to genuinely fear, but outsourcing can free up time to allow staff to be more value adding to a business and be seen as less of a cost figure. In any case, often there will be retirements or resignations regardless and any job losses outsourcing contributes to will be natural rather than forced.

From my side, the challenges being faced have made people be more open minded to changes as they view them as more necessary. Openness has to be a good thing.

A "one-size fits all" approach is inappropriate. Professionally I enjoy going into organisations whether I am given a blank canvas or something with more specific aims.