JACKSON ESQUIRE
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INTERNATIONAL ESTIMATED PATENT COSTS
There are 6 typical routes to obtaining
international patent protection.
The route you take will depend upon the nature of your commercialization
plans, that includes; which countries, the total number of countries, where
these countries are for membership in various international treaties, the type
of product or service, timing issues, funds available, the inventors objective
of either maximizing the value of their intellectual property, or in seeking
market protection as a priority.
These 6 routes are not mutually exclusive at all; they can be used
separately or in any combination desired. What is usually recommended is for the
inventor to exclusively focus on their optimal international commercialization
strategy and then to structure the intellectual property protection scheme to
support the commercialization plans.
International patent law terms:
Patent Cooperation Treaty (PCT) –
Administrated in Geneva, Switzerland by the World Intellectual Property
Organization (WIPO).International
Stages that PCT administers.
(Chapter I) –
First stage after filing the PCT application, that involves application and
search, the search is termed the International Search Authority (ISA), the
chapter I time period goes from the first filing date (any country under the
Paris Convention) to 19 months, at which point the patent application goes to
the designated individual foreign (national) countries for examination /
prosecution, eventually issuing from each designated individual foreign country
if the patent application is successfully prosecuted.
(Chapter II) –
Second stage of PCT application, is optional after chapter I and involves the
preliminary examination, termed the International Preliminary Examination (IPE),
chapter II goes from 19 months to 30 months from the first filing date (any
country under the Paris Convention).
When chapter II terminates the patent application goes to the designated
individual foreign (national) countries for examination / prosecution,
eventually issuing from each designated individual foreign country if the patent
application is successfully prosecuted.
National Stage -
going from either Chapter I or II into the individual countries (states) or the
EPO for prosecution and grant or issue of the country specific patents.
Member State –
A country that you can designate in the PCT or EPO application.
U.S. Patent and Trademark Office (USPTO) –
Administered in
European Patent Office (EPO) –
Administered in Munich, Germany, provides for central filing, prosecution and
granting of patents in the European Union countries, plus some added eastern
European countries.
European Patent Attorney –
Licensed by the EPO and required for filing in the EPO.
Local Patent Agent –
Licensed in individual foreign countries before their national patent offices.
Foreign Filing License –
Granted by the USPTO within 6 months of the first U.S. patent filing to allow
later foreign filing. Note that if
the USPTO is NOT the first patent application-filing recipient, a separate
foreign filing license must be petitioned for and granted from the USPTO prior
to the patent application being first filed in a foreign country.
This applies if any part of the invention process was in the
Ways to obtain foreign patent protection:
1. National foreign patent office filing-using no
international treaties.
The first and most basic route is to file what is called “nationally” in each
individual foreign country. Prior to
the international patent treaties this was the only choice, the benefits are
more direct control over the patenting process in a particular countries patent
office, the drawbacks are dealing with a different local patent attorney in each
country, and different rules for patentability, and the difficulty of
coordination for disputes in neighboring countries and having competent and
consistent courts for infringement actions and so on.
Add to this, the problem of many smaller countries not having established
patent law or even patent offices, it simply is not economical for a smaller
country to have their own national patent office.
The conventional wisdom dictates that this method is best when you are
filing in only one to two foreign countries.
Note that this method, being the individual country filing is required
for non-treaty countries always.
Also, if you file foreign prior to filing in the U.S. (not the usual case) you
must obtain a foreign filing license from the USPTO before filing foreign (by
special request), remember that if you file in the USPTO first, the foreign
filing license request is automatically processed.
Thus you will have up to a year from your U.S. filing date to file
nationally in any country to attach the first filed U.S. patent application
priority date to the foreign filing(s) (this is a must to prevent your own prior
from being used against you by a patent office or by an adversary against you in
later litigation) or in the alternative, if you file foreign first (don’t forget
the foreign filing license [technology export] issue as described above) then
you have a year from the foreign filing date to file nationally in any other
country including the U.S.
2. File in
(This is the most common method)
The key to being safe with your international patent rights is to not disclose
at all prior to filing, however, in a treaty foreign country you would obtain
benefit of the U.S. file date if you file your international application within
12 months, however, in a non-treaty country you will not get benefit of the U.S.
file date, thus the absolute novelty requirement still applies until the
application is filed in the non-treaty country.
For treaty countries you will have the benefit of the
The PCT application will ask you to designate the countries you desire
patents in. This method is the
most common because it preserves the inventors rights internationally for the
longest amount of time and least cost prior to the significant commitment
required to fully prosecute the patent in all the desired countries.
The reason this is method is preferred is that the inventor can better
assess the commercial potential of their product or service over a time period
of up to 30 months before committing significant funds to patenting, thus the
range of countries desired for patenting can be “fine tuned” or abandoned if
that makes sense.
At this point you have filed in the U.S., you have filed in non-treaty countries
prior to disclosure, and you have filed a PCT application.
Next the PCT application will have a mandatory search, which can be done
either at the USPTO or EPO, known as the International Search Authority (ISA)
who prepares an International Search Report (ISR) that is available to all your
designated countries.
The next step that must be completed within 19 months of your U.S. file date
(because you are using the U.S. application priority) or within 7 months of your
PCT application file date, where you have to decide whether to prosecute in each
individual country or request the International Preliminary Examination (IPE).
Also at this time the application is published by the PCT.
Your decision will be based on an evaluation of the search results for
patentability, and the progress of commercialization at this point in time.
If you decide to elect the IPE, then the national stage is delayed until
30 months from the U.S. file date or 18 months from the PCT filing, buying
yourself time to further commercialize and see the results of the IPE.
The IPE only has a suggestive effect upon the individual countries at the
30-month point, these countries have the option to use the IPE or not.
3. File in United States first, then non-treaty countries, and then the Patent
Cooperation Treaty to the Chapter I term only.
If the decision is to not do the IPE then the national stage is entered at 19
months from your first filing wherein individual country prosecutions start and
fees will be due for translations, local patent attorneys, and individual
country patent office fees.
This option will cost more in the short run but less in the long run as
the Chapter II phase of the PCT is avoided, however, you will lose the benefit
of having the IPE information prior to committing to foreign filings in
individual countries.
4. File in United States first,
bypass the PCT entirely and file in the EPO and non-treaty national offices.
Again use your U.S. application for priority and file within 12 months in the
EPO and / or file in non-treaty countries prior to any disclosure.
Conventional wisdom dictates that this method works best for filing in 2
or more European countries being less expensive in the long run than any other
method if more than 2 countries are non-English speaking.
This decision is dictated on English versus non-English country filings,
in an English speaking foreign country the individual country national filing
route is the most economical and if you are doing 2 foreign country filings and
one is English speaking and one is not, national filing is the most economical.
Filing in the EPO requires a patent attorney licensed by the EPO much the
same as in the
5. File a U.S. Provisional Patent Application (PPA)
first, and then the
This option is very strongly not recommended because of the risk that a U.S.
provisional may have problems internationally for complying with other countries
laws for establishing priority. This
exists because when a foreign filing is made based upon a U.S. priority within
12 months, a certified copy of the first filed U.S. application is filed in the
foreign patent office, if the certified copy of the first filed patent is a U.S.
provisional without claims (wherein the U.S. does not require claims in a
PPA)there could be questions about adequate disclosure to support the claimed
priority in the later foreign filing.
Essentially, the validity of a U.S. first filed provisional application
under the 12 month rule of the Paris Convention has not been settled, with the
problem being the Paris Convention requires that the first filed application be
a “patent application”, because a provisional cannot ever issue as a patent, the
Paris Convention priority attachment is questionable.
In addition a well drafted provisional requires the same drafting quality
as a regular patent, thus it is easier to normally file a regular patent as your
first
In addition, as a provisional requires a foreign filing decision at 12
months after the provisional filing date and as a provisional has no USPTO
search and examination, the foreign filing decision (and associated costs) must
be made without the benefit of a first office action from the USPTO for
patentability, also another big drawback is that on an international patent
application that claims priority from a provisional, as the provisional has had
no search and examination the international patent application filing fees will
be considerably more depending upon a number of items, such as technology,
application size, and the like with typically the international filing fees
being $1,500 to 2,000 more than the standard filing fee.
As the usual wisdom is to draft a provisional with the same care as a non
provisional utility, the only savings are in the USPTO filing fee being for a
small entity a filing fee of $435 for a non provisional utility and $100 for a
provisional, thus the savings is only $335, which first means that you have to
make a foreign filing without knowledge of patentability from the first USPTO
office action and will have to pay an additional $1,500 to $2,000 in foreign
filing fees to save $335, thus the filing of a U.S. provisional patent
application with a foreign patent application filing is not recommended at all.
6. File a PCT first at the USPTO, and non-treaty
countries within 12 months of the PCT application.
It is possible to file a PCT first designating the U.S. as one of your countries
and you designate at least one other PCT member state (country), (however,
currently there is a flat fee for designating the entire slate of PCT member
countries and then you can select anything from 0 to the entire slate later at
the end of chapter I or II as applicable) this method will save some money and
effort. Then also file as before in
any non-treaty countries within 12 months and prior to any disclosure.
The PCT international stage (Chapter I) and national stage (Chapter II)
are as previously described.
Patent
Cooperation Treaty (PCT) International Stage administrative fees only for PCT
application filed at the USPTO as the receiving office, assuming the patent
application is already drafted and drawings are complete, typically to USPTO
standards.
(Chapter I, includes filing fee and international search)
PCT filing fee (prior USPTO search) $2,000
PCT filing fee (no prior USPTO search)
$3,600 (If a U.S. Provisional was filed)
Patent attorney fee $1,500
PCT patent drawings $700
Total PCT Chapter I fees
If USPTO prior search $4,200
If no prior USPTO search $5,800
PCT Chapter I fees can increase from the above depending upon, patent
application size, patent application technology, and inventor(s) residence or
citizenship, the above costs are for a simple invention (smaller application).
You are allowed to amend your application after the search results, if
desired.
The patent attorney fee includes re-configuring the USPTO patent
application into PCT standards, preparation and filing of the PCT applications,
and administrative work related to PCT drawing checking, docketing, and general
PCT correspondence.
If only Chapter I, then PCT application must go national (into individual
countries) at 18 months from earliest file date, requiring local foreign agent
fees, foreign country filing fees, language translation fees, examination fees,
and annuity fees for each foreign country.
For budgetary purposes estimate about $9,000 total per foreign country
after and addition to Chapter I fees.
Also, the $9,000 does not include amendments or annual annuity fees for
each country which are about $1,000 per year, however, some countries will not
require language translation, saving about $2,600.
Also, the patent application size, which language translated into, and
the technology of the patent application can vary the total national patent
fees.
(Chapter II, includes international preliminary examination)
PCT Chapter II fee $775
Chapter II is optional, however, most applicants do it because of the valuable
information from the examination, again you have the right to amend the
application if desired prior to going to national filings, and the ability
extend the national filing date to 30 months from the earliest file date, thus
giving you more time to decide on which countries you want to file patent
applications in, plus delaying the added expense of going national.
The costs for going national after Chapter II are the same as the above
in going national after Chapter I.
Total PCT fees (both Chapters I & II)
$5,000(with prior USPTO search)
Total PCT fees (both Chapters I & II)
$6,600 (without prior USPTO search)
Remember, national (foreign) patent office filings are each extra fees as
given above and that a PCT patent application does not mature into a patent, as
patents are issued in each individual foreign (national) country that you roll
the PCT application into.
Also note that PCT patent applications can go national worldwide into all
PCT member countries, whereas the following European Patent Office (EPO) patent
application can only go national into European Union countries.
European Patent Office (EPO)
The EPO patent application can be filed from a USPTO application, or from a PCT
application, or be a first filed patent application, however, if the EPO is the
first filed patent application and if any part of the invention in developed in
the U.S. you must obtain a foreign filing license from the USPTO prior to filing
in the EPO.
Professional Prior art search at the European Patent Office (EPO)
Although a prior art search is not legally required to file a patent
application, most inventors want to have an idea of what prior art the patent
examiner will most likely assert against the application in the prosecution
phase. Other reasons for a prior art
search include the inventor learning about the “state of the art” surrounding
their invention, who their potential competitors are, to utilize expired patent
technology for their own benefit, find potential patents to license or purchase,
and to access the risk of potential infringement of the inventor’s device
against existing patents.
A standard professional prior art search (RS) is done at the EPO in the
Hague, Netherlands, or Berlin, Germany and typically includes details of
documents found during the search, a ranking of the documents for applicability
relative to the EPO requirements of novelty and what is called the “inventive
step”.
Also given is a summary of the “state of the art” the, multiple classes
searched, the date, and the searcher.
The scope of the EPO search covers patents worldwide, applicable
technical articles and books. The
EPO search is completed by EPO employees and all information is kept strictly
confidential. Although not
inexpensive the EPO search is considered of very high quality and can be done
for
One benefit is that the EPO will refund a portion or this entire search
fee if they can use the information at the patent application stage.
The normal delivery time for the search is about 4 weeks from receipt of
the information by the EPO. The EPO also requires that the invention claims be
drafted, or a very complete description of the invention is available for the
searcher to base their work upon.
Due to this, the claims would probably be based on a preliminary search
that was completed first so they represent a reasonable first cut at defining
the limits of the invention. Note
that this search is by no means completely dispositive of all of the prior art
that can possibly be used against your invention, either during the patent
(pending) application prosecution process or during the life of the issued
patent while it is unexpired.
This search covers European patents only, not publications, not offers
for sale, not public uses, nor any foreign prior art, all of which can be
asserted against your invention. Nor
are there any guarantees that every applicable European patent will be found
either, due to patent reclassification, due to a searcher oversight, or missing
files being electronic, physical, or otherwise.
Additionally, all pending patent applications worldwide are held in
strict confidence until publication or issue, these pending applications could
contain applicable prior art to your invention that would not be discovered
during the prior art search that would surface as adverse prior art against
either your pending patent application or against your issued patent.
Prior art search at the EPO with no prior patent office search $3300.00
Legal opinion on patentability by a licensed European Patent Attorney of the
invention based upon the prior art search results, evaluating the invention
against the novelty and inventive step requirements of European patent law, and
discussions of invention modifications or other options if needed to avoid the
prior art and enhance patentability of the invention or options of other
intellectual property protection available for commercialization.
Patentability opinion with no prior patent office opinion $2250.00
At this point the inventor is at a point to decide whether to proceed with the
patent application, improve the invention, pursue other forms of intellectual
property protection, or abandon the idea.