John, the Chief IP Counsel of Wizwidget Inc., looks back with fondness when the team secured patent rights to several innovations that expanded their value and visibility.
Today, he feels defeated.
Maintenance of patent rights was always an afterthought. Now, Wizwidget faces enforcement issues after accidently loosing rights in a key jurisdiction due to a missed payment.
Don't be like John.
Three ways to maintain patents
John, like other patent holders, has three broad options to maintain and manage patent rights. The choice is highly dependent on factors such as the company resources, patent portfolio size, and the extent of foreign filings.
- Personally Manage: The individual patentee or internal dedicated person manages the payment of all patent annuities and communication between PTOs.
- Legal Counsel: A law firm is hired to manage the patent annuities where an attorney(s) tracks and notifies patentee of all due dates and fees.
- Patent Annuity Service Provider: Contract with a third party provider that specializes in the global maintenance of patents.
Over the last ten years the trend has moved to the use of patent annuity service providers. This includes law firms removing themselves from patent annuity management and referring clients to specialized service providers.
Law firms have stopped providing this service due to the high risk inherent in the annuity management business. As John found out, missing an annuity payment can have dire financial consequences for the patentee.
Top patent annuity service providers
Six of the foremost patent annuity service providers are CPI (Computer Packages Inc.), CPA (Computer Patent Annuities Global), Dennemeyer & Company, Thomson Reuters IP Management, Envoy, and Maxval.
| Service Offered | CPI | CPA | Dennemeyer | Envoy | Maxval | Thompson Reuters |
| Patent Annuities Management | x | x | x | x | x | x |
| IP Asset Management Software | x | x | x | x | ||
| Trademark Renewals | x | x | x | x | x | |
| IP Recordal Services | x | x | x | x | x | |
| Consulting Services | x | x | x | x | ||
| Other IP Legal Services | x | x |
Choosing the One
The right fit for your patent annuity management is highly dependent on a number of factors such as portfolio size. For example, personal management will fit best for a start-up with limited patents and jurisdictions.
Many mid-size portfolio (and larger) companies take a hybrid approach. Often they will have one or two internal staff who manages the overall portfolio and their relationship with outside legal counsel, for patent prosecution, and a patent annuity service provider, for patent maintenance.
Why go with a service provider?
In general, selecting a patent annuity specialist over direct payment or use of counsel offers considerable benefits, like:
- Cost-efficiency and savings through central management
- External data monitoring and checks
- Reminder(s) for on-time renewals
- Knowledge and tracking of country law updates
- Ability to combine services (e.g. trademark, patents, foreign filings, etc.) under one provider
Whether you are a rights holder interested in a fully outsourced solution or you simply want to enhance an in-house patent management system, an annuity service provider offers the most flexibility.
The bottom line, for the option chosen, is for you to minimize risk and efficiently manage your portfolio to increase company value.
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.