expectation management in ip outsourcing, by arun narasani

IP Outsourcing

What to expect and what not to?By, Arun Narasani

Co-founder/CEO, Brain League IP Services

(c) Brain League IP Services

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

Agenda

• What to expect and what not to?– IP Services: Value chain– Product (services)– People– Process– Place (location)– Performance

(c) Brain League IP Services

IP SERVICES: VALUE CHAIN

(c) Brain League IP Services

IP services value chain

Research andAnalysis

ApplicationPreparation

Filing andProsecution

Portfolio Maintenance

Licensing &Commercialization Litigation

(c) Brain League IP Services

Research and analysis

Product concept

Product launch

Patent application

Opposition/ infringement

Litigation

Landscape

FTO

Prior art Infringement Validity

Prior art Infringement Validity Claim charts

(c) Brain League IP Services

Application Preparation

• Drawings• Technical writing• Full specification and ready to file

(c) Brain League IP Services

Filing and prosecution

• Filling ready to file forms• Preparing arguments

• Support services– review and filing by an attorney

(c) Brain League IP Services

Portfolio maintenance

• Docketing– Alerting on important deadlines– Managing relationships with attorneys

• Renewals

(c) Brain League IP Services

Licensing and commercialization

• Transaction support– Documentation review– Market research on companies and technology

• Contract drafting and negotiation

(c) Brain League IP Services

Litigation

• Documentation review

• Assistance in and management of discovery process

(c) Brain League IP Services

PRODUCT (SERVICES)

(c) Brain League IP Services

Why?

Efficiency CostStrategy Flexibility

(c) Brain League IP Services

Expectations

•Definition•QualityImmediate

Delivery

(c) Brain League IP Services

Reality

Definition Clear expectationsQuality Define parameters

(c) Brain League IP Services

PEOPLE

(c) Brain League IP Services

Why?

Efficiency Cost

Strategy On-demand capacity

(c) Brain League IP Services

Expectations

•Capacity•TrainingImmediate

Fulfillment

(c) Brain League IP Services

Reality

Capacity Volume estimation and consistency

Training Work nature and diversity

(c) Brain League IP Services

PROCESS

(c) Brain League IP Services

Why?

Efficiency Well-defined measurement

Strategy Focus on core strength

(c) Brain League IP Services

Expectations

• Integration•TimelinesImmediate

Response

(c) Brain League IP Services

Reality

Integration Point of contact and response

Timelines Definition of workflow

(c) Brain League IP Services

PLACE

(c) Brain League IP Services

Why?

Efficiency Cost/ AvailabilityStrategy Distribute/ de-risk

(c) Brain League IP Services

Expectations

•Capabilities•CapacityImmediate

Match

(c) Brain League IP Services

Reality

Capabilities Network externalityCapacity Cost structure

(c) Brain League IP Services

PERFORMANCE

(c) Brain League IP Services

Why?

Efficiency Fixed cost

Strategy Aligned interests in the long term

(c) Brain League IP Services

Expectations

•Savings•MetricsImmediate

Results

(c) Brain League IP Services

Reality

Cost Savings Initial setup cost

Metrics Learning curve

(c) Brain League IP Services

QUESTIONS?