16 Apr 2019

Intellectual property protection can be expensive but there are steps all businesses can take to minimise costs. Here we explain how:

1.  Consider a third-party provider for your intellectual property protection

Paying a renewal fee or validating a European patent is a purely administrative task so could be handled more efficiently and cheaply by a third-party provider.

Although it is important that renewal fee deadlines are monitored and that an address for service is appointed for a validated European patent, this does not need to be undertaken directly by your patent or trade mark attorney.

There are some very good third-party providers who rely on a large number of instructions every year, so provide competitive and fair rates for the intellectual property protection services they offer. It is worth asking your patent attorney if they can work with such providers.

These providers can work with you directly to manage renewal fees if you prefer and there are platforms available online providing instant quotes for European validations. They will then handle the entire process with minimal input from you or your patent attorney.

2.  Keep to deadlines set by intellectual property offices

Patent and trade mark attorney firms are thriving, so to keep on top of their work load they will routinely make use of extension periods.

Although this can help entrepreneurs to balance cash flow by extending the period in which fees may need to be paid, it is a privilege which typically involves additional costs.

There is nothing wrong with making the most of the full time available but it should be your choice and not your patent or trade mark attorney’s. Ensuring that responses for intellectual property protection are filed on time can result in significant cost savings and complete the patent application process quicker.

3.  Get a fee breakdown for your intellectual property protection

There will usually be three elements to the fees you are charged for your intellectual property protection, specifically intellectual property filing and prosecution services: official fees, attorney time charges, and service fees and/or mark ups.

However, when you receive your invoice, you might find just a single amount listed and a description of the services but no breakdown. Understanding what you are being charged will help you to assess whether you are being charged fairly for the work instructed. For example, if you receive an invoice that charges you £350 per country for renewal of a patent on top of official fees, is this a fair cost? What service is your patent attorney providing to justify this fee?

4.  Boost efficiency through new technology

There are platforms available which can make the intellectual property protection process more efficient.

These online ‘docketing systems’, provide entrepreneurs with access to their intellectual property records and enable them to see the progress of applications. They can also be used to foster collaboration with patent and trade mark attorneys.

It is also possible to implement your own docketing system if your portfolio is large enough to justify this. Making this investment can help you bring the management of your intellectual property portfolio in house and control what work is undertaken, when and by who.

5.  Use acceleration programs for your intellectual property protection

Intellectual property protection can take a long time. If allowed to follow their natural course, patents typically take 4 to 6 years to grant, however intellectual property offices in most countries have programs in place to shorten the period from application to grant.

In the UK and Europe, for example, a request can be made for both search and examination to be accelerated. Once this request has been made, the UK Intellectual Property Office and European Patent Office will each try to issue the search or examination report within two months and will continue to issue further communications within two months provided the applicant does not use extension periods when filing responses to communications. Similar schemes exist in the US and China.

Also, there is a scheme known as the Patent Prosecution Highway, which can be very beneficial when used in conjunction with accelerating grant of a UK patent. Once a UK patent has granted, its claims can be used as the basis for grant in several different countries without substantive examination. This can result in patents being granted in those countries quite quickly ensuring intellectual property protection with little fuss.

As an international law firm, we work with our clients globally to help them make the most of their valuable intellectual property rights. We can provide a complete outsourced intellectual property solution or work with you to manage your intellectual property rights in house. To discuss further, please contact Samantha Kaye.