While analysis of IP-specific E-billing practices have not been independently published, our continuing research in E-billing for IP indicates that, as a practice area, the IP Department generally lags other Legal Department practice areas, such as Litigation, in adopting E-billing.  This is due, in part, to long implementation timeframes, relative priority of IP spend management compared to other practice areas, and the unique practice requirements of the IP area.  Nevertheless, our research indicates that E-billing is moving up the IT agenda for many Corporate IP Departments.

 

E-billing, by definition, is technology dependent.  However, like all technology supported processes, success in E-billing is ultimately based on adoption and use.  Technology is a key enabler, but well defined and enforced processes are the critical success factors. In working with both E-billing vendors and Corporate Law Departments we have identified a number of guiding principles that are instructive to those involved in deploying an E-billing solution.

 

1. Start with, and Actively Use, a Business Case Framework Throughout the Project Lifecycle

 

We find that many E-Billing projects lack the understanding of business processes and requirements, in sufficient detail, that are required for a successful implementation.  While high level billing processes may seem common across the industry, invariably, every company presents unique policies, procedures and processes that fundamentally impact capabilities required of the E-Billing solution.  Implementation teams are well advised to follow a detailed and thorough analysis of their processes as a prerequisite to E-Billing vendor selection.

 

    4. E-Billing Should Be Included as Component Part of Integrated IP Management System

 

As Corporate IP Departments adopt more integrated IPM systems, E-Billing should be considered an integrated component.  As in other practice areas where E-Billing is part of Matter Management, the IP Department should likewise ensure that E-Billing and spend management tools are tightly integrated to prosecution docketing.  The lack of integration between E-Billing and docketing impedes the advantages sought by a automated and workflow oriented prosecution management process.

 

    5. Evaluate Technology Vendors Based on Your Requirements - Not the Vendor's Features

 

E-Billing vendors offer an excellent array of E-Billing and spend management capabilities.  However, there are important and significant differences between vendors' products, and not all products are good fits for the particular needs of a given IP Department.  Special consideration should be given to understanding the vendor's specific capabilities and project experience in the IP area (as opposed to other practice areas.)  Importantly, the selection process should not start with the vendor's feature list (i.e., "tell me what you can do"), but should instead evaluate the vendor's features based on the defined business requirements.  The ability to fulfill a given requirement could be met from a number of different approaches, and properly defined selection criteria focus on meeting the requirement rather than a specific way of meeting the requirement.

 

    6. Include Your Law Firms in the Design, Implementation and Rollout

 

    7. Identify and Follow Through on Law Firm Benefits

 

While the IP Department owns and is the primary investor in the E-Billing solution, there is a real (and significant) cost/benefit impact on law firms.  While many law firm benefits are articulated as part of the quid pro quo in E-Billing adoption, many firms report that expected benefits are not achieved.  Instead, law firms experience additional costs (e.g., in process change, IT development, and data entry requirements), with no offsetting benefit.  IP Departments should ensure that promised benefits - such as quicker payment remittance - are actually delivered.  This often requires exceptions to corporate accounting policies which may not be geared towards payment of professional services fees on a more expedited manner.

 

    8. Understand the Fee Structure of the E-Billing Solution and the Impact on Business Case and Law Firms

 

The E-Billing vendors offer a number of different fee structures for their products and services.  The full range of costs - from initial implementation through ongoing operational costs - are critical to the business case and ultimate success of the project from a value perspective.  The cost structure also has a material impact on the law firm adoption dynamic.  Costs that must be incurred by the law firm become important to their business, and should be understood and actively discussed.