Ten Tips for Successfully Outsourcing Patent and Related IP Work

Publication1For over a decade, IT work has been migrating around the globe to lower cost jurisdictions.  While there have been some bumps in the IT outsourcing road (e.g. call centers in distant parts of the globe have created angry customers who have difficulty understanding the reps), for the most part, outsourcing in IT is now part of the business strategy of most large organizations.

The internet has truly flattened the world for knowledge workers and other professional services have begun to migrate across the globe as well.  But the legal industry has been slow to adopt these changes.  Lawyers are cautious by nature and while there has been talk for years in corporate circles about finding ways to control legal expenses, until The Great Recession,  it was hard to get large firms in particular, to pay attention.  That has all changed.

Outsourcing legal work  raises some unique issues.  Because the law is a regulated profession that is bound by a set of ethical rules, lawyers need to be careful that in outsourcing, they continue to preserve client confidences, avoid conflicts of interest and properly manage and supervise the work.

Outsourcing IP work raises other potential issues.  Patent lawyers must be sure to work within the constraints of export controls that prevent the disclosure of certain proprietary information to non-U.S. citizens.

For the most part, these are all issues which can be managed.  They should not be seen as insurmountable barriers.   I have written about this previously here , here here, here and in a recent article.

Beyond these common criticisms, there are some right and wrong ways to manage work that you outsource.  Below are 10 tips to ensure that outsourcing becomes an exercise in delivering value at a lower price point (rather than a major headache that produces shoddy work and potentially puts you in jeopardy for violating your ethical and legal obligations).

1.   Pick the right vendor – While this may sound obvious, choosing the right vendor is by far the most important consideration in deciding to outsource.  Once you have established that a potential vendor has the “right” IP experience to do the work, it is critical to determine that the vendor has outsourcing experience and understands how to make outsourcing work.

As the supervisor of the work, you remain the subject matter expert (whether you are in-house or practicing in a law firm setting) but the vendor should be the outsourcing expert.   The vendor you choose should have a US presence and should be able to speak to you about successful engagements that they have completed.  Legal outsourcing is relatively new and there is a big range in quality out there.  Do your due diligence and choose a vendor who knows how to bridge the cultural gaps between India and the United States.  Make sure the vendor has a good track record of getting projects completed in a timely fashion and with the quality that you need.

2.   Learn about the vendor’s business practices—How does the vendor recruit talent and what kind of background checks does the vendor conduct.  Does the vendor employ state of the art security procedures?

3.   Invest in the process and relationship and believe that it can work – Any good working relationship requires time and energy.  Set up good communication channels and plan to communicate regularly so that over time, the vendor can function with more autonomy.

4.   Set clear expectations and timelines with the vendor.

5.   Pick a well defined project  and conduct a pilot.

6.   Understand the vendor’s conflict checking system and IT security systems (how do they preserve confidentiality?)

7.   Have a strong project manager who can interface between the client and the patent agents in India; A good project manager will make sure that work product is reviewed by experienced quality assurance professionals at each step of the process.

8.   Plan to invest time in training the team in India.  Don’t expect team in India to get it exactly “right” the first time.  You wouldn’t expect that from the new associate who works in the office down the hall.  Training can be done remotely through video conferencing; but paying a visit to the vendor’s facility in India may also be helpful if you are building a team that you will work with over a long period of time

9.   Have a contract which sets clear terms about the relationship (and the potential termination of the relationship).

10.  Make sure that processes are refined and documented as you use the vendor (in case work needs to be sent to another vendor or brought back in-house and so that you can improve your own efficiency in getting work done for your clients.)

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