3 Steps to IP Renewals Happiness in 2024

A very happy new year to all our clients and readers.  With a new year comes new goals and targets and many companies and law firms will be considering how to optimize their IP spend, make the best use of their IP Teams and setting themselves up to take on new challenges and grow during 2024.

One of the easiest ways to reduce administrative burden, free up valuable human resources and reduce costs, is to evaluate your trademark and patent renewals.  So how do I start to evaluate my own renewals situation and figure out what's best in my own case?

Step 1 - Qualify your situation and decide if it warrants further review

This is actually the most important question before investing much time in the next steps. 

First of all it is worth looking at the significance of the job itself. If you are doing 5 renewals a year, the benefit of reducing the cost is not very high and it may not warrant the investment in your time to identify and evaluate a provider.  If you do 50 or 100  patent or trademark renewals a year, the benefits will start to add up and could be very worthwhile in terms of cost and time savings.  It is not unusual to see savings of a few hundred dollars per renewal, if you benefit from reduced service fees, reduced agent fees and avoid hidden, extra costs. 

Now that you’ve determined that your renewal activity is sufficient to warrant review, you may ask if it’s worth your while to investigate further based on other factors.  Here the arguments may not just include price, but also transparency, service and the hassle of onboarding with a new supplier. Each of these will be considered during a preliminary evaluation and during any conversation with potential providers.

Transparency is fundamental and this is one area in which some providers are strong and others are not.  The demand for more transparency has increased and more and more we are seeing IP owners and their representatives, insisting on full transparency in relation to fees. These fees include trademark and patent office fees in local currency, conversion rates to USD/EUR for client quotes and payments, as well as currency buffers and bank charges, not to mention document management including power of attorney, notarization and legalization.  The role of transparency has become important due to the changing nature of accountability and higher standards required from IP professionals as the industry evolves.  Transparency in relation to fees and costs allows us to budget accurately, be accountable to our clients or our business and also manage price increases over time.  A great example of this is when we have a contract fixing a service fee but the agent fees or bank fees increase year on year. This cannot be budgeted for and reduces transparency in the agreement. If prices must increase, then the supplier must be transparent about the source of the cost factor and communicate this appropriately with their client with an appreciation for the clients’ responsibility and accountability role to their business.  This approach tends to avoid cost creep as well.  

Step 2 - Evaluate the various renewal management scenarios available to you

Each IP owner or representative will have their own priorities in how they wish to manage renewals. In terms of financial cost, it is highly likely that using a service provider will be the most efficient way to lower these costs. However this depends on choosing the correct provider so that you maximize the benefits to your business.  We have seen service providers charging high agent fees and high service fees, sometimes more than 400USD for a renewal service fee.  Not every service provider offers the same pricing. In particular, smaller portfolio holders have not had attractive choices as they don’t benefit from volume pricing.  This is one way in which IP Custodian differentiates itself. We believe that firms of all sizes should have access to fairly priced renewals and benefit from reasonable rates.  

A typical issue faced by IP owners is whether they should outsource to their local law firm, who will then act as a hub for global renewals, or contract a service provider or indeed keep the renewals in-house and manage the instructions and documents themselves. Each of these options has arguments in favor as well as against and the weight of these arguments varies, depending on the client situation, where they are located, the size of their portfolio, their cost goals and access to staff as well as cost of staff. Likewise law firms will have similar considerations, as to whether they outsource the task or perform it in-house with their own staff, on behalf of their clients. 

As a rule of thumb, if you are in a location with higher staffing costs or difficulty in meeting staffing demands, it may be worth outsourcing renewals in order to relieve pressure on in-house staff. This also has the benefit of allowing skilled and experienced people to work on higher value activities, which are more fulfilling and more beneficial to the business.  The cost of retaining staff to carry out renewals, also being higher, will increase the savings potential of outsourcing the task.  

The level of technology and process being employed in the task is also a factor to consider. Many IP teams do not have modern, efficient systems to assist with instructing renewals in a low touch manner.  The task still is very manual for most and requires heavy use of email for instructions and document sharing as well as multiple manual checks during the procedure.  Even some of the latest IP tools do not support the renewals process in an efficient way.  Many service providers have tools, which lower risk, improve efficiency and allow them to manage renewals much more easily.  

Finally, the question for many smaller and mid-size IP owners is whether they have the resource to move away from using their local law firm for renewals. They may not have any in-house IP team and rely heavily on their local counsel for all IP matters.  In this regard, it’s worth noting that many law firms already outsource renewals on behalf of their clients. So the decision is not a question of the firm doing a better or worse job than a service provider. It’s more a question of balancing convenience, resources and cost.  In this regard, there have not been that many great options for small and mid-sized IP owners. The pricing they received from service providers was usually quite a bit higher than larger firms received. Meanwhile they lack the resources to deal with a service provider who is not flexible enough to integrate into their existing way of doing business.  This is an area where IP Custodian is heavily focused on making a difference. Personal and tailored service can be offered to small and mid-sized IP owners as well as law firms, without the need to charge high agent and service fees.  It’s a question of developing our processes and technology to facilitate the onboarding and management of our clients, without placing a heavy burden on their time.  This starts with supporting direct and simple communication in the manner that the customer prefers. It also means having a structured onboarding process, which allows for a speedy onboarding with minimal time investment from the client and avoiding the necessity to interrupt them intermittently, seeking further documents or information.  It also includes the ability to docket their renewals in our own tool and allow syncing with their law firm docket so that the client does not have to invest in a tool to support their outsourcing. Many large providers cannot support these requirements and so the decision for small and mid-size firms to avail of lower cost options, has been prohibitively complex. 

Step 3 - Request a quote

The easy way to decide if it’s worthwhile investing time in changing how you manage renewals, is to take a few minutes to export your renewals list, including countries and due dates and share it with a provider to get a quote.  Ask for information on onboarding so your time commitment can be gauged against the benefit of lower costs. Ask about service, fee transparency, currency costs and ensure that you can communicate with the provider in a manner that is convenient for you and suits your processes.  A well organized onboarding should not take more than a few days of your time, spread out in small durations over about a month and may be quite a bit less depending on your business.   For trademarks if you work in some jurisdictions requiring legalizations, the process may take longer but some suppliers will manage the documents for you and the overall effort will not change much as a result. It is therefore important to ask about document management and what it includes as well as any additional costs involved so that you can budget your time as well as financial investment accordingly.

Ask Custodian about your renewals today at renewals@myipcustodian.com 

or visit our web pages:

Learn about Custodian Patent Renewals

Learn about Custodian Trademark Renewals

Look out for the next installments in this content series on linkedin or subscribe to our content