Retaining an economist in an intellectual property case means fixing the rights, the accused products, the remedies, and the court's schedule before the analysis begins, because each changes the records the economist needs and the report the court will receive. The conflict check runs across the parties, their affiliates, and the licensees whose agreements the analysis will read; the records request starts with the accused products' sales and cost data and the licenses; and the schedule is set by the court, which in a patent case usually ties the expert reports to its construction of the claims.
Checklist
Run the conflict check across the parties, their affiliates, and the licensees whose agreements the analysis will rely on
Define the rights, the accused products, the remedies sought, and the damages period the analysis covers
Confirm the protective order's terms for the economist and staff before any confidential data is sent
Send the licenses, the sales and cost data produced so far, and the infringement contentions with the engagement letter
Agree on the report deadline from the scheduling order and the claim construction schedule
Questions to ask the economist
Have you or your firm worked for either party, its affiliates, or the licensees in the record?
Which technical and survey experts will you rely on, and for which inputs?
How will you obtain comparable licenses beyond those the parties produce?
How will the analysis change if the court construes the claims more narrowly than we expect?
Timeline
About two weeks for retention, the protective order acknowledgment, and the first records transfer. The license and market analysis follows once the sales, cost, and license data are in hand.
Required documents
The licenses to the rights in suit and to comparable technology, with the negotiation files and royalty reports
Sales, pricing, and cost data for the accused products by product, period, and customer
The owner's financial statements, capacity records, and sales data for its competing products
The protective order and the scheduling order with the claim construction dates
Common pitfalls
Leaving the remedies and the accused products undefined, so the records request and the cost estimate drift
Producing sales data without the cost detail needed to compute incremental profit or the infringer's deductible expenses
Retaining the damages expert after the technical experts have formed their views on design-arounds and apportionment, so the inputs cannot be coordinated
How is the scope of an intellectual property damages engagement set?
By the rights, the accused products, the remedies, and the court's schedule. A royalty for one patent and one product line with the licenses in hand is the narrowest scope; several patents or marks, lost profits or price erosion claims that require the market to be reconstructed, trade secrets valued one by one, or survey-based apportionment widen it. The engagement letter states the scope and the fee basis for each phase.
Why does the protective order matter at retention?
Because the sales, cost, and license data the analysis rests on are usually produced under a protective order that limits who may see them, often to outside counsel and retained experts who sign an acknowledgment. The economist and the staff who will work with the data are identified and sign before it is sent, so the analysis is not delayed when the production arrives.
Can consulting work become a disclosed report later?
Yes. Many engagements begin as consulting work that tests the other side's theory and the licenses in the record, and become a disclosed report once counsel decides the damages analysis will be presented. The scope and the form of the work product are set at retention and can be changed as the case develops, subject to the court's disclosure rules.