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
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
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