paralegal training patent annuity payment and annuity payer

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www.maxval.com Los Altos, CA Patent Annuity Payment

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Page 1: Paralegal Training Patent Annuity Payment and Annuity Payer

www.maxval.comLos Altos, CA

Patent Annuity Payment

Page 2: Paralegal Training Patent Annuity Payment and Annuity Payer

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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.

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Page 3: Paralegal Training Patent Annuity Payment and Annuity Payer

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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.

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Page 4: Paralegal Training Patent Annuity Payment and Annuity Payer

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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.

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Page 5: Paralegal Training Patent Annuity Payment and Annuity Payer

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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.

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Page 6: Paralegal Training Patent Annuity Payment and Annuity Payer

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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.

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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?

Page 8: Paralegal Training Patent Annuity Payment and Annuity Payer

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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?

Page 9: Paralegal Training Patent Annuity Payment and Annuity Payer

Patent Annuity Payer

www.maxval.comLos Altos, CA

Page 10: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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What is Annuity Payer?

Page 11: Paralegal Training Patent Annuity Payment and Annuity Payer

Annuity Payer-Work Flow

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Annuity Payer Work Flow

Page 12: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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How will Annuity Payer be useful?

Page 13: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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How is the annuity payment calculated?

Page 14: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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How to upload a patent portfolio in Annuity Payer?

Page 15: Paralegal Training Patent Annuity Payment and 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

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Is importing patent details automatic or manual?

Page 16: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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What are the mandatory fields in My Source?

Page 17: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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What are the mandatory fields in Public Source?

Page 18: Paralegal Training Patent Annuity Payment and Annuity Payer

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

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How do I place an order?

Page 19: Paralegal Training Patent Annuity Payment and Annuity Payer

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

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Do I get an invoice for an order placed?

Page 20: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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Where can I see patent renewal history?

Page 21: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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How do I see annuity cost projections?

Page 22: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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How is patent annuity cost maintained?

Page 23: Paralegal Training Patent Annuity Payment and Annuity Payer

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.

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Other Key Features

Page 24: Paralegal Training Patent Annuity Payment and Annuity Payer

Delay in amount received. Last minute instruction to pay the fees.

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Challenges