IP outsourcing for trademarks

How IP outsourcing can help you manage your global trademark portfolio efficiently and cost-effectively

Brand owners face unique challenges protecting their trademarks and related brand assets in a competitive global marketplace. As time and budgets come under increasing scrutiny, IP departments are having to rethink the way they manage routine day-to-day tasks by embracing IP outsourcing for trademark docketing, recordals, renewals, and more. 

Knowledge and experience are vital to effective trademark management, but as portfolios become increasingly global, IP leaders need the support of specialist services and proactive suppliers if they are to register, protect, and enforce their international trademark portfolios efficiently and cost-effectively. 

This was the key message from our recent webinar on managing international trademarks efficiently, in which Corporate IP Manager Alessandro Zito shared how he used IP outsourcing to restructure his legal team to focus on strategic and business-critical needs with Séverine Bonhomme, Senior IP Consultant of Client Architecture Solutions in Questel’s Trademark Division.

Deciding which IP tasks to keep in-house and which to outsource is the holy grail for today’s corporate IP managers, but finding the right balance is far from easy. In the webinar, Alessandro discussed the value of rethinking the way IP departments manage the many time-consuming tasks associated with the administration of global trademark portfolios—such as data verification, docketing, recordals, and renewals—and shared his experiences and lessons learned when planning IP outsourcing projects. 

IP outsourcing: Caring for valuable but demanding assets

Managing international trademark portfolios is an exciting, but admin-heavy endeavor, with administrative tasks and paperwork present at every stage of the trademark lifecycle, from pre-filing to registration, and from maintenance to enforcement.

Little wonder that over a third (34%) of the webinar attendees said having to spend too much time on admin/non-strategic tasks was their biggest challenge as a trademark practitioner, while 28% said they had too much work and too little time in which to do it. Internal resources were also a cause of headache for many attendees, with 63% saying that their IP team was understaffed for the workload that it was having to manage.

Outsourcing the administrative tasks involved in trademark management and maintenance can help to alleviate that burden. For example, by reducing portfolio management time, identifying and correcting data errors, eliminating backlogs in docketing, and limiting the impact of any staff departures. In turn, employee satisfaction is also improved, as staff are freed up to focus on strategic projects, from portfolio optimization to new product launches.

Severine shared three important steps to follow when preparing a IP outsourcing project: 1) identify the tasks that could be kept in-house or outsourced; 2) analyze current ways of working within the organization, including responsibilities, work processes, and stakeholder needs; and, finally, 3) define company-specific objectives to decide what to outsource and who should be involved.

Whether the project is one-off (e.g. a trademark recordal project following a merger) or a new, long-term way of working for your team, she emphasized how important it is to identify the goals at the beginning, so that you can not only measure the project’s success but also set yourself up to succeed in the first place. Indeed, the clearer you are on your desired outcomes, the easier it will be to benchmark potential providers. This is the case even when timings and budgets are tight, which of course they invariably are. 

The corporate view: Talent is hard to recruit and retain

To illustrate, Alessandro shared the decision-making process that led his team to outsource its trademark management and docketing work, including assessing the pros and cons of outsourcing the work versus keeping it in-house. 

On the one hand, hiring an internal team can make it easier to communicate with stakeholders such as marketing teams, for example. On the other hand, recruiting, managing, and training an internal docketing team is far from easy, he explained, with many routine IP administrative tasks far from stimulating for ambitious new recruits, impacting job satisfaction and increasing turnover and the margin of error.

In addition, strategic IP outsourcing helps to control costs and budgets. You define the deliverable and agree a fee for that to be delivered; you don’t need to factor in any time to manage an internal team. However, it’s important to be structured in your approach and in your service level agreement (SLA).

IP outsourcing: Admin-heavy tasks are easy to outsource?

Docketing services can be provided throughout the entire trademark prosecution life cycle, with the following now commonly bundled and outsourced:

• Pre-filing: Application proofreading (grammar and formatting) and preparation (assignment, power of attorney, local requirements: notarization, legalization, apostille).
• Filing: Application package review, attorney review and signatures, online filing, IPMS updates.
• Prosecution: Opposition/office action responses and subfile creation and updates, docketing reports, internal and external deadline management, IPMS updates, including electronic files.
• Registration: Completion of administrative formalities, certificate checks/proofreading, IPMS updates, including electronic files.
• Renewals/maintenance: Internal and external deadline management, renewals to pre-agreed strategy/decision-making workflow/reminders, instructions/reporting, invoice and agent management: IPMS updates, including electronic files.
• Ad-hoc: Docketing system migration, document scanning/database management, docketing backlog clearance, file transfer and integration, data validation, recordal assignments and chain of title verification. 

IP outsourcing is a safe and efficient solution for brand owners of all shapes and sizes. Find out how we could support your team with our dedicated administrative support services, by scheduling a call with one of our team today.