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VALUE CHAIN PERSPECTIVE IN LEGAL
OUTSOURCING INDUSTRY
By, Arun Narasani,
Co-founder/CEO, Brain League IP Services
www.brainleague.com
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
© Brain League IP Services
AGENDA
 Offshore outsourcing
 Value chain and human resources
 Challenges
 Emerging trends
 Example
 Considerations in choosing a partner
© Brain League IP Services
OFFSHORE OUTSOURCING
© Brain League IP Services
ONSHORE VS OFFSHORE
 Regulatory framework
 Risk vs reward
 Experience
 Incremental vs leap
 Cost savings
 Control vs focus
 Outside cousel
 Threat to bottomline vs margins
© Brain League IP Services
ONSHORE VS OFFSHORE
 In-house counsel
 Job security vs value addition
 Capacity requirements
 Stable vs varying
© Brain League IP Services
OPPORTUNITY – EXPORTS IN 2011 ($BN)
45
14
0.4
0
100
200
300
400
500
600
700
IT & Software BPO LPO
Global spending
India exports
© Brain League IP Services
EMPLOYMENT OPPORTUNITY – 2011 (MN)
0
0.5
1
1.5
2
2.5
3
IT/BPO KPO
Employment
© Brain League IP Services
Intangible assets account for up to 80% of
market value in 2010
Source: Ocean Tomo's Annual Study of Intangible Asset Market Value -
2010
© Brain League IP Services
TRENDS LEADING TO OFFSHORING
 Proliferation of patent applications worldwide
 Value of patent portfolios
 Lack of resources locally to handle the increase
in work
 Exorbitant costs to do it all locally
 Cost of obtaining patent rights: USD 15,000 to USD
30,000+
 Difficulty in handling worldwide work centrally for
some MNCs
 Slowing economy
© Brain League IP Services
SEGREGATION OF WORK
Non – core portfolio
- Relatively simple work, and/or
- Non-strategic
Core portfolio
- Requires higher skill set, and/or
- Strategic in nature
© Brain League IP Services
Non – core work
- Repetitive, and/or
- Transactional
Core work
- Highly specialized, and/or
- Strategic in nature/ involves
higher risk
VALUE CHAIN IN OFFSHORED SERVICES
© Brain League IP Services
Infrastructure
Software
IT Consulting
Software R&D
ITO
BPO
ERM HRM CRM
KPO
Business
Services
Legal
Services
Low
High
© Brain League IP Services
Low
High
Legal Support/ Staff augmentation
Document review and formatting, transcription,
paralegal services, etc.
Legal Research
Information gathering, Prior art
searches, litigation support, etc.
Analysis
patent drafting,
Landscape analysis,
contract drafting, etc.
Basic
Aptitude
Aptitude
+
Exp.
High
Aptitude
+
Inter
Disc.
Exp.
Process
People
Delivery Quality CRM
© Brain League IP Services
PATENT SERVICES
Disclosure
Development
IP Research and
Analysis
Application
Preparation
Filing and
Prosecution
Portfolio
Maintenance
Licensing &
Commercialization
Litigation
Innovation/ Idea Generation
© Brain League IP Services
HUMAN RESOURCE SKILLS
© Brain League IP Services
INVENTOR INTERACTION
Invention Disclosure
Inventor Interview
Novel elements summary
First Draft
Inventor Review
Second Draft
Final Review
Application forms preparation and
Filing
Start to finish in about 3 to 4 weeks
© Brain League IP Services
EXAMPLES
Computer Input Device
Search method
Robotic Arm
© Brain League IP Services
KEY SKILLS
 Communication
 Written and oral
 Legal
 Region specific; case law updates
 Technical
 Cutting edge technology
 Project management
 Time critical
© Brain League IP Services
© Brain League IP Services
CHALLENGES
CHALLENGES – RESOURCES
 Lack of ecosystem for IP in India
 Only about 10,000 applications were being filed in India in 2002
 In 2011-12, the number stands at 37,000 applications; 80% from
foreign applicants
 Lack of resources with inter-disciplinary skills
 Social structure and pressures
 Lack of experience with foreign systems
 Attrition
 10 to 25% attrition rate due to economic growth and opportunities
 Attrition higher in lower segments of value
 Competition with other industries; captive units that pay higher
salaries; obsession with IT job as a status symbol
© Brain League IP Services
CHALLENGES – MARKETING
 Quality
 Basic skills
 Inter-disciplinary education/understanding
 Consistency
 Credibility
 Prior data theft cases
 Director of a business process outsourcing (BPO) unit for his alleged
involvement in stealing medical history data in 2011
 Employee of a mobile operator BPO shares data outside company in 2010
 Lack of a credible IP environment
 Cost savings
 Diminishing labor arbitrage opportunity
© Brain League IP Services
EMERGING TRENDS
© Brain League IP Services
CAPTURING VALUE
 Expertise
 Process
 Delivery
 Organization
© Brain League IP Services
EXPERTISE
 Higher up in value chain
 Ex: litigation
 Domain expertise
 Ex: telecom
 Niche services
 Ex: patents
© Brain League IP Services
PROCESS INTEGRATION
 Enable self-service
 Automation
 Increase efficiency
 Transparency/ confidentiality/ security
 Increase interaction and engagement; value
addition
© Brain League IP Services
DELIVERY
 People
 Mode
Onsite
Onshore Offshore
Online Offline
+
© Brain League IP Services
ORGANIZATION
 Structure
 Incentives
© Brain League IP Services
EXAMPLE
© Brain League IP Services
US Office US
India
EP
JP CA AU
HK
CN
IN
US
CN/IN Office
© Brain League IP Services
LEADING NICHE MOBILE PHONE COMPANY
 Problem
 Conceptualization in US; manufacturing in China;
Design and R&D in India
 Distributed IP processes; multiple law firms
 Lack of internal resources and focus on IP
 Solution
 Single point IP management solution
 Centralized docketing and reporting
 Increase efficiency in terms of manpower and costs
© Brain League IP Services
IP SERVICES
IP Generation
&
Identification
IP Protection
&
Management
IP Risk Mitigation
&
Commercialization
Policy and process
setup
Strategy services
Training
Disclosure
development
Application drafting
Filing and prosecution
Portfolio maintenance
Portfolio review and
analysis
Prior art search
Agreements
FTO/ Landscape/
Infringement/ Validity
Research & Analysis
Open source analysis
License Agreements
© Brain League IP Services
CHOOSING AN OFFSHORE PARTNER
© Brain League IP Services
CAPABILITIES
 Team
 Track record
 References
 Pilot/Test cases
© Brain League IP Services
SKILLS AND PRACTICE
 Understanding of foreign legal systems
 People trained in foreign legal systems
 Language skills
 Hiring and training practices
 Inter-disciplinary
 Continuous learning
 HR practices to retain talent
 Organization structure
 Incentives to retain
© Brain League IP Services
PROCESS AND INFRASTRUCTURE
 Process and Technology infrastructure
 Defined and Repeatable processes
 Metrics/SLAs
 Automation
 Security/confidentiality measures
 Physical, Technology & legal
© Brain League IP Services
QUALITY
 Consistency
 Multi-step quality check
 Multi-layer?
© Brain League IP Services
SUMMARY AND Q&A
© Brain League IP Services

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Value Chain Analysis in Legal Outsourcing, By Arun Narasani

  • 1. VALUE CHAIN PERSPECTIVE IN LEGAL OUTSOURCING INDUSTRY By, Arun Narasani, Co-founder/CEO, Brain League IP Services www.brainleague.com
  • 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 © Brain League IP Services
  • 3. AGENDA  Offshore outsourcing  Value chain and human resources  Challenges  Emerging trends  Example  Considerations in choosing a partner © Brain League IP Services
  • 4. OFFSHORE OUTSOURCING © Brain League IP Services
  • 5. ONSHORE VS OFFSHORE  Regulatory framework  Risk vs reward  Experience  Incremental vs leap  Cost savings  Control vs focus  Outside cousel  Threat to bottomline vs margins © Brain League IP Services
  • 6. ONSHORE VS OFFSHORE  In-house counsel  Job security vs value addition  Capacity requirements  Stable vs varying © Brain League IP Services
  • 7. OPPORTUNITY – EXPORTS IN 2011 ($BN) 45 14 0.4 0 100 200 300 400 500 600 700 IT & Software BPO LPO Global spending India exports © Brain League IP Services
  • 8. EMPLOYMENT OPPORTUNITY – 2011 (MN) 0 0.5 1 1.5 2 2.5 3 IT/BPO KPO Employment © Brain League IP Services
  • 9. Intangible assets account for up to 80% of market value in 2010 Source: Ocean Tomo's Annual Study of Intangible Asset Market Value - 2010 © Brain League IP Services
  • 10. TRENDS LEADING TO OFFSHORING  Proliferation of patent applications worldwide  Value of patent portfolios  Lack of resources locally to handle the increase in work  Exorbitant costs to do it all locally  Cost of obtaining patent rights: USD 15,000 to USD 30,000+  Difficulty in handling worldwide work centrally for some MNCs  Slowing economy © Brain League IP Services
  • 11. SEGREGATION OF WORK Non – core portfolio - Relatively simple work, and/or - Non-strategic Core portfolio - Requires higher skill set, and/or - Strategic in nature © Brain League IP Services Non – core work - Repetitive, and/or - Transactional Core work - Highly specialized, and/or - Strategic in nature/ involves higher risk
  • 12. VALUE CHAIN IN OFFSHORED SERVICES © Brain League IP Services
  • 13. Infrastructure Software IT Consulting Software R&D ITO BPO ERM HRM CRM KPO Business Services Legal Services Low High © Brain League IP Services
  • 14. Low High Legal Support/ Staff augmentation Document review and formatting, transcription, paralegal services, etc. Legal Research Information gathering, Prior art searches, litigation support, etc. Analysis patent drafting, Landscape analysis, contract drafting, etc. Basic Aptitude Aptitude + Exp. High Aptitude + Inter Disc. Exp. Process People Delivery Quality CRM © Brain League IP Services
  • 15. PATENT SERVICES Disclosure Development IP Research and Analysis Application Preparation Filing and Prosecution Portfolio Maintenance Licensing & Commercialization Litigation Innovation/ Idea Generation © Brain League IP Services
  • 16. HUMAN RESOURCE SKILLS © Brain League IP Services
  • 17. INVENTOR INTERACTION Invention Disclosure Inventor Interview Novel elements summary First Draft Inventor Review Second Draft Final Review Application forms preparation and Filing Start to finish in about 3 to 4 weeks © Brain League IP Services
  • 18. EXAMPLES Computer Input Device Search method Robotic Arm © Brain League IP Services
  • 19. KEY SKILLS  Communication  Written and oral  Legal  Region specific; case law updates  Technical  Cutting edge technology  Project management  Time critical © Brain League IP Services
  • 20. © Brain League IP Services CHALLENGES
  • 21. CHALLENGES – RESOURCES  Lack of ecosystem for IP in India  Only about 10,000 applications were being filed in India in 2002  In 2011-12, the number stands at 37,000 applications; 80% from foreign applicants  Lack of resources with inter-disciplinary skills  Social structure and pressures  Lack of experience with foreign systems  Attrition  10 to 25% attrition rate due to economic growth and opportunities  Attrition higher in lower segments of value  Competition with other industries; captive units that pay higher salaries; obsession with IT job as a status symbol © Brain League IP Services
  • 22. CHALLENGES – MARKETING  Quality  Basic skills  Inter-disciplinary education/understanding  Consistency  Credibility  Prior data theft cases  Director of a business process outsourcing (BPO) unit for his alleged involvement in stealing medical history data in 2011  Employee of a mobile operator BPO shares data outside company in 2010  Lack of a credible IP environment  Cost savings  Diminishing labor arbitrage opportunity © Brain League IP Services
  • 23. EMERGING TRENDS © Brain League IP Services
  • 24. CAPTURING VALUE  Expertise  Process  Delivery  Organization © Brain League IP Services
  • 25. EXPERTISE  Higher up in value chain  Ex: litigation  Domain expertise  Ex: telecom  Niche services  Ex: patents © Brain League IP Services
  • 26. PROCESS INTEGRATION  Enable self-service  Automation  Increase efficiency  Transparency/ confidentiality/ security  Increase interaction and engagement; value addition © Brain League IP Services
  • 27. DELIVERY  People  Mode Onsite Onshore Offshore Online Offline + © Brain League IP Services
  • 29. EXAMPLE © Brain League IP Services
  • 30. US Office US India EP JP CA AU HK CN IN US CN/IN Office © Brain League IP Services
  • 31. LEADING NICHE MOBILE PHONE COMPANY  Problem  Conceptualization in US; manufacturing in China; Design and R&D in India  Distributed IP processes; multiple law firms  Lack of internal resources and focus on IP  Solution  Single point IP management solution  Centralized docketing and reporting  Increase efficiency in terms of manpower and costs © Brain League IP Services
  • 32. IP SERVICES IP Generation & Identification IP Protection & Management IP Risk Mitigation & Commercialization Policy and process setup Strategy services Training Disclosure development Application drafting Filing and prosecution Portfolio maintenance Portfolio review and analysis Prior art search Agreements FTO/ Landscape/ Infringement/ Validity Research & Analysis Open source analysis License Agreements © Brain League IP Services
  • 33. CHOOSING AN OFFSHORE PARTNER © Brain League IP Services
  • 34. CAPABILITIES  Team  Track record  References  Pilot/Test cases © Brain League IP Services
  • 35. SKILLS AND PRACTICE  Understanding of foreign legal systems  People trained in foreign legal systems  Language skills  Hiring and training practices  Inter-disciplinary  Continuous learning  HR practices to retain talent  Organization structure  Incentives to retain © Brain League IP Services
  • 36. PROCESS AND INFRASTRUCTURE  Process and Technology infrastructure  Defined and Repeatable processes  Metrics/SLAs  Automation  Security/confidentiality measures  Physical, Technology & legal © Brain League IP Services
  • 37. QUALITY  Consistency  Multi-step quality check  Multi-layer? © Brain League IP Services
  • 38. SUMMARY AND Q&A © Brain League IP Services