Should companies build a virtual marking solution or buy a service?
Many factors must be considered in creating the registry internally versus using an outside vendor to design, build and maintain a virtual marking registry. (View the five key features every virtual marking registry should have.) Factors that most contribute to this decision are:
- What size is the portfolio and how much time will be spent managing the registry?
- What resources are available from the Information Technology (IT) department to design, build and maintain a registry?
- Does the corporate counsel team have time and resources to manage an IT project?
- Will IT build something that is easy, convenient and fast to use?
- How will the marking registry integrate with existing software (IP management software and/or product enterprise resource planning [ERP] systems)?
- Who will be responsible for maintaining the system? How fast will they be able to respond to case law or USPTO guidelines that emerge that require registry changes?
- What legal issues might come in future litigation regarding the registry or claims published within it?
Most corporate counsel team are extremely short on resources and have large workloads that make taking on an additional initiative difficult. The same can be said for most corporate IT departments, too – causing virtual marking registry projects to wander out of scope, take longer than expected to complete and resulting in less-than-perfect outcomes.