Industry insight

What makes a good IP renewals provider?

By Ian Johnson

The payment of patent annuities is an important part of ensuring that a valuable IP portfolio is primed for monetisation

Efficient IP management demands considerable time, attention and money – it is little surprise that many rights holders select external IP renewals teams to carry the administrative burden associated with intellectual property and patent renewals.

A good IP renewals provider will significantly reduce administrative and financial pressures, while providing peace of mind with tried, tested and proven processes. What should a customer look for when seeking to partner with a renewals provider?

Experience

With amendments to IP law along with continuous innovation, intellectual property is increasingly complex to manage and secure. A trusted renewals team should demonstrate proven expertise and an ability to adapt to the changing field, built on experience from working with patent renewals over a long period. Mature processes should be at the heart of a renewals service; but it should also strive to introduce modern software and technology for complete efficiency.

Global approach

Patent law is not universal. Securing a patent in one jurisdiction does not mean that it is protected in another. Territories enforce different laws and a good renewals provider must be able to manage payments easily in different countries with an understanding of the national patent regime.

Many countries still require a local counsel to make final payments to the relevant patent office. If a business is looking to globalise its IP portfolio, it should consider an IP renewals provider with a network of patent counsel in different countries. Having counsel in countries you are looking to file in can significantly speed up the renewals process.

Removing risk from renewals

Renewals is a risky business and many businesses are concerned about what could go wrong if a renewals partner fails to renew patents at the correct time.

Companies should ensure that the chosen service uses rigorous processes to ensure that intellectual property is renewed and secure. Does the company have recognised international standards to support its processes (eg, ISO 9001)? Has it a long track record of working in renewals?

Protecting with payment

It is important that a renewals provider can be trusted to make renewal payments when necessary. A good provider should be ready to respond to sudden and unexpected changes in legal circumstances and have the customer’s interests at heart.

Big data

As the volume of patent filings increases, so does the amount of patent data which can be leveraged to improve business decisions, generating insight at each point in the IP lifecycle. A good IP renewals provider will use trusted technology to process 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 before they make an impact.

Flexible service

A company can have holdings in different jurisdictions, work across a number of industries and increase or decrease in size over time. A good IP renewals provider will deliver a scalable service which can meet the specific requirements of all corporations.

Sophisticated online patent portfolio management tools enable companies and law firms 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.

Staying ahead of legal changes

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 can work alongside businesses to manage portfolio changes.

Business strategy

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; whether enough patents are being filed. Patent data can generate these answers and drive improved decision making through the IP lifecycle.

When to abandon or renew

Processing valuable IP renewals is only half the battle. Millions of dollars are wasted by companies renewing intellectual property which is not being used effectively or generating business value. Companies should critically review their patents and consider abandoning certain filings. Identifying which patents are profitable is an essential part of efficient portfolio management and budgeting.

A good IP renewals partner will provide its customers with information on the strength of patents, in line with the intellectual property of competitors and emerging market trends.

 

Ian Johnson is head of IP legal at CPA Global

Close

Register for more free content

  • Read more IAM blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 82