Re-thinking your IP organization Defining your optimal make or buy - PowerPoint PPT Presentation

Re-thinking your IP organization Defining your optimal make or buy policy Webinar Format

Objective of the webinar Should I outsource parts of my processes, and if so, which one(s)? • How to map your processes • How to identify and quantify the added value at each step • How to define your "make or buy" policy based on your core competencies

About your speaker • Vice President Service Design at ipan/Delegate Group (joined in 2014) • Qualified European and French Patent Attorney • 6 years within the Airbus Group IP organization (in France and the UK) • 5 years heading Safran Aircraft Engines’ patent operations (France) Yannick Biron • Lean 6-Sigma Expert (Airbus & Safran Groups Black Belt Certified) • Secretary of the epi’s Online Communications Committee epi representative at the SACEPO E-Patent Process Sub-Committee Past-secretary of the French Association of in-house IP professionals (ASPI)

IP management involves many different activities Managing your team Mitigating IP-related risks Licensing-in & -out Managing the IPR portfolio Running due diligences Reducing costs Monitoring deadlines Docketing Dealing with inventor compensation Advising and drafting opinions Drafting patent applications Litigating (seizing, working on briefs) Reporting to management Aligning IP to Company’s strategy Opposing patents Dealing with Office Actions Monitoring Third-Parties IPR Raising IP awareness Budget planning & controlling Maintaining the IPR database Managing projects (ex. IPMS, DMS)

Each activity may be handled differently Can I handle all required activities internally? Are there any legal barriers (e.g. foreign prosecution or drafting)? Which ones you think you should focus on? Is your organization the most efficient at a particular task? Are you actually supposed to perform a particular task in-house? What do I consider core or non-core to reach the objective? Are there any people our there that can help? Where is my added-value?

Defining your value-add – Helicopter view Process Invention Office Portfolio Exploitation Drafting First filing Foreign filing Docketing Grant disclosure actions mgmt & defense Need for Attorney Low Low Low High High High Medium Medium High Need for Paralegal Low Low High High High Low Medium High Low

Defining your value-add – Detailed view European patent schematic grant procedure Drafting Filing Search Docket. Office Docket. Grant Translat. Validation + Docket. Analysis & Invoic. Action(s) & Invoic. & Invoic. Medium Added Value Medium Added Value Medium Added Value High Added Value High Added Value High Added Value High Added Value Low A.V. Low A.V. Low A.V. Reserved for Patent Attorneys High Added Value Opened to specialized providers Medium Added Value Candidate for providers or IT solution Low A.V.

Pyramidal vs. Diamond Organizations Patent Attorney Work Products Added Value Paralegal Work Administrative Work Docketing Work

Pyramidal vs. Diamond Organizations Patent Attorney Work Products Administrative Work Paralegal Work At iso-budget, more resources on Patent Attorney Work Products Automation Right-sourcing Inspired from http://www.extensor.co.uk/articles/beyond_the_pyramid/beyond_the_pyramid.html

Conclusion Should I outsource parts of my processes, and if so, which one(s)? • Mapping your processes should be a starting point • IP leaders should regularly think about their own make or buy mix • Added value of each task depends on your organization • External audits or IP Diagnostics may help but require IP experience • Think short term and long term (build partnerships) • Outside and/or foreign counsels and specialized providers can help! • Will you still need an internal IP back-office organization in the future? • What for?

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