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

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

Nov 16, 2022 11 likes •133 views

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

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SLIDE 1

Webinar Format

Re-thinking your IP organization

Defining your optimal make or buy policy

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SLIDE 2

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
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SLIDE 3

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)
  • 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)

Yannick Biron

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SLIDE 4

IP management involves many different activities Drafting patent applications

Docketing Maintaining the IPR database Monitoring deadlines Dealing with Office Actions Opposing patents Advising and drafting opinions Litigating (seizing, working on briefs) Running due diligences Raising IP awareness Managing the IPR portfolio Reporting to management

Aligning IP to Company’s strategy

Budget planning & controlling Managing your team Managing projects (ex. IPMS, DMS) Reducing costs Licensing-in & -out Mitigating IP-related risks Dealing with inventor compensation Monitoring Third-Parties IPR

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SLIDE 5

Each activity may be handled differently Can I handle all required activities internally?

Which ones you think you should focus on? Is your organization the most efficient at a particular task?

Are there any people our there that can help?

Are there any legal barriers (e.g. foreign prosecution or drafting)?

What do I consider core or non-core to reach the objective?

Are you actually supposed to perform a particular task in-house?

Where is my added-value?

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SLIDE 6

Defining your value-add – Helicopter view

Need for Paralegal

Low Low High High High Low Medium High Low

Need for Attorney

High High Low Low Low High Medium Medium High

Process

Invention disclosure Drafting First filing Foreign filing Docketing Office actions Grant Portfolio mgmt Exploitation & defense

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SLIDE 7

Defining your value-add – Detailed view

European patent schematic grant procedure

Drafting Filing + Docket. & Invoic. Search Analysis Docket. & Invoic. Office Action(s) Docket. & Invoic. Grant Translat. Validation

High Added Value

Reserved for Patent Attorneys

Medium Added Value

Opened to specialized providers

Low A.V.

Candidate for providers or IT solution

High Added Value Low A.V. High Added Value Low A.V. High Added Value Low A.V. High Added Value Medium Added Value Medium Added Value Medium Added Value

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SLIDE 8

Pyramidal vs. Diamond Organizations

Added Value Paralegal Work Docketing Work Administrative Work Patent Attorney Work Products

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SLIDE 9

Pyramidal vs. Diamond Organizations

Automation Right-sourcing Administrative Work Paralegal Work Patent Attorney Work Products

At iso-budget, more resources on Patent Attorney Work Products

Inspired from http://www.extensor.co.uk/articles/beyond_the_pyramid/beyond_the_pyramid.html

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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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SLIDE 11

Contact us

For more information, please contact:

Belgium Rue de Livourne 7 B-1060 Brussels T +32 2 543 36 75 UK Delta House 50 West Nile St Glasgow G1 2NP T +44 141 241 6250 USA - Chicago 1165 N Clark St Suite 700 Chicago IL 60610 T +1 888 249 1726 Germany Münchener straße 14 85540 Munich/Haar T +49 89 94 38 50 40 Serbia Karadjordjeva 65 11 000 Belgrade T +381 117 856 815 USA - Detroit 900 Wilshire Drive Suite 104 Troy Detroit MI 48084 T +1 248 817 2811 IPfolio 2600 Tenth St #635 Berkeley, CA 94710 USA T +1 510 982 1421 info@ipfolio.com www.ipfolio.com IPSS PO Box 222 Richmond DL10 9EA UK T +44 174 881 1762 enquiries@ipss.com www.ipss.com Unycom St.-Peter-Gürtel 10 8042 Graz Austria T +43 316 818 828 info@unycom.com www.unycom.com

For more information about our software solutions, please contact:

info@ipan-delegate.com www.ipan-delegate.com

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SLIDE 12

Thank you.