This my presentation that I recently gave on a webinar talking about the value of legal outsourcing. Everyone always thinks that you outsource just to save money, but there are so many more facets to this that you need to consider. I am an experienced manager of intellectual property outsourcing and have stood up multiple groups providing high quality services to clients.

1. Analyzing The Value
Proposition of LPO’s
Legal Outsourcing Support Services

2. What Are We Really
Looking For?

3. To Get The Job Done!

4. Agenda
• What can you outsource?
• Why would you?
• What is the investment?
• What’s In It For Me?

5. What can you
outsource?
• Easy answer - anything
• More complicated answer is just another
question
• What shouldn’t you outsource?

6. What can you
outsource? (contd.)
• Perhaps you shouldn’t start with what you
can, but maybe with what you can’t
• What are the services that you provide
that truly differentiate yourself?
• What are the services that are based on
your organizational knowledge?

7. What can’t you
outsource?
• Practical first
• Focus on what your true value add is.
• Does the work require organizational
knowledge?
• Does the work require face time?
• Intangible reasons should be addressed, but
don’t start with “we just can’t do that.”

8. What can’t you
outsource (contd.)?• Legal Concerns
• If the provider is providing legal counsel,
you should get informed consent (
new comment to ABA Model Rule 1.1).
• Using nonlawyer assistance requires no
such informed consent, but still required
to conform with legal ethics obligations (
new comment to ABA Model Rule 5.3).
• Do not facilitate the unauthorized
practice of law (new comment to ABA
Model Rule 5.5).

9. Oldest Legal
Outsourcing Model
• What do companies outsource today?
• Patent work
• Litigation work
• Ask yourself why

10. Outsourcing augments
your operations
• Moving quickly to respond to market
demands, aka surges
• Taps into deep experience and knowledge
that is not cost-effective to have internally
• It is difficult, timely, and costly to add
employees to your operations, and it is
hard when the work no longer supports
their position.

11. Value
• Quick and responsive
• Deep experience and knowledge pools
• Quality, driven by experience and cost
advantages

12. Value - Quick and
Responsive
• Time Difference is a double edged sword,
use it to your advantage
• A distributed outsourced model allows you
to respond any time of the day or night to
needs
• Most providers can dedicate large teams
quickly to your rush request

13. Value - Experience*
• Access to experienced technical and business
people
• In the IP realm, you can be exposed to folks with
world-class education and experience who have
deep knowledge of product spaces
• It is easier to teach legal concepts than it is to teach
experience
• * As an IP lawyer, this has formed my opinion here

14. Value - Quality
• Prior experience allows for lessons learned
to be applied to your projects. You gain the
benefit of those that have come before.
• Cost advantages (in some cases) allow
more eyes on your project for quality and
reality checks
• Practical real-world experience mitigates
tunnel vision

15. Costs
• Variable depending on provider
• New providers may need more hand
holding
• Effective services require experience in
your area
• Are you willing to pay for them to
acquire that experience if they don’t have
it already?

16. Costs (contd.)
• Export Compliance
• Confidentiality obligations

17. Costs - Export
Compliance
• Some technologies are controlled by your
government
• In U.S. dual-use technology may be
prohibited from export
• No confidentiality agreement, employment
agreement, etc. absolves you from this
obligation
• For on-shore providers, ask the question of
who forms their team.
• Export law may not be kind to you if
controlled technology finds its way off-

18. Costs - Confidentiality
Provisions
• Due Diligence step
• Ensure that confidentiality is spelled out
(table stakes)
• What about the confidentiality you agreed
to with your client, does it allow for
outsourcing some of the work, even when
you don’t require informed consent.
• What about other third parties?
• Joint development agreements
• Joint ventures?

19. So Why WouldYou?
• Everyone else is doing it?
• Do your operations look like a sine wave?
• Outside perspective is more creative.

20. WII-FM
What’s In It For Me?
What’s In It For Me?
• Avoiding headcount restrictions
• Surging to meet demand quickly
• Validates work load before adding staff
• The benefit of wider experience base that
helps minimize blind spots

21. Questions?

22. Contact Information
• Bob Bohanek
• Business Development and Legal
Consultant,TecEsq Knowledge Solutions,
LLC
• bohanek@mac.com
• @rmbohanek, @solomolaw
• 651-270-5867