FAQ

Patent and Trademark Renewals

What is the process of patent and trademark portfolio transfer to IPRIS?

IPRIS is flexible about the initial transfer of patent data, which can usually happen in two ways. Either the client supplies a full electronic list of the formalities information associated with each patent. These will be pending applications and granted cases. The IPRIS team will then audit the information and upload it to our system. Alternatively if the client prefers to supply IPRIS with the data on an ongoing basis as the renewal reminders come through from their current provider, this is also possible. We would need to receive notification, usually by email, of the cases you wish to add to your online interface. 

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What is the system for pending patent and trademark applications?

For applications pending grant, the team asks to receive notification from the client or patent attorney for the changes in status. The IPRIS system will also alert the team of likely decision dates to be aware of. For direct contact with the attorney, the client simply needs to notify them to include IPRIS to their distribution list along with the client. Operating this relationship with the client and their patent attorney is well practised by IPRIS.

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What is the structure of payment?

We ask that invoices are paid within 30 days from issue. Alternatively clients can supply IPRIS with a monthly pre-payment from which we deduct each renewal, and any additional renewals are invoiced accordingly on a quarterly basis.

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Can I be reminded of upcoming patent and trademark renewals?

Yes, the IPRIS system can be individually tailored to each client’s needs with respect to how patent and trademark renewal reminders are sent, their frequency and how renewal instructions are communicated. Our default sends reminders 3 months and 1 month prior to the deadline.

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What happens if I miss a patent renewal date?

The case will automatically extend into the grace period. Within this timeframe the client can log on and renew the case as normal, but the usual grace period surcharges will apply. IPRIS does monitor the system and will endeavour to notify clients of cases about to lapse. If the grace period has terminated you will need to file a request for reinstatement via your attorney.

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Can I change an instruction after I have submitted it?

Yes, you will be supplied with a specific point of contact who can be reached by phone, email or fax. However, the online interface has multiple checks and balances built in to minimise these errors.

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What happens if I instruct after the patent renewal due date?

The patents on record will automatically enter the grace period. Late instructions can be made via the online system as usual, and these cases are clearly flagged to you. There will be additional official fees associated with renewals made in the grace period.

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What are the risks associated with transferring patent cases across to IPRIS?

We ask from the outset that clients supply IPRIS with the patent data for our records. Following this we require notification of any changes in status of applications pending grant, for example when the existing entity reaches nationalisation and validation stages. IPRIS requires action from the client or attorney for this information.

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What are the IPRIS liability insurance terms?

IPRIS ensures that services are executed with a high level of professional care. We have never lost a client case due to our negligence. In the unlikely event liabilities outlined in our terms and conditions are CHF 1,000,000.

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EP Validation

What is an EP Validation?

In Europe the most commonly used patenting process requires applicants to file for a single European patent application through the European Patent office (EPO). The prosecution of the claims then happens between the EPO and your attorney. If there are no ongoing objections to the claims of the patent, the EPO issues a Notice of Intention to Grant, also known as a 71(3) notice. This signals the start of a 4 month period during which your European attorney must file for a translation of the patent claims into English, French and German. In addition, payment of printing and grant fees are made to the EPO. Following this, a formal Decision to Grant is published by the EPO and a publication date is established. From this date you have 3 months to select the European countries in which to validate your patent. This can involve translation of the claims, or the entire specification, and the paying of renewal fees. This patent will remain in force provided the necessary annual annuity fees are paid.

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Why are IPRIS EP validation service prices lower?

Our internal operating processes and strategic external relationships allow us to streamline the stages involved in a patent validation. This is means we process your application more quickly, saving on administrative and labour costs. Furthermore volume processing has allowed us to leverage the benefit of bulk buying power with global agents where required. These savings are in turn reflected in our overall service fees.

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Is 71(3) fulfilment an IPRIS service?

Yes. Upon issue of the 71(3) notice, IPRIS will process the translation into English, French or German. Accuracy in terms of the technical and legal translation is then assessed by a qualified patent attorney. These are then sent back to the client and you or your attorney will need to lodge the claims with the EPO.

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How does IPRIS process patent translations?

As intellectual property experts, we understand the importance of quality translations. Our translators fulfil both criteria of native fluency and technical understanding of the field. The translation rates we negotiate are good value, but absolutely do not sacrifice on quality.

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What is the procedure for Power of Attorney forms?

When the IPRIS team have received your instructions for an EP validation, we will send you any necessary Power of Attorney forms. You will then print and sign the document. An optional extra is for you to email them back to the IPRIS team to check. The final stage is to post the hard copies directly to our agents or back to IPRIS for processing. We would ask that if you require us to process, we receive the documents prior to 15 working days before the deadline.

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What happens after the patent validation?

At this stage there are no further examination requirements. To maintain the patent going forward, all that is required is for you to pay annual renewal fees in the relevant countries. For more information about our renewal payment services please click here.

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PCT National Phase

What is the PCT national phase?

Having foreign patent protection in our global economy is regarded as a core component of an IP strategy. Nonetheless patent protection is still divided geographically. To overcome these limitations, a typical process is to file a ‘priority’ application initially in your home country. This is the official date and document for your future international filings, typically called PCT (Patent Cooperation Treaty). A PCT application can be filed within 12 months from the priority application date. There are 140 member states within the treaty, and the PCT application serves as your right to obtain later protection in any of these jurisdictions. This does not however entitle you to immediate global patent protection.

Within a 30 month period after the official priority date, you will need to specify the countries you wish to pursue protection in a process known as the national phase, or nationalisation. This process requires an understanding of the fees and deadlines within each jurisdiction that the patent is being prosecuted. As a consequence, it demands time and administrative work as well as a good level of IP regulatory understanding within each country.

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Why are the IPRIS PCT national phase service prices lower?

Our internal operating processes and strategic external relationships allow us to streamline the stages of PCT nationalisation. This is means we process your application more quickly, saving on administrative and labour costs. Furthermore volume processing has allowed us to leverage the benefit of bulk buying power with global agents. These savings are in turn reflected in our overall service fees.

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Am I obliged to use IPRIS’ foreign agents?

Our service offering is flexible. We leave it to clients to choose to use a combination of your own or IPRIS’ agents. This can be arranged in communication with your IPRIS point of contact. We would need the details of your foreign agents in order to collect their fee schedules so that you are able to select them in future quotes.

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What happens about my local attorney?

We want to make it clear that working with IPRIS for the PCT nationalisation phase does not replace your local attorney. We can either be instructed by you directly or your local attorney can instruct us on your behalf. This relationship is something IPRIS is well versed in executing, and it allows either yourselves or your attorney to ask for instant cost estimates. We can copy your attorney when notification of filing has been obtained, in order for them to continue with foreign prosecution. How does IPRIS process patent translations?

As intellectual property experts, we understand the importance of quality translations. Our translators fulfil both criteria of native fluency and technical understanding of the field. The translation rates we negotiate are good value, but do not sacrifice on quality.

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What is the procedure for Power of Attorney forms?

When the IPRIS team have received your instructions for an EP validation, we will send you any necessary Power of Attorney forms. You will then print and sign the document. An optional extra is for you to email the forms back to the IPRIS team to check. The final stage is to post the hard copies directly to our agents or back to IPRIS for processing.

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Who handles patent prosecution after entering the national phase?

After we have completed the PCT national phase, the case is passed to the foreign associates to execute the prosecution within each of the selected countries. We have long standing relationships with our agents who are selected on the basis of their legal and technical expertise. We are happy for you to use your own agents, or a combination of both. At this stage you or your local attorney can liaise with these agents to manage the further prosecution of the case.

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