Headquartered in Annapolis, Maryland, TeleCommunication Systems, Inc. (TCS) is a major provider of secure and highly reliable wireless communications. The company’s legal department faced several challenges in its intellectual property (IP) process including accurate, cost-effective patent portfolio management and expensive operating costs and outside counsel fees. TCS needed a software solution that would establish efficiency and yield significant savings, allowing management to quickly see its return on investment.
Seeking to resolve these issues, Bob Held, Vice President of Intellectual Asset Management at TCS, conducted a search for a new IP management system with colleague Carol Parker-Hines, Intellectual Property Manager at TCS. After considering two competing products, TCS chose Lecorpio, the leader in cloud-based enterprise IP management and analytics solutions. Recently, Elisa Cooper, VP of Marketing at Lecorpio (pictured) interviewed Bob and Carol about why TCS selected Lecorpio, how the implementation went, and how TCS has benefited since.
Elisa: What were your main motivations for seeking an IP management solution?
Bob: TCS manages a portfolio of more than 300 patents with a small legal team. Our portfolio has doubled in size in recent years, and our costs were very high. Because outside counsel managed the IP docket, each time that the USPTO sent an office action to outside counsel, it cost us around $200 to forward the mail to us, resulting in a monthly spend of around $15,000, in addition. We wanted to reduce our reliance on external resources. Overall, we needed an advanced system to manage our patents from start to finish. We needed to bring our docket in-house and be able to view a patent’s entire prosecution history, licensing and royalty details onscreen, per IP matter.
Carol: The Excel spreadsheet used by outside counsel did not allow us to track or docket USPTO communications. Because it was a spreadsheet, it contained many inaccuracies and was difficult to search because the pertinent filing information was not placed in individual cells. Updating the status (i.e. published, abandoned, expired, etc.) rarely delivered an accurate patent count for reporting purposes. In addition, reporting on patent case status to upper management was tedious and time-consuming.
Elisa: What were the main reasons you selected Lecorpio over Anaqua and other products?
Carol: Selecting Lecorpio over Anaqua was easy. After reviewing both products, it was apparent that Lecorpio was a more advanced platform and met all of our needs for managing our intellectual property.
Elisa: Which departments at TCS are using Lecorpio and how do they like it?
Bob: The whole company is using Lecorpio, including the IP group, and the general consensus is positive. While anyone at the company can access the system, user selectable security prevents unauthorized users from seeing invention disclosures.
Elisa: How is this an improvement over the Excel spreadsheet that outside counsel used to provide?
Bob: With Lecorpio the whole prosecution history is recorded, as well as any licenses, encumbrances and royalty arrangements.
Carol: Lecorpio gives us the accuracy needed to quickly track and report patent prosecution activity. The automated system makes retrieving information quick and easy.
Elisa: From your perspective, how has the new system made your IP department more efficient?
Carol: Monthly and quarterly reports are prepared for upper management, and Lecorpio allows me to produce reports based on a variety of categories within minutes. Inventors can query the Lecorpio database regarding the number of filed and issued patents and expect a quick turn-around response.
Elisa: How has implementation saved TCS money?
Bob: Lecorpio has saved us close to $1 million a year which has paid for the software several times over. Before Lecorpio, outside counsel fees and operating costs were high. Now, with Lecorpio’s help, we have brought the majority of the legal work in-house and have eliminated or reduced many expenses.
Elisa: In addition to these savings, have there been any other significant benefits?
Bob: Lecorpio has given us the ability to reduce our reliance on outside counsel by around 75%. Besides enabling the IP group to manage docketing more efficiently, we can now easily call-up all of our invention disclosures and patents, we know when we need to respond to an attorney, and we have at our fingertips all of the details about the IP matter. By boosting our efficiency and accuracy, Lecorpio has reduced time spent on the portfolio which is helpful because our patent volume has doubled, but our staff size has not increased.
Carol: The three most significant benefits from using Lecorpio are accuracy, speed, and the production of reports/analytics.
Elisa: Why would you recommend Lecorpio to another company?
Carol: Lecorpio is easy to use. After TCS launched Lecorpio, there was no need for employees to attend a lengthy training course. Lecorpio allows the employees to enter a disclosure in four easy steps, without investing a lot of time and effort, so valuable worktime is not interrupted. Lecorpio also has an offering for every component of Intellectual Property Management. From entering disclosures to tracking various types of related agreements, Lecorpio offers a complete product solution. I would recommend Lecorpio because it is one of the most cost-effective IP management tools I’ve used. Once TCS decided to take over its daily IP process, we were able to pulse and control all filings and spending by outside counsel. Our savings over time definitely outweighed Lecorpio’s initial cost and ongoing subscription costs.
Bob: I met my ROI by bringing Lecorpio in – the system paid for itself through significant cost savings, dramatically improved tracking, and bringing TCS’ IP management into the 21st century.