Understanding the typical pitfalls in expectation management in IP outsourcing

1. IP Outsourcing
What to expect and what not to?
By, Arun Narasani
Co-founder/CEO, Brain League IP Services

2. Brain League
• Boutique IP services and consulting firm
• 50+ patent engineers and attorneys
• Presence in US and India across four offices
• Clients in US, Europe, and India
• 60+ partner law firms around the world
• Single point IP solutions
– Patent research
– Application preparation and filing support
– Prosecution support and portfolio maintenance
– Licensing and commercialization consultation
– IP process and strategy consulting
(c) Brain League IP Services

3. Agenda
• What to expect and what not to?
– IP Services: Value chain
– Product (services)
– People
– Process
– Place (location)
– Performance
(c) Brain League IP Services

4. IP SERVICES: VALUE CHAIN
(c) Brain League IP Services

5. IP services value chain
Research and Application Filing and
Analysis Preparation Prosecution
Portfolio Licensing &
Litigation
Maintenance Commercialization
(c) Brain League IP Services

6. Research and analysis
Product  Landscape
concept
 Prior art
 Infringement Product  FTO
Litigation
 Validity launch
 Claim charts
 Infringement Opposition/ Patent
 Prior art
 Validity infringement application
(c) Brain League IP Services

7. Application Preparation
• Drawings
• Technical writing
• Full specification and ready to file
(c) Brain League IP Services

8. Filing and prosecution
• Filling ready to file forms
• Preparing arguments
• Support services
– review and filing by an attorney
(c) Brain League IP Services

9. Portfolio maintenance
• Docketing
– Alerting on important deadlines
– Managing relationships with attorneys
• Renewals
(c) Brain League IP Services

10. Licensing and commercialization
• Transaction support
– Documentation review
– Market research on companies and technology
• Contract drafting and negotiation
(c) Brain League IP Services

11. Litigation
• Documentation review
• Assistance in and management of discovery
process
(c) Brain League IP Services

12. PRODUCT (SERVICES)
(c) Brain League IP Services

13. Why?
Efficiency Cost
Strategy Flexibility
(c) Brain League IP Services

14. Expectations
•Definition
Immediate •Quality
Delivery
(c) Brain League IP Services

15. Reality
Definition Clear expectations
Quality Define parameters
(c) Brain League IP Services

16. PEOPLE
(c) Brain League IP Services

17. Why?
Efficiency Cost
Strategy On-demand capacity
(c) Brain League IP Services

18. Expectations
•Capacity
Immediate •Training
Fulfillment
(c) Brain League IP Services

19. Reality
Capacity Volume estimation and consistency
Training Work nature and diversity
(c) Brain League IP Services

20. PROCESS
(c) Brain League IP Services

21. Why?
Efficiency Well-defined measurement
Strategy Focus on core strength
(c) Brain League IP Services

22. Expectations
•Integration
Immediate •Timelines
Response
(c) Brain League IP Services

23. Reality
Integration Point of contact and response
Timelines Definition of workflow
(c) Brain League IP Services

24. PLACE
(c) Brain League IP Services

25. Why?
Efficiency Cost/ Availability
Strategy Distribute/ de-risk
(c) Brain League IP Services

26. Expectations
•Capabilities
Immediate •Capacity
Match
(c) Brain League IP Services

27. Reality
Capabilities Network externality
Capacity Cost structure
(c) Brain League IP Services

28. PERFORMANCE
(c) Brain League IP Services

29. Why?
Efficiency Fixed cost
Strategy Aligned interests in the long term
(c) Brain League IP Services

30. Expectations
•Savings
Immediate
•Metrics
Results
(c) Brain League IP Services

31. Reality
Cost
Savings Initial setup cost
Metrics Learning curve
(c) Brain League IP Services

32. QUESTIONS?
(c) Brain League IP Services