How EMD Millipore leveraged CPA Global’s IP Outsourcing Services while it focused on routine prosecution work during its acquisition by German company Merck KGaA, Darmstadt.
EMD Millipore is a Life Science leader that provides cutting-edge technologies, tools and services to the bioscience research and biopharmaceutical manufacturing industries. Millipore’s solutions help its clients tackle the world’s most challenging health issues. In 2010, the company was acquired by German pharmaceutical and chemical giant Merck KGaA, Darmstadt, Germany.
Mergers and acquisitions (M&A) create many challenges beyond the day-to-day patent prosecution activities of a busy corporate IP department. Following Millipore’s acquisition by German pharmaceutical giant Merck in 2010, the company’s IP department had to complete three large-scale merger-related tasks: 1. Assimilate more than 2,600 Millipore patents into its new parent company’s IP portfolio; 2. Accurately and correctly record IP ownership changes at the respective PTO offices around the world; 3. Migrate the Millipore portfolio to Merck’s Memotech IP Management system in order to further harmonize the IP department processes between the two companies. While performing this layer of additional acquisition-driven tasks, it was business as usual prosecuting patent applications for Millipore’s busy internal IP department.
- Relieve administrative burden on IP group
- Update official ownership changes with the relevant
- Harmonize the patent management process across global offices
- Successfully transition to Merck’s Memotech IP management system
- Outsourcing administrative functions increased bandwidth within the IP department
- Project-managed approach ensured that all recordal work was completed on time and on budget
- New process for managing IDS filings eliminated an IDS backlog
IP Outsourcing: Recordals, IDS Management and Patent Proofreading
To ease the burden on its already taxed IP department, Millipore identified several administrative tasks that could be outsourced to CPA Global, including IP Recordals related to the acquisition, patent proofing and the preparation of IDS filings in support of ongoing prosecution. With CPA Global taking on many of the more routine tasks, Millipore’s in-house team could focus on more strategic work, including harmonizing the docketing and patent management processes across the company’s global offices.
Sourcing the appropriate expertise and navigating the many differing regulations and processes are just a few of the challenges involved in transferring large portfolios across multiple jurisdictions. Treating each jurisdiction as a sub-project, CPA Global’s IP Recordal team managed ownership changes in approximately 50 different countries.
Another key task was to reduce the backlog of information disclosure statement (IDS) filings that had accumulated before and during the merger. Because of the size and nature of the Millipore portfolio, CPA Global paralegals created the reference records as they worked through the backlog. Once the filings were brought up-to-date within a couple of months, CPA Global responded to Millipore’s request to continue processing these documents by implementing a system that enabled all future IDS filings to be initiated much earlier in the prosecution process.
Outsourcing strategy enables in-house staff to focus on business critical work
fixed-price solution delivered cost predictability
For a variety of reasons, it is not uncommon for work on in-house managed recordals projects to start but never finish. CPA Global’s fixed price solution, which encompassed all aspects of the recordals process, delivered significant time and budgetary efficiencies.
Reduce risk and “late” fees for IDS submissions
Because a patent can be deemed unenforceable if any information known to be “material to the patentability” of a claimed invention is not disclosed, it was critical that Millipore implemented a well-defined process around reference management and IDS submission. Further, late fees are incurred when IDS filings are made after a certain point in the prosecution life cycle. Outsourcing the IDS Reference Management work to CPA Global enabled Millipore to mitigate risk around reference omissions, file references earlier and avoid late fees.
Reduced administrative burden on in-house team
Without CPA Global’s assistance, the task of managing some 2,600 “change of name” recordals across multiple jurisdictions would have been assigned to in-house staff. Outsourcing this project and other prosecution-related tasks enabled Merck and Millipore to focus on more business-critical work.
The bottom line
It would have been impossible for us to manage a project of this magnitude without outsourcing some of our more time-consuming administrative tasks to CPA Global. Our partnership enabled us to keep track of every single recordal and know exactly where it was in the various processes of each country at any time. Without their global presence, I don’t think we would have been able to achieve that.