The maturing of the outsourcing industry in India has led to a diversification of IP functions outsourced to the country, particularly with respect to patents. Service providers have adopted different engagement models to suit specific needs keeping in view the larger goals of companies towards IP creation and maintenance. High levels of efficiency, accuracy and confidentiality govern the retention of high-skill functions in-house, as any inconsistency in quality may be inchoate to the exercise of prosecuting a patent.
Attention to low-end services
To consolidate their positions during the recession, Indian vendors began strengthening low-end, high-volume services. Providing more value and client-specific models gave way to synergistic associations and innovation in the way already existing services were provided. Companies were also looking for vendors with domain-specific skills and expertise, infrastructural stability, process harmonization, proven experience, operational readiness and cultural compatibility with regard to confidentiality, when sending work offshore.
Vendors are making good use of the propensity towards low-end, high-volume functions to build larger scale operations. The reason for this is that apart from being scalable; these services do not usually require multiple iterations with the client or the inventor, thus making them more manageable at remote locations. Further, they entail fewer risks because the information and documents dealt with are available in the public domain. Some of these services are validity searches, patent illustrations, patent proofreading, paralegal functions, missing part preparations, IDS preparations and client-specific customized services.
Validity searches involve the search of literature for anything that can invalidate a patent with the objective of taking that defence in a suit for infringement, or facilitating assignment or licensing. It is possible to build evidence to invalidate a patent through a targeted search and an analysis of the search results in conjunction with a file history. The analysis of file wrapper or prosecution history thus becomes a critical component of validity searches. Based on the gaps in the “intrinsic” and the “extrinsic evidence”, the analysis builds a sound argument to invalidate a patent.
Patent illustration services comprise drawings and representations, customization, labelling and the use of computer aided drawings for refinement of the drawings, which make up an essential part of specifications. Since clarity and completeness of disclosure is a vital requirement of patent grant, the illustrations assume critical significance in explaining the invention and fully describing the patent.
Proofreading of patents becomes essential as a patent is enforceable in the form it is granted. If the application contains errors, it has a bearing on the enforceability of the patent. A large number of issued patents contain errors. Meticulous proofreading requires dedicated professionals who can gauge errors in language as well as drawings. Specific processes for review must be devised keeping in mind the complexity of the patent, so that every discrepancy can be captured. A report in the form of certificate of correction is eventually prepared, containing the changes made in the document during proofreading.
Client-specific customized services could include the creation of a single searchable library of patent publications in various jurisdictions that contains all the related patents that are published in the public domain. Another scalable service that is client customizable is the proofreading of patent publications, allowed applications, etc.
The engagement models followed in patent services outsourcing by corporates during the recession is to outsource high-volume and low-risk services to offshore destinations, while retaining core functions in-house. Existing personnel are trained to perform high-end tasks, thereby reducing expenditure on hiring. In order to reduce costs, yet maintain volume, law-firms adopt a partnership model, outsourcing scalable work to offshore destinations. This ensures smooth workflow from clients.
Since the outsourcing of patent-related services entails a transfer of intellectual property across borders, issues of confidentiality occupy a prime concern in drawing up service level agreements. The agreements ensure that a vendor follows the settled norms of confidentiality as well as there is adequate employee conditioning and sensitization towards confidential information. The proprietary and other sensitive information is kept safe through strict clauses, providing only limited access, sharing and use of the information by the vendors’ employees. They thus assist in risk management and conflict minimization.
The entire purpose of patent portfolio management is looking for favourable opportunities for commercialization. There is a tendency for companies to look proactively at building large patent portfolios and maximising value from existing ones. Outsourcing helps them achieve this goal, depending on the engagement model the company adheres to.
Dr Sushil Kumar is the vice-president at Clairvolex Knowledge Processes, a Delhi-based legal outsourcing firm.
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