OUTSOURCING
WIDENING THE NET:
THE CASE FOR
OUTSOURCING
With attorneys and
business facing
unprecedented cost and
time pressure, now may
be the time to consider
outsourcing. WIPR
talked to Adam Wylie
about the options.
What is the rationale
for law firms and
industry outsourcing IP
management?
Law firms are experts in the law
and the particular branch of law
in which they may specialise.
Companies have expertise in the
area of technology in which they
operate. Both may have experience
in IP management, but I doubt either
would class themselves as experts in this
field. The natural solution is to outsource
to a supplier of IP management services
who can provide the experience and the
expertise to handle this important facet of their
business.
Some companies and law firms develop their
own systems to handle the management of their
IP portfolios. To make this work successfully
requires a lot of time and resources, as well as the
cost involved with maintaining and updating the
systems. It is arguable that these resources would
be better focused on core activities.
There are many suppliers offering IP
management services. The thinking behind
any outsourcing includes improving efficiency,
reducing cost and shifting liability for elements
of the business that carry a degree of risk, such
as patent renewals. Some companies use multiple
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World Intellectual Property Review Annual 2013
www.worldipreview.com
OUTSOURCING
“THERE ARE
ADVANTAGES
ASSOCIATED WITH
CONSOLIDATING
CERTAIN ASPECTS OF
YOUR IP MANAGEMENT
TO A SINGLE
SUPPLIER, INCLUDING
STREAMLINED
PROCESSES AND ONE
INVOICE, INSTEAD OF
MULTIPLE INVOICES.”
suppliers, and there are advantages associated
with consolidating certain aspects of your IP
management to a single supplier, including
streamlined processes and one invoice, instead
of multiple invoices.
What are the main things that
external service providers can
offer?
Generally, the external service provider has to
demonstrate that it is going to add significant
value to the service being outsourced, be it by
changing and improving the process, helping
the customer with standardisation, perhaps
globally as opposed to single-country situations,
or adding tools that increase efficiency, or simply
reducing cost.
An external service provider has expertise in
areas of IP management. Employing a third party
to look after your IP management may seem like
relinquishing control, but it in fact simplifies the
processes of day-to-day management, giving a
better overview and control over an IP portfolio.
In the case of patent renewals for a law firm,
using a service provider means all payments are
automated so there is less correspondence with
individual firms.
It removes the need to chase local agents for
invoices, acknowledgements or receipts, as the
service provider is responsible for everything.
The main thing that our clients notice is that it
lifts the burden of managing their IP efficiently.
Involvement is low, as every client is allocated
a single, primary point of contact, who handles
that company’s or law firm’s portfolio. Other
clients cite advantages such as sharing one
overall system across several offices, and a switch
to paperless filing.
www.worldipreview.com
What specific business areas
in IP lend themselves most to
outsourcing?
There are four main business areas that lend
themselves to outsourcing. Patent searching is
an interesting one that is carried out either by
a specialist provider, or some attorney firms.
A patent search uses subscription databases or
proprietary software to analyse vast amounts of
patent and prior art material to inform future
patent filing strategies.
Translation service providers draw on the
expertise and technical background of experts
to accurately translate patent applications, prior
art and related IP documents. The key qualities
of adherence to strict deadlines and absolute
accuracy in the translations themselves, usually
overseen by a qualified attorney, are essential
aspects of a good translation service.
European patent validations are a costly phase
in a patent’s lifecycle. Companies can reduce
their costs by outsourcing to a service provider,
who can access lower validation costs due to the
volume of cases handled.
Patent renewals are an obvious fourth example.
IP law firms outsource due to the volume of
cases handled and the associated administrative
burden. The decision to outsource is one of
increased efficiency, reduced cost, and removal
of risk. Handling patent renewals efficiently
is crucial to any patent holder or IP law firm,
and unless a patent portfolio is very small,
outsourcing renewals to a third party will always
be the most secure solution.
What savings are possible using
this approach?
A comparison of IP products and services on
the market will reveal a range of cost savings to
a business in outsourcing IP services. Costs can
vary enormously due to the portion of service
charge a provider will add to fixed fee elements
of a service, for example in the case of patent
renewals. Outsourcing your IP management not
only saves money, but time, allowing businesses
to concentrate time and resources on other areas.
Are there particular examples
you could highlight?
Patrafee took on the patent renewals for a UK
firm of patent attorneys who were instructing
local agents to carry out clients’ patent renewals
in various countries. The firm was looking to
increase its efficiency and reduce costs, which
were significant. Since switching all of its patent
renewals to Patrafee they have experienced
improvements to the business in cost reduction
and administrative processes, and the efficiency
in instructing one central agency compared to
local agents. Some potential clients can be put
off by the perceived hassle of switching from
their existing renewals provider, but due to our
experience and well defined routines concerning
the transfer of cases I’m pleased to say the process
went smoothly. Q
Adam Wylie is the CEO of Patrafee UK Ltd. He
can be contacted at: adam.wylie@patrafee.com What should potential clients
look for when choosing a
particular service provider?
Outsourcing IP-related services to a third party
involves placing an enormous amount of trust
in a service provider: trust that the task will
be carried out on time, and to a high standard.
Desirable qualities to look for include a track
record of providing such services to a consistently
high standard over many years, and experience
in making the client’s docketing system ‘talk’
to the service provider’s renewals system. A
streamlined and non-manual transfer of the
relevant data is desirable as there is less room
for human error. This cannot be emphasised
enough.
Cost reduction and price will also play a part,
although the cheapest provider rarely equals the
best. Seek the service provider that has the best
quality-to-price offering.
Adam Wylie has overseen the growth of
the UK office of Patrafee, a provider of patent
annuity services, IP management software,
and the patent budgeting tool IP Forecaster.
He was previously managing director of IP
Pragmatics Ltd’s services division, prior to
which he worked for two UK private patent
attorney firms.
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