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David Donoghue: IP Budgeting for Small & Mid-Size Companies

by R. David Donoghue on June 20, 2012

This post originally appeared here on June 19, 2012, and is reposted here with the author’s permission.

I recently attended and spoke at the Rocky Mountain IP Institute in Denver.  It was the second year in a row I have attended and spoken at the Institute.  In my opinion, the Rocky Mountain IP Institute is one of the two best IP CLE events (and destinations) in the country.  As evidence of that, the following is one of a series of posts from the excellent presentations over the two days of the conference.  I encourage you to consider joining me at next year’s Rocky Mountain IP Institute.

This presentation focuses upon budgeting IP matters for small and mid-size companies.  The panel was moderated by Molly Kocialski of Oracle, Chris Amrhein General Counsel of ADA-ES and Jeff Thurnau Chief IP Counsel of Gates Corporation.  The session provides valuable insights to both companies facing their first IP litigation as well as companies that have established IP budgets, but want to refine their best practices:

  • Budgeting requires an understanding of your businesses and business priorities.  A budget divorced from the business goals and realities is a failed budget.
  • Educating business  people, engineers and other stakeholders is a key part of budgeting.
  • Clearly identify the variables and uncertainties that may change or break the budget with your business people up front.
  • Consider establishing a deep relationship with a firm rather than shopping every project around.  You can save money while preserving quality long term with deep counsel relationships, as opposed to finding the lowest cost provider.
  • Look for counsel before you receive the cease & desist letter or the complaint.  Relationships developed before an immediate threat can be more valuable and save significant resources, both in terms of economics and coaching up new counsel.
  • You need to understand what your business people want from counsel – do they want a name, a particular relationship or a specific expertise.
  • Develop a relationship between outside counsel and your business people to establish credibility and trust.  It costs some time up front, but pays dividends in business trust and confidence throughout a case.  But do not remove in-house counsel completely.  A business person who does not realize the costing realities can run up a huge bill calling counsel directly without in-house input.

R. David Donoghue, a partner at Holland & Knight, was a faculty member at the 2012 IP Institute. He blogs regularly at the Chicago IP Litigation Blog and the Retail Patent Litigation Blog.

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