Leverage the 146 questions to single out clear aspects that differentiate one patent renewal service provider from another and meet your key objectives.

146 due diligence questions to audit your next patent renewal provider.

Ensuring that you are getting exactly what was agreed upon in a  commercial conversation is the ultimate goal. Therefore, anticipating all the possible areas of difficulty and narrowing them down to the technicalities of each use case is essential to:

  • Ensure that the tool is in alignment with your key objectives,
  • Shed light on the true price of the service you are purchasing,
  • Identify points of friction that would jeopardise your strategies,
  • Single out clear aspects that differentiate one service provider from another.

Always be prepared

This article summarises our experience with answering well-crafted due diligence questions from leading IP law firms and their prestigious clients. Furthermore, we are suggesting a few ourselves, which we hope will give you the confidence that you are entering into agreements that won’t endanger your client relationships.

In essence,  we suggest adopting an approach where the contractual relationship with the patent renewal provider is dissected into 15 or more question areas. In this way, it is possible to tackle each area individually and ensure that no relevant element is left out.

The 146 due diligence questions to audit your next patent renewal provider.

  1. Specifically, please elaborate on all areas where you make a profit in our relationship?
  2. Do you foresee any conflicts of interest due to the nature of either your own or our  business model, whereby we would potentially be marketing the same services to the same companies?
  3. How would you define your contractual relationship? Does it lean more towards a customer or a partnership relationship?
  4. What is your service fee per renewal?
  5. What is your pricing structure?
  6. Do you offer a trial period?
  7. What is your expected timeline for successful implementation?
  8. Can you briefly describe the steps that define your onboarding process from start to actual use of your service? Please include a plan description.
  9. How many hours of training are necessary to achieve the required level of expertise to comfortably maneuver in the system?
  10. Do you offer to perform data cleansing/data verification as part of the implementation process?
  11. Before full implementation, is it possible to access a test environment that mimics the live platform?
  12. Please describe the process involved in integrating our portfolio from current agents to your platform.
  13. What is the mechanism that you have in place to guarantee a safe and secure transfer of our data to you? If there are fees associated with this, please provide details.
  14. We have X active patents/applications in our portfolio. How long would it take until your system is fully functional?
  15. Please describe the help and support process including the time frame for feedback/help. Do these come at an additional cost?
  16. Do you offer local customer service in the local language?
  17. Do you offer support directly on the platform in the form of chat or video support?
  18. Are you able to provide free-of-charge and on-demand support and training relating to your renewal system? If any costs do apply in this regard, please provide details of these costs.
  19. Do you provide free-of-charge and on-demand support and training relating to how to market the platform to our clients?
  20. Describe the options for assigning our own or client information (i.e patent reference number, product name, or other customisable labelling).
  21. Can the platform interface be customised with our brand’s color and logo?
  22. How much customisation and flexibility do you offer?
  23. Is it possible to set customisable renewal alerts/reminders and, if so, what is the process and parameters around this?
  24. Is the user interface customisable? If so, please describe what changes are possible.
  25. Concerning your network of local agents, would you use your own partners/law firms, or would you also use our law firms?
  26. We have detailed processes: will you adopt and implement those processes? Will you make proposals for optimization?
  27. Is it possible to alter the invoicing process? If there are fees associated with this, please provide details.
  28. Can you customise the invoices so that they fit our clients’ specific accounting requirements?
  29. Can you send reminders directly to our clients?
  30. Can we customise the content of the renewal reminders and invoices to our and our clients’ specific requirements?
  31. May we send e-reminders X months before and for others Y months before? If additional fees apply, please provide details.
  32. How do you maintain legislation updates?
  33. From what sources do you retrieve your data?
  34. How frequently is your data updated?
  35. Do you allow, at least once a year, a comparison and standard verification (process status, bibliographic data, number of claims) of the data between our databases? Please indicate if additional fees would apply. If so, please provide details.
  36. How is data verified to ensure the accuracy of records? If there are fees associated with this, please provide details.
  37. How often is data verified? If there are fees associated with this, please provide details.
  38. Are you able to provide us with a regular invoice/credit note for the exchange rate differences between our prepayment and the actual payment to the patent office? If there are fees associated with this, please provide details.
  39. Can we pre-determine exchange rates from a specific date (e.g. OANDA rate from the 5th of each month) with no further settlements? If there are fees associated with this, please provide details.
  40. Can we choose the cadence of invoices as well as the specific day within which we are to receive transmission of the invoice and the audit file? If there are fees associated with this, please provide details.
  41. What is your standard approach to handling invoices?
  42. Besides your fee per renewal, what other fees are we expected to incur during our contractual relationship with you? Please elaborate in detail.
  43. What other fees can we expect to see on an invoice and/or receipt?
  44. Are exchange rates included in your pricing breakdown?
  45. Can you describe your invoicing and payment workflows in detail?
  46. Can invoices be directly issued to our clients?
  47. Can you issue invoices in X currency?
  48. Describe how new families and their family members should be submitted to your database.
  49. Can you provide details for the monitoring process and reminders from law firms?
  50. Can you provide details that describe what the money flow looks like?
  51. How many times can we receive e-reminders from you?
  52. How many times can we send e-reminders from the IP law firm to the clients?
  53. Can we reach an agreement whereby, for specific patents, if you do not receive specific communication to stop the renewal, you will proceed with the automatic payment of the renewal fees? In case instructions are changed, will you send confirmation of the instructions that were saved?
  54. Will you provide the documents required for the execution of the annual or renewal fee payments (Power of Attorney) to us or our clients for signature? If additional fees apply, please provide details.
  55. Will you archive all official payment receipts, provided these are issued by the offices and delivered locally to the representative?
  56. Will you keep the IP data on the monitoring system until revoked and will you send reminders of the next due date of the annual fee as per the agreed schedule?
  57. Is there a fee associated with late instruction? If so, please provide details on any such fee(s), the timing points on when such fee(s) would be incurred and how the elements of the fee(s) break down, e.g. urgency fee, your standard renewal fee, official/government renewal fee, foreign agent fee.
  58. Does your renewal system provide the ability to customize instructions (renew, auto-renew, abandon, delay, 3rd party instruction)? If so, how does this operate? Please include details on how the breakdown of the relevant fees applies, the timing in advance of a renewal deadline on when auto-renewal would take place, the ability to change the auto-renewal instruction to not renew and any timing and cost considerations applying around that.
  59. Please advise what, if any, restrictions and costs apply to change a renewal instruction where there’s flexibility to do that because the patent hasn’t yet been renewed and there is still time to manage/change the approach to renewal before the renewal expiry date/grace period for late renewal.
  60. How close to the deadline can instructions be given?
  61. How should instructions be provided?
  62. Can instructions be changed? If so, how close to the deadline? Will this trigger an additional fee?
  63. Do you have automatic detection of new patent families?
  64. Can a patent attorney add new patent families and members directly on the platform?
  65. Are there tools for performing our own data imports?
  66. Are there tools for performing mass updates?
  67. Are instructions time and user stamped?
  68. Are there gatekeeper controls for an authority to confirm actions before submission of changes to instructions? If so, please provide details.
  69. Do you provide multiple levels of security or permissions, i.e. at the function, operator, supplier, etc. level? Can security be set at the field level for highly sensitive data? Please describe your security features in detail.
  70. Can internal user permissions and security controls be managed to control what internal and external parties can view and edit within the IPMS?
  71. Does the platform have an audit capability that allows easy reporting and monitoring of external user activity?
  72. When references are added to a patent application do they flow, automatically, to all related matters in the family?
  73. Does the platform integrate with any global patent sources so that you can quickly retrieve documents and metadata for a patent publication document automatically?
  74. Do you provide reliable access, anytime and anywhere? What is your systems uptime and can you provide documentation for that?
  75. What is your approach in case we deem that certain features would bring a considerable improvement to our workflow?
  76. Do you provide copies of the renewal documents? Are they accessible through the portal?
  77. From a usability perspective, which factors do you believe differentiate your user interface from your competitors?
  78. Which languages is your platform available in?
  79. In addition to the live environment, is a test environment also provided for our company’s exclusive use during the life of an agreement? Please describe any test environment in detail, including any additional licensing and/or costs associated with it.
  80. Will we have a report from you related to IP Law updates to support our internal audit system?
  81. Do you support features that allow us to insert new cases starting from Address Details of Applicant(s) and Cost Centre(s)?
  82. How often and from where do you handle exchange rates?
  83. May we handle more than one currency, for example, EUR for IT clients, USD for US clients and YEN for JP clients, etc?
  84. In which countries do you currently hold deposit accounts that can receive funds?
  85. Do reminders contain the due date, patent data, country, and renewal fee including the service fee of the service provider, attorney fees and expected official fees?
  86. Is your patent renewal system accessible and capable of being directly client managed over the Internet with the appropriate client access permissions?
  87. What permissions can be set to partition data across the different types of users?
  88. Is it possible to create custom filters that fit the data requirements of the different users?
  89. Is a portfolio divisible into a variety of families?
  90. Can external clients instruct on their own cases and, if so, can it be set-up so that we are copied in for information?
  91. What renewal instruction options do you support?
  92. What search features are offered?
  93. What filter features are offered?
  94. Is it possible to email directly from the system and link associated accounts with each case?
  95. Are you able to provide live renewal pricing?
  96. Is it possible to promote a dialogue directly on the platform surrounding a specific patent renewal decision?
  97. Are there any other features we should be aware of?
  98. Please include a screenshot of the main dashboard and any other relevant pages.
  99. Do you provide an audit file with RecordIDs of our patent families?
  100. Can you provide a comprehensive fee catalog upon request?
  101. What report features are offered?
  102. What forecasting features are offered?
  103. Do you offer payment tracking and renewal confirmation through the platform?
  104. Do you share rules and regulations of annuities upon request?
  105. Is it possible to create, save, and download different reporting scenarios?
  106. Is Single Sign-On integration in place for specific other systems?
  107. Do you offer any consulting services to assist with integration services?
  108. What are the integration possibilities with our IPMS?
  109. Do you offer an on-premise solution on our server? If so, please provide details of set up.
  110. Are there any software upgrades and new features coming up?
  111. How important is continuous development and how much do you invest in it?
  112. How do you roll out upgrades/enhancements to the pre-existing software versions?
  113. What happens to customizations when a new release is launched?
  114. Can you provide a detailed list of the components of your service? If parts of your service are provided at an additional fee, please provide details.
  115. What are your service levels in relation to a client managed online renewal system, in particular to any system maintenance work that you carry out and/or accessibility issues that a client has?  
  116. Can we see a copy of the contractual agreement?
  117. How do we retrieve our data when the relationship ends?
  118. How do you limit your liability?
  119. Can we talk to some of your current customers?
  120. How many patent renewal payments do you handle yearly?
  121. Do you have any clients using your software globally?
  122. Do you have insurance in case of missed patent renewal action (assuming action was client instructed) and/or inability of a client to access its patent renewal portfolio (assuming no issue/fault at client end)? If so, please provide full details, including the process relating to the recovery of compensation.
  123. How many clients currently use your platform?
  124. What industries utilize your platform?
  125. Are there any notable clients?
  126. How long has your company been operational?
  127. What are our and your responsibilities?
  128. What security and risk management systems do you have in place to stop unauthorised access and the hacking of a client’s online patent renewal portfolio?  Please also provide details of what insurance, if any, you have in relation to addressing and managing any such risks.
  129. In case of a loss of right: do you have QM and Deadline monitoring in a way that e.g. a re-establishment of rights has good chances to get granted by Patent Office?
  130. Please describe how security threats are handled, including security attacks and recovery processes.
  131. Do you dedicate resources for the security monitoring of the platform?
  132. How do you protect our and our clients’ data?
  133. What standards of data security apply to the platform?
  134. What compliance standards does the platform meet?
  135. Where will our company’s data be hosted on your system?
  136. Can portfolio exports be made directly from the platform? If so, are there limitations to the data that can be extracted? Please describe the process and any limitations in detail, including any additional licensing and/or costs associated with it.
  137. Can forecasting and budgeting be done through your platform? If so, how many years in advance can your platform provide data?
  138. Is it possible to require customised forecasting reports? If so,  please describe the process in detail, including any additional licensing and/or costs associated with it.
  139. Do you use third party services to supply part of your infrastructure? If so, how do you ensure the confidentiality and security of the data?
  140. What is your track record concerning incidents that resulted in the loss of IP rights?
  141. What are your emergency procedures to prevent the loss of IP rights in case payment deadlines are missed inadvertently?

Download the excel file with all the questions arranged by thematic area.