Automation: The Way Forward for Estimating Trademark Costs

Published on 31 October 2016

Trademark is a form of Intellectual Property (IP) right on which Fortune 500 companies routinely spend millions of dollars, thus necessitating accurate estimation of costs for budget forecasting and strategic decision-making. However, a recent Budgeting and Forecasting study conducted among corporate counsels by a major Intellectual Property (IP) management company found IP budgeting to be a time-consuming and complex task, with automated systems being used by less than 10% of the respondents.

There are four reasons why trademark cost estimation is challenging. First, three different types of costs (official, associate/attorney, and translation) are involved that are spread across four different stages (filing, prosecution, registration, and renewal) of the trademarking process. Second, the official fees vary widely across countries, while the fee schedules of attorneys and translators are not readily available. Most attorneys work on an hourly basis, while translators may work either on a “per word” basis or on a “per page” basis. Third, the duration of a registered trademark, which, in turn, affects the timing of renewal fee payments, may also vary from one country to another. Fourth, certain legislations may have other legal requirements that would incur attorney charges, such as filing of a declaration of use.

As a result, there is a need for automated, user-friendly tools that can accurately estimate the costs of registering and renewing a trademark portfolio. The desirable features of such a tool would be:

• Meticulous research of trademark legislations across the world;
• Frequent updates to reflect changes or amendments in trademark legislations;
• Easy importation of portfolio data from any docketing system;
• Creation of one or more groups and viewing costs by groups; and
• No hidden fees.

Interested in such a tool? Stay tuned to this space for more information!