From risk reduction to cost savings, experts from Questel and Reckitt discussed the benefits of outsourcing IP recordals in our webinar 'IP Recordals: Light at the End of the Tunnel' and shared practical advice on simplifying the trademark and patent recordals process. We summarize the points discussed.
It's no secret that IP recordals can be cumbersome, tedious, and particularly admin-heavy for in-house IP departments and IP law firms to manage. At the same time, IP recordals are necessary — often sooner rather than later — for a number of important reasons.
In our webinar, we discussed the complexities and challenges of recordals (of which there are many) with Reckitt offering the corporate perspective. We also explained how Questel manages IP recordals projects and discussed the benefits of outsourcing the entire IP recordals process.
Reckitt: A corporate perspective on IP recordals
Reckitt is a fast-moving consumer goods company with a global portfolio of recognizable brands. Its brand protection department is responsible for more than 40,000 trademarks, as well as designs and copyright. The company's brands are split into three business units, which focus on health, hygiene, and nutrition.
Until recently, Reckitt managed all its IP recordals in-house. That changed when the company realized nearly half of its portfolio required at least one recordal. This was too big of a job for an already busy in-house formalities team, so the IP department decided to outsource its recordal projects.
There are many good reasons to outsource IP recordals to a third-party service provider:
- 1. Saves time and resources
- 2. Reduces costs
- 3. Provides access to expertise and knowledge
- 4. Provides access to a wider number of agents in a given country
- 5. Holds the service provider accountable for the project progress
- 6. Makes the service provider responsible for retaining evidence
- 7. Keeps you up to date on project progress
- 8. Simplifies the overall process for your team
For Reckitt, the biggest factor for outsourcing IP recordals was the first benefit: saving time and resources. During the webinar, Reckitt set out practical advice for streamlining the project, including the need to cleanse the data as best you can before you start the outsourcing process. This will make sure the data is as accurate as possible, saving considerable money and time.
IP recordals: Major Complexities and Challenges
IP recordals must be filed with each country's respective patent and trademark office to maintain records of IP ownership that are up-to-date and accurate. This process can be triggered by events such as a transfer of IP rights, transfer of business ownership, and more.
IP recordals are important updates that should happen in a timely manner, but there are a few things that can add complexities to IP recordal projects and slow things down, such as:
- Complexity of chains of title
- Missing documents and signatures
- Inconsistent documents
- Dissolved or merged companies
- Owner/address discrepancies
- Agent network representation issues
- Address changes
- Legal form changes
- Unrealistic expectations for long-term projects
IP Recordals: Prepare to Succeed
When starting or planning a patent or trademark recordal project, there is always a risk of unforeseen challenges. Advance planning can make the process smoother; for example, by using the following checklist:
- 1. Analyze the scope
- 2. Clarify the chain(s) of title
- 3. Secure documents and signatories
- 4. Pay attention to country specifics
- 5. Set realistic timeframes
Why Outsource Your IP Recordals to Questel?
Questel has been managing IP recordals for more than 30 years for some of the world's biggest companies. We have a dedicated team of IP professionals who are expert at managing IP recordals projects from start to finish, and we never outsource our work. We adapt our reporting to meet our clients' needs and fulfill our projects in line with our robust service level agreements. We are able to provide a streamlined and accurate service thanks to advanced use of technology and automation. As well as ensuring our work is completed on time, this also greatly increases efficiency and decreases costs for your team.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.