Interview - renewal expert

Rebecca Carbarns has been in the industry for almost 20 years and shares some of her experiences and observations in the way renewals/annuities have progressed during this time.   

Has the renewal industry changed?

There have been a number of changes in the last 10 years within the renewal industry which is quite interesting given it is such a conservative profession.  Some of the changes include:

  • In the past most attorney firms had their own internal renewal department, however, now they have moved towards using external annuity service providers. FPA Patent Attorneys have elected to maintain the renewals department internally.  We have a few extra safety nets built into our system which ensures we never miss a renewal. 
  • The other huge change in the past few years has been for the official patent offices to accept renewal payment directly through online systems. While this can see the elimination of the need to use the services of attorney firms or annuity services with making payments it does require the client to set up accounts, logins and passwords for each national patent office.  Should clients elect to take this path and use of this functionality clients must be able to monitor all deadlines themselves and be knowledgeable of the individual country requirements and fees.
  • As you can see clients now have many more options in managing patent portfolios, varying from in-house, localised patent attorney firm and specialized annuity service providers. As a result, clients may end up having to deal with multiple entities like their own attorney, an renewal service provider and official patent offices to manage their portfolios.  This could possibly lead to confusion concerning payment of fees, please see our article on; Unsolicited requests for payment of fees

What difference do you provide versus an annuity service?

While other attorney firms like to use an external annuity service provider for management of renewal fees we manage renewals internally. We are knowledgeable about country requirements and fees and are able to meet deadlines in a timely manner. Bearing in mind the differences in time zones when sending and receiving instructions, in particular between the United States and South East Asia.

I like that our firm manages the whole process from filing to grant and life beyond. There is consistency in the management of the patent portfolio over the life of the patent. I find that although I specialize in payment of renewal fees that I’m also attentive of other influences that may need to be taken into consideration that may stop the progress of the application. I think that this is especially important where payment of renewal fees may be due in conjunction with approaching examination deadlines and the patent office may not consider prosecution until all fees are timely paid. Also in the event the client may wish to file a divisional application we ensure payment of all appropriate fees. 

Unlike a specialised annuity service which invest in their automated systems, FPA Patent Attorneys is able focus on offering our clients a tailored solution.  We are proud to have individual knowledge of our clients business and being able to assist our clients with strategic advice when the time comes to make commercial decisions. We operate as a team and having complete knowledge of a client’s portfolio enables us to consult with attorneys and respond in a timely manner.

What are some of the significant differences in managing renewals around the globe?

There are a number of factors to consider when managing renewal fees and the rules and requirements for each country are different.

While the majority of countries have annual fees payable, in a handful of countries the fees are payable at periodic intervals. The United States is the predominant example with renewal fees payable periodically at 3 ½ , 7 ½ , and 11 ½ years from the date of grant.  When the renewal fees first become payable can also vary; while the patent is an application, at grant or after grant of the patent.  There is also variation in the date from which the renewal fees become due;  are calculated from either the date of filing or grant or publication of grant.  The official  government fees are also calculated differently;  whether it be a fixed fee or a variable fee dependant on other factors like number of claims.

Finally, if renewal fees are payable as part of the grant it may be necessary for any accumulated (back) renewals to be paid. Indonesia is a prime example and most complicated with accumulated renewals. Of particular to note with renewals due at grant is the important to look ahead as sometimes the next renewal fee can become due quickly after the renewals have been paid. I think that this is sometimes overlooked and its always on my radar of things to check the next upcoming deadline.

In the region of South East Asia the requirements for some of the countries are set out in another of our articles: South East Asia – Renewal Requirements.

What do you like about renewals?

I find that renewals can be challenging, while a lot of it may be bulk processing, it does require a high level of attention to detail in particular attention to idiosyncrasies that sometimes occur.  I think that we are able to be flexible and responsive in attending to our clients need. My strength is in ensuring the comprehensive integrity of the data in our systems and an innate ability to identify issues as they arise.

The best part of the job for me is having an internal renewal department within the firm which allows us to work closely with the attorneys to offer a premium service to our clients. Working closely with my colleagues helps in expanding my knowledge and experience. I also think it brings with it an awareness of other parts of a patent that can be crucial in the business.

Last but most important for me is the interaction I have with our clients.  I have been asked by some of our institution clients to pull together reports for Board papers or government reporting, others call at the last minute with a please help as this renewal has fallen down through their internal processes.  I enjoy working with and assisting our clients meet their commercial objectives.

For further information on renewals, please contact Rebecca Carbarns.