International Patents Budget Estimate for a non-complex invention
Known as Schedules A & B to the Attorney-Client Fee and Representation Agreement
There are 6 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 Stage 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 Washington D.C. for the filing and issuing of patents and trademarks for the United States.
European Patent Office (EPO) – Administered in Munich, Germany, provides for central filing, prosecution and granting of patents in the 15 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 U.S.
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 United States first, then non-treaty countries, and then the Patent Cooperation Treaty (PCT) to the full Chapter II term. (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 U.S. filing date if the international application (PCT) is filed within 12 months of the U.S. filing. 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 sent 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 U.S. with the USPTO. However, you may have to file in the EPO in any case as some smaller countries do not have their own patent offices, such as the Netherlands.
5. File a U.S. Provisional Patent application (PPA) first, and then the U.S. as another national application within 12 months, and either a PCT, EPO, or other country national applications within 12 months of the PPA.
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 U.S. filing, and this will cause fewer questions later at the foreign filing office.
This option is essentially accommodating 2 to 4 above with the only difference being that instead of a regular U.S. application filed first, a U.S. provisional is filed first. The benefit is minimal and the risk is high unless a complete disclosure already exists, also note that a provisional cannot claim any foreign priority of an earlier filed application.
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 $425 for a non provisional utility and $100 for a provisional, thus the savings is only $325, 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 $325, 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 U.S. patents or international patents filed at the USPTO, as well as foreign patents. 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 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.
EPO fees only, assuming the patent is already drafted and drawings are complete.
Request and examination fee $3,200
(already having another patent office search and examination completed)
EPO patent attorney fee $1,550
Designation fee for all of European Union $1,500
Certified copy of priority document $250
U.S. patent attorney fee $600
Total EPO fees at filing $7,100
Note that these fees are estimates only as EPO fees are subject to change along with currency exchange rates, as EPO fees are originally quoted in Euros.
About 1 year after the EPO filing the EPO patent attorney prosecution fees based upon the examination by the EPO would be about $6,500 in addition to the total EPO fees at filing.
The EPO application is then rolled into the individual European Union countries you select about 2 years after filing in the EPO which adds the following costs;
If you select for example; England, Germany, France, Italy, and Spain
Language translations (4) $10,400
Nationalization fees $9,750
(Annuity fees ($1000 per country per year) $5,000
(annuity fees will be ongoing, this is only for the first year)
Total nationalization fees for the first year $25,150
Total cost for patents granted in the above 5 countries going the EPO route; $38,750 or $7,750 per country, plus annuity fees of $5,000 per year for the life of the patents or 20 years from the earliest file date.
Note that the above patent office fees, attorney costs, and 3rd party various service provider costs do not include travel, petition fees, time extensions, appeals, assignments, or opposition defenses, this budget only shows the most basic patent fees and costs for drafting, filing, prosecution, issue, and maintenance.
Procedural issues related to European patent applications;
Definitions:
Publication “A” patent application is disclosed to the public domain at 18 months after earliest filing.
Publication “B” fully prosecuted patent is disclosed to the public domain, also known as the “Grant” of the patent.
Opposition, wherein a 3rd party can challenge the patents entire or partial validity.
First filing
Submitting of written application to the relevant patent office.
Invention must be “Absolutely Novel”, meaning no prior public disclosures of any kind. Applicable prior art is worldwide and can be anything: a patent, a publication, a speech, a physical object, or anything that discloses the invention to the public domain.
Invention must contain an “Inventive Step” and cannot be an obvious progression based upon the state of the art.
First filing plus 12 months
This is the deadline for filing in another country other than the first filing country or the Patent Cooperation Treaty (PCT) route to maintain the initial first filing priority date. This alternative filing decision depends upon the commercialization strategy of the invention.
First filing plus 18 months
Application is published, called the “A publication”, at this point the patent office search is usually completed and prosecution starts.
First filing plus up to approximately 42 months is patent grant
Prosecution can be for up to approximately 2 years after publication, after conclusion of prosecution patent is granted or called the “B publication”.
Grant point in time plus up to 9 months after the grant is the opposition period.
A 3rd party can challenge the patent during the opposition period, at which time the patent office will make a decision on the opposition. An unfavorable decision can be appealed, with the appeal decision usually being final as to the disposition of the opposition.
Grant confirmation is approximately 24 months after the end of the opposition period.
If the patent applicant has a favorable appeal after an opposition has been made a “Grant Confirmation” in made of the patent.