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www.maxval.com
Los Altos, CA
Patent Annuity Payment
What is Annuity Payment?
 Annuity Payment also known as renewal fees or maintenance fees,
are fees that are paid to the respective Patent offices to maintain a
granted patent or patent application in force.
 In countries where renewal fess or continuance fees are to be paid
annually, they are sometimes called patent annuities.
3/15/2016 2
How to make patent annuity payment?
 Annuity or Patent renewals are paid to the respective patent and
trademark offices (PTO) as per the fees stipulated by the patent law
of that country.
 The renewal fees can be paid by different methods such as online
fee payment, Wire transfer, check and also in cash.
 Certain countries require the payment to be made only by a local
patent attorney or agent e.g., China, Korea, Japan etc.
3/15/2016 3
How is it differs from each country?
 The amounts payable as well as the frequency of the payments
differ by the individual countries.
 Some jurisdictions require the payment of fees for pending patent
applications and other countries only after patent get granted or
Issued.
3/15/2016 4
How to calculate annuity payment?
 Usually patent renewals are calculated annually; however there are
few countries which are calculated differently such as in USA where
the renewals are paid in 3.5, 7.5 and 11.5 years from the date of
grant.
 For European Union, the fees shall be paid to the European Patent
Office (EPO) until the application is granted.
 Once a European patent application is granted, then the subsequent
renewal fees are paid to the corresponding European countries
where the applicant wishes to validate the patent.
3/15/2016 5
Importance of making patent annuity fee?
 The payment of patent annuities is an important and necessary part
of maintaining an intellectual property portfolio in force without
lapse.
 Annuity fee payment encourages an applicant and patent holder to
re-evaluate the economic value of their application and patent on a
yearly basis.
3/15/2016 6
3/15/2016 7
 Failure to pay the Annuity fee by the deadline does not necessarily
mean that all is lost.
 Payment of a renewal fee may still be validly made up to six months
(commonly referred to as the grace period) from the ultimate
deadline, provided that an additional fee equal to 50% of the belated
renewal fee is paid within the same period.
 If payment of the belated renewal fee and the additional fee is made
within this time frame, then the application will remain in force.
 Failure to pay a renewal fee by the end of the grace period will
result in the application lapsing. In certain circumstances it is
possible to restore the right in few countries.
 These conditions include payment of the outstanding renewal fees
and making a request for restoration to the patent office with
reasons explaining the non-payment of renewal fees.
What happens if, we miss paying the annuity fee?
3/15/2016 8
 Processing patent annuities in-house means managing an
international network of agents and that comes with risks.
 Managing through outside counsel is expensive.
 Using an annuity service provider is the default option but some
give little visibility into cost structures.
 It is hard to track the frequent adjustments and fees are often hidden
or higher than anticipated, making budgeting difficult.
Challenges in making annuity payment?
Patent Annuity Payer
www.maxval.com
Los Altos, CA
 Annuity Payer is a web-based application that optimizes
patent renewal process by providing a comprehensive data
on renewal term, fees and order status.
 We commit to pay annuities directly to Patent Offices across
the globe, either directly or through local agents.
3/15/2016 Private & Confidential 10
What is Annuity Payer?
Annuity Payer-Work Flow
3/15/2016 Private & Confidential 11
Annuity Payer Work Flow
 Annuity Payer helps to pay the fee on time, in a
transparent and cost-effective manner with no extra
annual management fees, subscription fees, sign-up fees
or reporting fees.
 The application is simple and secure for managing your
portfolio.
3/15/2016 Private & Confidential 12
How will Annuity Payer be useful?
Annuity Payer calculates the annuity payment based on the
corresponding PTO’s rules and regulations. Annuity fee
includes: annuity fee + commission + agent charge. Apart from this
the following may be included:
 surcharge, if late payment
 claim fee, applicable for certain countries
 markup fee, if paid using credit card.
3/15/2016 Private & Confidential 13
How is the annuity payment calculated?
To import our portfolio, go to import page by click Import in the
menu.
We can import patents/publication individually or in bulk.
 By Individual Patent Number
 Enter the patent or publication number
 Check Include Patent Family, if required
 Hit Import.
 In Bulk
 Click Download Template to download the Excel template
 Fill in the Excel sheet with required fields
 Upload the file by selecting the file and clicking Upload.
3/15/2016 Private & Confidential 14
How to upload a patent portfolio in Annuity Payer?
 Importing details individually is automatic. However,
when it comes to bulk uploads, Annuity Payer gives you
two options:
 My Source - you can fill in details manually or via
upload (when option Extract from public source
(INPADOC) is unchecked)
 Public Source - details are extracted automatically. You
can check Include Patent Family to import family
details of the given patent or publication number
3/15/2016 Private & Confidential 15
Is importing patent details automatic or manual?
 Country Code
 Patent or Publication No.
 Issue Date (if patent number is entered)
 Filing Date
 Other than these there are 11 fields such as Title, Docket No.,
Entity Status, Patent Type, etc., which can optionally be filled
in or populated for upload.
3/15/2016 Private & Confidential 16
What are the mandatory fields in My Source?
 Only patent or publication number is mandatory, other
fields including: Docket No., Entity Status, Patent Type
and Cost Center and can be filed in or populated for
upload, optionally.
3/15/2016 Private & Confidential 17
What are the mandatory fields in Public Source?
To place an order:
 Add the patent(s)/publication(s) to shopping cart, by clicking
Add to Cart
 Click Cart icon to see the item(s)
 Click Proceed to Checkout button to place an order
 Click Confirm your Order where you will be redirected to
payment gateway
3/15/2016 Private & Confidential 18
How do I place an order?
As soon as Annuity Payer receives the payment from Client,
They can view/ download the invoice and also by:
 Clicking Print Invoice button in Order details page or
 Clicking PDF icon in the My Account  Orders page
3/15/2016 Private & Confidential 19
Do I get an invoice for an order placed?
 Click Pat/Pub No., the patent details are displayed along
with any past or pending renewals.
 Click the Status (if pending) or Show History (if
completed) and a popup box is opened where you can
find status history.
3/15/2016 Private & Confidential 20
Where can I see patent renewal history?
 Annuity Payer gives you an estimation of the patent annuity
costs.
 Go to Estimator menu or click Estimator in the homepage,
which provides renewal summary (by default for a year) and
graphical representation.
 Filter options include date range and country to facilitate
budgeting.
3/15/2016 Private & Confidential 21
How do I see annuity cost projections?
 Our Annuity Payer support team frequently checks
patent offices’ websites for any updates or changes in
patent annuity.
 So the cost, term and other applicable rules are updated
from time to time.
3/15/2016 Private & Confidential 22
How is patent annuity cost maintained?
 Instant projections with Estimator and export invoices.
 Ease of pay with multiple payment options including Credit
card.
 Periodic estimates and reminders.
 Able to take up any last minute instructions.
 Make annuity payments world wide with more than 120
countries.
3/15/2016 Private & Confidential 23
Other Key Features
 Delay in amount received.
 Last minute instruction to pay the fees.
3/15/2016 Private & Confidential 24
Challenges

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Paralegal Training Patent Annuity Payment and Annuity Payer

  • 2. What is Annuity Payment?  Annuity Payment also known as renewal fees or maintenance fees, are fees that are paid to the respective Patent offices to maintain a granted patent or patent application in force.  In countries where renewal fess or continuance fees are to be paid annually, they are sometimes called patent annuities. 3/15/2016 2
  • 3. How to make patent annuity payment?  Annuity or Patent renewals are paid to the respective patent and trademark offices (PTO) as per the fees stipulated by the patent law of that country.  The renewal fees can be paid by different methods such as online fee payment, Wire transfer, check and also in cash.  Certain countries require the payment to be made only by a local patent attorney or agent e.g., China, Korea, Japan etc. 3/15/2016 3
  • 4. How is it differs from each country?  The amounts payable as well as the frequency of the payments differ by the individual countries.  Some jurisdictions require the payment of fees for pending patent applications and other countries only after patent get granted or Issued. 3/15/2016 4
  • 5. How to calculate annuity payment?  Usually patent renewals are calculated annually; however there are few countries which are calculated differently such as in USA where the renewals are paid in 3.5, 7.5 and 11.5 years from the date of grant.  For European Union, the fees shall be paid to the European Patent Office (EPO) until the application is granted.  Once a European patent application is granted, then the subsequent renewal fees are paid to the corresponding European countries where the applicant wishes to validate the patent. 3/15/2016 5
  • 6. Importance of making patent annuity fee?  The payment of patent annuities is an important and necessary part of maintaining an intellectual property portfolio in force without lapse.  Annuity fee payment encourages an applicant and patent holder to re-evaluate the economic value of their application and patent on a yearly basis. 3/15/2016 6
  • 7. 3/15/2016 7  Failure to pay the Annuity fee by the deadline does not necessarily mean that all is lost.  Payment of a renewal fee may still be validly made up to six months (commonly referred to as the grace period) from the ultimate deadline, provided that an additional fee equal to 50% of the belated renewal fee is paid within the same period.  If payment of the belated renewal fee and the additional fee is made within this time frame, then the application will remain in force.  Failure to pay a renewal fee by the end of the grace period will result in the application lapsing. In certain circumstances it is possible to restore the right in few countries.  These conditions include payment of the outstanding renewal fees and making a request for restoration to the patent office with reasons explaining the non-payment of renewal fees. What happens if, we miss paying the annuity fee?
  • 8. 3/15/2016 8  Processing patent annuities in-house means managing an international network of agents and that comes with risks.  Managing through outside counsel is expensive.  Using an annuity service provider is the default option but some give little visibility into cost structures.  It is hard to track the frequent adjustments and fees are often hidden or higher than anticipated, making budgeting difficult. Challenges in making annuity payment?
  • 10.  Annuity Payer is a web-based application that optimizes patent renewal process by providing a comprehensive data on renewal term, fees and order status.  We commit to pay annuities directly to Patent Offices across the globe, either directly or through local agents. 3/15/2016 Private & Confidential 10 What is Annuity Payer?
  • 11. Annuity Payer-Work Flow 3/15/2016 Private & Confidential 11 Annuity Payer Work Flow
  • 12.  Annuity Payer helps to pay the fee on time, in a transparent and cost-effective manner with no extra annual management fees, subscription fees, sign-up fees or reporting fees.  The application is simple and secure for managing your portfolio. 3/15/2016 Private & Confidential 12 How will Annuity Payer be useful?
  • 13. Annuity Payer calculates the annuity payment based on the corresponding PTO’s rules and regulations. Annuity fee includes: annuity fee + commission + agent charge. Apart from this the following may be included:  surcharge, if late payment  claim fee, applicable for certain countries  markup fee, if paid using credit card. 3/15/2016 Private & Confidential 13 How is the annuity payment calculated?
  • 14. To import our portfolio, go to import page by click Import in the menu. We can import patents/publication individually or in bulk.  By Individual Patent Number  Enter the patent or publication number  Check Include Patent Family, if required  Hit Import.  In Bulk  Click Download Template to download the Excel template  Fill in the Excel sheet with required fields  Upload the file by selecting the file and clicking Upload. 3/15/2016 Private & Confidential 14 How to upload a patent portfolio in Annuity Payer?
  • 15.  Importing details individually is automatic. However, when it comes to bulk uploads, Annuity Payer gives you two options:  My Source - you can fill in details manually or via upload (when option Extract from public source (INPADOC) is unchecked)  Public Source - details are extracted automatically. You can check Include Patent Family to import family details of the given patent or publication number 3/15/2016 Private & Confidential 15 Is importing patent details automatic or manual?
  • 16.  Country Code  Patent or Publication No.  Issue Date (if patent number is entered)  Filing Date  Other than these there are 11 fields such as Title, Docket No., Entity Status, Patent Type, etc., which can optionally be filled in or populated for upload. 3/15/2016 Private & Confidential 16 What are the mandatory fields in My Source?
  • 17.  Only patent or publication number is mandatory, other fields including: Docket No., Entity Status, Patent Type and Cost Center and can be filed in or populated for upload, optionally. 3/15/2016 Private & Confidential 17 What are the mandatory fields in Public Source?
  • 18. To place an order:  Add the patent(s)/publication(s) to shopping cart, by clicking Add to Cart  Click Cart icon to see the item(s)  Click Proceed to Checkout button to place an order  Click Confirm your Order where you will be redirected to payment gateway 3/15/2016 Private & Confidential 18 How do I place an order?
  • 19. As soon as Annuity Payer receives the payment from Client, They can view/ download the invoice and also by:  Clicking Print Invoice button in Order details page or  Clicking PDF icon in the My Account  Orders page 3/15/2016 Private & Confidential 19 Do I get an invoice for an order placed?
  • 20.  Click Pat/Pub No., the patent details are displayed along with any past or pending renewals.  Click the Status (if pending) or Show History (if completed) and a popup box is opened where you can find status history. 3/15/2016 Private & Confidential 20 Where can I see patent renewal history?
  • 21.  Annuity Payer gives you an estimation of the patent annuity costs.  Go to Estimator menu or click Estimator in the homepage, which provides renewal summary (by default for a year) and graphical representation.  Filter options include date range and country to facilitate budgeting. 3/15/2016 Private & Confidential 21 How do I see annuity cost projections?
  • 22.  Our Annuity Payer support team frequently checks patent offices’ websites for any updates or changes in patent annuity.  So the cost, term and other applicable rules are updated from time to time. 3/15/2016 Private & Confidential 22 How is patent annuity cost maintained?
  • 23.  Instant projections with Estimator and export invoices.  Ease of pay with multiple payment options including Credit card.  Periodic estimates and reminders.  Able to take up any last minute instructions.  Make annuity payments world wide with more than 120 countries. 3/15/2016 Private & Confidential 23 Other Key Features
  • 24.  Delay in amount received.  Last minute instruction to pay the fees. 3/15/2016 Private & Confidential 24 Challenges