Renewals may seem simple, but they’re anything but. An IP law firm’s patent portfolio could contain thousands of patents. What setup should you have?

The Future of Patent Renewals - The Growth Strategy You Need To Know About

A Unique Strategy For Staggering Growth

Renewals may seem simple, but they're anything but. At some point, an IP law firm’s patent portfolio could contain thousands of patents. These patents may be spread out across hundreds of legal jurisdictions and relate to different products. If not handled with care, renewals can be a nightmare. IP renewals have been time-intensive and risky for IP practitioners, but with great challenges comes great opportunity: Renewals, when done right, are a golden opportunity to grow your brand, client satisfaction and increase earnings.

From a client’s perspective, there is generally not enough information available to make educated decisions about how to best handle their patents. This is where IP law firms come in. By taking charge of patent renewal management off the client’s hands, IP law firms are poised to create a mutually beneficial relationship with the client.

The client is looking for the firm’s guidance and advice, and the IP law firm can offer professional solutions to deal with renewals. There’s no single correct way to set up your firm’s renewals management service. However, the IP business is moving in the direction of automation and improved machine learning algorithms.

We will present the most popular setups for patent renewal management in this article. We distinguish between active and associated management along with its sub-setups.

Read along to understand it’s applications to your firm.

Active management


Active management involves requesting renewal instructions from the client,  possibly reminding the client of upcoming renewals, discussing options and advising on decisions. The IP law firm handles payments and sends invoices to the client in advance or after payment of the annuity fee.

Using an active management style, the IP law firm generally takes care of the following responsibilities:

  1. Storing and verifying portfolio data
  2. Calculating renewal payment dates and official fees
  3. Reminding clients of upcoming renewals
  4. International multi-currency payments
  5. Managing a global agent network for payments

Associated management


Associated management can be either Attentive or Hands-off. In attentive mode, The IP law firm sets the client up with a trusted renewal provider.  The firm then keeps an eye on the process, intervening only in certain cases - normally when deadlines are coming up, or when clients need counselling.  The setup could include a shared user interface, automated updates, transparency of the renewal process and more.

In hands-off mode, the IP law firm still sets up the client with a trusted renewal provider - but here the IP law firm’s involvement ends. The firm separates itself completely from the renewals, freeing up time for strategic counselling, advice and other IP services. Other than saving a client time and money, IP law firms may seek a hands-off engagement to minimize interpersonal risk. The ongoing relationships built through a renewals business could unexpectedly become sources of future unwanted friction.

Using an associated management style, the IP law firm assumes the following responsibilities:

  1. Advise on renewals decisions pertaining to portfolio development and management
  2. Maintain an accurate record of IP case data in conjunction with the renewal service provider
  3. Transfer relevant case data to the renewal service provider at appropriate times during the IP lifecycle
  4. Manage and resolve any renewals queries

Renewals will never be simple

Renewal management doesn’t have to be hard.  That’s not to say renewals are simple - they never will be - but they can stop being frustrating and burdensome. Patents contain a lot of data, and a lot of data entails plenty of number crunching. Right now, someone has to manually calculate payments, keep track of deadlines, and be appraised of changes in different legal jurisdictions. It doesn’t have to be this way, because this process can reach a very high level of automation.  Imagine feeding your firm’s patent portfolio into a system, and having the system do the full renewals process for you. That’s the future of patent renewals, so make technology your friend.

Other than automating the process, the data collected can be organized, stored and analyzed. More data drives more analysis, and more analysis drives better decision making.  Imagine if you could tell your client: “Based on your patent data, you’re better off not renewing X patent in China, instead you may focus your budget on India.” That is insight that builds trust and strengthens relationships. That is insight that sells.

Overview is key in IP management

Having poor overview of the patent renewal process is like asking a junior legal associate to serve as counsel for a high-profile defendant - they’ll know how to file paperwork, dress nice and show up to court, but they’ll miss the critical strategic considerations that’ll win the case.

By monitoring a client’s renewals portfolio, an IP law firm can provide data-driven counsel which it otherwise couldn't. Golden opportunities can be identified, and potential problem areas can be addressed before the client loses money. Keeping track of the client’s portfolio overview entails keeping track of necessary operations: reviewing reminders, checking in with the client, nudging the client when needed, understanding the implications of going into grace periods and how grace periods affect costs. Good overview is a must -- your clients will thank you when they check their bank account.

The perfect convenient balance

When working with a client, it is helpful to know how they manage and organize their internal budget. For an in-house renewals department, convenience is often as important as cost. Small and growing clients with less robust internal capabilities may want to integrate advisors, even though the extra counsel represents higher costs. To give the best IP portfolio counselling, finding the right balance between cost and convenience is essential.

Convenience isn’t just client-sided. A law firm may seek to reap the interpersonal benefits of having a full management renewals system, but shying away from the grunt work. This is entirely possible. An IP law firm can still leverage a renewal service provider to do the number crunching.  The patent administrators can focus on providing their clients with the most valuable advice while looking like a full-provider to the client. Convenient, right?


Using an attentive approach, the IP law firm deals with a ‘push’ system rather than a ‘pull’ system. In a ‘push’ system the client, or the renewal service provider, are asking you the questions.  The ‘pull’ system entails you having to call the client for instructions. The client can also reach out when they have questions or need some advice. The renewal service provider can ask about late issues with respect to non-responsiveness or impending critical deadlines or where it might be helpful.

Take a global look at what your IP law firm needs from its patent renewal business, and decide what factors are the most important. Keep track of these factors and leave others in the background.

Hands-off means Conflict-free

Going hands-off means not having to deal with the same liability issues and bothersome reminders.

This approach can be useful to avoid conflicts – perhaps the client has a small portfolio, and the firm doesn’t want to keep the relationship in place when there are larger clients worth tending to.

At some point, the client’s volume of business may increase. Then it could be a good idea to transition from a hands-off approach to a more attentive relationship.

What about going from attentive to hands-off? Some clients may be difficult to deal with due to their intransigence. Other clients may be unresponsive or otherwise difficult to maintain a relationship with. This is a possible scenario in which an IP Law firm slowly transfers the undesired clients into a third-party provider. Support is given through the transition phase, and once all clients have been onboarded the relationship becomes 100% hands-off.

Communication, communication, communication

Transitions are hard. They’re harder if you don’t communicate. On occasion, your business may require transition. You successfully get a client to trust you with his or her patent renewals,  and you want to build trust. Your IP law firm goes through a staff change, which means transferring some clients to a hands-off relationship. For both these scenarios, communication is key.

Other than transitions, having constant communication is an effective way of building trust. When clients trust you, your business becomes easier to manage and more profitable.  

Communicating with your client is your golden opportunity to be as transparent as possible about your business. Giving a client appropriate information about the third parties involved implicitly tells the client you have nothing (or no one) to hide. For a client, knowing exactly what’s happening with his or her portfolio builds trust.

Communication is also convincing the client that doing business with you is the right decision. It’s important to provide your client with contact information where they can reach out to you, whether written or by phone. If they reach out, make an effort to listen to what they’re really asking. Sometimes what they’re concerned about isn’t captured in the questions they ask. Be proactive. Ask probing questions. Give them the certainty that they are dealing with someone who truly listens. The simple act of effective communication sets your firm apart from the others.

At the end of the day, it comes down to the right fit

Once you have knowledge of how these services work, the key becomes determining the right fit. Remember, it is a two-way street. It is important to take into consideration not just the benefits for the client but also the IP law firm’s priorities and capabilities.

Authors: Josephine Schrøder, Giancarlo Guerra Salvá and Nicki Friis