India: Choosing The Right Patents Renewal Firm

Last Updated: 8 December 2016
Article by Monika Shailesh

Most Read Contributor in India, December 2018

Intellectual Property (IP) portfolio is one of the most critical possessions of a business. A good IP portfolio is the one of the most significant attribute for the success of a business. While on one hand, the IP portfolio provides a technical edge over the competitors through acquired monopoly, on the other hand it prevents a business from getting hurt from Patent trolls. Making a perfect IP portfolio is very important for the overall success and protection and so is the proper and timely renewal or maintenance of IP. Just like building IP portfolio, IP management also requires a lot of time, efforts and money. In today's globalization where the portfolios are extended to various countries around the world and are managed by different patent offices, planned renewals or annuities become the need of the hour. Different patent offices have altered renewal process and rules to handle those situations and to provide a good analysis of which patents to continue and which should not be retained. A high degree of expertise in IP portfolio management is required, and this is where the role of an IP renewal service provider comes into picture of IP portfolio management. A competent renewal service provider can be very handy to reduce the administrative and budgetary loads on the business. It also brings with it added benefits like peace of mind and a track-record-proven process. However with so many firms providing similar services for annuities which one to partner with is one question that needs a bit attention from the business perspective.

Let us examine a few critical aspects for the strategy to select the partner firm.

  1. The world of IP is highly dynamic in nature. New amendments in IP law and continuous upgrade in technology and further innovations requires not only a good experience but also a constant up gradation of knowledge and process know how. A good renewals firm can certainly be identified based on its capacity to acclimatize to the ever changing IP world and the level of experience it brings on the table. A renewal service provider should have reliable processes at its core and should always attempt to bring in improvements in the overall system by utilizing new technologies and management software's to enhance the inclusive efficiency.
  2. IP is regional in nature, different jurisdictions enforce different legislation. Since patent is not universal in nature a good IP renewals team should keep refreshing and acquiring knowledge of national and international patents laws. Protecting IP in one legislation does not guarantee that it will by default get protection in other regions also; therefore, it is advisable to choose an IP partner firm based on its global foot prints. Many countries still need a local counsel to file for the renewal, so the firm providing service can be shortlisted based on the network of counsels it has in important jurisdictions.
  3. Missed renewal can cause loss of patent and directly impacts the asset proposition of the business. It should be the prime concern of the business that renewals of patents shall be fail safe. One should always confirm if the partner renewal firm has international quality standards like ISO 9001. Customer base of the renewal service provider firm/company is another means to gauge about the firm's value and quality. A firm involved in IP portfolio maintenance must have 'customer first' approach at its core values and the service delivery second to none. On time renewals if missed leads to lot of concerns for business like what would be the impact on business what be the quantum of loss; that will cover the cost and so on, therefore choosing the right firm is of high importance
  4. IP is a data intensive commodity, not only in terms of volume but also in terms of Confidentiality. The patent portfolio of a business shall be managed in a way that all the patents are identified according to the criticality to the business and therefore it is always highly confidential and needs a very precise and safe data management. When a renewal partner firm works for many more customers' data management, it becomes even more critical in terms of volume and quality of data base. A good data base helps in quick queries and hence helps in proper planning of renewals and the analysis of patent portfolio. The IT infrastructure of a firm defines the ability of the firm to minimize errors and minimizing the risk of patent loss due to failure of renewal payments. A good team having experience of large data processing also helps in analyzing the trends in near future and assists the customer to identify the more realistic strategy for IP portfolio management.
  5. A good renewal provider not only helps in maintaining the IP portfolio but it should also have the ability to align itself with the goals and mission of the customer's business by providing an efficient analysis of the IP portfolio. The renewal service provider firm should assist the business in generating intelligence out of the IP portfolio by providing efficient tools and process that could provide an inclusive insight to the data at critical junctions and market scenario. Partner firm shall also provide services to the customer for their IP portfolio management like:
    1. formulating strategy on which technology to focus for patents,
    2. what are the regions where patents needs to strengthen,
    3. market trends,
    4. technologies under focus of competitors,
    5. Do the business has sufficient patents, are there unused or low value patents that can be abandoned etc.

This is how a renewal firm can help a business in aligning its patent portfolio to the core of business and its strategy so that it can influence the board room directly.

  1. An IP portfolio of a Business may have a large number of patents and not all patents generate monetary benefits. Some patents have the ability to create real benefits for the Business/ company; others have the potential to protect the Business/company from unnecessary litigations. A huge amount is being spent by the company not only in creating the IP portfolio but also in maintaining the same. However with time and the ever changing market scenario and constant innovations, some patents may become unusable, non-productive and may also not have any capacity to create intelligence for the business. A good renewal firm also assists the client company in identifying patents that have zero or very low real importance to the business and may help the company to decide in abandoning or discontinuing with investments in maintaining such patents. In this way the business can save a lot of time money and efforts while managing its IP portfolio.


It can be established that IP renewals is undoubtedly one of the critical aspects of IP portfolio management. It can have severe impact on the performance of a business, its finances, and the valuation of the business. Therefore choosing the right renewal partner must be given a due thought and consideration. To conclude, the below listed points would be helpful in deciding on an IP portfolio management partner:

  1. Experience has no replacement.
  2. Look for global foot prints and network.
  3. Credibility and customer base.
  4. Information Technology infrastructure and database management system.
  5. Flexibility
  6. Tools for providing and insight to IP portfolio.
  7. Ability to align the IP portfolio with the core business values and strategy.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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