What makes a good IP renewals provider?

By Ian Johnson
October 23, 2016

An ornate clock with the words time to renew on its faceIP portfolios are business assets.  The payment of patent annuities is an important part of ensuring a valuable IP portfolio is primed for monetisation.  Efficient IP management demands lots of time, attention and cost – particularly if portfolios are directly managed by patent offices around the world.  Many patent holders elect external IP renewals teams to carry the administration, manage patent renewals and offer insight into which patents should be abandoned.

A good IP renewals provider will reduce the administrative and financial pressure on a company, whilst providing peace of mind with tried, tested and proven processes. With an increasing number of companies offering renewals services, what should a customer look for?

Look for experience

With amendments to IP law and technology’s continued innovation – IP is changing.  Jurisdictions govern IP differently.  Recent court cases – such as the Alice decision – mean IP is increasingly complex to manage and secure.

A trusted renewals team should demonstrate proven expertise and an ability to adapt to the changing field of IP, built on experience from working with patent renewals over a long period of time.  Mature processes – tried, tested and trusted – should be at the heart of a renewals service, but it should also strive to introduce modern software and technology to improve overall efficiency.

Invest in a global approach

Patent law is not universal.  Securing a patent in one jurisdiction does not mean it is protected in another.  Territories enforce different legislation and a good renewals provider will have up-to-date knowledge and an understanding of national patent laws.  If a renewals provider has a well-established relationship with global patent agents, these benefits can be shared with customers.

Many countries still require a local counsel to make final payments to the Patent Office.  If a business is looking to globalise its IP portfolio, it might want to consider an IP renewals providers that has a network of patent counsel in different countries.  Having counsel in countries you are looking to file in speeds up the renewals process. Companies should ensure these agent relationships are audited and managed before trusting them with a valuable IP portfolio.

Remove the risk from renewals

Failure to renew patents could damage the value of a company.  Many businesses are concerned about what could go wrong if a renewals partner fails to renew patents at the correct time.

Companies need to ensure that the chosen service uses rigorous processes to ensure IP is renewed and secure.  Does the company have recognised international standards to support its processes (such as ISO 9001)? Who are its customers?  Is it a trusted company?

You must also consider what would happen in the extremely unlikely event of a lost patent. Who would cover the cost of such a significant error? What responsibility will the renewals partner take on? Not all renewals providers have the financial backing to deal with patent mistakes.

Protecting with payment

It is important that a renewals provider can be trusted to make renewal payments when needed.  A good IP renewals provider will be ready to respond to sudden and unexpected changed in legal circumstances and – realising the importance of protecting valuable IP – will adapt to the customer’s needs.

Dealing with big data

As the volume of patent filings increases, so does the amount of patent data.  Patent data can improve business decisions, generating insight at each point in the IP lifecycle.  A good IP renewals provider will use trusted technology and software to process these large amounts of patent data, reducing renewal errors and minimising the risk of patent lapses.  Renewals services with dedicated teams specialising in big data can identify potential issues in an industry before they impact.

Find a flexible service

A company can have holdings in different jurisdictions, work across a number of industries and increase, or decrease, in size over time. The cost of patent renewals is a significant part of overall patent expenditure particularly for the public sector and Small Medium sized Enterprises (SMEs).  A good IP renewals provider will deliver a scalable service that can meet the specific requirements of all corporations.

Sophisticated online patent portfolio management tools enable companies to monitor their IP portfolios in real time, allowing both patent owners and their counsel to: review and analyse patent portfolios; view case studies; send renewal or abandon instructions; generate portfolio and budget forecasts; report new renewal data; and submit queries.

A step ahead of legal changes

Filing patents in separate territories is complex because there is no global IP law.  It is important to work with a provider that has knowledge of different and evolving jurisdictions so that patents can be renewed successfully and quickly.  IP renewals services with a global presence, as well as global expertise, can manage portfolios in their country of origin.  When an issue or challenge arises – new acquisitions, divestments or straightforward analysis – a localised team will be able to work alongside businesses to manage portfolio changes and keep IP secure.

Align your IP with your business strategy

IP can play a significant role in influencing business decisions.  To generate intelligence from an IP portfolio, an efficient IP renewals provider will provide customers with tools that deliver insightful data at crucial points in the patent process: where to focus innovation; what technologies competitors are developing; are enough patents being filed? Patent data can generate answers to these questions and drive improved decision making through the IP lifecycle. The best renewals partners will ensure a company’s IP portfolio is closely aligned with business strategy by directly influencing boardroom decisions.

When to abandon or renew

Processing valuable IP renewals is only half the battle.  Millions of dollars is wasted by companies renewing IP that is not used effectively or generating business value. Companies should also critically review their patents which may mean abandoning certain filings.  Identifying which patents are profitable and which could be abandoned is an essential part of efficient portfolio management and cost control.

A good IP renewals partner will provide its customers with advice on the strength of patents, in line with the IP of competitors and emerging market trends.  This is a powerful way to prevent abandoning valuable patents and losing opportunities to monetise IP for a business’s wider value.

The Author

Ian Johnson

Ian Johnson is the Head of IP Legal at CPA Global. He is responsible for providing counsel, research and management of IP matters at CPA Global, including its renewals system and software products. He and his team work with colleagues at every level across the company with a particular emphasis on operations. A European patent attorney with extensive experience in the standardization, innovation management and software fields, his team at CPA Global includes patent and trade mark attorneys, IP professionals and specialists. He joined CPA Global in 2014, having previously worked in law firms where he had a particular interest in supporting IPMS and renewal software and in the corporate sector where he worked in the telecoms, defense, automotive and professional audio industries.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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