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IP Outsourcing

What to expect and what not to?
       By, Arun Narasani
  Co-founder/CEO, 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 and      Application                  Filing and
  Analysis        Preparation                 Prosecution




 Portfolio       Licensing &
                                              Litigation
Maintenance    Commercialization




               (c) Brain League IP Services
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
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                        Cost
Strategy                Flexibility



             (c) Brain League IP Services
Expectations


          •Definition
Immediate •Quality
 Delivery


              (c) Brain League IP Services
Reality



Definition   Clear expectations
 Quality     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
Immediate     •Training
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
Immediate •Timelines
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/ Availability
Strategy     Distribute/ de-risk



              (c) Brain League IP Services
Expectations

          •Capabilities
Immediate •Capacity
  Match


          (c) Brain League IP Services
Reality



Capabilities   Network externality
 Capacity        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
Immediate
             •Metrics
 Results


             (c) Brain League IP Services
Reality


 Cost
Savings   Initial setup cost
Metrics   Learning curve


           (c) Brain League IP Services
QUESTIONS?


             (c) Brain League IP Services

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Expectation Management in IP Outsourcing, By Arun Narasani

  • 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