An Introduction to

Legal Process Outsourcing

OESA Legal Issues Council Meeting

March 11, 2009

Presented by:

Puneet Mohey, Esq.

Legal Process Outsourcing (LPO)

• Description of LPO

• Structure

• Offshore Locations:

– India

– Philippines

– Malaysia

– Israel

– China

Spectrum of Outsourced Services

Relevant Types of Services

• Intellectual Property– Patents

– Trademarks

– Copyrights

• E-discovery (attorney reviews)

• Contract Review / Drafting / Management (Due Diligence)

• Legal Research (Multi-state surveys / regulatory research)

Outsourced Patent Services Across the IP Lifecycle

IP Development

• Landscape Studies (Technology / Competitive)

• Patentability Searches

• Patent Drafting

• Patent illustrations

• Office Action Responses

• Patent proofreading

• Docketing support

• State-of-the-art studies

IP Management & Marketing

• Infringement Analysis

• Portfolio Mapping / Mining

• Patent Valuation

• Patent Licensing

Risk Mitigation / Litigation

• Validity / Invalidity Searches

• Freedom-to-operate Studies

• Patent Watch / Monitoring

• Litigation Reviews / Support (E-discovery)

Outsourced E-discovery Services Across the Discovery Lifecycle

Stage: Identification Preservation &

Collection

Processing Review Production

Info:

Options

Media

restoration

File

conversion

Filtering and

culling

relevant data

Creation of

load files for

review tools

Grouping

related

documents

together

Petrification

of files (i.e.

Excel files) as

necessary

On-shore

Attorney

review

Coding

manual for

consistency

Possible use

of automated

review tools

First pass

review vs.

higher

substantive

review

Quality

controls

Project

management

Metrics

On-shore

Off-shore

In what form

should the

data be

produced?

(Has form

been

specified by

opposing

party?)

Determine

what

additional

data (i.e.

metadata)

shall

accompany

production set

Quality control

on production

output

On-shore

Understanding the

client's document

retention policy

Identify "key

players" and the

location of their

relevant data (i.e.

conducting

interviews with

custodians,

working with IT

personnel, etc.)

Consulting a

client's network

"data map“

Determining what

ESI (if any) is "not

reasonably

accessible" due to

undue burden or

cost

On-shore

Establishing an

effective and

successful

litigation hold

Discharging

reasonable

preservation

duties

Creating

forensic images

Collection

considerations

among active,

archived,

deleted, and

legacy data

Defensible

collection logs

and

documentation

On-shore

How Legal Offshore Outsourcing

Works for a U.S. Based Provider

What works for outsourcing?

Suggested

• Well defined project parameters

• Self contained projects

• Process-oriented tasks

• Task that supplement existing processes

• Matters requiring technical skills

• A combination of onshore and offshore resources

Not suggested

• Fact intensive matters

• Matters requiring active negotiations

• Matters requiring rendering opinions / advice

• Assignments requiring creative writing

• Export restricted matters

• Short and non-repetitive projects

Specific types of projects that can be outsourced

Suggested

• Patent search and analytics

• Patent drafting (simple – moderate complexity)

• Litigation Reviews (E-discovery)

• Multi-state / multi-issue surveys

• Legal Memoranda

• Contract review / summarization

• Due Diligence Reviews

• IP Docketing

• Trademark Search / Prosecution Support

Not suggested

• Patent drafting for complex disclosures

• Legal opinions

• Contract negotiations

• Drafting customized agreements

Benefits of Outsourcing

•Process -focused teams

•Efficient allocation of resources across clients (no over capacity)

• Improved turnaround times

Improved Efficiencies

•Specialization at the vendor level

•Assigns better trained personnel to a process

•Multiple quality control layers (offshore and onshore)

•Feasible to devote more time to a process

Enhanced Quality

•Vendor’s economies of scale spread across clients

•Personnel training cost retained at the vendor level

•Best sourcing model (wage disparity)

•Savings can vary from 30% to 70%

Reduced Cost

Cost Saving Examples

IP Services

• Patent Search: $450 (approximately 50% reduced cost)

• Patent Drafting (moderate complexity):

• $2,000 - $3,000 vs. $4,500 - $6,000

• Patent Analytics (Landscapes / Validity Studies / FTOs):

• $35 - $45 per hour vs. U.S. patent agent or attorney rates

e-Discovery

• Onshore (Michigan: contract attorneys): $35+ per hour

• Offshore (India: full-time employee):

• General (non-technical): $24+ per hour

• IP (reviewers with technical background): $36+ per hour

Key: Choosing the Right Partner

• Physical / IT Security

• Contractual Obligations

• Vendor’s Security ProceduresData Security

• Team’s training and experience

• Vendor’s training procedures

• Vendor’s work flow process and quality controls

Quality of Services

• Vendor must have local presence in the U.S.

• Vendor must have had track record of delivering quality services

• Vendor must exhibit a sound delivery model

Vendor Viability

• USPTO’s power limited to granting a foreign patent filing license

• Any export of technology (not yet in public domain) subject to compliance with U.S. Export Control regulations

• Vendor must have knowledge and experience with export regulations

Export Control Compliance

Bar Approvals on Outsourcing

• ABA Formal Opinion 08-451 (“The

outsourcing trend is a salutary one for our

global economy.”)

• San Diego County Bar Opinion 2007-1

• New York City Bar Opinion 2006-3

• Florida Bar Opinion 07-02.

Thank You

Puneet Mohey, Esq.

pmohey@lexadigm.com

248.203.9777 x150

Mark Grobbel, Esq.

mgrobbel@lexadigm.com

248.203.9777 x230

30200 Telegraph Road, Suite 245

Bingham Farms, MI 48025

www.lexadigm.com