Compliance In IP Outsourcing Zeta Intelex

Compliance In IP OutsourcingZeta Intelex Presented By: Suhasini Sakhare Phone: +91-712-2249801 Email: suhasini.sakhare@zetaintelex.com

Framework • Generic Compliance Issues • ___ • Issues • IP Specific Compliance Issues • Export Control Compliance • Outsourcing Still Preferred • _ Notice • IP Services Unaffected By Notice • Suggested Next Steps

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

ABA Formal Opinion 08-451 • 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

Avoiding UPL • 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

Supervision • 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

Avoiding Conflicts • 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

Competence • 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

Client Communication • 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

Confidentiality • 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

Information Security • 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

Information Security….Cont • 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

Fee Agreements And Billing • 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

Privilege • ______________ • 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

Export Control • 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

Outsourcing Still Preferred • 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

USPTO Notice • 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

Services Unaffected by the Notice • 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

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

Questions & Contacts Ms. Malathi Swaminath – MD/CEO Malathi@zetasoftech.com Ms. Suhasini Sakhare – Business Unit Head Suhasini.sakhare@zetaintelex.com Mr. Ricky Chopra – Vice President, International Business Development Ricky.chopra@zetaintelex.com Zeta Intelex, A Division Of Zeta Softech Pvt. Ltd. 105, IT Tower, Parsodi, Nagpur – 440 022 India Phone: +91-712-2249801/2240594 www.zetaintelex.com

Compliance In IP Outsourcing Zeta Intelex