Choosing the right asset management model
Time and budget are limited resources for the modern-day IP department. Even if a corporate IP department is able to manage the full life cycle of IP rights on its own, a number of organisational questions need to be addressed centrally and supported throughout the entire company if it is to succeed.
This challenge has been further heightened by the COVID-19 pandemic, which led companies and law firms to close their offices and switch to remote working, at short notice and often for the first time.
In this environment, it's even more crucial for companies to develop the right mix of legal service and formality providers that will enable their in-house IP person or team to provide efficient solutions in light of the resources available, while also ensuring they don’t lose oversight of the entire portfolio.
In our experience, the following three models can prove to be successful in this regard, and be adapted for the current circumstances:
- Fully outsourced: The ideal model when the person responsible for IP is combining this responsibility with other roles, and for smaller/mid-size companies without full IP capabilities. In this case, a service level agreement (SLA) on service expectations and price is ideally discussed between the company and its external counsel, and the entire IP legal services and administrative formalities, as well as the related data, is managed externally. The company’s IP manager provides guidance as to the company’s strategy and business decisions, and fulfils a liaison role between the external IP counsel and his/her company. In certain instances, the external IP counsel may also second a member of its team (virtually) into the business to help to set up processes and procedures.
- Hybrid: There are several hybrid solutions possible, the main two being: (1) split of services between the in-house team and one central external supplier; or, (2) split of services among various external suppliers such as high-end legal services on one hand and low-cost formality management companies on the other. In such instances, it is essential that the company’s IP manager provides clear guidance as to each stakeholder’s role and responsibilities. The main trap of such hybrid solutions is not to have one centralised data management solution, as this can lead to the stakeholders losing sight of the portfolio as a whole when addressing strategic questions. In the hybrid scenario, the main role of the in-house IP team is to conduct the orchestra in order for everyone to play in tune.
- Fully in-house: Some (usually larger) corporations choose to centralise IP management in-house and to use external suppliers where required (e.g. in foreign countries where the company has no domicile), but only as purely administrative executants, what we call point-to-point solutions. In such models, partners are usually chosen as part of a “low cost” approach, and the company needs to keep in mind that: “what you get is what you pay for”.
Selecting from the models outlined above is a question of finding the right balance for your company. The chosen model may also evolve over time, as a company grows or expands into new markets. Success is often based on the ability to communicate openly on expectations, both internally and externally. Very often, IP managers seek “an agency to manage the complexity of the work”; however, there are often many hidden needs behind such a broad statement and, if all parties’ expectations are not clearly identified and addressed, the outsourced solution can lead to mutual disappointment. This is also the case when moving from one model to the next: discussing your plans with your partner(s)/counsel(s) and examining what solutions they offer is a good way forward here. Switching suppliers can be complex for companies, especially when the portfolio grows. The exercise should be based on solid reasoning and processes: switching for the sake of it can lead to a loss of focus on the company’s portfolio management.
It’s also important to keep in mind that there is no ‘one-size-fits-all’ solution. Whichever model you choose, success or failure will likely be dictated by:
• The existence of a fit-for-purpose IP strategy;
• Centralisation of and easy access to core data;
• Clear determination of the responsibilities of (or shared by) stakeholders;
• Acceptance of the model chosen and willingness to work with it.
IP departments and their suppliers also need to keep one eye on the future. A model that works today may no longer meet in-house department needs as their company evolves or expands into new markets and geographies. For example, companies that send their work to foreign agents (using the hybrid model) may find as they grow that they begin to lose oversight of what’s happening with their IP portfolio externally.
Centralisation of core data will help to tackle this in part, but – given the current situation – it may be preferable to use one main supplier to coordinate activity – rather than trying to keep on top of the activity of their agents in different jurisdictions. Managing suppliers (such as multiple foreign agents) in-house may appear to be the ‘cheaper’ option, but is often more expensive in reality and is especially challenging in our time of remote working.
A centralised model that coordinates activity via one main supplier provides greater oversight and strategic clarity, better record management and the opportunity to be proactive rather than reactive when enforcing and exploiting the full potential of IP.
Chantal Koller is a Trademark and Design Attorney, and Managing Director – Trademarks at Novagraaf in Switzerland.