Agents are a critical element in managing an international intellectual property portfolio, but, for many companies, much about their agent network remains something of a mystery. CPA Global’s Sabine Baum and Haydn Evans explain how to get the best out of these far-flung support structures in terms of quality and performance.
Managing a global intellectual property (IP) portfolio and seeking protection of an organization’s intellectual assets in distant markets is a considerable challenge for any IP professional – and certainly not one that can be undertaken alone.
That’s why most IP owners or managers will rely on a network of agents (sometimes referred to as ‘associates’) to represent them locally in each jurisdiction. In some cases, the agents will simply handle renewals payments, ensuring that IP rights (such as patents, trademarks or designs) remain protected; in others, they may provide broader IP services. While larger corporations will tend to have their own agent networks, for many smaller companies, the agent network will be provided
by their outside counsel or IP attorney firm. However, despite the critical importance of a global IP agent network – and the associated risk – many organizations still don’t invest much time or effort into proactively managing their network. As a result, they may know little about their individual agents in terms of capabilities, performance, and whether or not they are delivering value for money.
In some ways, it’s understandable. Companies that grow their IP portfolio through mergers and acquisitions don’t just acquire more patents, trademarks or designs to add to their list of intellectual assets; they may also inherit an array of agents in different markets who have been representing the previous IP owners/managers in those locations. Some agents might be known to the acquiring company, others might not.
This adds further layers of complexity to what may already be a fairly disparate collection of agents, making the network even more of a mystery – a mystery that resource-pressured IP professionals have little or no time to unravel. However, there are ways to gain a better understanding of your agents; and, in doing so, make sure there are less ‘secrets’ in your agent network. It’s a time consuming task, but one that’s worth doing because a well-managed IP agent network can deliver
significant benefits both to the organization as a whole – through improved cost management and operational efficiency – and to the integrity of your IP assets.
Some companies and firms have recognized this. They also recognize that the task of properly managing their agent network adds a significant administrative burden on their in-house resources, and are choosing to work with third-party IP management specialists such as CPA Global. In recent years, we have assisted a number of US and European based companies in the evaluation of their agent network – and even their outside counsel’s agent network – as well as providing ongoing management of these various IP suppliers.
Evaluating and managing IP agent networks
In evaluating and managing IP agent networks, there are three key issues to address:
1) Network composition and structure: You need to make sure you know which agents you’re using and what you’re using them for. Do you have the optimum number of agents to meet your needs in each jurisdiction; or do you have too many agents in some markets and not enough in others?
2) Quality: The quality, reliability and accountability of agents can differ significantly within a particular jurisdiction and
from one jurisdiction to another. How do the agents you’re working with compare with others in the market, and how
much can you rely on them?
3) Ongoing management and performance monitoring: Once you’ve determined the optimum structure and selected your
preferred agents, it’s essential that you continue to proactively manage and monitor their work. Different organizations will have different reasons for undertaking evaluations of agents or other IP suppliers (such as outside counsel and IP attorney firms). These reasons may be cost-related, due to internal budgetary pressures; unease about increasing costs; difficulties in predicting costs and budgeting accurately; and, in some instances, a lack of clarity and/or accuracy in the fees invoiced. With
certain agents, there may also be quality management concerns – giving rise to worries about whether an organization’s IP assets are being properly managed, maintained and protected in the markets concerned.
In some cases, organizations may simply be striving to simplify the network where they have too many agents; or to strengthen the network where they are planning to move into new markets, in which they may be under-represented. There are various approaches to evaluating IP suppliers. Some organizations undertake a comprehensive, one-time audit, followed
by the implementation of well-defined measures to ensure they receive the quality service they expect. However, other organizations may wish to undertake evaluation exercises on a more regular basis in order to encourage continuous improvement. When evaluating and comparing the quality of services provided by IP agents in a particular jurisdiction, there are a number of critical factors that may come into play, including:
• Quality and reliability of service
• Pricing model
• Responsiveness and pro-activity
• Level of advice they are able to provide to clients
• IP and general legal expertise
• Technical skills and competencies of staff and standards of training provided
• Understanding of the client’s business, technology, strategy
• Effectiveness of communication as well as processes covering invoice handling and other administrative matters
• Levels of compliance and measures to guard against bribery/corruption.
In some cases, clients want their IP support provider not only to evaluate the agent network, but also to help manage it. For example, a German manufacturer of personal and household products asked us to help them:
1) Consolidate the number of agents accumulated during the course of various M&A projects. The company wanted only two agents per jurisdiction, and wished to evaluate which were the “best” in terms of quality and cost. In order to make the evaluation of their extensive network more manageable, the company approached it in phases. The first phase focused on the 25 jurisdictions which accounted for most of their agent network costs. Then they moved down to the next ‘expense’ layer, involving an additional 20-25 jurisdictions.
2) Install a new agent billing structure, moving from hourly rate to fixed fee billing. With the installation of fixed fee billing, the company was able to substantially improve its ability to budget and forecast, while also reducing costs.
3) Implement defined quality standards to improve performance management. After selecting the “best” agents in terms of quality/cost, the company worked with CPA Global to define quality and performance metrics – precisely identifying the patent and trademark tasks that agents needed to fulfill for a particular fixed fee. These were then incorporated into a Service Level Agreement (SLA).
Getting the best from your best agents
Once you’ve identified the best agents for you in a particular jurisdiction, you need to get the best out of them – and that requires ongoing management of performance and service levels, as well as invoicing and other administrative matters. It’s an area where we are increasingly been asked to support clients through a variety of services, including:
• Invoice validation and payment
o Receiving all supplier invoices and checking for compliance
o Validating contracted rates and service/matter codes
o Invoice payment and currency management
o Updating client systems and records
• Supplier communication and support
o Handling all payment query issues
o Assisting in e-billing system integration
o Providing guidelines and training to suppliers on invoice
submission and other administrative matters
• Financial and operational reporting
o Handling month end accruals, cost allocations, etc.
o Monitoring supplier SLA compliance, quality, overbilling, etc.
The benefits of using IP support services companies for this work are twofold. First, the work is extremely time consuming and can become a major drain on in-house resources: outsourcing the task to an expert provider who does this work day-in-day-out yields significant cost and operating efficiencies, and allows the in-house team to focus on more strategic work. Secondly, while most organizations have a procurement and finance department that can manage supplier
relationships and invoice payments, because of the specialized and complex nature of IP suppliers and the tasks they perform, it requires IP-specific knowledge to validate that the work in question has been completed and the invoices are correct.
Invoice management and control
With the large number of agents that are likely to be in any global network and the high volume of matters they might be handling, invoicing is a key area that needs to be properly managed and controlled. For example, CPA Global works with a multinational consumer products corporation to help them manage their….. to read the rest of this article click here to subscribe
Sabine Baum is a German qualified Attorney at Law and a Practice Leader in the IP Advisory Team of CPA Global, one of the world’s leading providers of IP management, IP software, and legal support services. Sabine has widespread experience relating to the management of global trademark and patent agent networks, and industry-specific requirements for controlling and budgeting IP-related costs and agent fees.
Haydn Evans is Vice President of Intellectual Property Service Solutions at CPA Global. Haydn works with a range of clients in sectors such as technology, telecommunications, electronics, chemical, pharmaceuticals, and biotechnology. Clients include multinational corporations and smaller technology organisations as well as law firms.