VP of Product Development, Azami
Whether you are a corporation looking to process renewals for your patent portfolio or a law firm or service provider protecting your client's rights, we have all come up against renewal deadlines that take us away from our work routine, require special attention, and rarely add to the bottom line. In this article, we draw on our years of experience managing renewals portfolios for all types of clients and explain how you can avoid getting knocked off-track by looming deadlines:
1. Create (and Stick To) Internal Deadlines
While instructing your agent with plenty of time prior to the deadline sounds like obvious advice, we all know that it is easier said than done. In order to instruct with plenty of time, first, you need to know whether or not a given patent is slotted for renewal, and that is where your internal deadlines are only as helpful as your ability to stick to them.
If you are a corporate representative, that means updates from your company’s
pruning committee (or whichever committee or person makes the decisions in your
organization) should be scheduled well in advance of relevant deadlines.
Other than that rare case where a decision-maker is waiting for additional
information (concerning the market, product sales, competitors’ moves, or other
matter) to decide whether to effectuate a renewal, most cases where a decision has not been made past an internal deadline is simply because the decision-maker has pushed off finalizing the decision rather than due to a substantive matter awaiting resolution.
If you are a law firm representing a client with upcoming annuities, you must
communicate the importance of submitting their instructions promptly. Some firms
choose to do this by creating artificial early deadlines and then charging a surcharge if the client instructs beyond that deadline, hoping that the fear of penalty will encourage the client to instruct.
In reality, your contact with the client is probably waiting for his or her own internal
approval (see above), may not notice or care about the surcharge, and will probably convince you to waive it after it has already been assessed.
In our experience, the only thing that will move a client in this position to instruct is
clear communication that you need an answer. Your docketing system, as well as
your renewals provider, should offer template emails that you can send to your client to push them to instruct and, when all else fails, simply pick up the phone. It will cut through a lot of time that would otherwise be spent looking at an approaching deadline.
2. Set up Auto-Renew with Your Provider
Your renewals provider should allow you to schedule patents on ‘auto-renew’,
meaning that unless the provider hears from you prior to a set time before the
deadline, the patent will renew automatically. Note that the Azami system allows
clients to set up their own auto-renew timing, but the concept remains the same even if the provider dictates the timing.
You must inform your client of the significance of the automatic renewal and let him
know that his patent will be renewed if you do not hear from him within a reasonable time prior to the automatic renewal.
While some lawyers think that clients might be upset by having their options limited, in our experience, most clients will be satisfied with this arrangement as long as the rules are laid out ahead of time. They will understand that they still retain decision-making power, and their rights will remain protected even if they delay more than they should.
3. Ensure Accurate Data in the Registrar
Many patent offices send out notices prior to relevant due dates, as well as following a missed due date – informing the client that they still have the opportunity to renew during the surcharge period. It is essential that the addresses registered with the relevant patent offices are correct, so these notices will reach someone who will transmit that information to the right people in your organization. We have seen many cases where the addresses are either incorrect or reflect a previous representative or service provider who may forward the information as a courtesy but often will not and certainly will not follow up to ensure it reaches a person.
It may seem overwhelming to check and confirm the contact details of all worldwide patents you are responsible for maintaining. However, some services, including Azami’s own recognized Data Validation services, can quickly and efficiently ensure that these contact details are up to date. This will ensure that if your renewal process is not as efficient as it should be, you will still receive notifications from the Patent Office of an upcoming or missed payment.
4. Ensure Data is Accurate in your IP Management System
The best way to ensure that the data held by patent offices is correct is by ensuring
that all data in your docketing system is accurate in the first place. Data should
reflect the correct due dates, statuses, and other details as contained in the patent
office records. We have seen payments missed when the client’s IPMS showed a
due date or status that did not reflect the accurate data held in the patent office.
Once again, there are services (including Azami’s) that will easily compare your
internal data to the information held by the relevant registrars to make sure that they match. In fact, Azami will run this comparison when they onboard a renewals client to ensure that the data it receives contains the proper due dates.
5. Don’t be a hero
Finally, you’ve done everything right, but errors still happen. It is the day before (or
often the day of!) a deadline, and you still haven’t made the payment. In this
situation, don’t be a hero – don’t try to handle the payment yourself. Unless you will receive a receipt of payment prior to the deadline, best practice dictates that a local professional should make the payment on your behalf.
There are too many risks associated with trying to make the payment yourself on
short notice for the reward to be worth the extra surcharge that a professional will
charge for the rush case. Depending on your relationships with local agents, you
may or may not find someone to pick up one renewal on short notice. You can always reach out to a service provider like Azami, whose team will ensure on-time payment.
