In-house v/s Outsource

Technology Companies require IP professionals (in-house or external) to execute various aspects of their IP Strategy, such as product clearance, identifying and cataloging ip assets, ip creation, protection, maintenance,management, licensing and enforcement. Further inputs from IP professionals may required for business intelligence, through a patent landscape, competitor patent analyses etc. Also, research may be optimized based on analysis of the state of the art and identifying gaps for potential IP creation.

Thus IP Strategy and management is a complex job, and requires a substantial budget. Given a particular IP budget, how can a technology company derive the maximum benefit from it, and utilize it most efficiently?

The budget may broken down into mainly:
1) Salaries and benefits of in-house IP personnel
2) Consulting and service charges of consultants/service providers
3) Official IP registration, prosecution and maintenance fees

Then comes the question - which IP functions can be performed in-house and which can be outsourced? The costs associated with having an in-house IP team include recruiting, training, managing, and retaining. Further there are additional allowances such as for insurance, PF, health etc. Some of the types of IP professionals are:

1) Patent Attorney - Has at least bachelors degrees in science/engg as well as law (L.L.B). Is a registered patent agent, as well as a member of at least one state bar, and has experience to handle patent litigation before appellate boards and courts.
2) Patent Agent - Has at least a bachelors degree in science/engg, and has passed the qualifying exam conducted by the Indian patent office to be listed in the register of patents. Does not have a law degree, but is qualified to handle patent drafting, filing, and matters before the patent office related to obtaining patents, as well as legal opinions on matters concerning validity and infringement of patents
3) Patent Paralegal – May have a degree in law, but not necessary. Handles correspondence with the patent office in various IP matters, maintains records and status of IPRs (docketing). Also may do transcription.
4) Patent Analyst – Typically has a science or engg degree – Is trained in performing patent searches (e.g., patentability, invalidity) and analyses (e.g., competitor analyses, claim charts). Also is skilled at reading and understanding patent documents.
5) Patent Engineer - Typically has a science or engg degree – Is trained to draft detailed descriptions, summary and abstracts of patent applications. At an advanced level, may also draft claims and architect figures under supervision of a patent agent/ attorney.
6) Patent Illustrator - Typically has a science or engg degree, and is skilled at using software such as MS Visio, Corel Draw, and Auto CAD. May have taken a course in technical drawings. Has a working knowledge of patent office rules on drawings, and the types of rejections of patent drawings. May be trained by a patent agent/ attorney in complying with patent office requirements.
7) IP Lawyer - Has at least a bachelors degree in law (L.L.B). May have specialized in IP through diploma courses or an L.L.M in IP. Has experience in drafting IP licensing, technology transfer, open source, employee, confidentiality etc agreements and contracts. Handles registration of copyrights, trade marks etc, appears before the IP office, as well as does litigation in various IP matters.
8) Trade Marks Agent - Has a bachelors degree (in any discipline) and has passed the qualifying examination conducted by the Trade Marks office. Handles registration and prosecution of trade marks.

Different IP functions require different levels of expertise, and are linked to different levels of qualifications and compensation packages. Each type of IP professional does a certain type of IP work, and has a different compensation level. A particular IP function may require a combination of two or more IP professionals of different types woking together as a team to be performed efficiently.

The question is - Does a technology company (whose core focus is technology) have the time and money to hire, train, manage,and retain a cross functional IP team? However big the technology company, it is not their core expertise to recruit, train, manage, and retain a cross functional IP team of various types of IP professionals.

Further, the main challenge even for such a cross functional IP team is to influence the management (help make business decisions), and align IP efforts to business objectives. This might be too much to ask from even an in-house team of patent agents, attorneys and various technology specialists, who do not receive this kind of training from their education, or even from their experience in law firms or LPOs.

Coming back to the question of what IP functions are to be performed in-house, and which ones to be outsourced - The strategic aspects should be done in-house, and the remaining support services (patent prosecution, litigation, illustrations, docketing, searching and analysis) should be outsourced. The strategic aspects should be handled by a competent in-house IP counsel, who is part of the management itself (a Chief IP officer), and not just from the legal department. However, in the absence of a specialist Chief IP Officer, the management itself should collectively take on this responsibility with the assistance of an external IP strategy consultant.