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 aſter 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. Te main thing that our clients notice is that it liſts 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.
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What specific business areas in IP lend themselves most to outsourcing?
Tere 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 soſtware 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. Te 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. Te 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 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. Tis 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.
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. Te 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.
Adam Wylie is the CEO of Patrafee UK Ltd. He can be contacted at:
adam.wylie@patrafee.com
Adam Wylie has overseen the growth of the UK office of Patrafee, a provider of patent annuity services, IP management soſtware, 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.
World Intellectual Property Review Annual 2013
43
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