Tech innovation is expected to fuel IP filing boom over next 12 months, study finds

UnitedLex survey also shows that regulatory changes and resource constraints are weighing on IP teams

Law firms and in-house teams expect IP filing volumes to increase this year Shutterstock

A majority of US intellectual property lawyers expect IP filing volumes to increase over the next 12 months as rapid advancements in technology prompt organisations to protect their inventions, according to a new study by UnitedLex.

The 2024 IP Impact Study: Trends in Benchmarking Value found that 70% of in-house lawyers and 65% of law firms expect patent and trademark filings to be higher this year, while only 1% of  in-house lawyers and 5% of law firms expect volumes to decrease. 

Most respondents are also optimistic that IP budgets will increase this year to support the pace of activity, despite a broader strain on resources. Just over two-thirds of in-house teams and law firm IP departments expect IP spend to increase this year, with much of that investment being focused on hiring support staff, IP management tech or speciality IP service providers.

Joe Dearing, executive vice president for IP solutions at UnitedLex, said: “Companies are understanding that the value of their organisation is more and more dependent on their IP. There is a heightened mandate for IP teams to protect their companies’ assets while demonstrating operational rigour and fiscal accountability.”

Increased IP activity is creating challenges for in-house IP teams and law firms. A majority of in-house teams (62%) said regulatory change was a top five factor negatively impacting the return on investment of their IP portfolios, followed by product development (55%) and resource constraints (45%). Law firms said resource constraints was the most common factor negatively impacting the profitability of IP prosecution work (57%), followed by the cost of hiring specialist IP lawyers (57%) and regulatory changes (48%).

The survey highlighted that the IP prosecution tasks creating the most drag on in-house resources are trademark clearance activities (46%), followed by invention disclosure statements (44%) and trademark filings (43%). By contrast for law firms, the biggest drag on resources are drafting office action responses (59%), docketing and double docketing (54%) and invention disclosure statements (47%).

Dearing said: “Headwinds and operational drag impacting IP teams, including the growing number of US and global filings, the scarcity of IP expertise and protocols to mitigate risk, make IP a costly business function if not measured and managed strategically.” 

The report outlines that in-house IP teams need to get a better handle on their data to demonstrate the value the IP department is delivering to the wider business so it is not just seen as a drain on company resources. Some 55% of in-house teams said product revenue is a key focus when demonstrating value to senior executives, followed by IP portfolio growth (51%) and litigation outcomes (46%).

Rajitha Boer, UnitedLex chief client officer, said: “There are very few organisations I have seen that have turned their IP departments into a revenue generating department rather than a cost centre. If in-house teams can show they are generating revenue, it makes their life so much easier, because they are moving the dial for the company.”

The report was based on a survey of 200 in-house legal professionals and law firm IP practitioners in the US including practice group heads, general counsel and chief IP officers.

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