Three million patent applications were filed worldwide in 2016, according to statistics released by the World Intellectual Property Organization’s “Facts and Figures 2017” report, and many more millions of patents are owned by entities across the globe. WIPR reports on the world of patent renewals.
Different countries have different patent rules, payable fees, and renewal processes. Those owning multiple patent families across different jurisdictions are therefore likely to find themselves in need of a system to help keep track of which patents need renewing, where, and when.
Patent renewal companies assume responsibility for staying on top of patent arrangements and paying the renewal fees, each offering their own unique software and services to manage the ongoing exercise of patent management.
WIPR caught up with a selection of providers and their users to find out exactly how patent renewal services work and why they’re worth the investment. We asked each provider to give us a rundown of what makes them stand out, and client contacts to provide a user perspective on their systems. Where we weren’t able to source user comments, we’ve included smaller profiles of the provider.
Anaqua: Minimises risk through accurate forecasting
Anaqua offers integrated payment services and cost savings through its annuity and renewal service, which is designed to support the entire IP lifecycle.
The Anaqua Services suite integrates with Anaqua’s Unified IP Management platform, making annuity and renewal decisions easy to execute through the software. Through this, and by reducing the volume of invoices users receive, clients are able to save time in accounting and administration, the company claims.
It allows users to analyse payment history and assess the remaining balance, assisting users with their budgeting and minimising risk through accurate forecasting. Due to this flexibility and global processing efficiency, Anaqua is able to support patent portfolios of any size.
Brian Tucker, attorney at commercial law firm Kirton McConkie in the US, says Anaqua’s patent renewal service’s “seamless interaction with the docketing system” is what separates it from other comparable providers. The smooth integration of
the renewals service and the docketing system made selecting Anaqua as the firm’s patent renewal service an “easy decision” for Tucker.
He explains the ease of Anaqua’s system as follows: “The docketing interface includes an annuities window where we can simply set a pay/no pay option to instruct payment. The annuities window includes all the information we need to report to the client—including before the payment to request approval and after the payment to report its completion.”
“THE FACT THAT ANAQUA WAS BUILT FROM NEW TECHNOLOGY IS ITS GREATEST STRENGTH.”
For Tucker, the fact that Anaqua was built from new technology is its greatest strength. Through this, Anaqua has minimised the costs associated with renewals, which allows Tucker to pass the savings on to the firm’s clients.
He believes the firm gets a better price from Anaqua than it would from other renewals services.
As Anaqua automatically updates to the next payment deadline once the current payment has been made Tucker has a surefire reminder of any upcoming monetary deposits. The only improvement he can suggest is confirmation that payment will be made, for his own “peace of mind”.
CPA Global: Cloud-based solutions automate IP operations
CPA Global started providing patent renewal services to law firms nearly 50 years ago, when using a computer to manage renewals was a revolutionary idea. It now takes instructions on more than two million patent cases every year. It was founded by a group of patent lawyers from different UK law firms.
The company has invested in cloud-based solutions designed to automate IP operations. It now has a ‘Renew app’ to reduce the time, effort, and risk associated with managing IP renewals. The app offers an intuitive interface capable of managing patent and design renewals including access to case histories, custom reports, and future budgeting information, says the company.
In addition reports can be extracted and shared with stakeholders, allowing users to improve collaboration efforts across business, R&D, and legal teams.
Kristen Lenzen, IP paralegal at US law firm DeWitt Ross & Stevens, says “CPA’s patent renewal system is a great way for our firm to accurately and efficiently track and pay our clients’ annuities without concern of any unknown or missed deadlines.”
She describes the system as user-friendly, particularly as it integrates directly with CPA’s docketing system. This way the firm is able to handle the user’s IP matters from filing stage to expiration “all in one location”.
For future improvement, Lenzen suggests that CPA’s system could feature a means of choosing to monitor the annuities for a particular matter in circumstances when the current annuity has been handled by another party. Currently you can only choose to remove the matter from the system entirely, she explains.
“CPA HAS BEEN GREAT AT UPDATING ITS PATENT RENEWAL SYSTEM ACCORDING TO CLIENT FEEDBACK.”
Lenzen adds that in her experience, “CPA has been great at updating its patent renewal system according to client feedback.”
Another user of CPA’s patent renewals service is Claire Henry, records manager at IP firm Elkington and Fife. Henry is a longstanding user of CPA’s renewal services and has found them “effective and efficient at providing a valuable service” to the firm as well as its clients.
She said CPA has a proven ability to deliver on last-minute requests and tight turnarounds. The “innovative backend technology” of CPA’s system helps to provide a secure service and the internal verifications can be used to compare data in the system to ensure accuracy and compliance.
Elkington and Fife also uses CPA’s case management software, Inprotech. Through just “a click of a button” Henry is able to extract all the critical data between the two systems, decreasing the amount of time spent processing information. She also uses the ‘Renew app’ for reviewing data and information, which is “wonderful” in terms of “client experience for us and for our end clients”.
Henry says there is nothing she particularly dislikes about the service, but she would like to see increased transparency on pricing as well as clearer client communications.
Dennemeyer: Integrated document and workflow management
Originally founded as a patent law firm in Luxembourg, Dennemeyer Group has transformed into a full-service provider for IP management. The company now has more than 20 offices across all continents.
Dennemeyer’s IP management software, DIAMS iQ, is web-enabled, combining the features of a client-server solution and a web-based application. As it has integrated document and workflow management functionality to support record-keeping, DIAMS iQ functions as a document management system as well as fulfilling an automatic data audit function for record updates, says the company.
Corporations of all sizes, from all over the world, use the software; customers include transnational consumer goods company Unilever, as well as IP specialist law firms. With DIAMS iQ users can access their IP portfolios anywhere, from any remote location, and sensitive assets are secure with Dennemeyer: its data centres in Luxembourg have “the highest standards of security”.
Karoline Gersbach, assistant group IP manager at heating company Zehnder Group, says the DIAMS iQ system offers the company “an easy and efficient way to save time and money”, especially for businesses with a small IP department. It’s particularly helpful that the team at Dennemeyer know a lot about different country laws and deadlines, she adds, as it isn’t always easy to get information from patent offices.
Gersbach explains that her company started to use Dennemeyer due to its clear communication style, uncomplicated procedures, and “much more reasonable prices” than other comparable providers. She said she has been working with Dennemeyer for many years now, and has “never had anything to dislike”.
In addition, Dennemeyer has started to offer other services over the years, such as validations of European patents and trademark monitoring. In Gersbach’s experience “all these individual departments cooperate very well together”, meaning Zehnder receives many different services from just one provider.
“ALL THESE INDIVIDUAL DEPARTMENTS COOPERATE VERY WELL TOGETHER”.
Robert Peer, owner of Trockenbau Consulting, agrees that “patent law and administration, with all its formalities and deadlines, is a very complex and sensitive matter”. As such, using Dennemeyer’s service “simplifies the work considerably” and allows Peer to dedicate his time to development, marketing, and customer service.
“A great provider with a personal service is hard to find,” he says, but he is pleased with the service he has received from Dennemeyer. For a small company such as Trockenbau it is not easy to assess IP needs in different countries, so using a provider with a large international network has been beneficial.
Another user of Dennemeyer’s patent renewal services is Margit Hornof, patent manager at Croma, an Austrian producer of hyaluronic acid syringes. She describes the service at Dennemeyer as “very good and reliable”, citing the main benefits as cost control and helpful planning features.
IP Centrum: View every charge and deadline in real time
IP Centrum has invested more than €5 million ($6.15 million) in its renewals technology over the past three years. It claims to have removed estimates and speculations: users are now able to view every price break, currency shift, surcharge and deadline for every year of every patent in their portfolio, all in real time and with precise detail.
Users can set reminders in many different formats, across various devices. They can opt to receive a screen alert two months before a deadline, an email two weeks before, and a text message the day before instructions need to be given in relation to patent renewal.
In order to boost transparency of its service, it says, IP Centrum has introduced ClearPrice. It allows users always to know exactly what clients are paying and what they’re paying for. Any official fee, official discount bracket, surcharge, currency buy rate, currency contingency, and IP Centrum’s own fees are detailed separately, ensuring nothing is hidden from the user.
Sally Whittle, head of formalities for IP firm HGF, says her company was one of the first to use IP Centrum’s validation service. Her first validation order was priced at “half what I was going to be charged by my usual provider” and she hasn’t used another provider since.
Whittle explains that her firm’s IT department described IP Centrum’s IT as “streets ahead of the competition”. She was therefore “delighted” to discover that IP Centrum was branching out and providing a renewal service. “I thought if the service is anything like the validation service, it will be brilliant—and it is,” she says
“With IP Centrum you know exactly what you’re paying for, and everything you need to know about the lifetime of the patent is there at the click of a button,” Whittle continues. The staff at IP Centrum “completely understand” the stresses that come with the territory and “cannot do enough to help you get your job done”, she adds.
“THEY REALLY CARE ABOUT THE SERVICE AND THEIR CUSTOMERS.”
Whittle can’t think of anything IP Centrum needs to improve right now but “if I want something improving I know it will be listened to”.
“They really care about the service and their customers,” she concludes.
ipan: Innovation rather than administration
German company ipan was founded in 2004. It has since developed a global partner network of roughly 100 IP firms representing 240 countries, and now has more than two million IP rights under its management.
Users of ipan’s service are encouraged to focus on innovation rather than administration. They are offered a single point of contact at ipan to allow efficient and effective client service.
Lorraine Ward, associate manager of IP at pharmaceutical company PTC Therapeutics, explains that using a renewals service in-house is a cost-effective way of providing the team with access to a network of patent and trademark offices in foreign jurisdictions.
“We have used other service providers in the past and ipan has been by far the most client-focused,” Ward says.
She emphasises the importance of detailed reports on how fees are broken down; when it comes to selecting a renewal service, “transparency is key”, Ward concludes.
Another user of ipan is Eric Rogers, IP counsel and market strategy leader at AGC Automotive Americas.
Rogers says ipan’s patent renewal service integrates with his IP docketing software. It’s “quite flexible and set up to do anything”, such as arranging invoices on whatever schedule is most convenient.
Another key benefit is the single point of contact users are provided with. Rogers explains that he has one person he can go to for anything, rather than having to talk to “a number of different people on any issue”.
“IPAN HAS TAKEN A WHOLE LOT OF STEPS FORWARD FROM WHAT THE INDUSTRY WAS PREVIOUSLY ABLE TO DO.”
Rogers says that everything he has wanted, including any improvements he has requested from ipan, has been taken care of quickly. For example, he wanted invoices to be formatted differently to include his in-house billing codes. “They were able to pull that out of the software and provide it in an Excel format,” Rogers explains.
Rogers thinks more services should develop the ability to integrate with user systems, an area where “ipan has taken a whole lot of steps forward from what the industry was previously able to do”, Rogers concludes.
IPRIS and IP Pragmatics: Top-tier web portal fits around different workflows
In 2005 IP Pragmatics formed a partnership with Swiss IP renewals company IPRIS. The teams have since provided their renewals service to IP firms, universities, SMEs, and research institutes worldwide.
IPRIS is a top-tier renewals web portal which can work around different renewal workflows. The service offers unlimited user access, including reporting insights and responsive formalities experts to support the management of users’ patent renewals portfolios.
Garth Hendry, partner at Catalyst IP, says he was “immediately impressed” when he was shown an IPRIS demo.
“The online web platform is constantly improved and easy to handle, so from an administrative point of view, it’s great,” he explains.
The web portal offers the ability to view, sort, and export a five-year forecast which, Hendry says, is “really useful” when budgeting for clients.
“We also appreciate that they’re exceedingly reactive and responsive,” Hendry continues.
Hendry has found IPRIS significantly cheaper than his previous provider: “When IPRIS is not the cheapest provider, it can always validate why it’s more expensive,” he says.
Lawson Crawford, director of legal affairs at UCL Business, uses IPRIS patent renewals to monitor and manage his firm’s patent portfolio as well as its trademarks and design registrations.
“We have hundreds of patent families spanning 50 countries so hundreds of renewal payments need to be paid each month,” says Crawford. IPRIS “comprehensively and quickly” monitors these registrations and renewals, saving time, money, and manpower.
“THE ONLINE PORTAL INCLUDES A SEARCH ENGINE THAT ALLOWS US TO LOOK FOR SPECIFIC PATENTS AND FAMILIES.”
“The online portal includes a search engine that allows us to look for specific patents and families but also allows us to filter patents according to other aspects such as time period, UCLB’s responsible business manager and country,” he says.
Steven Bayliss, deputy head of operations at Oxford University Innovation, has found the IPRIS team to be “flexible and accommodating”.
“Often we are unable to instruct until very close to deadlines, but that’s never a problem for IPRIS,” he says.
Clarivate: Tailored solutions across jurisdictions
Clarivate has been developing and implementing IP management systems for over 45 years. Clarivate’s IP Management System, which is used by numerous Fortune 500 companies, offers tailored solutions that cover the entire IP lifecycle across jurisdictions all over the world.
The payment service is flexible to allow the needs of different users to be met, and efficiency and productivity are enhanced by the integration of the IP Management System with Microsoft Outlook, says the company.
Clarivate recognises the time-consuming and labour-intensive nature of keeping up with maintenance fees, renewals, and formalities, as well as the risks associated with poor management of the process. The team at Clarivate understand this and aim to provide consistent and accurate protection.
MaxVal: Reducing cost and complexity
Patent solutions company MaxVal is based in Silicon Valley, and was founded by patent attorneys over ten years ago with the aim of reducing the cost and complexity of patent-related processes. Its web-based platform, Annuity Payer, is user-friendly and cost-effective, and is supported by an international network of agents covering major jurisdictions, says the company.
Annuity Payer’s intuitive dashboard contains an estimator which allows users to forecast and budget accurately and the interface features visual snapshots of upcoming, completed, and in-progress renewals. Annuity Payer is available either as a self-service application or as a fully managed service, whereby MaxVal’s annuity specialists will assist users as required.
MaxVal offers a transparent and competitive pricing structure: users enjoy the same price for the entirety of their contractual period.
Valipat Envoy: Financial predictability and accurate forecasting
Valipat Envoy provides IP services to more than 700 patent agencies, law firms, and in-house IP departments worldwide. Together with IP validations and foreign filing services, every year the company delivers around 60,000 patent annuities and trademark renewals for its customers through the company’s dedicated IP renewals platform.
Built-in features of the platform include: batch instructions, instant online quotes and invoices, quotes are frozen for 120 days, transparent pricing, financial predictability through accurate forecasting tools, real-time monitoring of cases, plus automated instructions and payment reminders, with the flexibility to use own agents if preferred, says the company.
Users are invited to trial the system free of charge before subscribing and, when they do, the Valipat Envoy platform can be integrated with the existing IP management system of the user.