PCT Patent cost: Everything You Need to Know
If you are a United States resident seeking worldwide patent protection, you must begin in the United States. 8 min read
PCT Patent Cost
Explaining PCT patent cost (Patent Cooperation Treaty) takes more than a simple paragraph or even a page to example, but the basics of this complex subject matter could be broken down into five webpages:
1. pct.html: explain the PCT process
2. pctexplain.html --- explains how PCT processing and filing works
3. pctstrategy.html --- goes over important PCT filing strategies that you could use
4. pctcosts.html --- lists the different PCT filing fees
5. pctnat.html --- breaks down the U.S. National Stage of the PCT process
PCT Applications That are Based on Earlier Complete National Application
Preparation costs for a PCT application that was prepared from a complete national application that was already in existence and did not require any editing would cost $1,200. If it is a foreign national application in question, re-writing and editing is most likely needed. Anything that could get lost in translation must be corrected so that it fits technical and grammatical English standards. The structure will probably also need to be revised to meet certain requirements.
File a United States Utility Application First and a PCT Application Second
Once someone has prepared and filed a United States patent application, whether that applicant is a U.S. citizen and resident or a foreign resident, a PCT application fee must be filed within a year. As mentioned in the earlier paragraph, there is a fixed fee of $1,200 to do this. Additional fees or fee changes can be found by visiting the U.S. Patent and Trademark Office website at http://www.uspto.gov/patents-getting-started/international-protection/patent-cooperation-treaty/pct-fees-us-dollars.
If you want to file a non-provisional U.S. patent application with a PCT application following that (within a 12 month period), you can file that PCT application electronically with the International Bureau of Geneva and not have to pay as much in filing fees. Exact cost of the filing fees for filing electronically are not always the same, but in general, this is considered the cheaper route.
How to File a PCT Application if You Are a Foreign Filer
If you are not a U.S. citizen, you can file a PCT application so long as it is filed in your country of residence. You could also file directly with the International Bureau of Geneva. If an attorney is helping you with your PCT application, it might be possible for you to list your attorney’s name and address in the “address for correspondence” section. Your attorney would not act on your behalf, but instead, receive any correspondence which might normally go to the applicant’s address. It also goes without saying that the attorney could not pay fees on your behalf. Additionally, any legal documents that need to be signed, including papers, have to be signed by you, the applicant, and not the attorney.
Budget for Patent Prosecution Costs after Paying the Filing Fees
When filing a PCT application, there are certain patent prosecution costs that have to be paid. These fees must meet the minimum hourly rate of $250 if the applicant is a large business and $175 for a small entity.
How Much Does an International Patent Cost?
WIPO recently states that it would not be uncommon for applicants to pay upwards of $25,000 for a patent when acquiring one through the PCT system. Even if this figure is not applicable for all cases, you would have a difficult time finding anything that cost less than $15,000 per country. In 2003, the United States General Accounting Office (now named the Government Accountability Office) states that it could cost anywhere from $160,000 to $330,000 to obtain and keep a 20 year foreign patent in the following countries: France, Germany, Italy, Ireland, Sweden, the United Kingdom, Canada, Japan, and South Korea.
Two different charts were published by The European Patent Office, and they showed rough estimates of what it would cost to file a European patent directly as well as one under PCT in the following countries: Germany, France, the United Kingdom, Italy, Spain, Switzerland, Netherlands, and Austria. For 10 years, the fee could be EUR 47,000 or $55,000. This does not include in-house costs incurred by the applicant. If an applicant plans to file directly in the EPO, bypassing the PCT, they could expect their costs to total to EUR 32,000 or $44,000. If you add on in-house costs to prepare the application, it could be an additional $5,000 to $10,000.
Additional Cost Factors to Consider
International patent costs can be separated into four separate categories:
1.Government Fees: These include application and prosecution fees that have to be paid to national patent offices. These fees will be different in every country. You can get more information on exact costs by contacting the country’s national or regional IP office.
2.Attorney Fees: Anything that you pay to a patent attorney or agent falls under this category. Like government fees, attorney fees will be different in each country. If you use an attorney or agent, you will probably be required to hire a local attorney or agent. This means someone who doesn’t live in the national stage country.
3.Translation Fees: If you are obtaining IP protection in a country where the official language differs from your native language, translation service will be needed. These fees can be quite expensive, especially for more technical patent applications. It’s hard to pinpoint an exact cost for translation fees, but you could expect to pay anywhere from $2,000 to $10,000 for each translation. If you don’t have high quality translation, it can reduce the power and quality of your patent application.
4.Maintenance Fees: Once you have been granted a patent and paid all of your application fees, there are additional maintenance fees to be prepared for. These payments are usually done in intervals. The fees are paid to maintain the patent application’s protections. Keeping patents protected, especially when doing so in several countries at one time, can be cost extraordinarily costly. In addition to cost variations, how foreign patent offices charge maintenance fees will be different. Before you pursue patent protection for these countries, research the different regulations and processes that they have. In the United States, for example, the USPTO does not change maintenance fees before the patent is granted, only after.
How to Obtain Worldwide Patent Protection
If you are a United States resident seeking worldwide patent protection, you must begin in the United States. The date that you file your United States patent application is a very important one. Once you have filed your United States patent application, it could take up to a year to pursue international protection under international treaties. One such treaty includes the Paris Convention, a successful treaty that has been in place for well over 100 years. You can file in most other countries within one year of filing in the United States. When you file in the patent offices of these other countries, you can receive priority due to your United States filing date.
The second treaty that you should pay attention to is the one that we have been talking about: the PCT or the Patent Cooperation Treaty. Under this treaty, you have one year to file for worldwide patent protection. And instead of filing in separate patent offices around the world, you can instead file one patent application with the USPTO and receive patents in other countries by saying “I want to retain my rights”. Having the PCT application provides you with an additional 18 months. With 30 full months (or two and a half years after filing your US patent application), you have more time to go into other countries and jurisdictions. If you go to one of the jurisdictions know as the European Patent Office (or EPO) within the 30 month period, you are then able to move forward with obtaining patents in all of those countries.
Around the world, there are five major jurisdictions for patents. Three of the most well-known ones include the United States Patent & Trademark Office, the European Patent Office, and the Japan Patent Office. These three patent offices are commonly referred to as “the Trilateral” because they routinely work very closely with one another. The fourth jurisdiction is China, and the fifth is Korea. These five leading jurisdictions make up 90 percent of where all patents are filed in the world.
As stated previously, before you do anything else, file your United States patent application. Following that, market and sell your product. The more money you can make on it the better because once you decide to go international, you have a costly road ahead of you. The upside to this is that no matter how expensive it is, you can have some peace of mind knowing the PCT patent application gives you extra time, and it is relatively affordable to file.
Even after filing your US patent application, you need to make sure that you have invented something that will provide a worthwhile ROI if you go international. Once you decide you want to go into Europe, Japan, Korea, and China, you have to be prepared for the patent attorney fees you pay for in each of those countries along with translation and filing fees. In addition to the filing fee you need to pay to each country, you’ll also have to pay maintenances fees, taxes, or annuities, starting on the date you filed in that county.
The Basics of Filing an International PCT Patent Application
Typically, it isn’t possible to be granted just one patent that can protect your product in every country around the world. If you want patent protection in each country, you have to go through that country to obtain the patent. There are instances of regional patents that are effective throughout several countries. The European patent is an example of a regional patent and can be obtained through the European Patent Office.
As we touched on a bit in the beginning portion of this article, the international patent is the PCT patent. This patent application permits you to reserve the right to file applications in several countries, including participating regions like the EPO.
What does it Cost to get a Patent?
The cost factor regarding a United States patent can be broken down into several parts. Such factors that play a role in securing a patent include filing fees, prosecutions fees, and the issue fee. Many of these fees can be paid to the U.S. Patent Office. Once you have been granted the patent, you have to pay maintenance fees every 3 ½, 7 ½, and 11 ½ years after being issued the patent. Applicants that are considered small entities like independent inventors and small businesses with fewer than 500 employees might be able to receive discounted rates. How many claims you have in your patent application determine the cost of the filing fee, but it could be anywhere from $400 to $1,000. In general, the biggest expense is the legal fees you’ll pay when you use a patent attorney or agent to help you create the patent application.
No matter how high patent application fees might seem, if you are confident that you have invented a product or idea that your target audience will be responsive to, the ROI will be well worth the application fees. And keep in mind, that how much you are willing or able to pay on you patent application will have a direct correlation with the quality of your patent application. If you aren’t confident about your invention, you may want to think twice before pursuing patent protection.
If you need any assistance filing either your US patent application fee, your PCT patent fee, or both or you need other adviced related to patents, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.