International (PCT) Filings

  What follows is a brief discussion of international patent application costs and tactics. Because there is so much more information about costs and benefits of international patent applications, I cannot put it all in one brief section. But the complexity should further questions with a registered patent attorney. 

 

  Also, one quick point before I discuss international issues: patent attorneys may recommend filing a provisional application in the U.S., which seizes a priority date, and gives an inventor options over the next 12 months. The options include filing a non-provisional U.S. patent application, filing a PCT application, or both. If inventors would like to proceed with the provisional filing, discuss this option with knowledgeable counsel.

 

  PCT Costs and Considerations

 

  A PCT application allows an inventor to file one PCT application, which acts as a placeholder for about 30 to 31 months, depending on the country. By the 30- or 31- month deadline, the inventor must decide the countries in which to file. It is the process of entering countries where this can get expensive. That is, the inventor may be charged for each nation’s filing fees, which are often between $2,000 and $7,000. European Patent Office fees, like the US Patent Office fees, fluctuate. Also, there are sometimes expensive translation requirements.

 

  Here is a good description of the PCT process: http://www.wipo.int/pct/en/faqs/faqs.html 

  And in even more detail: http://documents.epo.org/projects/babylon/eponet.nsf/0/7C5EF05581E3AAC0C12572580035C1CE/$File/euro-pct_guide_2015_en.pdf

 

  A PCT application’s filing fees can be approximately $3,000, without attorney costs. Here is an example of a fee breakdown:

 

              Transmittal fee is $120 for small entity

Search fee is $1,040 for small entity

International fee is $1,176

Preliminary Examination: $300

 

               Total filing fees: $2,636

(Note that USPTO PCT fees are subject to change.)

 

  Legal fees, as with a provisional, may be from $4,000 to $8,000, and sometimes well over $10,000 for complex patent applications, or even because the inventor and patent counsel simply needed time to refine the concepts into the best possible application. 

 

  If an inventor files a U.S. provisional application, an international PCT application may maintain the priority date of the U.S. provisional’s filing date, if the PCT is filed within one year of the provisional. So, within one year of filing a provisional application in the U.S., an inventor would file a U.S. non-provisional application, or a PCT application, or both.

 

  One strong tactic is to file the PCT based on the provisional. The PCT is often more expensive than a non-provisional, but it may reduce the cost of the non-provisional fee from $730 to about $100 if a PCT examination opinion is favorable. Also, a PCT opinion should be returned to the inventor before the USPTO would respond to a non-provisional application. That is, the USPTO typically responds within 18 months of the non-provisional filing, while the PCT may respond within 16 months of the earlier, provisional filing.

 

  Further complicating matters: it is now possible to file accelerated U.S. non-provisional applications, for approximately a $2,000 filing fee. The accelerated examination may reduce the time for issuance of a patent from 2-3+ years, down to one year. However,  such a "Track One" prioritized application, at least as of this writing, can have no more than 4 independent claims and no more than 30 total claims.

 

  As I mentioned earlier, this is a lot of information. There are costs and benefits to filing a provisional, followed by a PCT application, but a good rule of thumb is that a U.S. non-provisional patent application may cost $8,000 to $15,000+, and protection in multiple countries may be a multiplication of that due to the entry fees. The inventor may choose to enter only the EU and Japan, or only the U.S., France, the U.K., and Germany, or may choose other variations, depending on the business strategy.

 

Further background:

 

USPTO’s current international PCT fees: http://www.uspto.gov/patents-getting-started/international-protection/patent-cooperation-treaty/pct-fees-us-dollars 

WIPO’s fee table: http://www.wipo.int/export/sites/www/pct/en/fees.pdf