News

September 2017

Mat Kilbey Joins the IPRIS team in London

IP Pragmatics is pleased to announce that Mat Kilbey has joined the IPRIS team in London.

As part of IP Pragmatics’ and IPRIS AG’s decade long partnership, the IPRIS marketing, sales and customer services team continues to grow to assure expert, responsive customer service and a top-tier web portal that supports IPRIS clients’ globally with their patent, design and trade mark renewal requirements.

Mat is an experienced formalities officer, who joins IP Pragmatics from a leading London law firm and two previous long-term, client facing renewals roles at leading UK and European Patent and Trademark Attorney firms. Mat holds the CITMA and CIPA Administrators Certificates and joins the IPRIS team in London as the Customer Services IP Manager.

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July 2017

June 2017: Fee increases in Argentina

The Argentinian IP Office, INPI, is considering increasing its official fees by 20% on 1 August2017, with a further increase of 20% on 1 October 2017.

February 2017

Meet us at the AUTM Conference in Florida

IPRIS will be attending the AUTM conference in Hollywood, Florida on 12–15 March 2017. We will be exhibiting alongside our global marketing and customer service partner, IP Pragmatics Ltd.

AUTM's more than 3,200 members represent managers of intellectual property from more than 300 universities, research institutions and teaching hospitals around the world as well as numerous businesses and government organizations.

IPRIS are a major IPR renewals provider for universities and research institutes globally and look forward to meeting our current clients at the conference as well as meeting new ones.

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Client-driven improvements to the IPRIS Web Portal

A recent client survey was conducted into the IP renewals service and web portal provided by the partnership of IPRIS and IP Pragmatics. The survey resulted in a number of insightful suggestions from our clients for new features and improved functionality for the IPRIS web portal.

Alongside the IPRIS team, we have been acting on this valuable feedback to implement a range of updates to the IPRIS portal. The first round of these changes will be going live this month with the second round due to be rolled out in February.

The new functionality will enable clients to upload data directly via the portal and gives them greater control over automatic renewals and cost forecasting. IP Pragmatics’ Director of Services, Ronnie Georghiou, says that “both teams are excited about the changes and are looking forward to seeing how they benefit new and existing IPRIS clients”.

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January 2017

Fee increases

The national IP offices for a number of countries announced an increase in fees commencing in January 2017.

Iceland's new regulation on fees for patent, trademarks and designs for adopted by the Minister of Industries and Commerce and entered into force on 1 January 2017.

Turkey announced an increase in the official fees for EP Validation, search and examination, and the annuity maintenance fees for patents and utility models. The fee increase also applied to trademark matters.

The Intellectual Property of the Philippines revised the overall fee structure for IP-related services with a fee increase of up to 20%.

The Belarusian National Centre for Intellectual Property (NCIP) has implemented a new fees structure for registration of various intellectual property types, following Armenia and Kyrgyzstan have also announced fee increases which come into effect this month.

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December 2016

UK confirm intention to ratify UPC Agreement

In November, the UK government confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement. The official announcement stated that "the UPC itself is not an EU institution, it is an international patent court and the judiciary appointed include UK judges".

While this is true, it does not address the fact that at present, participants must be members of the EU and that the Court will be subject to the Court of Justice of the European Union (CJEU). The IP Federation and other parties obtained an opinion from Richard Gordon QC and Tom Pascoe as to whether the UK can remain a part of the UPC system post-Brexit. This opinion suggests that the UK can remain a part of the UPC system provided that certain steps are taken, notably that there should be an agreement involving the EU to give the UPC jurisdiction to refer matters to the CJEU in appropriate cases. The full opinion can be found here.

Update: The UK has subsequently signed the ‘Protocol on Privileges and Immunities of the Unified Patent Court' which is required to allow the UPC to operate in London where a part of the Central Division and a Local Division will be based. The UK IPO has also formed a new project team to work with the UPC Preparatory Committee to bring the UPC into operation as soon as possible.

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November 2016

IPRIS expands services to South Africa

Following the successful expansion of IPRIS in Korea, Australia and New Zealand, the IP Pragmatics team has appointed Lara Spence as the IPRIS Representative for South Africa.

Lara is based in Cape Town and together with the teams in London and Basel, she will help extend IPRIS’ patent, trademark and design renewal services to leading South African universities, research institutes, SMEs and IP firms.

Lara holds a Bachelor of Science (Hons) in Biochemistry from Rhodes University in South Africa and a Masters degree in the Management of Intellectual Property from Queen Mary University in London.

She has over eight years’ experience of commercialisation in the life sciences and reagents market; specializing in the fields of molecular biology, medical science, R&D and veterinary science. Lara’s background and experience will be a valuable addition to IP Pragmatics as well as IPRIS.

“We are delighted to welcome Lara to the IPRIS team and look forward to offering our client centred and high value patent, design and trademark renewals portal and service to new clients in South Africa, with local support in Cape Town” said Ronnie Georghiou, Executive Director, Services at IP Pragmatics.

If you are based in South Africa and would like more information on global patent renewals, European patent validation or any other IPRIS services, please email Lara

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October 2016

Changes to Indian trade mark official fees

The Indian Trademark Rules are set to undergo some changes in the near future and the proposed amendments envisage, amongst others, a 100% increase in the official filing, renewal and other fees.

September 2016

Indonesia’s new patent law

Indonesia’s new patent law came into effect in August 2017 and seeks to improve the country’s patent regime. The new legislative framework will only apply to applications filed after the commencement of the new law.

There are a number of key changes included in the new legislation including the allowance of patents related to computer programs where technical effect can be demonstrated as well as the patent holder’s obligation to use the patent in Indonesia.

With regard to renewal fees, the new law provides a shorter grace period compared to the previous grace period of three years. However, patent holders can request an extension of up to 12 months if filed at least seven days before the due date along with the appropriate extension fee.

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August 2016

IPRIS expands IPR renewals services to Korea

London, United Kingdom, 31-Aug-2016

The IP Pragmatics Ltd and IPRIS AG partnership is pleased to announce the expansion of IPRIS into South Korea through the appointment of Minjoon Kim as the official IPRIS sales representative for this territory.

IPRIS AG is an intellectual property management company which provides renewals services for patents, trademarks and design rights as well as PCT nationalisation and European validation services. A joint venture was formed between IP Pragmatics and IPRIS in 2005 in order to expand IPRIS’ portfolio of services in the U.K., Europe, Australia and New Zealand and build on their existing global client base.

Minjoon Kim is an experienced business consultant with a track record of working with innovative multinationals and SMEs to exploit their tangible and intangible assets. As a diligent, business development expert who has worked in the US and Korea, Minjoon Kim understands the importance of high-quality business development and customer service.

“We are confident that together with Mr Minjoon Kim, we can offer a high-quality, competitive renewals service and excellent customer support to new Clients in South Korea. This builds on our experience of a successful and ongoing IPRIS venture into Australia and New Zealand since 2010” said Ronnie Georghiou, Executive Director, Services at IP Pragmatics.

“We are confident that together with Mr Minjoon Kim, we can offer a high-quality, competitive renewals service and excellent customer support to new Clients in South Korea. This builds on our experience of a successful and ongoing IPRIS venture into Australia and New Zealand since 2010” said Ronnie Georghiou, Executive Director, Services at IP Pragmatics.

If you are based in Korea and would like more information on global patent renewals, European patent validation or any other IPRIS services, please email korea@iprisglobal.com.

Notes for editors:
About IPRIS AG (www.iprisglobal.com)
Established in Basel, Switzerland in 2004, IPRIS AG is a global services provider of IPR renewals, PCT nationalisation and European validation services to companies, organisations and IP law firms.

Through a decade-long marketing partnership with IP Pragmatics Limited, IPRIS is able to offer centralised, complete control of its clients’ patent, design and trademark renewals with unrivalled service quality and expertise.

About IP Pragmatics (www.ip-pragmatics.com)
Established in London in 2000, IP Pragmatics is a UK-headquartered management consultancy specialising in intellectual property and technology with offices in London, Edinburgh and Sydney.

The IP Pragmatics team has in-depth technical, commercial and intellectual property knowledge and experience. They work with a wide range of different organisations from public sector organisations and universities through to SMEs and large multinational companies both in the UK and internationally.

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July 2016

Official Fee Changes at IP Australia, effective date 10 October 2016

Fee increases for patents and patent applications include renewal fees from the 10th anniversary in the 10th to 14th anniversary range; in the 15th to 19th anniversary range; and in the 20th to 24th anniversary range.

For national trade marks, application fees will increase, and renewal fees will increase. Whilst these fee increases are substantial, they will be offset by the removal of the per class registration fee, lowering the overall cost of obtaining a national trade mark registration in Australia.

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February 2016

European Patent Office: Increase renewal fees (about 1%) April 1, 2016

European patent application renewals due in April and May 2016 can still be renewed under the old fee regime

October 2015

Kuwait: 15 x increase Trademark renewal fees with effect from Dec 21, 2015

Kuwait: 15 x increase Trademark renewal fees with effect from Dec 21, 2015

August 2015

Saudi Arabia: 100 % increase Trademark renewal fees with effect from Oct 15, 2015

Saudi Arabia: 100 % increase Trademark renewal fees with effect from Oct 15, 2015

March 2015

European patent can now be extended to Morocco

There is a new agreement between the European Patent Office (EPO) and the Moroccan Industrial and Commercial Property Office (OMPIC), which will make it possible to validate a European patent in Morocco.

Outline of the key information and procedure:

  • The agreement enters into force on 1 March 2015. It will be available for European applications filed on or after that date or those derived from PCT applications filed on or after that date.
  • For validation in Morocco, applicants must request extension of the application to cover Morocco and pay a fee of 240 Euros to the EPO within the same period as the payment of the designation fees.
  • After grant of the European patent, a translation of the granted claims into French or Arabic will need to be submitted to OMPIC in order to complete the validation in Morocco.
  • A European patent validated in Morocco will then effectively be treated as a Moroccan national patent and will be subject to Moroccan patent law.

Benefits of the new agreement include an option to add Morocco as an extension country at a much later stage as opposed to a direct national application which would have to be filed at the same time as the EP application. In addition, validation from a European patent only requires translation of claims compared to a full translation of the application which is required for a direct national application.

As EPO extends its reach beyond Europe, similar agreements have been signed in Tunisia and Moldova but have not yet come into force.

If you are interested in obtaining a price for European validations including Morocco, please contact us.

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February 2015

Grant notifications directly from the PTOs

There are several Patent and Trademark Offices (PTOs) around the world where patent renewals are not due until the application is granted.

IPRIS will soon implement a service where it retrieves data directly from these PTOs on a regular basis and queries any applications it holds in its records against those found on the public record.

Once IPRIS receives an update that an application is granted, or is about to grant, they contact the client to advise them of this and of any renewal fees that are due.

IPRIS plan to extend this service to other PTO’s to automate the checking of client’s patent data, which is particularly important as IPRIS grows and takes on new clients.

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January 2015

New IPRIS Representative for Australia and New Zealand

Following a handover period in 2014, Ronnie and the IP Pragmatics team appointed Jon Burdach as the IPRIS Representative for Australia & New Zealand. Jon is based in Sydney and together with the teams in London and Basel, he will provide proactive, local support to existing and new IPRIS clients from January 2015.

Jon holds a PhD in Biochemistry and Molecular Genetics from the University of New South Wales, a Bachelor of Biomedical Science (Hons) from the University of Tasmania and a Graduate Certificate in Innovation and Enterprise from the University of Sydney.

He has over six years’ experience of commercialisation in the medical and biotech fields, especially in clinical research, medical and regulatory affairs and new product development. Jon’s background and experience will be a valuable addition to IP Pragmatics as well as IPRIS.

If you are based in Australia or New Zealand and are interested in IPRIS patent and trademark renewals, please email Jon.

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December 2014

Ronnie Georghiou joins IPRIS team in the UK

Over the past 4 years, Ronnie Georghiou successfully established, grew and supported the IPRIS client base in Australia and New Zealand.

IPRIS now services a number of leading universities, research institutes, SMEs and IP firms in the region. Following a successful spell in Sydney, Ronnie has joined the team in London to build on his experience and support the team with the promotion and support of IPRIS in the UK and beyond.

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November 2014

Review of Improvements to IPRIS Web App

We believe that the partnership between IPRIS and IP Pragmatics has produced an online client interface, the IPRIS Web App, which our clients will value and appreciate. However we have no plans to stop here – we value client feedback greatly and will continue to improve the IPRIS system and our services.

Below is an overview of the changes so far this year:

Flexible renewal notifications

The new system gives clients control of renewal notifications as they can choose:

  • When to receive notification emails and renewal reminders
  • Whether to receive the emails per family or by due date

 

Flexible invoicing

When ordering renewals, clients can choose to be invoiced by family, by date or by order. Purchase order numbers can also be included in the invoices with several different options.

The option to use purchase order numbers and set a default if required. If the purchase orders are different depending on the patent family, they can be assigned during the ordering process. Previously entered purchase orders will be stored and made available in the purchase order drop-down menus on the order confirmation page. The purchase order numbers will automatically be included in your invoices.

Download the Flexible Invoicing PDF for more details.

Flexible searching

A keyword search field has been added for more flexible searching. The search mimics the Ctrl-F feature and allows you to search for any combination of numbers and letters within your portfolio.

Customisable view

A personal ‘My Settings’ page now gives the client greater control over their account: the patent details they would like displayed, when they receive notifications and the currency in which their renewals are viewed.

The web app now has filters which enable relevant groups of patents to be identified and sorted with the option to export the data to an Excel spreadsheet. Additionally, the clients have the option to customise the case view allowing them to manage their patent portfolio according to their own needs and effectively use it as a patent database.

We have also included some useful extras such as the ability to filter your patents by Country and IP Type, persistent column headings and the ability to sort the data by any column through clicking on the column title.

Delaying renewals

For each upcoming renewal, a table showing the cost of delaying is now displayed. This allows users to anticipate late fees and to know the cost of delaying a renewal before the decision is made. E.g., the cost of making the decision to renew 14 days or less before the deadline which include the late fee, as well as the cost of subsequent payments when further late fees have been added.

When delaying a renewal, the date on which the grace period ends is now displayed on the order confirmation page before the instructions are sent. In the even that a renewal is delayed, the end of the grace period date is clearly stated within the notification email as well as under the patent action for that renewal on the homepage of the online portal.

Intention to grant notification alerts

As part of the European validation services offered by IPRIS, we monitor when the European Patent Office sends the Intention to Grant notification for any of your European patent applications for which we processes renewals. These details are available for you to see on your homepage so you can prepare for the validation phase and request a quote.

We have embedded a tool which monitors the receipt of Intention to Grant notifications for European applications within the portfolio as soon as the EPO issues them. The client is notified instantly allowing them to prepare for validations.

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October 2014

AURIL 2014

IPRIS’ UK partner, IP Pragmatics, attended the AURIL 2014 conference which was held in Manchester on 10–11 October.

They had the following comment: “It was a great opportunity to catch-up with existing clients from the universities and hear their positive feedback on the IPRIS renewals service. It was also good to meet with other universities that were interested in the service and the IP portfolio overview provided by the IPRIS web app”

If you are a university looking to benefit from the flexibility and control offered by IPRIS renewal services, give us a call or request a quote.

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September 2014

New Zealand Fee Changes

New Zealand’s new Patents Act 2013 came into force on 13 September 2014.

The key changes to patent renewals are:

  • The cost to renew a granted patent in New Zealand increased
  • The renewal fees on granted patents are now payable annually whereas, under the previous Act, renewal fees were payable at the 4th, 7th, 10th and 13th anniversaries from the filing date
  • The renewal fees can now only be paid 3 months in advance of the renewal due date instead of any or all the renewal fees being payable in advance at any time as under the previous act

 

Contact the IPRIS team for more information about how the new Act may affect your patent renewals.

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August 2014

Failure to Pay Renewal Fees in Brazil

On October 22, 2013, the Brazilian Patent and Trademark Office [BPTO] issued Resolution No. 113/13, which regulates the procedures concerning the control of payment of annual fees.

According to Article 13 of said Resolution, patent applications or patents that are overdue on more than one annual fee will be removed from records or declared extinct. The possibility of restoration established by Article 87 of the Brazilian Industrial Property Law [IPL] does not apply to these cases. This is despite the fact that, in principle, the Resolution does not have the power to modify the IPL.

The Brazilian Industrial Property Agents (ABAPI) filed a lawsuit against the BPTO regarding the Resolution and requested a preliminary injunction to temporarily annul Article 13. However, this request was recently denied by the judge.

For now, patent applications and granted patents will continue to be removed/declared extinct by the BPTO after the failure to pay more than one annual fee, without the possibility of an appeal for restoration.

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July 2014

Expansion of IPRIS UK Support

Following the sale of IP Pragmatics joint venture, Patrafee UK to CPA in January 2014, Adam Wylie has returned to his post of Managing Director or IP Pragmatics Services Division. In this role he will head up the team that delivers marketing, sales and customer support for IPRIS renewals to UK based clients.

Adam comments: ‘Having spent three years growing the business of Patrafee UK, which was primarily concerned with renewals, I think I am well placed to develop the IPRIS service offering for clients. Our focus will be on differentiating our service from the competition by providing real value through our service offering. IPRIS already has established an enviable track record for serving clients well with their combination of fair and transparent pricing, dedicated point of contact for customer service and the IPRIS web app. I look forward to this continuing and improving’.

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June 2014

Further Improvements to IPRIS Web App

Flexible renewal notifications

The new system gives clients control of renewal notifications as they can choose:

  • When to receive notification emails and renewal reminders
  • Whether to receive the emails per family or by due date

Flexible invoicing

When ordering renewals, clients can choose to be invoiced by family, by date or by order. Purchase order numbers can also be included in the invoices with several different options.

The option to use purchase order numbers and set a default if required. If the purchase orders are different depending on the patent family, they can be assigned during the ordering process. Previously entered purchase orders will be stored and made available in the purchase order drop-down menus on the order confirmation page. The purchase order numbers will automatically be included in your invoices.

Download the Flexible Invoicing PDF for more details.

Flexible searching

A keyword search field has been added for more flexible searching. The search mimics the Ctrl-F feature and allows you to search for any combination of numbers and letters within your portfolio.

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April 2014

Austria Fee Changes

There was an increase of 4% on patent renewal fees in Austria effective from 1 July 2014. 

Details of the new fees can be found here.

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March 2014

The IPRIS Web App

Following a recent client survey, IPRIS and IP Pragmatics have teamed up to improve the IPRIS web app - the online patent renewal interface used by our clients.

We have taken the time to combine our clients’ suggestions with company specific and individual user preferences to create a convenient and effortless patent renewal experience.

IP Pragmatics provides insight into what clients may find useful in order to manage and monitor their IP portfolios which, when combined with IPRIS’ practical experience in patent renewals, resulted in a few additional features which were detailed in our email to existing clients:

Customisable view

A personal ‘My Settings’ page now gives the client greater control over their account: the patent details they would like displayed, when they receive notifications and the currency in which their renewals are viewed.

The web app now has filters which enable relevant groups of patents to be identified and sorted with the option to export the data to an Excel spreadsheet. Additionally, the clients have the option to customise the case view allowing them to manage their patent portfolio according to their own needs and effectively use it as a patent database.

We have also included some useful extras such as the ability to filter your patents by Country and IP Type, persistent column headings and the ability to sort the data by any column through clicking on the column title.

Delaying renewals

For each upcoming renewal, a table showing the cost of delaying is now displayed. This allows users to anticipate late fees and to know the cost of delaying a renewal before the decision is made. E.g., the cost of making the decision to renew 14 days or less before the deadline which include the late fee, as well as the cost of subsequent payments when further late fees have been added.

When delaying a renewal, the date on which the grace period ends is now displayed on the order confirmation page before the instructions are sent. In the even that a renewal is delayed, the end of the grace period date is clearly stated within the notification email as well as under the patent action for that renewal on the homepage of the online portal.

Intention to grant notification alerts

As part of the European validation services offered by IPRIS, we monitor when the European Patent Office sends the Intention to Grant notification for any of your European patent applications for which we processes renewals. These details will now be available to for you to see on your homepage so you can prepare for the validation phase and request a quote.

We have embedded a tool which monitors the receipt of Intention to Grant notifications for European applications within the portfolio as soon as the EPO issues them. The client is notified instantly allowing them to prepare for validations.

Download the Intention to Grant Notification Feature PDF for more information.

We believe that the partnership between IPRIS and IP Pragmatics has produced a web app that our clients will value and appreciate. However we have no plans to stop here – we value client feedback greatly and will continue to improve the IPRIS system and our services.

If you would like a demo of the new system, please contact Bansi Pattni.

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February 2014

Indian applicant status

Following our previous announcement back in June 2013, the Indian Patent Office have effected their final patent amendment rules as of 28th February. Of note to our clients are the increases in official fees relating to all categories of applicant. For individual inventors, or Natural Person(s), this amounts to 20% of the overall Large Entity fees. For Small Entity is a 50% increase on the Large Entity prices can be expected.

Clients should be mindful of the classification of Small Entity status compared to Large, and Small Entity compared to Natural Person(s). The responsibility of correct classification, and therefore fee charges, lies with the applicant. If the patent case is fully or partly transferred or licenced to a Large Entity, it will be the obligation of that organisation to pay the difference between the two fees. Should you anticipate or change status in this way, clients are advised to inform IPRIS.

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EPO Fee changes

As of the 1st April 2014, many European Patent Office official fees are due to increase. It has become standard procedure for the EPO to review its fee structure every two years, consequently this recent announcement was largely expected. The level of increase for most fees, such as patent renewal fees, is of the same order of magnitude as in the previous review in 2012.

We can expect increases in the order of 4-5%, but some fees will increase more significantly. These increases will apply for payments made after the 1st April so it is the payment date, rather than the due date of the fee, which IPRIS clients need to be mindful of. We are suggesting that any upcoming patent renewal actions are made promptly, so as to avoid the extra costs for this renewal year.

Other EPO official fees, such as for a European search, are increasing by a more significant factor of 10%, from €1165 to €1285. Clients can also expect a 50% increase in the appeal fee, possibly due to increase in volume of cases reaching appeal. This trend is something the EPO is either accounting for, or hoping to stem for speculative appeals, with the increase in costs. Finally, following the announcement last autumn that the system will revert to again allow filing a divisional application so long as the parent application is still pending, a new fee schedule will apply. Additional fees will apply for second and later generation divisional applications, i.e divisional applications that are themselves divided out from a previous divisional. First generation divisional applications remain unaffected. A second generation divisional application is €210, €420 for a third generation and €630 for a fifth. Clients considering filing should submit before the 1st April to avoid the new fees.

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November 2013

Divisional application deadline abolished

This month the EPO announced they are abandoning the 2 year filing deadline for divisional applications. Until now this deadline has been automatically calculated from the date of the first patent examination report. The rule, which has suffered on-going criticism, required applicants to file all required divisional applications at a very early stage in the patent procedure, often before commercial opportunities were fully clarified.

During the consultation period earlier this year, the expectation was that the deadline would most likely be lengthened. This more recent announcement says that it will be abolished entirely. The previous practice, where applicants have the right to file a divisional patent provided there is a pending application in the family, will be reinstated.

However, an additional fee will be required for any divisional application which is second generation or higher. In other words, if that application is a divisional of a previous divisional, the extra fee will apply. A fee will apply for any subsequent divisional application. This fee structure is most likely intended to discourage the filing of applications as a tool to prolong patent pendency and uncertainty for third parties.

These changes are set to apply to divisional applications filed on or after 1 April 2014. As such, if you already have one divisional application in a family, but your two-year period has not yet expired, you may wish to consider filing a second (or subsequent) divisional application before April, to avoid the new scale of fees. Also, if your two-year deadline has passed but a further divisional is desirable, action may be taken to keep an existing case pending until April.

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October 2013

Unitary Patent System

This year has seen the protracted debate over unifying the European patent system finally take shape. The topic has been toing and froing for the past 40 years, but it seems that within the next year and a half, the single European patent and Unified Patent Court - an alternative to validating nationally - may finally come into operation.

The Unified Patent Court Agreement (UPCA) was signed on 19th February this year, by 25 of the 27 EU member states. By June the 15th Draft of the Rules of Procedure, the first for public consultation, was published.

But what will this mean for the SME filing strategy and budget? From a financial perspective, renewal fees remain something of a grey area. The announcement in February of this year ambiguously states that they will be “similar to the level of the national renewal fees for an average European patent taking effect in the participating Member States at the time the level of the renewal fee is first set”.

Excluding the sprawling global corporations, companies will commonly validate in only four to five of the 25 participating Countries. These big five include the UK, France, Germany, Spain and Italy. This presents a delicate problem for the EPO, for whom validation and renewal fees essentially function like a tax income and who have themselves announced will be a crucial factor for financing this new regime.

For the EPO striking a balance in setting renewal fees, where the cost benefits of filing a unitary patent outweighs filing 3-4 national patents, will be tricky. If the costs mount to the equivalent of filing in 6-7 European countries, SMEs face important filing strategy decisions. Most likely resulting in an opt-out decision for the Unitary Patent system. This effect will be strengthened given that Italy and Spain, the fourth and fifth largest European markets, still remain outside the agreement. Proposals currently state that for a transitional period of about 7 years, current European patent applicants can opt-out of the new system.

The most recent advancement has been Austria’s ratification, positioning itself as the pioneering EU member state. It is predicted that ratification by a sufficient number of states will be slower than the Commission expects. Indeed on 1st October, Denmark announced a referendum would be held on the matter in May of next year. Initial hopes predicted that a 2014 launch would be possible, with the UK expected to ratify in mid-2014. Realistically it looks like the launch would take place in 2015 at the earliest. Not least because Spain continues to challenge the plans in the CJEU.

IPRIS will be tracking the developments and will be keeping clients informed on the implications.

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Tricks of European Validation

Once the EPO has concluded that a European application has satisfied requirements for patentability, the case needs to be validated in the countries where protection is desired.

In certain countries validation is automatic: UK, France, Germany, Luxembourg, Monaco, Switzerland and Lichtenstein. To achieve broader protection though, applicants face additional costs, fees and forms which can result in a €30,000 bill. A large proportion of this is down to translation expenses.

Whilst Europe is currently in the throes of creating a unified patent system covering 25 countries, which promises to decrease validation costs by up to 80%, these costs currently remain a big consideration for our clients.

Take, for example, Portugal. The initial validation filing fee is only €70, plus some additional translation fees, since they require that the specification is supplied in Portuguese. These costs will mount however, when taking further jurisdictions and billable patent attorney hours into consideration. Furthermore the on-going annual renewal costs can also bite. In Portugal alone, to maintain protection for 20 years you can expect to pay a minimum of €8,000 in fees. So until the unified system becomes a reality many SMEs and government funded organisations are considering other avenues, not only in terms of filing strategy.

IPRIS offer clients a competitive patent validation service which has seen savings of 50-60% on alternative quotes. This is because the model we operate streamlines the administrative processing and uses long standing and strategic partners, which has aided negotiation of exceptional rates due to the appeal of our bulk buying power. Get in touch to request a quote.

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Your patent renewals portal

The IPRIS technical team completed a round of improvements to the client online interface, which launched in July this year.

Our online interface is a password protected portal housing all client renewals data. It is the tool used to instruct our team of client renewals requests. Regular client contact and feedback showed us that some small tweaks to the system would result in high impact improvements for our clients.

One such feature is the inclusion of a 5 year cost estimation tool. This addition was made in response to the continued tightening of both SME and university purse strings. Several clients suggested that to inform their budgets and financial forecasting, a rough estimate of the on-going costs of maintaining each of their own cases would be an invaluable tool. This feature is now available to clients to view online and export for internal circulation.

Improvements to the managerial aspects of the system were also implemented. Clients who have multiple IP managers can now access the same portfolio with either full or read only status. This feature is particularly suited to universities and research institutes where IP teams need to review and access the same renewals data.

Within each client’s portfolio it is now also possible to select specific cases for automatic renewal. We recognised that clients frequently have mixed patent portfolios. Where some cases are central to the business or licensor, they needed reassurance that the relevant cases would be automatically renewed. Other cases requiring on-going consideration of their value to the organisation are marked accordingly and flagged to the IP managers.

Improvements to the invoicing structure and client control of their access details were also made. We have been carrying out another round of client feedback this autumn and would value any suggestions you may have. If you would like to take part in a client survey to offer your feedback please get in touch.

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June 2013

Indian Official Fee Changes

The Indian government has proposed amendments to increase patent official fee rates. The changes are anticipated to take place from 12th August 2013 and due to apply across the patent schedule. Specifically they include:

  • Doubling of official fees for e-filing of documents at the Indian Patent Office
  • An additional 10% surcharge on fees where documents are filed in hard copy

To avoid these additional charges this year, we recommend that clients consider filing pending patent examination requests prior to 12th August 2013, and additionally consider renewing your granted Indian cases before this date.

See the draft amendment rules .

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PraxisUnico: Inspiring Futures

Celebrating another successful year of technology and knowledge exchange, the UK research commercialisation community met for the annual PraxisUnico conference in Nottingham earlier this month.

IP Pragmatics and IPRIS exhibited at the event. There, we caught up with multiple current IPRIS clients in the UK University and research sector. We also enjoyed several networking opportunities to discuss the benefits of IPRIS with other university knowledge transfer professionals.

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Scottish Technology Show

This month we headed to Glasgow’s SECC for a second year to exhibit at the Scottish Technology Show. The annual meeting is hosted by Scottish Enterprise to bring together technology innovators, funders and support organisations as an outlet to inspire technology professionals and trigger new networking opportunities.

IPRIS joined the 140 exhibitors and 1300 delegates to connect with the Scottish health, clean-tech and environment technology businesses, universities and public bodies. We explored the technology demo zone and matchmaking area, and found time to learn a little more about the expanding digital technology space.

The exhibition attracts an increasing number of delegates from all over Scotland and the UK as a whole, which we were excited to be part of once again.

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May 2013

London Bioscience Innovation Centre Newsletter

In the Spring newsletter for the London Bioscience Innovation Centre we discuss the rising patent maintenance costs on page 5.

April 2013

One Nucleus Biowednesday

IPRIS are exhibiting at the One Nucleus Biowednesday starting off the spring season on the 1st May. The event will be held at the London Bioscience Innovation Centre in the UK, and will discuss the evolution of key technologies for dissecting biological processes and creating therapeutic interventions.

The speakers, from technology companies and research institutes, will present on recent advances in their respective research and product development activities aimed at understanding disease mechanisms with a particular emphasis on the development and characterisation of cell-based therapeutics.

Sophie Brayne, marketing & business development manager, will be on hand to discuss technology patent maintenance with delegates during the event.

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EU Unitary Patent

The EU Unitary Patent is likely to come into force on January 1st 2014. However, EP Patent proprietors with EP Patents granted under the current European Patent Convention regime have to decide if they want to use the option to extend their previously granted EP Patents to the EU Unitary Patent system.

This decision has to be made for every patent family individually. IPRIS asks that clients please inform us which patent families you will “OPT-IN”. This is because it will have an impact with regards to the official renewal fees going forward into 2014.

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