Canadian Lawyer InHouse

JULY 2017 32 INHOUSE In-house groups retain outside counsel to help maintain patent assets, but unlike other matters in a legal department that receive direct oversight, such as litigation, with patents there are thousands of things in the pipeline without direct supervision by in-house lawyers. "It's common to use multiple law firms and, therefore, we're probably very annoy - ing to our legal operations people," he said. Every morning when he arrived at work, a paralegal he worked with would have two stacks of mail to go through containing critical activities related to the company's patents. "We had a very primitive home - made docketing system just starting to be populated. They would open the envelopes and see that we missed a filing deadline so we would call outside counsel." Ishimaru pointed out that much like the Oakland A's, he decided the in-house de - partment in charge of patent assets needed to get creative and efficient in how it was us- ing its external counsel payroll. "They [Oakland] had a lot of opportuni- ties to say 'we can't compete on money, we have to use our money more efficiently and challenge traditional inefficiencies,'" he said. The Oakland A's started measuring what contributed to a win and using data to mea - sure a player's contribution to a win and where a market was undervaluing players so they could more efficiently use their money and optimize where their money was spent. So what do Moneyball and patents have in common? "There's a lot of data and strong incentive to improve and everyone likes to win," said Ishimaru. Some lessons he has taken from the Moneyball book around gathering the right data include: • What are the right questions to ask? Make sure you're asking the proper questions. • Look at whom you are paying money to. • Ask tough questions and ones you can use data to support. "If you don't have data to back it up, you can't measure if you're wrong or right in your assumptions," he said. • Know what your data's strengths and weaknesses are — is it good for projections or trends? Maybe, but it's not what may ac - tually be happening two years from now. • Past performance is not always an indication of future success, but it can be. There are a number of things statistics don't measure. They also tackled the issue of budget — just how much was the department spend - ing on patent asset work and what would be demanded for the future? "When we first started, if you had asked us what we were spending, we would have said 'let's go talk to the law firms and try and get an answer.' If you said what will we be spending a year from now, we'd say 'let's go talk to the law firms and ask them,'" said Ishimaru. "At the time, we had 30 different law firms working on patent prosecutions — many of them were not working on very many cases and so, in order to get their at - tention and get them to give us information, it took a long time." Don't let Canadian copyright, trade-mark, and patent laws cloud your clients' horizon. DW 2 can help you find the silver lining. DWW.ca Intellectual Property & Technology Lawyers Patent & Trademark Agents Find the silver lining in IP law. Go Green. ntitled-10 1 2017-06-06 3:25 PM

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