expectation management in ip outsourcing, by arun narasani
DESCRIPTION
Understanding the typical pitfalls in expectation management in IP outsourcingTRANSCRIPT
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?