Frequently Asked Questions

PATENTS

1What is a patent?
A patent is a limited duration property right relating to an invention, granted by a particular jurisdiction in exchange for public disclosure of the invention. A patent owner has the sole right to its use and ability to exclude others from making, using, or selling their invention. Once granted, a patent remains in force (if properly maintained) for 20 years.
2What does Patent Pending mean?
It means that an application for that article has been filed. Patent pending is often abbreviated to "pat. pend." or "pat. pending." The term is printed on a product to inform others that an application for a patent has been filed but the patent has not yet been granted.
3What is the Patent Cooperation Treaty (PCT)?
The PCT is an international treaty with more than 152 contracting states, which makes it possible to seek patent protection for an invention in a large number of countries at one time by filing a single “international” patent application instead of filing several separate national or regional patent applications. No renewal fees are due for PCT applications in most jurisdictions until they enter the national phase.
4How do you determine the renewal date for a patent?
The renewal date for a patent is either the anniversary date of filing, the date of grant, or the publication date.

TYPES OF PATENTS

1What is a utility patent?
A utility patent is issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof. A utility patent is the most common patent issued, and normally lasts for 20 years. Utility patents are granted for inventions such as machines, machine parts, or even a new child’s toy.
2Are utility patents subject to maintenance fees?
In some jurisdictions utility patents are subject to maintenance fees, which must be paid in full to keep the patent in force, while in other jurisdictions they may not be required.
3What is a design patent?
A design patent is issued for a new, original, and ornamental design embodied in or applied to an article of manufacture.
4Are design patents subject to maintenance fees?
Depending on the jurisdiction, renewal fees are payable in frequent intervals. For U.S. design patents no renewal fees are due.
5What does a Design patent protect?
A design patent protects only the appearance of the article and not the structural or utilitarian features.
6How long do design patents remain in effect?
The maximal duration of design patents is 25 years depending on the jurisdiction and subject to payment of the required renewal fees.
7What is a utility model?
A utility model is a statutory monopoly granted for a limited time (very similar to a patent), but usually has a shorter duration (often 6 to 15 years) and less stringent patentability requirements. Other definitions for a utility model are “innovation patent,” “petty patent,” “minor patent,” and “small patent.”
8Can utility models be filed with any jurisdiction?
No, utility models can not be filed in every jurisdiction.
9Are utility models subject to maintenance fees?
Depending on the jurisdiction, renewal fees are payable in frequent intervals.
10What is a plant patent, and what qualifies for one?
A plant patent is granted for genetically modified plants and seeds that are asexually reproduced.
11Are plant patents subject to maintenance fees?
Plant patents may be subject to the payment of maintenance fees depending on the jurisdiction.
12What is a supplementary protection certificate (SPC)?
A supplementary protection certificate (SPC) is a unique intellectual property right that enters into force after expiry of a patent upon which it is based. This type of right is available for various regulated, biologically active agents, namely human or veterinary medicaments and plant protection products.
13How long does a supplementary protection certificate (SPC) remain in effect?
The maximum duration of a supplementary protection certificate is 5 years, subject to the payment of renewal fees per jurisdiction.
14Which countries allow a supplementary protection certificate (SPC)?
A SPC can be obtained in almost every country in Europe, the USA, Japan, and in numerous other countries worldwide. The respective regulations vary considerably from country to country.

RENEWAL FEES

1What are maintenance or renewal fees?
Maintenance fees or renewal fees (also called annuities) are fees that are paid to maintain a granted patent in force. Not all patent laws require the payment of maintenance fees. The laws differ per jurisdiction, regarding not only the regulations concerning the amount payable, but also regarding the regularity of the payments.
2When are maintenance fees due for patents?
Maintenance fees are due at different intervals depending on the individual jurisdiction. The level of administrative work related to the maintenance of patents is grossly understated, which is why many patent owners engage the services of renewal service providers to handle this complex task.
3How do you determine the renewal date for a patent?
The renewal date for a patent is either the anniversary date of filing, the date of grant, or the publication date.
4Are maintenance fees due when patents are pending?
Different jurisdictions have different rules regarding the payment of annuity fees when patents are pending. Check with your account representative at Olcott for details.
5Which countries have annuity fees due at the stage of pending?
Only a few countries have annuity fees due at the stage of pending. Check with your Olcott account representative for rules in specific jurisdictions.
6What are official fees?
Official fees are established by the individual patent/trademark jurisdictions worldwide and paid to the IP Office of the desired country.
7Does the entity status reduce the amount of the official fee which is due at the time of renewal?
Yes, the entity status can reduce the amount of the official renewal fees up to 50%. Several countries allow the applicant / patent owner to file as a small / micro entity (USA). Various other countries differ between “company” and “individual.” The definitions of small / micro entity, as well as “company,” and “individual,” are subject to the regulations of their respective jurisdictions.

SETTING UP AN OLCOTT ACCOUNT

1Is there a fee to set up an account with Olcott?
There is no charge to set up an account with Olcott. We can set up individual client accounts, or simply one client account depending on the structure of your organization and requirements. Client accounts are assigned to individual account managers.
2Is there a minimum requirement to open an account with Olcott?
There is no minimum requirement (i.e., # of cases) to open an account with Olcott.
3What information does Olcott need to set up an account?
Olcott requires complete company information including contact person(s) and client’s IP portfolio including case details to docket their account.

OLCOTT FEE STRUCTURE

1 How does Olcott base its fees?
Olcott’s fees are based on the size of the client portfolio, and include a service fee, country fee and the applicable renewal (official) fee(s).
2How is Olcott’s service fee calculated?
Olcott’s service fees are calculated on a sliding scale based on the volume of the portfolio provided.
3Are Olcott’s price quotes subject to change?
Olcott’s price quotes are subject to currency fluctuations and changes in official fees as well as Agent fees. Prices are inclusive of any applicable VAT.
4Are current exchange rates used when Olcott provides a quote for renewal fees?
Olcott’s quote is based on the current mid-market exchange rate. As exchange rates fluctuate, the price may also change slightly from payment period to payment period.
5Does Olcott charge an additional surcharge/fee for late payments within renewal grace periods?
For late payments within renewal grace periods Olcott charges an additional service fee per renewal.
6Do all jurisdictions require renewal fee payments?
All jurisdictions require renewal fee payments according to their specific renewal regulations.
7How do Olcott’s fees compare to other IP renewal service providers?
Olcott’s fees are competitive, but generally lower than other service fee providers and include favorable exchange rates where applicable. Please request a price quote to compare our fees with your current service provider.

REMINDER NOTICES

1Does Olcott send out reminder notices for renewals, and if so, at what frequency?
Olcott sends out reminder notices for renewals 4 months prior to the 1st day of the renewal month for patents, and 6 months prior for the renewal of trademarks. The notices list complete case details including due date and total fees due. Reminder notices can be sent out monthly or quarterly depending on client preference.

RECEIPTS

1Does Olcott keep renewal/payment receipts for all renewals that they pay on the client’s behalf, or are they sent directly to the client?
Olcott sends clients a copy of all renewal/payment receipts as soon as they are received from the individual patent offices. It usually takes 2-4 months following the date of the payment for receipts to be generated by the patent offices. Olcott keeps detailed electronic records of all receipts and provides access to view receipts online.

REPORTS

1What types of reports can Olcott generate?
Olcott can generate a variety of reports customized to the client’s specific needs. Inventory and budget reports are the type of reports most frequently requested by clients. Reports can be requested any time and also generated and uploaded by clients through their online account.

TRADEMARKS

1What is a trademark?
Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.
2What is the difference between a trademark and a service mark?
A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others, whereas a service mark distinguishes the source of a service. However, the term “trademark” is often used interchangeably for both.
3Do trademarks have to be registered?
Trademarks do not have to be registered.
4What protection does registering a trademark offer?
Registering a trademark offers several benefits: Constructive notice of the trademark owner's claim, evidence of ownership of the trademark, ability to invoke jurisdiction of federal courts. Registering can be used as a basis for obtaining registration in many countries worldwide.
5How long does a trademark registration last?
After a trademark is registered it remains valid as long as you continue to file all post registration maintenance documents in a timely manner according to the timetable established by the individual jurisdictions.
6Is there such a thing as an international trademark?
No, but you can obtain trademark protection in a number of countries by filing a single “international application” under the Madrid Protocol.
7What is a specimen?
A specimen is a sample of how you actually use the mark in commerce on your goods or with your services.
8Can you assign or transfer the ownership of your trademark to someone else?
Yes. A registered mark may be assigned, and a mark for which an application to register has been filed may be assignable.
9What happens when you don’t file a trademark on time?
Some jurisdictions allow for late renewals along with the payment of a fine. In countries where late renewals are not allowed, you have to either re-file or restore the trademark.
10What are “common law” rights?
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.
11What is the Nice Classification?
The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks. The goods and services have been classified in 45 trademark classes (1 to 34 cover goods, and 35 to 45 cover services). The idea behind this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world. The 2015 version of the tenth edition of the NCL came into force on January 1, 2015.

OLCOTT TRADEMARK RENEWAL SERVICES

1What are Olcott’s fees for trademark renewals?
Olcott’s fees for trademark renewals include a service fee, renewal fee per relevant jurisdiction and a country fee.  Please note that some jurisdictions charge official fees per class, or additional official fees per class may apply if exceeding three classes. Olcott does not charge an extra fee per class. However, if a trademark is renewed within the grace period, additional Olcott service fees will apply.
2What types of trademark services does Olcott offer in addition to renewals?
Olcott’s services also include associated filings, such as change of name, change of address, assignments and recordation of mergers, submitting POA’s, reclassifications, etc., that normally accompany such renewal work.
3Does Olcott charge any additional fees for additional trademark services?
There are charges for additional services such as: proof of use, cautionary notices, publications, any applicable taxes, change of name / address recordation, as well as merger recordations.