2013 IPO Corporate IP Management Benchmarking Survey Results AUGUST 2013

Transcription

1 213 IPO Corporate IP Management Benchmarking Survey Results AUGUST Intellectual Property Owners Association

2 TABLE OF CONTENTS PART 1: ORGANIZATIONAL DATA 2 1A: INDUSTRY AND EMPLOYEES 2 1B: REVENUE AND BUDGETS 3 PART 2: IP STAFFING 2A: SIZE OF IP STAFF 2B: IP STAFF TASKS 6 PART 3: IP DEPARTMENT 8 3A: LOCATIONS AND REPORTING 8 3B: PATENT COMMITTEES 9 3C: OTHER IP DEPT. INFORMATION 9 PART 4: OUTSIDE COUNSEL 11 4A: PREPARATION OF PATENT APPLICATIONS 11 4B: PROSECUTION OF PATENT APPLICATIONS 12 4C: LITIGATION 13 4D: ALTERNATIVE BILLING ARRANGEMENTS 13 4E: CYCLE TIMES 14 4F: OTHER OUTSIDE COUNSEL INFORMATION PART : OPERATIONAL DATA 16 A: PATENT PORTFOLIO STATISTICS 16 B: PATENT APPLICATION PREPARATION STATISTICS 18 C: LITIGATION STATISTICS 22 D: OUTSOURCING 23 E: USPTO PROCEDURES 23 F: INTERNATIONAL PATENT OFFICE PROCEDURES 24 G: NON-U.S. FILINGS 2 H: IP MONETIZATION AND NON-PRACTICING ENTITIES 26 PART 6: NON-PATENT IP MATTERS 27 6A: ORGANIZATIONAL DATA 27 6B: IP STAFFING 28 6C: OUTSIDE COUNSEL 29 6D: OPERATIONAL DATA 3 NOTES: 1. This is the fourth time IPO has conducted this survey. It incorporates many of the questions from IPO s 26, 29, and 211 benchmarking surveys. The data for this 213 survey was collected March 21, 213 to May, In some industries, the response rate was extremely low. While the data for those industries is not as meaningful as others, the data is presented in a format similar to the 211 survey report to enable comparison. 3. The survey was developed by IPO s Corporate IP Management Committee with the help of the IPO staff. We extend special thanks to Katherine Umpleby and Harry Gwinnell as well as Russell Binns, Barry Brager, Shawn Foster, Neil Kardos, Hanna Kim, MIchael Kramer, Kelsey Milman, Noam Pollack, and Nancy Zoubek. 4. The survey respondents were primarily Chief Patent Counsel and Chief IP Counsel with responsibility for patents and trademarks at their companies. 213 IPO Corporate IP Management Benchmarking Survey Page 1

3 PART 1: ORGANIZATIONAL DATA 1A: INDUSTRY AND EMPLOYEES 1. Identify the industry sector that most closely describes your company: (6 ) 1% 3% 22% % Aerospace/Defense Chemical/Chemical Products Consumer Products 6% 14% Electrical/Communications/ Computer Hardware Manufacturing/Mechanical Devices/ Machinery Medical Devices 17% % Pharmaceutical/Biotechnology Software/Information Services/ Financial/Business Services 17% Other 2. Number of Total Worldwide Employees: (68 ) 3. Percentage of Employees in the U.S.: (6 ) 27% 16% 2 19% Fewer than 1, 1, to,,1 to 1, 1 Over 1, 38% -2% 21-4% 41-6% 61-8% 81-1% 4. Number of Total Worldwide R&D Employees: (62 ). Percentage of R&D Employees in the U.S.: (6 ) 2 37% 26% Fewer than 1, 1, to,,1 to 1, 1 16% Over 1, 21% -2% 21-4% 41-6% 61-8% 81-1% 213 IPO Corporate IP Management Benchmarking Survey Page 2

4 1B: REVENUE AND BUDGETS 6. Last Completed Fiscal Year Revenue Range: (6 ) 14% 2% Less than $1 Billion 17% $1 Billion to $ Billion $ Billion to $1 Billion 14% $1 Billion to $2 Billion 18% 17% $2 Billion to $ Billion Over $ Billion 7. Last Completed Fiscal Year R&D Budget: (63 ) 2% 19% Less than $1 Million $1 Million to $2 Million $2 Million to $ Million 18% $ Million to $1 Billion 16% $1 Billion to $3 Billion 8% 14% Over $3 Billion 8. Last Completed Fiscal Year Budget for IP Department (including labor): (6 ) 2% 14% Less than $ Million $ Million to $1 Million $1 Million to $2 Million 23% $2 Million to $1 Million Over $1 Million 17% 21% 213 IPO Corporate IP Management Benchmarking Survey Page 3

5 9. Percentage of the IP budget to the R&D budget for the last completed fiscal year: ( ) 8% 7% Percentage of IP budget 6% % 4% 3% 2% 1% Industry Report Average () Consumer Products (3) Medical Devices (3) Chemical/Chemical Products (9) Manufacturing/Mechanical Devices/ Machinery (1) Oil/Energy (3) Software/IS/Financial/Business (6) Electrical/Communications/ Computer Hardware (8) Pharmaceutical/Biotechnology (7) Aerospace/Defense (1) 1. Percentage of the IP budget to revenue for the last completed fiscal year: (47 ) 1.2% 1.1% 1.% Percentage of IP Budget.8%.7%.6%.%.4%.2%.1% Industry Report Average (47) Chemical/Chemical Products (8) Consumer Products (3) Pharmaceutical/Biotechnology (7) Electrical/Communications/ Computer Hardware (8) Medical Devices (3) Manufacturing/Mechanical Devices/Machinery (9) Software/IS/Financial/Business (7) Aerospace/Defense (1) Oil/Energy (1) 213 IPO Corporate IP Management Benchmarking Survey Page 4

6 PART 2: IP STAFFING 2A: SIZE OF IP STAFF 11. List the number of in-house full-time equivalent (FTE) worldwide IP professionals reporting through the Chief IP Counsel, employed at the end of the last completed fiscal year.: (66, but not every company answered every section) In-House FTE Professionals Average Median Patent Attorneys Patent Agents Trademark Attorneys Litigation Attorneys 1. Other Attorneys in IP Group.9 Other Non-Attorney Professionals List the number of in-house FTE support staff, reporting through the Chief IP Counsel, employed at the end of the last completed fiscal year: (64, but not every company answered every section) In-House FTE Support Staff Average Median Patent Paralegals.9 3 Trademark Paralegals LItigation Paralegals 6 Agreement Paralegals.9 Docketing/Clerical Staff Secretaries/Admin 8. 2 Other Support Staff During the next fiscal year, do you expect the number of in-house IP employees (professionals and support staff) to: (67 companies) 28% 6% Stay the Same 12% 213 IPO Corporate IP Management Benchmarking Survey Page

7 2B: IP STAFF TASKS 14. Estimate the percentage of time spent by all in-house IP professionals reporting through the Chief IP Counsel on the following (time includes management of outside counsel; IP professionals include attorneys, licensing executives, portfolio managers, patent agents, etc.): (61 companies) Functions Average Percent Median Percent U.S. patent preparation, filing, and prosecution (including invention 29.1% 28% disclosure review and novelty searching) Foreign patent preparation, filing, and prosecution.8% 1% Patent Litigation 6.% % Validity and Infringement studies (including freedom to operate studies) 11% 1% Commercial support/agreement work 11.4% 1% Mergers and Acquisitions support 4.8% % Trademark, Copyright, design (non-functional), domain name, and social media functions (application preparation, filing, prosecution, counseling, litigation, etc.) 8.9% % IP licensing/monetization 7% % Open source counseling and compliance 1.1% % Other (trade secrets, mask works, etc.) 4.1% 2%. For tasks encompassed in U.S. patent preparation, filing, and prosecution (including invention disclosure review and novelty searching), estimate the percentage of time spent on these activities: (62 companies) Tasks Average Percent Median Percent Invention disclosure review.6% 1% Novelty/Prior art searching and review 12.6% 1% Inventor interviews 1.6% 1% Patent preparation 27.1% 2% Patent prosecution 3.% 3% Other 3.6% % 16. Are most of your IP attorneys: (66 companies) 37.8% 7.6% Assigned to handle a variety of matters for a single business unit of the company 44% Assigned to a legal specialty (e.g. patent drafting, prosecution, foreign filing, licensing oppositions) and provide services across multiple business units A combination of the above two 1.6% None of the above 213 IPO Corporate IP Management Benchmarking Survey Page 6

8 17. Identify the number of in-house attorneys/agents that carry a docket of patent applications, i.e., responsible for drafting, managing preparation, and/or prosecuting U.S. and/or foreign applications: (breakdown by last year s fiscal R&D budget): (61 companies) 6 4 Average In-House Attorneys/Agent R&D Budget Report Average (61) Over $3 Billion (12) $1 Billion to $3 Billion (11) $ Million to $1 Billion (9) $2 Million to $ Million () $1 Million to $2 Million (1) Less than $1 Million (14) 18. Last fiscal year, what was the average docket size (# of applications) per in-house attorney/agent referred to in the previous question: (4 companies) U.S. Applications Mean: 99 Median: 6 Foreign Applications Mean: 189 Median: 19. Estimate the percentage of time the in-house attorneys/agents referred to in the previous question spend on their dockets (include time spent drafting, reviewing, and working with outside counsel, foreign associates, and inventors on substantive matters): (9 companies) Mean: 4% Median: 6% 213 IPO Corporate IP Management Benchmarking Survey Page 7

9 PART 3: IP DEPARTMENT 3A: LOCATIONS AND REPORTING 2. Are patent operations centralized or decentralized: (66 companies) 21. Provide the number of locations of U.S. intellectual property operations: (66 companies) 7% 3% Centralized - most IP lawyers/staff at a central corporate site Decentralized - most IP lawyers/staff are co-located with manufacturing and/or R&D sites More than 8 Number of U.S. Locations 22. Non-U.S. regions in which intellectual property operations are located: (49 companies) 23. The Chief IP Counsel (or head of IP functions) primarily reports to: (66 companies) Non-U.S. North America Europe Brazil Russia India China Japan Argentina Other 12.% 4.% 4.% 4.% 74% Other Engineering or R&D Executive CEO/President Other Non-IP Attorney Chief Legal Officer 213 IPO Corporate IP Management Benchmarking Survey Page 8

10 3B: PATENT COMMITTEES 24. Does your company use patent committees to review invention disclosures and select disclosures for which to pursue patent protection? (66 companies) 24a. How many committees are currently used in your company? (49 companies) 21% NO YES % 24b. Identify how the committees are organized: (48 companies) c. Where does the primary responsibility for running the patent committees reside? (2 companies) 4+ % 4% 4% 29% 73% Business Unit Product Line 23% IP Department Engineering/R&D Technology Finance Location 17% 3C: OTHER IP DEPARTMENT INFORMATION companies out of 64 said their IP department did use external benchmarks to manage performance. The sources for those benchmarks are: (32 companies) IPO Survey General Counsel Roundtable Other Trade Organization Peer Company Other 213 IPO Corporate IP Management Benchmarking Survey Page 9

11 26. During the last completed fiscal year, was there a goal for the number of patent applications to be filed by your company: (66 companies) 27. During the last completed fiscal year, was there a ceiling on the number of patent applications that would be filed by your company? (66 companies) 47% 12% YES NO YES NO 3% 88% 28. Is the IP department directly responsible for generating and collecting licensing revenue from IP assets?: (6 companies) 34% YES NO 28a. Is their another department that is responsible for generating and collecting licensing revenue from IP assets?: (42 companies) 33% YES NO 66% 67% 29. Does your company charge internal clients (business units, divisions, etc.) for in-house legal work?: (64 companies) 29a. What is the internal charge based on?: (21 companies) 66% 34% YES NO 43% 1% 28% 19% Business unit formula Average hourly rate Actual legal spend Other 3.Does your company have a financial reward (cash or stock) program for U.S. inventors?: (66 companies) 3a. What is the market value of the financial reward for inventors?: (37 companies) 38% 62% AVERAGES: YES Submission of invention disclosure: $42 NO Filing of the priority application: $1,141 Issuance of first patent: $68 Issuance of further patents: $ IPO Corporate IP Management Benchmarking Survey Page 1

12 PART 4: OUTSIDE COUNSEL 4A: PREPARATION OF PATENT APPLICATIONS 31. Identify, by percentage of use, the billing arrangements used with outside counsel in preparing complete patent applications for filing: (63 companies) Billing Arrangements Average Percent Fixed Fee (per application) 46% Hourly Rate with a Cap 21% Hourly Rate 31% Other Billing Arrangement 2% 31a. If using fixed fee arrangements for preparing patent applications, how much is the typical fixed fee amount?: (48 companies) 31b. If using hourly rates with a cap for preparing patent applications, what is the typical cap amount?: (28 companies) Less than $6, $6,1-$7,499 $7,-$9, More than $9, Less than $6, $6,1-$7,499 $7,-$9, More than $9, 31c. If using hourly rates for preparing patent applications, how much is the average hourly rate?: (36 companies) 31d. If using hourly rates for preparing patent applications, what is the average cost per patent application?: (38 companies) Less than $2 $2-349 $3-4 More than $4 Less than $6, $6,1-$7,499 $7,-$9, More than $9, 213 IPO Corporate IP Management Benchmarking Survey Page 11

13 4B: PROSECUTION OF PATENT APPLICATIONS 32. Identify, by percentage of use, the billing arrangements used with outside counsel in preparing responses to office actions during the prosecution of patent applications: (61 companies) Billing Arrangements Average Percent Fixed Fee (per response) 33% Hourly Rate with a Cap 28% Hourly Rate 39% Other Billing Arrangement % 32a. If using fixed fee arrangements for preparing responses to office actions, how much is the typical fixed fee amount?: (39 companies) b. If using hourly rates with a cap for preparing responses to office actions, what is the typical cap amount?: (2 companies) Less than $2, $2,1-$2, $2,1-$3, More than $3, Less than $2, $2,1-$2, $2,1-$3, More than $3, 32c. If using hourly rates for preparing responses to office actions, how much is the average hourly rate?: (42 companies) 32d. If using hourly rates for preparing responses to office actions, what is the average cost per response?: (4 companies) Less than $2 $2-349 $3-4 More than $4 Less than $2, 2,1-$2, 2,1-$3, More than $3, 213 IPO Corporate IP Management Benchmarking Survey Page 12

14 4C: LITIGATION 33. Identify, by percentage of use, the billing arrangements used with outside counsel in litigation matters: (48 companies) Billing Arrangements Average Percent Hourly Rate 34% Hourly Rate not to Exceed per Task/Litigation Stage 32% Contingency 2% Fixed Fee per Task/Litigation Stage % Fixed or Capped Fee with Results Based Incentives 12% Other % 4D: ALTERNATIVE BILLING ARRANGEMENTS 34. In the next fiscal year, do you expect the percentage of work done by outside counsel under billing arrangements other than hourly rates to: (8 companies) 3. Has your company adopted billing arrangements other than hourly rates?: (4 companies) Yes 4% 41% 28% No Stay the Same % 72% 3a. Has the adoption of billing arrangements other than hourly rates reduced the per-application/per-project cost for your company?: (37 companies) 11% Yes No 3b. Is the quality of the work prepared under billing arrangements other than hourly rates better, worse, or the same as the quality of work prepared under hourly rate arrangements?: (38 companies) 13% Better Worse The Same 89% 87% 213 IPO Corporate IP Management Benchmarking Survey Page 13

15 4E: CYCLE TIMES 36. What is the average cycle time from time of invention disclosure submission to transmission of instructions to outside counsel for preparation of a non-provisional patent application by outside counsel?: (6 companies) What is the average cycle time of outside counsel for non-provisional patent application preparation from the time outside counsel receives the invention disclosure to filing?: (8 companies) days or less 16-3 days 31-4 days 46-6 days More than 6 days 6 days or less 61-9 days days More than 12 days 38. Which of the following is outside counsel responsible for performing in the cycle time indicated in question 37?: (9 companies) Conducting a prior art search Interviewing the inventor(s) Drafting the patent application Obtaining inventor signatures for formal documents (declaration, assignment, etc.) Filing the patent application 213 IPO Corporate IP Management Benchmarking Survey Page 14

16 4F: OTHER OUTSIDE COUNSEL INFORMATION 39. Indicate the number of law firms used by your company in the past fiscal year for patent preparation and prosecution of U.S. Applications: (66 companies) 4. For question 39 indicate utilization of firms by size of firm for the preparation and prosecution of U.S. patent applications (percentage of work allocated): (8 companies) 2 Size of Firm Average Percent 2 Solo 6% 1 2- Attorneys/Agents 19% 6-2 Attorneys/Agents 2% 21-4 Attorneys/Agents 14% 41-1 Attorneys/Agents 2% None Over Attorneys/Agents 14% Over Attorneys/Agents 2% 41. Indicate the number of law firms used by your company in the past fiscal year for patent litigation and disputes in the U.S.: (9 companies) 42. Do you expect the number of law firms used by your company for patent preparation and prosecution to: (6 companies) % 19% 2 1 7% None Over 2 Stay the same 43. Which of the following factors does your company use to qualify new patent preparation/ prosecution firms?: (62 companies) Request for proposal (RFP) In-person presentation/pitch Attorney resumes Review of law firm writing samples Qualification period with work product review Review of law firm information technology security Formal engagement letter/agreement 213 IPO Corporate IP Management Benchmarking Survey Page

17 PART : OPERATIONAL DATA A: PATENT PORTFOLIO STATISTICS 44. Number of utility patents owned and in force in the U.S. per in-house patent attorney/agent.: (breakdown by industry per patent professional) (2 companies) U.S. Patents per Patent Attorney (including Agents) Report Average (2) Industry Aerospace/Defense (1) Electrical/Communications/ Computer Hardware (1) Chemical/Chemical Products (9) Software/IS/Financial/Business (8) Manufacturing/Mechanical Devices/Machinery (1) Consumer Products (3) Pharmaceutical/Biotechnology (6) Medical Devices (3) Oil/Energy (2) 4. Do you expect the number of utility patents owned by your company and in force in the U.S. to increase/decrease/stay the same in the next 12 months? (62 companies) 34% % 16% Stay the same 213 IPO Corporate IP Management Benchmarking Survey Page 16

18 46. Number of utility patents owned and in force outside of the U.S. per in-house patent attorney/agent.: (breakdown by industry per patent professional) (2 companies) Non-U.S. Patents per Patent Attorney (including Agents) Report Average (2) Manufacturing/Mechanical Devices/Machinery (1) Industry Medical Devices (3) Consumer Products (3) Chemical/Chemical Products (9) Software/IS/Financial/Business (8) Pharmaceutical/Biotechnology (6) Electrical/Communications/ Computer Hardware (1) Aerospace/Defense (1) Oil/Energy (2) 47. Do you expect the number of utility patents owned by your company and in force outside of the U.S. to increase/decrease/stay the same in the next 12 months? (6 companies) 37% 43% 2% Stay the same 213 IPO Corporate IP Management Benchmarking Survey Page 17

19 B: PATENT APPLICATION PREPARATION STATISTICS 48. Number of invention disclosures generated per in-house patent attorney/agent.: (breakdown by industry per patent professional) (4 companies) Invention Disclosures per Patent Attorney (including Agents) % 44 1% 72 61% 67 48% 9 8% 33 1% 32 Average Approval Rate % 64% 1% % 12 68% 4 Industry Report Average (4) Electrical/Communications/ Computer Hardware (9) Medical Devices (3) Chemical/Chemical Products (9) Software/IS/Financial/ Business (7) Consumer Products (1) Manufacturing/Mechanical Devices/Machinery (9) Oil/Energy (2) Aerospace/Defense (1) Pharmaceutical/Biotechnology (4) 49. Do you expect the number of invention disclosures to increase/decrease/stay the same in the next 12 months? (6 companies) 3% 3% 17% Stay the same 213 IPO Corporate IP Management Benchmarking Survey Page 18

20 . Number of original utility applications filed per in-house patent attorney/agent and per R&D budget.: (Breakdown by industry per patent professional) (49 companies) (Breakdown by R&D Budget) (7 companies) Original Utility Applications per Patent Attorney (including Agents) Report Average (49) Industry Chemical/Chemical Products (9) Original Utility Applications 2, 1,8 1,6 1,4 1,2 1, , R&D Budget Report Average (7) Over $3 Billion (1) $1 Billion to $3 Billion (1) $ Million to $1 Billion (9) Software/IS/Financial/Business (7) Consumer Products (2) $2 Million to $ Million () Electrical/Communications/ Computer Hardware (9) Manufacturing/Mechanical Devices/ Machinery (1) Oil/Energy (2) Pharmaceutical/Biotechnology (6) $1 Million to $2 Million (9) Less than $1 Million (14) Medical Devices (3) Aerospace/Defense (1) 1. Do you expect the number of utility patents originally filed in the U.S. to increase/decrease/ stay the same in the next 12 months? (63 companies) 2. Do you expect the number of utility patents originally filed outside of the U.S. to increase/ decrease/stay the same in the next 12 months? (63 companies) 3% 22% 43% 22% Stay the same 14% 64% Stay the same 213 IPO Corporate IP Management Benchmarking Survey Page 19

21 3. What percentage of utility patents originally filed in the U.S. were prepared in house? (61 companies) 4. What percentage of utility patents originally filed outside of the U.S. were prepared in house? (9 companies) Mean: 38% Median: 27% Mean: 33% Median: 2%. Do you expect the percentage of U.S. utility patents prepared in-house to increase, decrease, or stay the same? (64 companies) 6. Do you expect the percentage of non-u.s. utility patents prepared in-house to increase, decrease, or stay the same? (63 companies) 22% 24% 6% 2% 72% Stay the same 7% Stay the same 213 IPO Corporate IP Management Benchmarking Survey Page 2

22 7. During the last completed fiscal year, identify the percentage of originally filed U.S. patent applications that received a patentability/prior art search prior to filing: (breakdown by industry) (1 companies) 1 8% 79% 1% 98% In-House Percentage Percentage U.S. Patent App Receiving Prior Art Search % 69% 3% 83% 3% 77% 47% 7% 93% 67% 3% 6% 42% 16% 7% 6% Industry Report Average (1) Chemical/Chemical Products (9) Aerospace/Defense (1) Pharmaceutical/Biotechnology (6) Oil/Energy (2) Medical Devices (3) Consumer Products (3) Electrical/Communications/ Computer Hardware (1) Manufacturing/Mechanical Devices/ Machinery (9) Software/IS/Financial/Business (8) 8. Do you expect the percentage of originally filed U.S. patent applications that receive a patentability/prior art search to increase/decrease/ stay the same in the next 12 months? (62 companies) 9. Do you expect the percentage of patentability/prior art searches for originally filed U.S. patent applications done in-house to increase/ decrease/stay the same? (6 companies) 16% 2% 2% Stay the same 82% Stay the same 8% 213 IPO Corporate IP Management Benchmarking Survey Page 21

23 C: LITIGATION STATISTICS 6. During the last completed fiscal year, how many active patent litigation matters (inter partes before a court, not a patent office) was your company involved? (by industry) (4 companies) Active Patent Litigation Matters (last fiscal year) Report Average (4) Manufacturing/Mechanical Devices/Machinery (9) Chemical/Chemical Products (9) Software/IS/Financial/Business (7) Electrical/Communications/ Computer Hardware (6) Medical Devices (3) 61. Do you expect the number of active patent litigation matters (inter partes before a court, not a patent office) where your company was involved as a Plaintiff to increase, decrease, or stay the same? ( companies) Consumer Products (3) Oil/Energy (2) Aerospace/Defense (1) Pharmaceutical/ Biotechnology () Defendant Plaintiff 62. Do you expect the number of active patent litigation matters (inter partes before a court, not a patent office) where your company was involved as a Defendant to increase, decrease, or stay the same? (63 companies) 16% % 9% 22% 7% Stay the same 63% Stay the same 213 IPO Corporate IP Management Benchmarking Survey Page 22

24 D: OUTSOURCING 63. Has your company outsourced any of the following? (Note: outsourcing means work done by nonemployees outside the U.S. for the purposes of achieving cost savings or not increasing headcount, and does not include work done on foreign applications by foreign associates): (4 companies) Outsourcing Task Any aspect of patent application preparation Any aspect of preparing responses to patent office actions Any aspect of infringement/non-infringement opinions Any aspect of validity/invalidity opinions Patentability/prior art searches State of the art/ip landscaping/ Competitive activity monitoring searches Docketing and paralegal services Annuities/Maintenance Fees Trademark Services 64. If you outsourced any of the above tasks, rate your experience with outsourcing: (44 companies) 2% % 6. In the next fiscal year, do you expect outsourcing efforts at your company to increase/ decrease/stay the same? (62 companies) 16% 8% 7% Positive Neutral Negative 76% Stay the same 66. In the next 12 months, does your company plan to utilize any of the following procedures under the America Invents Act?: (3 companies) E: USPTO PROCEDURES Procedures Pre-issuance submissions Supplemental examination Inter partes review Post-grant review 213 IPO Corporate IP Management Benchmarking Survey Page 23

25 67. In the next 12 months, does your company plan to utilize the Track One Prioritized Examination program to expedite examination of patent applications in the United States? (61 companies) 38% 68. In the next 12 months, does your company plan to utilize Accelerated Examination to expedite examination of patent applications in the United States? (61 companies) 31% Yes No Yes No 62% 69% F: INTERNATIONAL PATENT OFFICE PROCEDURES 69. In the next 12 months, does your company plan to utilize Patent Prosecution Highway (PPH) to expedite examination of patent applications in the United States or a foreign jurisdiction? (9 companies) 7. In the next 12 months, does your company plan to utilize the program for accelerated prosecution of European patent applications (PACE) to expedite examination of patent applications? ( companies) 4% 2% Yes No Yes No 46% 8% 71. Does your company regularly utilize Article 19 amendments in PCT practice? (6 companies) 11% 72. Does your company regularly utilize Article 34 amendments in PCT practice? ( companies) 22% Yes No Yes No 89% 78% 213 IPO Corporate IP Management Benchmarking Survey Page 24

26 G: NON-US FILINGS 73. For inventions originating outside of the U.S., where does your company file first?: (63 companies) 74. For originally filed non-provisional U.S. utility applications, what percentage of those applications receive at least one foreign counterpart filing? (6 companies) Almost always in the U.S. Almost always in the country of origin Almost always elsewhere, including using PCT Sometimes in the U.S. and sometimes in the country of origin 7. For applications first filed in the U.S. and also filed abroad, what is the average number of jurisdictions where corresponding filings were made? (62 companies) or fewer 6-1 More than Do you expect the number of corresponding filings in emerging markets to increase/ decrease/stay the same in the next 12 months? (61 companies) 43% % 3% Stay the same -2% 26-% 1-7% 76-1% 76. For the jurisdictions below, indicate the percentage of cases for which corresponding filings are typically made?: (8 companies) Country Average Percent United States 8% EPO 6% PCT 49% China 46% Germany 3% Japan 3% South Korea 27% India 27% Canada 26% United Kingdom 26% France 2% Brazil 2% Mexico 19% Australia 17% Taiwan 16% Russia 13% Argentina 11% South Africa 1% Other 1% 213 IPO Corporate IP Management Benchmarking Survey Page 2

27 78. Does your company license out any IP assets or otherwise monetize its IP assets? (6 companies) 12% H: IP MONETIZATION AND NON-PRACTICING ENTITIES 79. Last fiscal year, how much licensing or IP sales revenue was collected? (6 companies) 3 2 Yes No % 8. Have you experienced pressure in the past year to increase corporate revenue directly from IP assets? (6 companies) 48% Yes Less than $1 Million $1 Million to $1 Million Over $1 Million 81. In the next fiscal year, do you expect IP monetization efforts (e.g., IP licensing and IP sales) to increase/decrease/stay the same? (62 companies) 39% No 2% 82. Were you a defendant in a patent litigation commenced in the past fiscal year, by a NPE? (62 companies) 6% % Stay the same % Yes No 83. In the next 12 months, do you expect the number of cases that your company litigates against NPEs to increase/decrease/stay the same? (6 companies) 3% % 84. Do you license from any NPEs? (8 companies) 7% 6% % Stay the same Yes No 43% 213 IPO Corporate IP Management Benchmarking Survey Page 26

28 PART 6: NON-PATENT IP MATTERS 6A: ORGANIZATIONAL DATA 8. What was the last completed fiscal year budget for your company s Non-Patent IP Matters (trademarks, copyrights, design (non-functional), domain name registrations, and/or social media)? (1 companies) Less than $ Million $ Million to $1 Million 1 Million to $2 Million Over $2 Million 86. What was the last completed fiscal year budget for your company s Marketing Department?: (3 companies) Less than $2 Million $2 Million to $ Million $ Million to $1 Million $1 Million to $ Million $ Million to $1 Billion Over $1 Billion 213 IPO Corporate IP Management Benchmarking Survey Page 27

29 6B: IP STAFFING 87. Estimate the percentage of time spent by in-house IP professionals that primarily support nonpatent IP functions on the following (time includes management of outside counsel; IP professionals include attorneys, licensing executives, portfolio managers, agents, etc.): (47 companies) Support Function Average Percent Median Percent Trademark Preparation, filing and prosecution 26% 2% Trademark Counseling 24% 2% Copyright preparation and filing 1% % Copyright counseling 6% % Design (non-functional) preparation and filing 3% % Trademark Litigation 8% % Copyright Litigation 1% % Licensing/Monetization 1% % Counseling on IP issues concerning social media % % Domain name dispute 4% % Counterfeit Action 6% % Others % % 88. Do you expect the number of in-house personnel performing the functions described in question 87 to increase/decrease/stay the same next year? (2 companies) 17% 6% 77% Stay the same 213 IPO Corporate IP Management Benchmarking Survey Page 28

30 6C: OUTSIDE COUNSEL 89. Identify, by percentage of use, the billing arrangements used with outside counsel in preparing trademark applications for filing: (46 companies) Billing Arrangement Average Percentage Use Fixed Fee 28% Hourly Rate % Results Oriented 1% Volume Arrangement/discounted fee 14% 9. Identify, by percentage of use, the billing arrangements used with outside counsel when preparing responses to office actions during the prosecution of trademark applications: (4 companies) Billing Arrangement Average Percentage Use Fixed Fee 23% Hourly Rate 72% Results Oriented % Volume Arrangement/discounted fee 1% 91. If using Fixed Fee arrangements for preparing trademark applications, how much is the typical fixed fee amount?: (28 companies) 92. If using Fixed Fee arrangements for preparing responses to office actions, how much is the typical fixed fee amount?: (21 companies) Less than $ $ to $999 $1, to $1,499 $1, to $2, More than $2, Less than $1, $1, to $1,999 $2, to $2,999 Over $3, 213 IPO Corporate IP Management Benchmarking Survey Page 29

31 93. Do you have an alternative fee arrangement for trademark application or prosecution matters? (41 companies) 27% 94. Has your adoption of alternative fee arrangements reduced the trademark application or prosecution project cost for your organization? (22 companies) % Yes No Yes No 73% 4% 9. Indicate the number of law firms used during the last completed fiscal year: (3 companies) Non-Patent IP Litigation and Disputes (trademark, copyright, designs, domain names, and/or social media) Trademark Preparation and Prosecution None Law Firms Used During Last Fiscal Year Over 2 6D: OPERATIONAL DATA 96. Do you expect the percentage of trademark/copyright/design (non-functional) applications prepared in-house to: ( companies) 97. In the last completed fiscal year, how much licensing revenue was collected from licensing non-patent properties: (46 companies) 3 2% 2 2% % Stay the same Less than $1 Million $1 Million to $1 Million $1 Million to $ Million Over $ Million 213 IPO Corporate IP Management Benchmarking Survey Page 3

32 98. Total litigation (inter partes before a court but not before a trademark office) for last completed fiscal year: (44 companies) Litigation Area Average Active Median Active Pending Pending Trademark 16 1 Copyright Domain Name (UDRP and WIPO) 3 Counterfeit/gray goods Do you request trademark availability searches in the U.S.? (2 companies) Do you request trademark availability searches outside the U.S.? (2 companies) Always Most of the time Sometimes Seldom Never Always Most of the time Sometimes Seldom Never 11. Do you request written trademark availability opinions by outside counsel for trademarks in the U.S.? (1 companies) Do you request written trademark availability opinions by outside counsel for trademarks outside the U.S.? ( companies) 2 1 Always Most of the time Sometimes Seldom Never Always Most of the time Sometimes Seldom Never 213 IPO Corporate IP Management Benchmarking Survey Page 31

33 13. During the last completed fiscal year, identify the number of trademark applications filed in the U.S.: (breakdown by industry) (39 companies) 148 2,269 2, Trademark Applications Industry Report Average (39) Manufacturing/Mechanical Devices/Machinery (7) Software/IS/ Financial/Business () Oil/Energy (1) Electrical/Communications/ Computer Hardware (8) Aerospace/Defense (1) Pharmaceutical/ Biotechnology (4) Medical Devices (2) Chemical/Chemical Products (9) Consumer Products (2) 13a. During the last completed fiscal year, identify the number of trademark applications filed in the U.S.: (breakdown by marketing budget) (32 companies) 12 1, Average In-House Attorneys/Agent Marketing Budget 3 6 Report Average (32) Over $1 Billion (4) $ Million to $1 Billion () $1 Million to $ Million (4) $ Million to $1 Million (4) $2 Million to $ Million (2) Less than $2 Million (13) 213 IPO Corporate IP Management Benchmarking Survey Page 32

34 14. During the last completed fiscal year, identify the number of trademark applications filed outside the U.S. (breakdown by industry) (38 companies) ,62 2,6 Trademark Applications (Outside U.S.) Report Average (38) Industry Aerospace/Defense (1) Oil/Energy (1) Electrical/Communications/ Computer Hardware (8) Pharmaceutical/Biotechnology (4) Medical Devices (2) Manufacturing/Mechanical Devices/Machinery (6) Software/IS/Financial/Business () Chemical/Chemical Products (9) Consumer Products (2) 14a. During the last completed fiscal year, identify the number of trademark applications filed outside the U.S.: (breakdown by marketing budget) (39 companies) 2 18 Average In-House Attorneys/Agent , Marketing Budget Report Average (31) Over $1 Billion (4) $ Million to $1 Billion () $1 Million to $ Million (4) $ Million to $1 Million (4) $2 Million to $ Million (1) Less than $2 Million (13) 213 IPO Corporate IP Management Benchmarking Survey Page 33

35 . Do you expect the number of U.S. trademark filings to increase/decrease/stay the same? (48 companies) 16. Do you expect the number of foreign trademark filings to increase/decrease/stay the same? (46 companies) 23% 26% 6% 71% Stay the same 9% 6% Stay the same 17. During the last completed fiscal year, identify the number of copyright applications filed in the U.S. (breakdown by industry) (37 companies) Copyright Applications in the U.S Report Average (37) 2 Industry 1 1 Chemical/Chemical Products (9) Manufacturing/Mechanical Devices/Machinery () Electrical/Communications/ Computer Hardware (6) Software/IS/Financial/Business (6) Oil/Energy (2) Consumer Products (2) Aerospace/Defense (1) Medical Devices (2) 213 IPO Corporate IP Management Benchmarking Survey Page 34

36 18. During the last completed fiscal year, identify the number of Madrid Protocol trademark applications filed (breakdown by industry) (37 companies) , Madrid Registrations Report Average (37) 7 7 Industry Pharmaceutical/Biotechnology (4) Manufacturing/Mechanical Devices/Machinery () Aerospace/Defense (1) Chemical/Chemical Products (9) Electrical/Communications/Computer Hardware (8) Medical Devices (2) Oil/Energy (1) Software/IS/Financial/Business () Consumer Products (2) 19. Do you expect the number of U.S. copyright filings to increase/decrease/ stay the same? (42 companies) 11. Do you expect the number of Madrid Protocol filings to increase/decrease/stay the same? (4 companies) % % 2% 2% 9% Stay the same 78% Stay the same 213 IPO Corporate IP Management Benchmarking Survey Page 3

37 111. During the last completed fiscal year, identify the number of design (non-functional) registrations filed. (breakdown by industry) (38 companies) Industry Average Registrations Median Registrations Aerospace/Defense (1) 1 1 Chemical/Chemical Products (9) 7 Consumer Products (2) Electrical/Communications/Computer Hardware (8) Manufacturing/Mechanical Devices/Machinery () 2 1 Medical Devices (2) Oil/Energy (1) 1 1 Pharmaceutical/Biotech () 1 Software/IS/Financial/Business () Do you expect the number of design (non-functional) registration filings to increase/decrease/stay the same? (43 companies) 2% 2% 78% Stay the same 213 IPO Corporate IP Management Benchmarking Survey Page 36

38 113. During the last completed fiscal year, identify the number of domain name registrations filed. (breakdown by industry) (32 companies) Industry Average Registrations Median Registrations Aerospace/Defense (1) 2 2 Chemical/Chemical Products (9) 43 1 Consumer Products 1) 6 6 Electrical/Communications/Computer Hardware (7) Manufacturing/Mechanical Devices/Machinery () Medical Devices (2) 3 3 Pharmaceutical/Biotech (4) Software/IS/Financial/Business (3) Do you expect the number of domain name registrations to increase/decrease/stay the same? (41 companies) 24% % 71% Stay the same 1. During the last completed fiscal year, what was the total number of trademark registrations issued to your company? (3 companies) Trademarks In the U.S. Average Outside the U.S. Average Total Registrations Issues Valid Registrations Owned (end of year) 8, Percentage of trademark applications/protection requested through the Madrid Protocol for protection outside the U.S.: (32 companies) Trademarks Average Percent Median Percent Madrid Protection 2% 1% 213 IPO Corporate IP Management Benchmarking Survey Page 37

39 117. FOREIGN FILING: Indicate the countries in which trademark protection were typically made corresponding to applications in the first filed country: (42 companies) Country # of China 37 U.S. 37 Canada 33 Brazil 31 CTM 29 India 29 Japan 29 Korea 29 Mexico 27 Russia 2 United Kingdom 24 Australia 23 Taiwan 23 Germany 22 Country # of France 21 Argentina 19 Italy 18 South Africa 18 Spain 18 Philippines 16 Thailand UAE Indonesia 14 Vietnam 12 Poland 1 Other(s) 6 Caribbean and West Indies Do you belong to anti-counterfeit groups/industry coalition (e.g., a group that pools money to take action against counterfeiters)? (46 companies) 26% Yes No 74% 213 IPO Corporate IP Management Benchmarking Survey Page 38

40 Special thanks to the following companies, which chose to be listed as participating in this survey. 3M Innovative Properties Company Air Products and Chemicals, Inc. Allstate Insurance Company Avaya Inc. AwakenIP, LLC BTG International Ltd Caterpillar Inc. E.I. dupont denemours and Company (no subs/affils) Eaton Corporation Eli Lilly and Company ExxonMobil Corporation Freescale Semiconductor Google Inc. H. Lundbeck A/S Honeywell Inernational Inc. Inventergy, Inc. Merck & Co.,Inc. Micron Technology Microsoft Nielsen Novo Nordisk Inc. Pfizer, Inc. Praxair, Inc. Procter & Gamble Qualcomm Incorporated Rolls-Royce Corporation Sanofi Siemens Corporation Stanley Black & Decker, Inc. STMicroelectronics Styron LLC (including its affiliates) Targacept, Inc. The Dow Chemical Company United Technologies Corporation 213 IPO Corporate IP Management Benchmarking Survey Page 39