Presented By: Suhasini SakharePhone: +91-712-2249801Email: suhasini.sakhare@zetaintelex.com

Generic Compliance Issues› ___› Issues

IP Specific Compliance Issues› Export Control Compliance› Outsourcing Still Preferred› _ Notice› IP Services Unaffected By Notice

Suggested Next Steps

Unauthorized Practice of Law Duty to Supervise Conflicts of Interest Duty of Competence Duty To Communicate Confidentiality & Information Security Billing Privilege

• Legal Process Outsourcing Is OK – Provided ___ Lawyer Remains Responsible

• For Rendering Competent Legal Services• For Ensuring The Conduct Of Outsource Workers• For His Own Professional Obligations

– Provided __ Lawyer• Retains Direct Supervisory Authority• Makes Appropriate Disclosures To Clients• Charges Reasonable Fees• Avoids Unauthorized Practice Of Law

• Review Communication To & From Provider• Supervise Conduct• Demarcate The Bounds Of Assistance

– Outsource Only That Support Which Is• Specific• Measurable

– Transaction Support Ideal For Outsourcing• Checked Before• Checked After

– Litigation Support Ideal For Outsourcing• Project Type Work• Internally Reviewed

• Communication With Provider– Frame Escalation Matrixes– Establish Mutual Understanding Of Communication

Flows• In The Contract

– Clearly Define Provider’s Training Obligation– Clearly Define Input To Be Provided By The US Lawyer

• Ensure Your Insurance Covers Outsourcing

• Legally– Contract With Provider To Specify

• Requirement To Conflict Check • Requirement On Provider’s Staff To Maintain Inter-Staff

Confidentiality

• Operationally– Chinese Walls

• Segregate Staff• Segregate Data

• Select The Outsource Provider After Due Diligence– Investigate Background– Be Aware Of The Qualifications Of The Provider’s

Staff By Role– Obtain References

• Supply The Outsource Provider’s Staff With Sufficient Context

• Supervise

• Ensure Client’s Reasonable Expectations Are Clearly Understood

• Outsourcing Is A Significant Development– Obtain Informed Consent

• Communication Owed To Client If:– Provider’s Staff To Play A Significant Role – Client Confidences And Secrets Are To Be Shared– Client’s Expectations Rule Out Outsourcing

• Billing Is Not To Be At Cost

Contract With Outsourcing Company To Deal With Client Confidentiality

NDAs Must› Law Firm – Provider› Provider - Provider’s Staff

Optional NDAs› Law Firm – Provider – Client

Review Outsource Provider’s Information Security Measures

• Technological Measures› Access Controls - Premises

Thumb Access Cards

› CCTV› Access Control – Data

Internet & Email Restricted Access Removable Drives Disabled Recording Devices Controlled Printing Disabled

› Desktop Monitoring Software› Secured VPN tunnel (3DES encrypted) for server connectivity› secure FTP server with a confidential login› Firewall› Diversity, Redundancy & Disaster Recovery Planning

Link Infrastructure Robust Backups Regime

• Administrative Measures› 24*7 Manual Guards› Training On Information Security To All Staff

• Users only entitled to use their own specific log-in details• Hard-to-guess and frequently changed passwords• Desktop Locking

› Audits Record Keeping Measures

› Information Security Policy› Internet & Email Usage Policy› Link Uptime Log› Virus Attack/Breach Log› Desktop Monitoring Log› CCTV Log› Access System Uptime Log

• Questions› Can The Cost Of Outsourcing Be Included In The

Attorney’s Legal Fees?› How Should Outsourced Work Be Categorized On Bills?

• ABA Opinion › In Absence Of Prior Agreement

Charge The Client Cost Of Outsourcing Plus Reasonable Allocation Of Associated Overhead

• Outsourced Provider’s Fee Cannot Be Based On Percentage Of Contingency Fee Award

• ______________› In Contention

Fourth Amendment Proposed________

› Verdict Case Withdrawn

› Current Position =No Otherwise Privileged Wire, Oral, Or

Electronic Communication Intercepted In Accordance With, Or In Violation Of, The

Provisions Of 18. U.S.C. § 2517 (4) Shall Lose Its Privileged Character

Two Regulatory Agencies› _________

Export Control Due Diligence › Technology on the Munitions List?› Technology restricted for outsourcing

vendor’s Country?› Technology on the Commerce Control List?

If Yes, Don’t

Outsource Abroad

US Munitions List Commerce Control List

Only Information That Is Unpublished Is Restricted By __________› Patent Application Drafting › Early-stage Prosecution Matters

Vast Majority Of Inventions Entirely Insensitive› Patent Drafting May Be Outsourced› Early Stage Prosecution Matters May Be Outsourced

• Scope Of Foreign Filing Licenses (July 16, 2008) • Notice Does Not Change Existing Law• License Allows Export Abroad For Filing Abroad• Does Not Allow Export For Preparation Of Filing In

The U.S.• Outsourcing Patent Preparation May Require Export

License• BIS - ________(EAR)Apply

• Invalidity Search: No Requirement To Export• Proofreading Issued _____ Patents: Publically

Available• Freedom-to-operate Searches: Export Of Technology

Either Not Required Or Capable Of Being Tailored• Office Action Responses: Publically Available• Patentability/Novelty Searches

• May Not Come Within EAR Definition Of Technology Or On Commerce Control List

• Disclosure Can Be Tailored

Request For Further Clarification Call To Revisit The Presentation Moving Into Due Diligence Visit To Our Facilities

Ms. Malathi Swaminath – MD/CEOMalathi@zetasoftech.comMs. Suhasini Sakhare – Business Unit HeadSuhasini.sakhare@zetaintelex.comMr. Ricky Chopra – Vice President, International Business DevelopmentRicky.chopra@zetaintelex.comZeta Intelex, A Division Of Zeta Softech Pvt. Ltd. 105, IT Tower, Parsodi,Nagpur – 440 022 IndiaPhone: +91-712-2249801/2240594www.zetaintelex.com