PCT EXPLANATION BREAKOUT

LAYOUT. The PCT is a complex subject are that requires more than one page of explanation.  The PCT discussion is on 5 web pages:

• pct — explains what the PCT process is and some reasons for filing.
• pctexplain — explains how the PCT process works.
• pctstrategy — explains potential PCT filing strategies to consider.
• pctcosts — explains the costs of various PCT filings.  You are on this page now.
• pctnat — explains the U.S. National Stage of the PCT process.

INTERNATIONAL STAGE PCT COSTS

FOREIGN OR U.S. CLIENT – CHARGES FOR A PCT APPLICATION? For a PCT application prepared from scratch (when no national application exists), the preparation costs are the same as for a utility patent application: $4,000 small-entity or $6,000 large-entity preparation fees plus initial government filing costs, which are estimated at an additional $3,767 for a large entity, $2,407 for small entity and $1,815 for a micro-entity. Government filing fees effective as of 01-MAR-2024 include: a transmittal fee of $260 ($104 for a small entity and $52 for a micro-entity); plus a search fee of $2,180 ($872 for a small entity and $436 for a micro-entity); plus an international fee of $1,327 (effective 01-MAR-2024), no small entity or micro-entity discounts) for the first 30 pages (assumes max. discounts available). Other fees may apply.

U.S. applicants may alternatively select Europe, Israel, Korea, Japan; Philippines, Australia, or Singapore as the search authority and this will change the above noted search fee to: $1,989 for Europe (EPO) (eff. 01-APR-2024), $1,066 for Israel (ILPO) (eff. 01-MAR-2024), $879 for Korea (KIPO) (eff.01-JAN-2024), $1,129 for Japan (JPO) (eff. 01-JAN-2024), $1,407 for Australia (IPAU) (eff. 01-JAN-2024), Philippines (IPOPHL) (Fee Not Set as of 08-MAR-2024), and $1,633 for Singapore (IPOS) (eff. 01-JAN-2024). As of 01-DEC-2022, Russia (Rospatent) is no longer a competent International Searching and Preliminary Examining Authority.

Caution: The Philippines (IPOPHL) will not accept more than 75 international applications from the USPTO during any fiscal quarter.

Caution: Europe (EPO) will not act as an International Search Authority or International Preliminary Examination Authority for applications with one or more claims to a business method, and the Australian Patent Office will not serve these functions for applications with one or more claims drawn to mechanical engineering or analogous fields of technology as defined by certain International Patent Classification classes.

Caution: The Israel Patent Office (ILPO) will not act as an ISA for: (1) more than 75 applications per fiscal quarter; and (2) applications with one or more claims directed to the field of business methods as determined through classification in G06Q of the International Patent Classification. Also note that Israel charges for copies of cited prior art requested by applicants even when the ILPO references that document in the International Search Report.

Caution: The Japan Patent Office (JPO) has the following conditions: (1) the applications are submitted in the English language; (2) the claims of the application are directed to the field of green technology as defined by certain International Patent Classification classes; (3) the JPO has not received more than 5,000 international applications from the USPTO during the 3 year period from July 1, 2015 to June 30, 2018, and not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years; and (4) the JPO is chosen as a competent authority by the applicants of said applications. The JPO will also act as an IPEA if these four requirements are met, and the JPO acted as the ISA.

PCT APPLICATION WHEN BASED ON AN EARLIER COMPLETE NATIONAL APPLICATION. For a PCT application prepared from a complete pre-existing national application, where no editing is required, the preparation costs are $1,200. Foreign national applications often require extensive re-writing to correct translational problems, conform to U.S. technical and grammatical English, and to revise claim structure to meet requirements.

FILING U.S. UTILITY APPLICATION FIRST. For U.S. or foreign clients, if Attorney Louis Ventre, Jr. first prepares and submits a U.S. Patent application, he will then within a year thereafter prepare the PCT application for a fixed fee of $1,200. Government filing fees are noted above.  The latest fees are posted at the U.S. Patent and Trademark Office web site at  http://www.uspto.gov/patents-getting-started/international-protection/patent-cooperation-treaty/pct-fees-us-dollars. Other government fees may apply.  For other considerations, see PCT strategies.

FILING PCT APPLICATION WITHIN A YEAR OF U.S. UTILITY APPLICATION. When applicants want a non-provisional U.S. patent application followed within a year by the PCT application, the PCT application can be filed with less cost to the applicant by electronically filing it with the International Bureau in Geneva.  Government fees vary but this option is usually cheaper.

FILING A PCT APPLICATION – FOREIGN FILERS. For foreign residents who are not U.S. citizens, Attorney Louis Ventre, Jr. can prepare your PCT application, but it must be filed in your country or region of residence, or in the International Bureau in Geneva, directly, that is, by you or by your local attorney.  Attorney Louis Ventre will help you with this, but the rules prevent him from filing for you.

It is possible, however, to include Attorney Louis Ventre’s name and address as an “address for correspondence” in your PCT application.  Although Attorney Louis Ventre would not be entitled to act on your behalf, Attorney Louis Ventre would receive all correspondence which would normally be addressed to the applicant or his agent, and Attorney Louis Ventre would be able to make payments on your behalf.  In this situation, Attorney Louis Ventre would not have the right to sign any papers, including letters, on your behalf, and these would have to be signed by you.

AFTER FILING PATENT PROSECUTION COSTS. Patent prosecution costs for PCT applications in the United States are billed at the Law Firm’s standard hourly rates of $250 per hour. Attorney Louis Ventre, Jr. also caps the billing for most small entities with a ceiling charge, or maximum attorney fee, of $2,000 when the application has been first prepared by Attorney Louis Ventre, Jr.    Patent Office fees and out of pocket expenses are additional. This ceiling charge applies to prosecution activities prior to the final office action.

NATIONAL STAGE PCT

National Stage. When the national stage for the application is required (at about 30 months from the earlier filed regular national application or 18 months from the PCT filing), you will be required to retain an attorney licensed in the foreign jurisdiction and pay the national filing fees in those foreign jurisdictions.  That is when the costs can rapidly mount.  You typically start with the national stage filing fees and then are hit with annual application maintenance fees.  PCT fees tend vary frequently because of currency fluctuations.  Attorney Louis Ventre, Jr. files U.S. National Stage applications for foreign and domestic residents.

Attorney costs for PCT National Stage applications in the U.S. are covered at pctnat, which explains the U.S. National Stage of the PCT process.

OVERALL COST OF PCT PATENT PROCESS

What Does an International Patent Cost? A while back, WIPO suggested that it would not be unusual to experience a total cost of $25,000 for a patent through the PCT system. This is apparently not published anymore. It would be unusual for PCT costs to be less than about $15,000 per country.

The U.S. General Accounting Office (renamed the Government Accountability Office) estimated in 2003 that for six European countries (France, Germany, Italy, Ireland, Sweden, and the United Kingdom), Canada, Japan, and South Korea costs of obtaining and maintaining foreign patents for their 20 year life to be in the range of $160,000 to $330,000 (in 2002 dollars).  GAO report: GAO–03–910, “Experts’ Advice for Small Businesses Seeking Foreign Patents,” (2003) at pp. 40-41.

The European Patent Office published two charts showing estimated costs (downloaded 06/04/2007) for a directly filed European Patent and for one filed under the PCT.  For European patents filed by way the Patent Cooperation Treaty (PCT) for eight countries (Germany, France, the United Kingdom, Italy, Spain, Switzerland, Netherlands and Austria), the 10 year total cost is estimated at about EUR 47,000 or about $55,000, excluding in-house preparation costs for the patentee.  For direct filing in the EPO (not thru the PCT), the total cost is about EUR 32,000 or $44,000.  In-house preparation costs might add an additional $5,000 to $10,000 to both estimates.  This report is no longer available on the EPO site.

Cost elements. The costs of international patents may be divided into four types of costs:

1. Government fees. The costs relating to the application fees and other prosecution fees paid to the national or regional patent offices. Such costs may vary widely from country to country (information on the fees may be obtained directly from the national IP offices).
2. Attorney fees. The costs relating to patent attorneys/agents who assist in prosecuting the patent application vary widely from country to country. The use of a local patent attorney/agent is usually mandatory for applicants who do not reside in the national stage country.  So one will be required in every national stage patenting jurisdiction.
3. Translation. The costs of translation. Such costs are only relevant when seeking IP protection in foreign countries whose official language is different from the language in which the application has been prepared and may prove to be high, especially for highly technical patent applications.  Translation costs vary according to the length and nature of the patent application but could cost $2,000-$10,000 per translation or more.  Translation costs can be particularly problematic because the quality of an application can substantially diminish in the translation process.
4. Maintenance. The cost of maintaining applications and patents through payments to the patent office. Such fees are usually paid at regular intervals (e.g. every year or once every five years) in order to maintain the application or the patent. Protecting patents for the entire term of protection (in general, 20 years) in various countries may prove an expensive undertaking, also taking into account that annual maintenance fees are usually increasing the longer the protection is maintained. The U.S. Patent and Trademark Office charges no maintenance fees until after a patent issues.