By Melanie Carmosino ‑ March 4, 2020
Melanie Carmosino is the Director of Operations in Microsoft’s Intellectual Property Group (IPG), which oversees the company’s patent, copyright, and trade secret activities and portfolio. This blog is the first of an ongoing series focused on the expanding area of IP operations and the professionals behind it.
When it comes to intellectual property (IP) and innovation, it’s reasonable and even natural to credit the inventors who turn ideas into actual, tangible goods. Without those individuals, valuable ideas might forever remain little more than concepts and dreams. However, often forgotten are the teams of IP professionals supporting those ideas behind the scenes.
Since the concept of patenting first emerged in ancient Greece more than 2,500 years ago, the patenting process has evolved into a system far too complicated for any single person (or even for most businesses) to navigate unassisted. Of course, the more patents and intellectual property a company holds, the more complicated the system becomes. At Microsoft, our IPG consists of nearly 200 people tasked with the protection and maintenance of more than 60,000 of Microsoft’s patents. And even with so many professionals specifically dedicated to IP, we still require support from external vendors.
Approximately five years ago, we realised that our IP portfolio had grown far too complex, as had the processes surrounding it and the vast network of third-party vendors we worked with to maintain it. With that in mind, we began restructuring our use of third-party professional services to maximise our resources, increase efficiency, and achieve higher quality outcomes. For organisations looking to follow suit, here are five critical questions to ask when developing your outsourcing strategy for IP services.
1. Where do you start and how do you begin?
Thinking logically, the reasons any company chooses to outsource work are usually quite consistent: It’s less expensive than hiring and supporting full-time employees and, perhaps, there’s not enough demand at any one time to render a full-time employee necessary.
As you first begin honing your outsourcing strategy and determining where to dedicate resources, it’s important to start small. Begin with key functions such as international docketing—an administrative task that requires an expensive skill set when in the hands of a full-time worker.
Identify potentially quick wins in which you can achieve the most ROI with comparatively small effort or expense. Look at where you can save the most money and still achieve the high-quality outcomes you need to justify or at least support the change.
2. How do you scale your work and how many additional resources do you need?
Organisations tend to align their staff levels with their most typical workloads. Workloads, however, can fluctuate. A headcount that is perfectly appropriate from May through March might fall short come April. But most companies can’t afford to keep extra employees around just for the busy periods throughout the year. To fill the periodical gaps, many organisations turn to third-party services.
Just because external service providers might be available as needed doesn’t mean that organisations shouldn’t have a prepared strategy for how to use them. It’s important that IP teams think ahead and plan how they’ll use external providers in alignment with their own resources. Where do you need the most support? Which functions can be automated, and which ones require a human touch? Where can you achieve the greatest impact and value? After all, if part of the purpose behind employing a third-party service provider is to decrease costs and increase efficiency, you need to have a cost-conscious and efficient approach for doing so.
3. What’s your risk tolerance?
Companies go to great lengths to protect their intellectual property, and for good reason. Compromising the security of your IP can cost an organisations major profits and opportunities. As such, it’s unsurprising that many companies are selective about which functions they’re willing to outsource, especially off-premises.
Some companies will allow vendors to do certain things but won’t allow them to work with highly sensitive applications. For instance, a company might insist on keeping drafting and prosecution in-house to avoid exposing important tech to external risk. When developing your services strategy, ask yourself: Will you host your IP data onsite or in the cloud? What’s your risk tolerance for a cloud strategy? Are you comfortable sending work to another country, or do they need to be onshore? What are your data security requirements? Knowing your risk acceptance allows you to more strategically pick which functions to outsource—and which vendors to hire.
4. How do you measure success?
A critical aspect of any strategy is knowing what you’re actually trying to achieve—and whether you’re successfully doing so. How can you choose the right services without knowing what you want to accomplish? Further still, you could have a flawless strategy, but how will you know unless you’ve set benchmarks by which to measure your success?
From the very start, you need to identify workflows, metrics, and processes for auditing them. Moreover, those workflows and processes need to be documented and your audits need to be regular, consistent, and thorough. Maintain regular contact with your service providers, whether through calls or in-person meetings. If you treat your external service providers like the investment they are, you have a better chance of getting the results you want.
5. How will you integrate your external service providers with your in-house team?
For all their benefits, third-party services can also spark misconceptions and suspicion among organisational employees and teams. Some worry that jobs might be eliminated. Others may doubt whether a third-party provider can offer the same degree of understanding and expertise as full-time, in-house workers. Some might view maintaining a relationship with a third-party as additional work.
Whatever the concern, it’s critical that your third-party service provider be integrated and treated as part of your company’s team and culture. Facilitate conversations between your provider and the people whose day-to-day work might be affected by their output. Incorporate third-party tasks and conversations into your workflows, and regularly take stock of their outcomes. By taking active measures to build bridges between third parties and your inhouse team, you will increase the likelihood of success.
Melanie Carmosino will be speaking on this topic alongside CPA Global during the 2019 CLOC Institute in Las Vegas, Nevada. To learn more about implementing IP services within your organisation contact us.