The Win-Win Case for Building Outsourced IP Teams

With global patent filings at an all-time high, and budgets and resources often remaining flat, it’s no surprise that corporate intellectual property (IP) professionals and their law firm partners are feeling overwhelmed. In fact, according to key findings from the CPA Global’s 2014 State of the IP Industry Survey, published Oct. 27, 2014, 77 percent of corporate IP professionals and 64 percent of law firm practitioners highlight their growing volume of work as a “key threat to the efficiency of their IP team.”

A vital solution to this threat is outsourcing IP services. The IP outsourcing industry is already valued at $3 billion* and growing, due to European and U.S. patent reform, coupled with the aforementioned increase in patent applications globally. According to a World IP Organization (WIPO) report in March 2014, annual international patent applications filed through the Patent Cooperation Treaty (PCT) alone surpassed 200,000 in 2013 for the first time ever, a 5 percent increase over the previous year. As a result, companies are increasingly engaging with IP outsourcing companies to meet specific custom needs, streamline workflow, and ensure that the necessary level of quality is met when working with highly technical and scientific IP. Ultimately, these companies are looking to speed up time-to-grant for their patents and better ensure the enforceability of those patents throughout their life.

Choosing the right outsourcing partner can be difficult, but the benefits are far reaching. Not only do vendors need to be able to meet the client’s needs, but the client also needs to open up to new processes and ideas that will result in a mutually beneficial relationship that can evolve – and survive – for the long haul.

“Outsourcing a project doesn’t mean you abdicate responsibility for it,” said Jeffrey L. Ranck, former assistant general counsel at Microsoft, in a recent discussion with MultiLing. “You can delegate authority, where someone can do something on your behalf, but you cannot delegate responsibility. You still need to make sure it’s done – and done correctly. The old model of ‘throwing work over the fence’ simply does not work.”

The Outsourcing Strategy That Tripled Microsoft’s Patent Filings

During his 13-year tenure at Microsoft, Ranck, now senior counsel at Schwegman, Lundberg Woessner Intellectual Property Attorneys and a member of the board of directors at MultiLing, was tasked with helping Microsoft significantly increase its patent filings. Such responsibility was a necessity for becoming one of the top 10 filers in the United States, which would allow it to impact the country’s IP policy. Microsoft’s goal to make this possible: triple patent filings from about 1,000 a year to 3,000+ a year, all with little additional headcount or budget.

“We asked ourselves what we would do to add more value, if we had extra time and money,” Ranck said. “We then asked what we would be willing to outsource to others if we could be assured it would be handled competently, and then came up with a model for identifying who should do what work.” The first question helped them decide where to spend their internal time and money, while the second helped them understand what tasks were best to outsource.

Microsoft’s team first outsourced services they knew would bring immediate value, such as patent searching. After that was successful, the team moved on to other technical services, training, patent analytics, mapping, etc.

“Within a short few years we had reached our goal,” Ranck said. “It’s difficult to convey just how important it is to find a true partner who is willing to work with you and match what you really need to develop and accomplish your goals. It was a deliberate slow process, but it worked.”

During the process, the team also defined best practices for creating an IP team with outsourced vendors that it has used ever since, including:

• Work slowly but diligently – and continually – to build the resources you need
• Let the outsource partners do the heavy-lifting of running the business
• Ask and share feedback about how the relationship is going
• Differentiate yourself as a client with training visits and create a team identity
• Do not assume turn-key services, but rather build them with the vendor
• Create a “best” vendor that is a true partner (a long-term but successful approach)

A Streamlined Model Built from Experience with Best Practices

While MultiLing was not Microsoft’s patent translation partner, the best practices that Ranck helped define for outsourcing IP services – especially related to forming long-term partnerships – are just as important to success from the vendor’s perspective.

Enterprises such as Microsoft typically file several large patents across many jurisdictions, resulting in several moving parts that must be managed closely – drafting and proofreading patents, searching for prior art, illustrating patents, supporting docketing, and of course, translating patents. Working with a partner that employs best practices will help streamline the protection of an enterprise’s IP around the world.

Let’s look at three different areas that have been important to MultiLing as an IP outsourcing vendor. We have found that defining and offering best practices in the areas of people, process and technology help us build and deliver the services that our clients need.

• People: Every person who comes in contact with a patent should be specialized in the target language, the technical nature of the patent and the filing requirements of the target jurisdiction. For example, translators will ideally be native speakers of the target language with education and experience expertise in the specific technical field of the patent, as well as expertise in language translation or linguistics. They must keep up to date with new research and development, new technical terminology, conform to patent translation requirements for the target country, and adhere to rigid translation and documentation processes. This ensures a company receives the most accurate, specialized, secure and timely translations.
• Process: Even with all the latest technologies on the market, some patent firms persist with an inefficient and often frustrating model, comprising dozens of translation teams around the globe—each managed locally, without coordinated project management or cross-team collaboration. Outsource partners can consolidate translation tasks from independent teams and agents, and instead create collaborative teams that report to a single enterprise project owner to centralize the translation process. Patents translated into multiple languages through a central hub model are more consistent, and ambiguities in the source patent or errors identified during the translation of one language pair can be corrected across all translations of other language pairs. For example, MultiLing clients consistently report that employing a streamlined and transparent process for patent translations results in lower overall costs, the highest quality translations, efficiency in timelines, and the minimizing of office actions that result in a faster time to grant.
• Technology: An outsource partner for IP translations should be investing strategically in technologies for translation services, project management and even desktop publishing. Owning technology is not enough. Implementing it properly across your processes is even more important. Technology should play a significant role in IP translations to aid the process of human translation. There are several translation-related technologies that can ensure greater accuracy and quality for the rigorous requirements of patent filings. For example, translation memory software allows translators to leverage past translations. Terminology management ensures consistency across translations. Workflow and process software ensure consistent process with predictable results. Both are examples of how technology can increase productivity of the translation team and improve the quality of the deliverable for the client.

In addition, project management tools allow project owners to coordinate even the most formidable portfolio of patent prosecutions across a global network. A translation company’s project management and tracking tool should be specifically designed for processes unique to the requirements of IP, creating schedules and following each project task from start to finish. Centralized management improves project transparency to the client and enables project managers and team leaders in a global, distributed work environment to work collaboratively and effectively on translation projects such as patents for filing, prior art, and office action-related documents. All parties can monitor the status of each project, along with its actual expenses and projected cost estimates.

With the growing volume of work posing an increasing threat to efficiency, many multinational companies are finding that outsourcing various project needs – including patent translations – allows multinational companies to focus on their core competencies. In turn, the outsourcing company works as a true partner by applying its “best practice” in its specialty while working closely with your IP team, like Microsoft did, to build additional specialties that greatly benefit both companies. As a result, you’ll find transparency, increased patent filings, improved translation quality with decreased office actions and reduced invalidation risk, as well as faster time to grant, all resulting in a lower overall cost of patent ownership.

*According to Global Outsourcing Association of Lawyers (GOAL) http://www.connect-goal.com/sfo2014