Getting more bang for your IP buck by outsourcing patent services, Pt 2

Inside Counsel

By Rich Steeves, from interview with Jeff Ranck

In part one of this story, Jeff Ranck, now senior counsel at Schwegman Lundberg Woessner IP Attorneys and former assistant general counsel at Microsoft, talked about the tech giant’s attempts to triple its patent filings without increasing staff. Now, we’ll take a look at the role outsourcing patent services played in that initiative.

“We went and found somebody who would be creative with us,” Ranck says. They found a partner who could help Microsoft move work to India, starting with docketing and other services. They hired patents searchers, which Ranck noted was a nice fit for the tech-savvy nation of India. The legal team at Microsoft wanted every patent in their portfolio to have references that could be cited and given to drafters for prior art searches. “It was easy to show that we got good searches from this team in India, as good from a quality standpoint as from law firms but at a much lower rate,” Ranck says.

The savings Microsoft experienced with this move helped them grow their outsourced team, advancing from searches to other technical services. They started a training program for patent law, using it to backstop and analyze portfolio use, creating claim charts for offensive and defensive analysis. The team was then capable of doing all sorts of work, from validity analysis, office actions, technical reviews, patent analytics, product mapping and more. “By the time I went to India, I took the team and trained them up to be junior associates and gave them to law firms to use as an extra resource,” Ranck explains. “They were putting together draft patent actins to help attorneys doing their work.”

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