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Intellectual Property Rights Explained 

Strategies to Elevate Trademark Prosecution Efficiency and Profitability

Insights on reducing operational drag, smarter resource allocation, and value creation

The landscape for intellectual property teams has never been more dynamic. The steady rise in trademark filings – fueled by globalization, technological advancements (especially AI), and brand protection needs -presents both significant opportunities and operational challenges to IP practitioners.

Trademark prosecution work is booming, operational efficiency is lagging.

According to a UnitedLex 2024 IP Impact Study, a majority of law firms and in-house respondents expect IP filing activity to increase. However staying on top of trademark prosecution work is increasingly challenging, with 57% of law firms and 45% of in-house survey respondents citing significant operational drag caused by the regulatory environment, driven by evolving AI and data privacy rules, and resource constraints.

As a result, corporate and law firm IP programs must be very conscious about how they allocate their limited resources to achieve an optimized balance between protection and efficiency for managing their assets.

In this blog, we explore the trends and opportunities facing IP teams and delve into strategies for enhancing trademark prosecution processes.

Clearing trademark prosecution obstacles with strategic resource allocation.

67% of law firm and in-house teams, according to the 2024 IP Impact Study, expect budget for operational infrastructure to increase–and they are looking critically at how and where to spend money to cut bottlenecks by focusing on people and technology.

Technology is a growing area of investment for law firms and in-house teams, with more than 50% investing their IP dollars in IP management technology to streamline trademark prosecution workflows. Data analytics tools, used by roughly 80% of law firms and in-house departments to support their trademark work, can automate tasks and promote faster, data-driven decisions. However, technology is only as effective as the experts that support and optimize the systems.

As it relates to people, the cost of hiring trademark attorneys and support staff to manage technology and administrative prosecution tasks is high, especially in the U.S. Many firms and corporations realize that there are so many different things that need to be done to manage a trademark portfolio—from understanding (and anticipating changes in) the regulatory environment and knowing competitor movements, to adjusting licensing tactics for maximizing value to the business—that they need alternative methods to efficiently meet the demands.

For many, this means relying on external support to manage trademark prosecution workloads and ensure IP teams are not overstretched. In fact, 61% of law firms and 55% of in-house survey respondents invest in specialty IP service providers for support in areas that do not necessarily require the expertise nor the cost of an experienced attorney.

With growing budget allocation to specialty IP service providers, law firms and in-house teams are integrating IP professionals into their teams and processes to access fast and effective scalability for trademark prosecution work, while also realizing cost savings against budgets.

Finally, investments should be viewed through the lens of well-defined, documented processes, which are foundational for managing trademark prosecution activities. Documentation is critical for knowledge transfer when employees leave or change positions, promoting institutional knowledge, and integrating outside IP support into existing processes. Doing so pays dividends throughout the future as it mitigates using lawyer hours to manage day-to-day activities.

Shifting trademark prosecution activities from a reactive state to a high-performing practice.

The future of efficient, high-performing trademark prosecution activity lies in strategic and practical resource allocation, creating a happy medium that allows organizations to shift work to, and share work among, providers. Hybrid models are a win-win for IP teams. They allow the teams to enhance their return on intangible assets, elevate IP operations and practices while reducing operational overhead, and shift from being a cost-center to a value creation center—positioning themselves as an essential piece to the business achieving its overall objectives.

Start your transformation journey with a free trademark search. Schedule your meeting here.

This posting includes insights from a webinar UnitedLex hosted on September 10, 2024, Managing Trademark Workflows More Efficiently and Profitably, featuring Charlene Krogh, Partner, Dorsey & Whitney LLP, Anna Sosis, Senior Legal Counsel & Trademark Agent, TD Bank, and Sam Lantor, Director, IP Services and Solutions, UnitedLex. Gene Quinn, President and CEO, IP Watchdog, Inc., moderated the webinar.

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