How do you pay foreign patent or trademark renewals?
When a client comes to you with a patent or trademark that needs to be renewed in a foreign territory, what do you do? Do you pay it yourself? Do you direct your client to a specialist renewals provider? Do you send the work to an appropriate foreign associate? Is there a better option?
This article discusses the most common approaches that IP firms use to handle foreign renewal work. We look at the pros and cons of each of these approaches and how they've changed in recent years. This article also outlines a new option that your firm may not have considered.
The two most common approaches to paying foreign renewals are:
- completely outsourcing renewals work to an external renewals services provider; or
- sending instructions to a foreign associate to effect the renewal on your behalf.
There is a third approach, but we'll get to that later. For now, let's examine some of the benefits and disadvantages of these two well-established approaches.
Why do firms outsource? Usually it comes down to costs and liability. They have decided that the costs associated with paying renewals for their clients outweigh the benefits. The cost argument is easy to understand, by outsourcing you can reduce staff, administration and IT costs.
However, outsourcing does have downsides. Firms that keep renewals in-house recognise that each renewal provides an opportunity to foster their client relationship. When you hand off your renewals to a large provider because you don't want the responsibility, you're effectively telling your client that you have little interest in the protection of their valuable intellectual property. Is this the best approach? It certainly does not represent the finest in customer service. And then how does your relationship fare when the specialist renewals provider makes a mistake?
Using foreign associates:
Many firms have a network of foreign associates that they send renewal instructions to when required. The main benefit of maintaining a network of foreign associates is that you can guarantee the quality of the work provided by your associates, which in turn enables you to provide a higher-quality renewal service to your clients.
The disadvantages of using foreign associates are primarily related to cost, scale, burden and time. Foreign associates normally charge more to renew a case than a specialist provider, and they're generally not set up to process large volumes of instructions. This means that it's difficult for your firm to scale up its renewals offering. Instructing foreign associates is also burdensome and time-consuming. Each of your associates will require a slightly different approach, send slightly different invoices, and vary in their level of responsiveness. Ultimately, using foreign renewals becomes quite inefficient and you end up being unable to provide the quality customer service your clients expect.
Firms also often believe that they will benefit from the renewal work that their foreign associates will send back to them. However, reciprocation has generally become less meaningful as a reason to use foreign associates. In recent years, large IP firms have tended to outsource their renewals, which means they have no work to send in return. In fact, since these firms have downsized their renewals department, they often don't want to receive renewals instructions! A sober evaluation of the value of reciprocity in regards to renewals normally reveals that it no longer generates the work it once did. Thus it should not be a significant factor when considering a different approach to renewals.
For all of these reasons, many IP firms have now outsourced their renewals or are currently considering an outsourced solution.
Is there a better option?
Yes! Envoy provides a third option for paying your foreign renewals.
Envoy's renewals service combines the cost-benefits and efficiencies inherent in outsourcing with the quality and control offered by the use of foreign associates.
Envoy differs from the complete outsourcing model because Envoy does not take over a firm's cases or interfere with its client relationships. Instead, Envoy focusses on making the firm's existing renewal process easier and more efficient.
Envoy provides an 'on demand' renewals service. This means that Envoy receives its renewal instruction directly from the IP firm when there is a renewal that needs to be paid. Renewals staff log into Envoy's secure online system, enter the details of a case to be renewed and receive an instant and fixed price. They can then choose whether or not to instruct Envoy to undertake the renewal (or simply save the details for later instruction after they have heard back from the client).
Envoy's smart online system makes it very easy to get instant and fixed prices for one case or for hundreds of cases. Customers are also able to monitor payment progress in real time, access and download any necessary forms, and view and print official receipts.
By adopting Envoy's approach, the IP firm gets all the benefits that come from a responsive, reliable and knowledgeable network of foreign associates – at a fraction of the price! Through volume, Envoy has been able to negotiate very competitive fees from its contracted suppliers, which in turn enables Envoy to offer attractive pricing to its customers.
Envoy gives you the best of both worlds: cost-efficiency with complete control of your cases and client relationships.
Is Envoy right for your firm?
Envoy is suitable for IP firms of all sizes, but it works best if:
- your firm takes responsibility for its clients' renewals (which normally means your firm has dedicated renewals staff); and
- your firm maintains or has access to all of its clients' case details (Envoy does not actively manage case data to avoid the discrepancies, confusion and errors sometimes created by total outsourcing services).
IP firms currently using foreign associates will find it very easy to switch to Envoy. Such firms will also experience immediate benefits. However, firms that are currently outsourcing to a different renewals provider may still benefit from using Envoy as a supplementary or alternate provider (for some clients or in some territories). The ease of Envoy's 'on-demand', online, renewals service means that it is quite practical to use Envoy alongside your existing provider.
Contact Envoy to find out if your firm could benefit from Envoy's approach to renewals.
Find out more:
Envoy renews patents and trademarks around the world. Envoy generally refers to this process of making payment to the relevant official offices as conducting a 'renewal'. As such, Envoy uses the term 'renewal' in relation to both patents and trademarks. And indeed the renewal of any intellectual property, such as registered designs or short term patents. In some parts of the world the payment of patent renewals is commonly called 'maintenance' or an 'annuity' or 'annuities'. In this context, the use of the terms 'renewal' and 'annuity' are interchangeable.
From time to time we publish articles on the Envoy website. The articles relate to Envoy and the IP renewals marketplace.
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