Why an IP search service model can make economic sense

The first article in this series considered the complexities involved in entering the European market from abroad with regard to trademark registration. Their latest article focuses on how companies can manage these challenges through IP search service models and taking a hybrid approach to the management of intellectual property rights.

An IP search service model can ultimately assist companies with managing costs through efficient delivery. In terms of assessing the options, Peggy Bengtsson, director of portfolio outsourcing at Zacco, acknowledges that companies and agents can now send cases for searches directly to Zacco's international search team and that the quality can easily and quickly be benchmarked against what could be produced in-house.

“This creates a seamless process because they can interact directly with our search team, who can quickly define the most important search requirements without the need for continuous dialogue. We are aware of global Patent and Trademark Office [PTO] requirements and, depending on the search required, most patentability searches can be delivered in 4–5 working days, with more complex landscape analyses potentially taking 10–12,” she says. “Obviously, some searches are more complex, but knowing an average timeline allows an organisation to plan and manage their IP tasks more effectively.”

The need for such searches has only been heightened by the COVID pandemic, which led to a significant rise in online sales and marketing activity. Companies have identified opportunities to enter previously inaccessible markets, but these need to be covered by corresponding IP rights and that can present a challenge if their team is not up to date on local PTO requirements.

The growth in online sales has also led to a corresponding increase in infringement and counterfeiting, so adopting a multifaceted approach to enforcing an IP portfolio is crucial. This could incorporate online marketplace searches for counterfeit goods, launching digital takedowns of infringing content and host domains, and even maintaining contact with customs officers to ensure that they have the information they need to identify and seize infringing goods.

A multifaceted approach to IP rights management can present a severe test of a company’s resources. This has led many organisations to consider the adoption of a hybrid approach that uses an external provider for IP and IP-related services.

International drafting and prosecution are good candidates for such an approach. A good provider often only needs a few meetings to ascertain adequate detail for a first draft. It can also handle the preparation of claims, any associated illustrations, and quality assurance throughout the process.

Office actions are also a good choice, because detailed reporting, analysis and insight can be provided, as well as actionable recommendations for how to respond, which can be followed up in-house.

Claudia Randrup, business development and relationship manager for Zacco IP Services, recommends that companies considering a hybrid IP search model should also consider incorporating it into a wider portfolio management service, as this can often be more efficient and cost-effective than maintaining the same level of expertise in-house.

“These [services] could include everything from validation to recordals, to the management of all renewals and annuities, and, when working with Zacco, would all be delivered through a single point of contact throughout the life cycle of your IP rights,” she says. “Services like these can also be used to complement your existing team, leaving them with more time to focus on other valuable tasks or those that are less time intensive.

“We can manage international portfolios of any size, even providing onsite attorneys or paralegals when necessary. Our flexibility and experience means that delivery can be matched to our client’s requirements.”

As companies increasingly look to external solution providers, Vinay Babu, team manager for search and analytics at Zacco India, notes that novelty searches and freedom to operate searches for patents, trademarks and designs are the most common requests within an IP search project.

“These can often be turned around quite quickly and feedback from clients has been that they have saved a significant amount of time and in-house resources by choosing Zacco,” he says. “This usually results in us continuing the process, compiling invalidation searches, as clients know they can trust us to deliver high-quality results.

“We are an adaptive organisation and some companies have now chosen Zacco to provide them with an insourced search consultant on a more permanent basis.”

This implied level of trust has been fostered through building clients’ confidence in the quality and reliability of Zacco’s searches. Peggy identifies communication as imperative in the process, because it helps to establish an understanding of exactly what is required by both parties.

“Quality assurance comes as standard and our long-term experience within search means we know where to look and what to avoid,” she says. “The Zacco model is somewhat unique as we are one of few firms in Europe with teams in India, Scandinavia, Germany, and the UK.

“While searches can be conducted by qualified EPAs [European patent attorneys] in Europe, it can often be more cost-effective for companies to opt for their primary searches to be conducted offshore, offering improved affordability, which could then be quality checked by EPAs based across Europe. Many clients opt for this hybrid approach as they find the cost benefit and additional quality checks reassuring.”

Zacco has been working within IP for over 150 years and, as one of Europe’s leading IP firms, has access to a range of in-house expertise, so it is often able to quickly overcome even the most complex IP challenges.

The firm’s colleagues are experts in a range of traditional and emerging technologies, and have the knowledge and experience to assist with everything to do with IP, from patents to trademarks and online branding, and from their development through to their security and enforcement.

Zacco is also an IP law firm, so it is able to follow enforcement all the way to the courts across Europe where necessary, as well as throughout the globe through its network of vetted and trusted long-term international partners.

The third article in the series will explore why blockchain domain names could become the next online property boom.