Canadian Lawyer InHouse

33 CANADIANLAWYERMAG.COM/INHOUSE JULY 2017 He saw it as an opportunity to start from scratch and figure out what the legal department needed to do to answer those budget questions. "Anyone else in Silicon Valley could an - swer these questions and the fact we can't is really quite sad. We needed a plan to stay on budget and track progress towards that — ask how are we doing right now and esti - mate the next year, two years, four years and five years down the line. What's our budget going to be like? What's the impact of de- cision-making today in the long term? Did our spending reflect priorities? How can we use data to project the cost?" The other important factor Ishimaru knew was that any time you provide a bud - get, management is likely to say take 10 to 20 per cent off of that. In a situation like that, you have to look at things you can control, what is optional and what can be pushed off. He realized they needed cost and docketing data — what actions are happening now and what will be happening in the near future. "At the beginning, we didn't have much data, but we were in a position to use data. We could go to the law firms and say if you want to do work with us you have to give us cost savings but also have to give us data in a certain way, so not only were we thinking about how to use the data but also make sure the law firms complied with what we were asking. It was about how will we review all the invoices and how can we control them? Yahoo had caps and fixed fees for certain things and still some hourly rates. It told its law firms they could only bill for completed work. "We needed to be on the same page as our law firms and make sure we were talking about the same things. For example, in RFPs, comparing apples to apples," he said, noting that CLOC is bringing together different groups to try and come up with industry guidelines for a common vocabulary in this area. Eventually, it did a budget and narrowed down its external law firm roster to one third of the law firms it was using. "We were able to look at trend lines and say if we have 800 cases every year they will sit at the patent office for two years and then we will hit a period of activity and so then we will start to see where our costs would increase 20 to 30 per cent," said Ishimaru. Looking at that kind of trend line will help the department prepare finance for the cycle and how much money it will need to spend. "Now we're preparing well in advance of the consequences," he said. "We also started providing feedback on the patent group in - ternally so we could look at are we doing what we want given the strategy we have." IH There's a lot of data and strong incentive to improve and everyone likes to win. DAVID ISHIMARU, Yahoo, Inc. Innovative businesses choose Smart & Biggar — the recognized leader in intellectual property O t t a w a / To r o n t o / M o n t r e a l / V a n c o u v e r / C a l g a r y U N PA R A L L E L E D I P Canada's Intellectual Property Litigation Firm of the Year Benchmark Canada Awards 2017 Canadian Trademark Contentious Firm of the Year Award Managing Intellectual Property's North America Awards in 2017 Band 1 for Intellectual Property Law in Canada Chambers & Partners – The World's Leading Lawyers for 2017 edition Top Tier for Intellectual Property in Canada The Legal 500 Canada 2017 S M A R T- B I G G A R . C A Untitled-6 1 2017-04-13 3:43 PM

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