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IP Outsourcing: What to expect and what not to?, By Arun Narasani

IP Outsourcing: What to expect and what not to?, By Arun Narasani

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Published by SiNApSEblog
This presentation lays out the expectations that one should have when entering into an IP outsourcing relationship
This presentation lays out the expectations that one should have when entering into an IP outsourcing relationship

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Published by: SiNApSEblog on Dec 05, 2012
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08/21/2013

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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 Analysis Application Preparation Filing and Prosecution

Portfolio Maintenance

Licensing & Commercialization

Litigation

(c) Brain League IP Services

Research and analysis
Product concept      Landscape

Prior art Infringement Validity Claim charts

Litigation

Product launch

 FTO

 Infringement  Validity

Opposition/ infringement

Patent application

 Prior art

(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 Strategy

Cost
Flexibility

(c) Brain League IP Services

Expectations

•Definition Immediate •Quality
Delivery

(c) Brain League IP Services

Reality

Definition Quality

Clear expectations

Define parameters

(c) Brain League IP Services

PEOPLE

(c) Brain League IP Services

Why?

Efficiency Strategy

Cost
On-demand capacity

(c) Brain League IP Services

Expectations

Immediate
Fulfillment

•Capacity •Training

(c) Brain League IP Services

Reality

Capacity

Volume estimation and consistency
Work nature and diversity

Training

(c) Brain League IP Services

PROCESS

(c) Brain League IP Services

Why?

Efficiency Strategy

Well-defined measurement 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 Definition of workflow

Timelines

(c) Brain League IP Services

PLACE

(c) Brain League IP Services

Why?

Efficiency Strategy

Cost/ Availability
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 Strategy

Fixed cost
Aligned interests in the long term

(c) Brain League IP Services

Expectations

Immediate
Results

•Savings •Metrics

(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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