There's More to Patent Renewals Than Meets the Eye

Published on 5 September 2017

In a move that has jolted the global Intellectual Property community and taken it by storm, CPA Global Limited, the world's largest Intellectual Property management company, has agreed to pay $5.6 million to settle a U.S. class action lawsuit out of court (Peter Rouse; 2017). The class action accused CPA Global, which handles the renewals for more than two million patents every year, including those of Microsoft, Unilever, and Canon, of overcharging by "inflating certain fees and outright inventing others" (CPA Global; accessed May 2017, Shruti Tripathi Chopra; 2017, and Peter Rouse; 2017).

A patent renewal fee (also referred to as an annual, maintenance, or annuity fee) is a type of Intellectual Property fee that is to be paid to a patent office to keep a patent application or a granted patent in force. Failure to pay a patent annuity will result in the serious consequence of the lapsing of the patent application or the granted patent.

Many patent holders, especially those with large patent portfolios, utilize the services of either specialized patent renewal firms or Intellectual Property law firms to manage their renewal payments. Even in the case of the latter, the work is usually outsourced to a patent renewal firm, with or without the knowledge of the patent holder (Faruqi & Faruqi; accessed April 2017).

CPA Global is one such patent renewal firm that is alleged to have utilized opaque billing practices to systematically overcharge its clients. To add fuel to the fire, the company has opted for an out-of-court settlement, which could lead some to believe that it had been engaged in these practices, as alleged. The company’s management is currently said to be considering a change in ownership by placing the company on auction (Ben Harrington; 2017).

This incident illustrates the significance of accurately estimating the costs for a patent portfolio beforehand. This is precisely where the Portfolio Estimator - Patents from Quantify IP fits in. With this versatile tool, a user can estimate the official costs and the associate (i.e. attorney) charges that might be incurred during the process of renewing a patent portfolio. Thus, a user is armed with the necessary information to identify any discrepancies in an invoice provided by a patent renewal firm or an Intellectual Property law firm. Further, the tool is updated on a frequent basis to take care of fluctuation in exchange rates and fee changes.

Dozens of Fortune 500 companies have enhanced their Intellectual Property cost-estimation capabilities by adding the Portfolio Estimator - Patents to their toolbox, all with consistently positive feedback. "The Portfolio Estimator is absolutely essential to anyone tasked with managing patent costs. The Portfolio Estimator easily saved my team 200 hours per year in time I would have otherwise spent on writing algorithms, examining data, and developing reports" [Mr. Michael Tyerech, Senior Licensing Associate, Princeton University and formerly Research Associate Director, Johnson & Johnson Inc.].

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