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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 In...
Agenda
• What to expect and what not to?
  – IP Services: Value chain
  – Product (services)
  – People
  – Process
  – Pl...
IP SERVICES: VALUE CHAIN


            (c) Brain League IP Services
IP services value chain

Research and      Application                  Filing and
  Analysis        Preparation          ...
Research and analysis
                                        Product                  Landscape
                        ...
Application Preparation
• Drawings
• Technical writing
• Full specification and ready to file




                    (c) ...
Filing and prosecution
• Filling ready to file forms
• Preparing arguments

• Support services
  – review and filing by an...
Portfolio maintenance
• Docketing
  – Alerting on important deadlines
  – Managing relationships with attorneys


• Renewa...
Licensing and commercialization
• Transaction support
  – Documentation review
  – Market research on companies and techno...
Litigation
• Documentation review

• Assistance in and management of discovery
  process




                  (c) Brain L...
PRODUCT (SERVICES)


           (c) Brain League IP Services
Why?


Efficiency                        Cost
Strategy                Flexibility



             (c) Brain League IP Serv...
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 Serv...
Expectations


              •Capacity
Immediate     •Training
Fulfillment


              (c) Brain League IP Services
Reality



Capacity   Volume estimation and consistency

Training       Work nature and diversity




               (c) B...
PROCESS


          (c) Brain League IP Services
Why?


Efficiency   Well-defined measurement

Strategy       Focus on core strength




                (c) Brain League I...
Expectations


          •Integration
Immediate •Timelines
Response


           (c) Brain League IP Services
Reality



Integration   Point of contact and response

Timelines        Definition of workflow



                  (c) B...
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 Servi...
PERFORMANCE


         (c) Brain League IP Services
Why?


Efficiency                        Fixed cost

Strategy     Aligned interests in the long term




                 ...
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 Slide 1 Expectation Management in IP Outsourcing, By Arun Narasani Slide 2 Expectation Management in IP Outsourcing, By Arun Narasani Slide 3 Expectation Management in IP Outsourcing, By Arun Narasani Slide 4 Expectation Management in IP Outsourcing, By Arun Narasani Slide 5 Expectation Management in IP Outsourcing, By Arun Narasani Slide 6 Expectation Management in IP Outsourcing, By Arun Narasani Slide 7 Expectation Management in IP Outsourcing, By Arun Narasani Slide 8 Expectation Management in IP Outsourcing, By Arun Narasani Slide 9 Expectation Management in IP Outsourcing, By Arun Narasani Slide 10 Expectation Management in IP Outsourcing, By Arun Narasani Slide 11 Expectation Management in IP Outsourcing, By Arun Narasani Slide 12 Expectation Management in IP Outsourcing, By Arun Narasani Slide 13 Expectation Management in IP Outsourcing, By Arun Narasani Slide 14 Expectation Management in IP Outsourcing, By Arun Narasani Slide 15 Expectation Management in IP Outsourcing, By Arun Narasani Slide 16 Expectation Management in IP Outsourcing, By Arun Narasani Slide 17 Expectation Management in IP Outsourcing, By Arun Narasani Slide 18 Expectation Management in IP Outsourcing, By Arun Narasani Slide 19 Expectation Management in IP Outsourcing, By Arun Narasani Slide 20 Expectation Management in IP Outsourcing, By Arun Narasani Slide 21 Expectation Management in IP Outsourcing, By Arun Narasani Slide 22 Expectation Management in IP Outsourcing, By Arun Narasani Slide 23 Expectation Management in IP Outsourcing, By Arun Narasani Slide 24 Expectation Management in IP Outsourcing, By Arun Narasani Slide 25 Expectation Management in IP Outsourcing, By Arun Narasani Slide 26 Expectation Management in IP Outsourcing, By Arun Narasani Slide 27 Expectation Management in IP Outsourcing, By Arun Narasani Slide 28 Expectation Management in IP Outsourcing, By Arun Narasani Slide 29 Expectation Management in IP Outsourcing, By Arun Narasani Slide 30 Expectation Management in IP Outsourcing, By Arun Narasani Slide 31 Expectation Management in IP Outsourcing, By Arun Narasani Slide 32
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Expectation Management in IP Outsourcing, By Arun Narasani

  1. 1. IP Outsourcing What to expect and what not to? By, Arun Narasani Co-founder/CEO, Brain League IP Services
  2. 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. 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. 4. IP SERVICES: VALUE CHAIN (c) Brain League IP Services
  5. 5. IP services value chain Research and Application Filing and Analysis Preparation Prosecution Portfolio Licensing & Litigation Maintenance Commercialization (c) Brain League IP Services
  6. 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. 7. Application Preparation • Drawings • Technical writing • Full specification and ready to file (c) Brain League IP Services
  8. 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. 9. Portfolio maintenance • Docketing – Alerting on important deadlines – Managing relationships with attorneys • Renewals (c) Brain League IP Services
  10. 10. Licensing and commercialization • Transaction support – Documentation review – Market research on companies and technology • Contract drafting and negotiation (c) Brain League IP Services
  11. 11. Litigation • Documentation review • Assistance in and management of discovery process (c) Brain League IP Services
  12. 12. PRODUCT (SERVICES) (c) Brain League IP Services
  13. 13. Why? Efficiency Cost Strategy Flexibility (c) Brain League IP Services
  14. 14. Expectations •Definition Immediate •Quality Delivery (c) Brain League IP Services
  15. 15. Reality Definition Clear expectations Quality Define parameters (c) Brain League IP Services
  16. 16. PEOPLE (c) Brain League IP Services
  17. 17. Why? Efficiency Cost Strategy On-demand capacity (c) Brain League IP Services
  18. 18. Expectations •Capacity Immediate •Training Fulfillment (c) Brain League IP Services
  19. 19. Reality Capacity Volume estimation and consistency Training Work nature and diversity (c) Brain League IP Services
  20. 20. PROCESS (c) Brain League IP Services
  21. 21. Why? Efficiency Well-defined measurement Strategy Focus on core strength (c) Brain League IP Services
  22. 22. Expectations •Integration Immediate •Timelines Response (c) Brain League IP Services
  23. 23. Reality Integration Point of contact and response Timelines Definition of workflow (c) Brain League IP Services
  24. 24. PLACE (c) Brain League IP Services
  25. 25. Why? Efficiency Cost/ Availability Strategy Distribute/ de-risk (c) Brain League IP Services
  26. 26. Expectations •Capabilities Immediate •Capacity Match (c) Brain League IP Services
  27. 27. Reality Capabilities Network externality Capacity Cost structure (c) Brain League IP Services
  28. 28. PERFORMANCE (c) Brain League IP Services
  29. 29. Why? Efficiency Fixed cost Strategy Aligned interests in the long term (c) Brain League IP Services
  30. 30. Expectations •Savings Immediate •Metrics Results (c) Brain League IP Services
  31. 31. Reality Cost Savings Initial setup cost Metrics Learning curve (c) Brain League IP Services
  32. 32. QUESTIONS? (c) Brain League IP Services

Understanding the typical pitfalls in expectation management in IP outsourcing

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