Best Practices, Renewals

7 Questions to Ask Your Renewals Partner

Joshua Stackhouse

May 1, 2023

7 Questions to Ask Your Renewals Partner

  1. Which jurisdictions are supported and which are not?
    Not all IP maintenance companies offer global coverage. Some boutique firms only cover the local region, and others will only cover the major global markets (eg. US, European Union, China, etc.). You may not necessarily need global coverage, however you will want to make sure your renewals partner at least covers the jurisdictions reflected in your portfolio. Additionally, if you believe your portfolio is likely to expand to more jurisdictions, partnering with a company that provides global coverage offers flexibility and peace of mind.
  2. In what jurisdictions can I pay maintenance fees in advance?
    In jurisdictions that allow it, paying annuity maintenance fees years in advance can be a prudent cost-saving measure as renewing multiple periods at once can reduce processing fees and protect you from fluctuating rates (in regard to both the jurisdiction’s official fees as well as your provider’s fees.)
  3. How often do you adjust your rates? What kind of notice will I receive?
    Adjusting rates is an unfortunate necessity for service providers in every industry, but some do so more transparently than others. Asking how often they’ve changed rates in the past five to ten years (and how that affected existing customers) can give you an idea of what you can expect as a client. You’ll also want to specify how they will alert you to rate changes and how much notice they guarantee. Finally, when negotiating a contract with a renewals partner, it’s never a bad idea to lock in a specific rate for the duration of the agreement.
  4. Of the jurisdictions represented within my portfolio, which mandate that maintenance fees must be filed by an agent local to the jurisdiction?
    Some IP authorities require that a local filing agent order renewals within a given jurisdiction. Renewals partners will typically pass this additional cost onto you, the client so it’s important to know exactly which jurisdictions have this additional requirement so that you know you are only charged this additional fee when absolutely necessary. This is also an opportunity to ask your renewals partner what they do to vet competent agents and facilitate competitive rates.
  5. When invoicing, how are costs broken down? Are official government fees, foreign agent fees, and service fees all separated?
    One of the main reasons it can be tricky comparing IP renewals companies is that the costs they advertise aren’t always reflected when you receive your bill. With expenses coming from so many places (official fees, agent fees, exchange rates, and service fees) it’s not always easy to track where your dollars or going. A quality renewals partner will let you know where you can find an itemized breakdown of your expenses — or, better yet, provide an itemized breakdown directly on your bill.
  6. What experience does your company have working with IP?
    There are a lot of moving parts when it comes to maintaining IP so mistakes can be easy to make — and can just as easily be utterly catastrophic. What kind of experience and qualifications does your renewals partner bring? What has been there success rate when renewing IP? In the case of a mistake on their end, what protocols do they have in place to rectify the error?
  7. Assuming timely instruction on my end, when in the renewal window do you submit annuity payments?
    Different providers operate on different schedules. Some providers don’t pay until the due date and some don’t pay until the last day of the grace period. Knowing a given providers operational procedures on when they file renewals can inform how likely aforementioned errors are likely to occur.

Bonus question for private innovators: What is the minimum portfolio size you accept?

Many (if not most) providers have a minimum portfolio size in order to take you on as a client. It’s not a bad idea to lead with this question if you have a portfolio of 20 records or fewer.

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